• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. et al. v. Smartflash LLCAll claims unpatentable
  PTAB · Mar 29, 2016 · CBM2014-00194 · APJ Jennifer S Bisk · CBM · Final written decision

  Claim 32 was held unpatentable under § 101 because it claims the abstract economic practice of controlling content access based on payment, using only generic computer components and functions.

  RulingsFinal written decision

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

    “We are persuaded that claim 32 is drawn to a patent-ineligible abstract idea. Specifically, claim 32 is directed to performing the fundamental economic practice of conditioning and controlling access to content based on payment. For example, claim 32 recites “the at least one access rule specifying at least one condition for accessing the retrieved data written into the data carrier, the at least one condition being dependent upon the amount of payment associated with the payment data forwarded to the payment validation system.” Furthermore, as discussed above, the ’221 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:20–55. The patent specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The specification further explains that once data has been published on the Internet, it is difficult to police access to and use of it by internet users who may not even realize that it is pirated. Id. The ’221 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:59–2:4. The ’221 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplierdefined access rules and validation of payment. Id. at 1:59–2:15. Although the specification refers to data piracy on the Internet, claim 32 is not limited to the Internet. Claim 32 recites code to “read payment data from the data carrier,” “forward the payment data to a payment validation system,” “receive payment validation data from the payment validation system,” “retrieve data from the data supplier,” and “write the retrieved data into the data carrier.” The underlying concept of claim 32, particularly when viewed in light of the ’221 patent specification, is conditioning and controlling access to content based upon payment. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611. We are, thus, persuaded, based on the ’221 patent specification and the language of claim 32 is directed to an abstract idea. See Alice, 134 S. Ct. at 2356 (holding that the concept of intermediated settlement at issue in Alice was an abstract idea); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to be “generating tasks [based on] rules . . . to be completed upon the occurrence of an event”).” slip op. at 8

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

    “more than the basic financial idea of enabling limited use of paid for and/or licensed content using ‘conventional’ computer systems and components.” Paper 31, (“Reply 11”) (quoting Ex. 1003 ¶ 126). Petitioner persuades us that claim 32 of the ’221 patent does not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt Petitioner’s rationale that the additional elements of claim 32 are generic features of a computer that do not bring claim 32 within § 101 patent eligibility. Pet. 24–29; Reply 11–21.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by Samsung’s argument. Patent Owner proffered this particular testimony not for purposes of showing validity of the patent claim at issue, but for purposes of challenging the credibility of Samsung’s expert. Although we were not persuaded by this evidence, we did consider it for the purpose of deciding an issue of credibility. We, therefore, decline to exclude this testimony under FRE 401, 402, or 611(b).” slip op. at 23

  • Adverse judgmentOther

    “00102, we issued a Final Written Decision determining claims 1, 2, and 11– 14 unpatentable under 35 U.S.C. § 103. Apple Inc. v. Smartflash LLC, Case CBM2014-00102, (PTAB Sept. 25, 2015) (Paper 52). On March 18, 2016, however, Patent Owner filed an authorized motion to terminate this proceeding as to claims 2 and 11 stating that “[o]n March 4, 2016, pursuant to Fed. R. App. P. 42(b), the United States Court of Appeals for the Federal Circuit dismissed [Patent Owner’s] appeal of [the final written decision in CBM2014-00102 determining] that claims 2 and 11 of the ’221 Patent are unpatentable.” Paper 50, 2. 4 We are persuaded that the particular facts of this proceeding now counsel termination of our consideration of claims 2 and 11. 37 C.F.R. § 42.72. Claims 2 and 11 of the ’221 patent have been finally cancelled and any decision we might reach in this proceeding regarding the patentability of these claims would be moot and purely advisory. We do not see how the just, speedy, and inexpensive resolution of every proceeding (37 C.F.R. § 42.1(b)) would be secured by rendering a final written decision regarding these claims. Accordingly, we terminate this review as to claims 2 and 11 and consider below only the remaining challenged claim—claim 32.” slip op. at 3

  Patent outcomesUS 8,118,221 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,118,221
• Sony Corporation / Sony Electronics Inc. et al. v. Memory Integrity, LLCRehearing denied
  PTAB · Jul 23, 2015 · IPR2015-00158 · APJ Neil T Powell · IPR · Rehearing

  The Board denied Sony’s rehearing request, leaving institution denied for all challenged claims because the petition failed to establish the asserted priority-date and Luick limitations.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “persuaded that the probe filtering information disclosed in the ’347 application does relate to the probe filtering information in the challenged claims. Dec. 17. Specifically, we held that we were persuaded that the “probe filtering information” disclosed in the ’347 application constitutes “probe filtering information” under the broadest reasonable interpretation of that language in the challenged claims. Id. The Petition did not argue, as the request now suggests, that the challenged claims are not entitled to the filing date of the ’347 application because the ’347 application does not provide written description support for the full scope of the challenged claims. Accordingly, we are not persuaded that the request identifies a matter in the Petition that we overlooked or misapprehended.” slip op. at 5

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

    “Table (“GCT”) constitutes “probe filtering information,” as recited in independent claims 1, 16, and 25. See Pet. 34–35. Our Decision denied the claim challenges based on Luick, holding that Petitioner had not addressed adequately the limitation in the independent claims that the “probe filtering information” is “representative of states associated with selected ones of the cache memories.” Dec. 32–33. Specifically, our Decision explained that the Petition did not persuade us that Luick or any of the other cited references teach this limitation. Id. at 33–34. Our Decision noted that we were persuaded that Luick’s GCT contains information about which nodes contain shared data blocks, but does not contain information about whether those nodes have the data blocks in memory 105 or cache 107. Id. at 33. Our Decision further explained that it was “not facially apparent that the information in Luick’s GCT is ‘representative of states associated with selected ones of the cache memories.’” Id. Additionally, our Decision noted, the Petition neither provided any explanation showing that Luick’s GCT contained information “representative of states associated with selected ones of the cache memories,” nor asserted that any of the other cited references teach this limitation. Id. at 33–34.” slip op. at 6

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Petition’s argument that the definition of “probe filtering information” changed between the ’347 application and the ’161 application. See, e.g., Dec. 15–16. The Petition suggested that the effect of the alleged definition change is that the probe filtering information disclosed in the ’347 application bears no relationship to the claims of the ’121 patent. See Pet. 6 (“the definition of ‘probe filtering information’ changed between the [’347 application] and the ’121 Patent such that the definition in the [’347 application] is admittedly unrelated to the claims of the ’121 Patent”). In our Decision, we held that, contrary to the Petition’s argument, we were persuaded that the probe filtering information disclosed in the ’347 application does relate to the probe filtering information in the challenged claims. Dec. 17. Specifically, we held that we were persuaded that the “probe filtering information” disclosed in the ’347 application constitutes “probe filtering information” under the broadest reasonable interpretation of that language in the challenged claims. Id. The Petition did not argue, as the request now suggests, that the challenged claims are not entitled to the filing date of the ’347 application because the ’347 application does not provide written description support for the full scope of the challenged claims. Accordingly, we are not persuaded that the request identifies a matter in the Petition that we overlooked or misapprehended.” slip op. at 4

  § 103 obviousness§ 112 disclosure
  Patents in suitUS 7,296,121
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Apr 6, 2015 · CBM2014-00004 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 21 and 22 are unpatentable under § 101 because they claim an abstract idea implemented using generic, conventional technology.

  RulingsFinal written decision

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

    “term “SRC.” The ’151 patent does, however, give some context from which to discern the meaning of the term. For example, the ’151 patent states that “[t]he term ‘SRC technology,’ as used herein, may include any short-range radio communications technology now existing or yet to be developed, including, for example, radio frequency identification (‘RFID’), IEEE 802.15 (‘Bluetooth’), and IEEE 802.11 (‘WiFi’), among others.” Id. at 2:60–65; see also id. at 2:9–18 (describing “SRC device[s]” and “SRC-enabled mobile terminals” as including RFID, Bluetooth, and WiFi related devices). Moreover, the ’151 patent describes several embodiments of the invention. The first embodiment involves an RFID system. Id. at 3:7–8. The second embodiment is described as a “hybrid system” using “Bluetooth, WiFi, WiMAX, or any other wireless protocol” to connect with an RFID reader. Id. at 4:19–34. Based on this disclosure, it is clear that “SRC,” as used in the ’151 patent, encompasses communications at a range used by the technologies named in the specification—RFID, Bluetooth, and WiFi—and other short-range radio communication technologies. The question is whether the” slip op. at 7

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “extrinsic evidence, including testimony from Dr. Georgios B. Giannakis. Ex. 2001 ¶¶ 21–25. Dr. Giannakis testifies that SRC has a well-understood meaning in the art of “a nominal range of 100 meters or less, such as used by practical systems performing typical applications of RFID, Bluetooth, and Wi-Fi communications.” Id. ¶ 22. Moreover, Dr. Giannakis testifies that all three examples of SRC technologies listed by the ’151 patent have “a practical upper range in a typical deployment that is nominally 100 meters or less.” Id. ¶ 24. An expert’s opinion, however, is only as good as the facts upon which it is based. Dr. Giannakis points to no factual support for his specific numeric conclusions on this issue. See id. ¶¶ 22–24. We, therefore, give very little weight to Dr. Giannakis’s testimony concluding that the term SRC, as used in the ’151 patent, includes a specific upper bound of 100 meters. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations . . . may render the testimony of little probative value in a validity determination.”).” slip op. at 8

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

    “Although a term may be relative, it is not necessarily indefinite. Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (“That some claim language may not be precise, however, does not automatically render a claim invalid.”). We are persuaded a person of ordinary skill in the art would understand that short-range communication covers a communication range “shorter” than the range covered by mobile networks. See Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1372 (Fed. Cir. 2013) (affirming the district court’s finding not indefinite the term “short-range communication protocol,” which was construed to mean “a set of procedures required to initiate and maintain short-range communication between two or more devices” where short-range communications similarly included Bluetooth and WiFi technologies, but did not include a numeric upper bound on range), cert. granted in-part on other grounds, 135 S.Ct. 752 (U.S. Dec. 5, 2014) (No. 13-896). The ’151 patent expressly describes mobile networks as including “cellular networks such as Global System for Mobile Communications (‘GSM’), Time Division Multiple Access (‘TDMA’), Code Division Multiple Access (‘CDMA’), and Personal Communications Service (‘PCS’) networks.” Ex. 1001, 2:53–58; see PO Resp. 19. It also describes interoperability between the various systems, contrasting them by size. For example, in describing the problems encountered when locating mobile terminals, the Specification describes “cell sizes [that] have grown to cover up to 20 km in diameter or even wider.” Ex. 1001, 1:67–2:4. A solution to this problem is employing “at least one SRC device.” Id. at 2:9–11. The ’151 patent also describes employing the “at least one SRC device . . . within a mobile network.” Id. at 2:11–17 (emphasis added). Thus, the specification makes reasonably clear to the person of ordinary skill the range of SRC in comparison to the range of mobile networks—and in turn the scope of SRC as used in claims 21 and 22. See Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007) (holding the term “near” not indefinite where the specification makes reasonably clear that the term means “very close to or at the edge of”).” slip op. at 12

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

    “We agree with Petitioner that the claimed invention is directed to an abstract idea, specifically, the abstract idea of receiving information and providing services or advertisements based on that information. The preambles and all claim limitations of both claims support this abstract idea, and the ’151 patent repeatedly discloses that the invention is directed to providing services or advertisements. See, e.g., Ex. 1001, 1:7–15, 25–27. Patent Owner has not identified any portion of the ’151 patent inconsistent with this abstract idea, and we are persuaded that the identified abstract idea is a fundamental building block of economics, similar in nature to the abstract idea of hedging claimed in Bilski and intermediated settlement claimed in Alice. Patent Owner does not direct us to any authority for its assertion that an idea is not abstract if it includes specific recitation regarding the type of information transmitted, how that information is acquired, and whether it is used for authentication. Here, the claims are generally directed to a method of (i) receiving information over a network, (ii) authenticating that information, and (iii) providing a service to a mobile terminal or receiving an advertisement over the network, all of which inform the aforementioned abstract idea. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Assoc., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (characterizing the claimed abstract idea as “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” despite claim’s recitation of specific limitations, like scanner). This combination of steps recites an abstraction because it has “no particular concrete or tangible form” and is “devoid of a concrete or tangible application.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). The details emphasized by Patent Owner do not remove the claimed methods from the realm of the abstract. These details are characteristic of the invention’s implementation, rather than its general idea. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (describing the claim’s abstract idea without including the claim’s “computer network” limitation); see also Ultramercial 772 F.3d at 715 (stating that more detailed limitations may “add a degree of particularity,” but do not convert the concept embodied by the majority of the limitations into something concrete).” slip op. at 16

  Patent outcomesUS 7,463,151 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Nautilus
  Patents in suitUS 7,463,151
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Apr 6, 2015 · CBM2014-00006 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 25–29 are unpatentable under § 101; claim 25 is also unpatentable as obvious over Havinis ’931 and Leonhardt, and Landgren and Leonhardt.

  RulingsFinal written decision

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

    “reasoning with rational underpinning to combine Havinis ’931 and Leonhardt. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For instance, Petitioner states: [a] person of ordinary skill would have found it obvious to modify the system of Havinis ’931 to include Leonhardt’s location access policies, in order to further Havinis ’931’s goals of managing positioning requests sent by Location Applications such that location services can be tailored individually to meet the needs of the mobile device user. Pet. 59 (citing Ex. 1004, 3:33–40). Relying on Dr. Cox, Petitioner adds that this modification “would have been nothing more than the application of a known method of privacy management to achieve a predictable result.” Ex. 1002 ¶ 76. As explained in our Decision to Institute, we are persuaded the rationale set forth by Petitioner and Dr. Cox is reasonable. See Dec. 24–25. Subsequent to our preliminary finding, Patent Owner has provided no evidence or argument to the contrary. Thus, after once again evaluating Petitioner’s arguments and supporting evidence, we conclude that Petitioner has shown by a preponderance of the evidence that it would have been obvious to combine the relied upon teachings of Havinis ’931 and Leonhardt. We conclude that Petitioner has shown by a preponderance of the evidence that claim 25 of the ’752 Patent would have been obvious over Havinis ’931 and Leonhardt.” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “We are not persuaded that Petitioner has shown by a preponderance of the evidence that the ’752 patent fails to provide sufficient written description support for the notifying limitation. Petitioner’s only evidence that the notifying limitation is not sufficiently supported is its argument that the ’752 patent fails to explicitly describe notifying the wireless device that access to the location information was denied. Pet. 44–45. Petitioner proffers testimony from Dr. Cox parroting, almost word for word, the argument in Petitioner’s brief. Ex. 1002 ¶¶ 24–36. This argument and testimony, however, does not speak to the correct standard—whether the ’752 specification “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Moreover, “the disclosure as originally filed does not . . . have to provide in haec verba support for the claimed subject matter at issue,” nor must it describe “every conceivable and possible future embodiment of [the] invention.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003) (internal quotation marks omitted). We agree with Patent Owner, that the ’752 patent broadly describes notifying the wireless device at any time during the described process. See, e.g., Ex. 1001, 9:26–29 (“the system described herein is for a subscriber to receive a notification on their wireless communications device whenever a location request is made by any client application”). Moreover, as pointed out by Petitioner, the ’752 patent describes sending “denied access” messages to client applications. See Pet. 44 (citing Ex. 1001, 11:40–42). Based on these disclosures, we are persuaded that the ’752 patent provides broad support for providing notifications of various messages to different elements of the system at multiple points in the described process. Petitioner has not pointed to anything in the ’752 patent specification that clearly limits what messages can be sent to the various elements or when they can be sent. In fact, as Patent Owner points out, the Provisional Application explicitly contemplates “initiat[ing] a dialogue with the subscriber regarding permission for a location request.” Ex. 1020, 22. Although Petitioner complains that this disclosure does not describe how a dialogue would occur or how messages are relayed (Reply 5), we are not persuaded that a person of ordinary skill in the art would disbelieve, based on the entirety of the ’752 patent disclosure, that the inventor had possession of sending an access denied message to the wireless device at the appropriate time during the process. Thus, we are persuaded that the ’752 patent “provides ample support for the breadth” of the notifying limitation and does not “unambiguously limit” its meaning to a narrower embodiment (e.g., notifying the wireless device only when a request has been made). Cordis, 339 F.3d at 1365. Petitioner has not shown by a preponderance of the evidence that the ’752 patent fails to support the notifying limitation.” slip op. at 20

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

    “We agree with Petitioner that the claimed invention is directed to an abstract idea, specifically, the abstract idea of controlling access to location information using a subscriber profile. The preambles and all claim limitations of both claims support this abstract idea, and the ’752 patent repeatedly discloses that the invention is directed to controlling access to location information. See, e.g., Ex. 1001, 1:14–19, 1:60–2:7. Patent Owner has not identified any portion of the ’752 patent inconsistent with this abstract idea, and we are persuaded that the identified abstract idea is similar to the kind of “organizing human activity” at issue in Bilski and Alice. See, e.g., Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1008 (Fed. Cir. 2014) (comparing “methods and systems for managing a game of Bingo” to the kind of “organizing human activity” at issue in Bilski and Alice).” slip op. at 24

  Patent outcomesUS 7,203,752 unpatentable
  § 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · KSR
  Patents in suitUS 7,203,752
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Mar 30, 2015 · CBM2014-00005 · APJ Barbara A Parvis · CBM · Final written decision

  Claims 1–6 are unpatentable under § 112, first paragraph, because the patent lacks written description support for the claimed limitations.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “To satisfy the written description requirement, the focus is not just on whether the claims are supported by the specification, but whether one of ordinary skill in the art reasonably would conclude from the original disclosure that the inventor had possession of the claimed invention. See, 2 Claim 4, which depends from claim 1, recites “wherein said step of accessing comprises obtaining information established by a network administrator regarding said prioritization for presenting said service provider information to said subscriber.” Claim 4 was added as claim 79 during prosecution. Ex. 1003, 233. e.g., Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Additionally, where an explicit limitation is not present in the written description, “it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). Furthermore, “[n]egative limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F. 3d 1344, 1351 (Fed. Cir. 2012).” slip op. at 13

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Dr. Kingdon, who Patent Owner relies on for support, does not provide sufficient rationale for his opinion to the contrary. Ex. 2002 ¶ 27. In particular, Dr. Kingdon provides a conclusory statement, “[t]his preference information is, by its very nature, determined by the network administrator—not by the subscriber, and not on the basis of proximity determined from location finding equipment.” Id. Dr. Kingdon does not identify persuasive support in the ’205 patent specification or describe persuasively other evidence that supports his conclusion. Id. ¶¶ 23–27; see also id. ¶¶ 11–15 (describing a background of location based services including a description of certain handsets, promotion of implementation of location services worldwide by several companies, and an exemplary commercial launch in Sweden of a mobile positioning service). Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. See 37 C.F.R. § 42.65(a).” slip op. at 17

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

    “5. “prioritization” The term “prioritization” is recited, for example, in claim 1: “a prioritization for presenting service provider information to a subscriber” and “prioritization information establishing a basis independent of proximity and independent of any subscriber preferences for prioritizing.” Neither party provides a proposed construction for the term “prioritization.” We, however, construe this term as part of our evaluation of the parties’ dispute as to whether the ’205 patent specification provides written description support for the limitations challenged by Petitioner. The specification does not provide a definition of “prioritization.” The IEEE Dictionary sets forth a plain and ordinary meaning of “priority” as follows: “A rank order of status, activities, or tasks.” Institute of Electrical and Electronics Engineers, The Authoritative Dictionary of IEEE Standard Terms 867 (7th Ed., IEEE Press 2000) (emphasis added) (Ex. 3001). This definition is consistent with the specification, which provides an example of “prioritization” as follows: “[t]he menu may be ordered based on any of various criteria such as preferences expressed in the subscriber profile, nearest to farthest, preferred service providers defined by the network administrator, etc.” Ex. 1001, 8:32–36 (emphasis added). Upon review, we determine that construing “prioritization” to have its plain and ordinary meaning of “ordering” is reasonable and consistent with the specification. Therefore, we adopt it as a broadest reasonable construction.” slip op. at 10

  Patent outcomesUS 7,024,205 unpatentable
  Claim construction§ 112 disclosure
  Patents in suitUS 7,024,205
• JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentable
  PTAB · Dec 5, 2014 · IPR2013-00336 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 112, 123, 124, 127, 129, 131, 133, and 134 are unpatentable as obvious over Chande; the remaining challenged claims were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

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

    “of the phrase “servo control” refers to a “control” element, as opposed to a “servo control” or “data gathering and transmission” element, as recited in challenged claims, where the “servo control” in the provisional application controls movement of a mirror using a “push+pull magnetic force,” for example. Ex. 2006, 7. Consistently, the provisional application states that “[i]t may be desirable to add damping mechanism for better servo control,” i.e., to control movement of the mirrors, and that “resulting push+pull magnetic force is more linear and also larger than the pull only design, and allows for better servo control,” i.e., control of the position of the mirrors. Id. at 5, 7; see also PO Resp. 18. Patent Owner’s position relies on an inherency argument in relation to one sentence in the provisional application, as discussed above, which indicates that after velocity of the mirror is “zeroed,” “currents are adjusted to hold it in place.” Ex. 2006, 7. We are not persuaded that this one sentence describing the adjustment of currents to hold a mirror in place necessarily describes a closed-loop, feedback system, or “an error signal” that is “used in order to correct the angular changes so as to reduce that error signal,” as stated by Dr. Smith. PO Resp. 19–12 (citing Ex. 2017, 44). We do not see how this sentence, expressly or inherently, describes a separate “servo control element” or “data gathering and transmission element” as recited in claims 112 and 123, respectively (i.e., something different from the “control” element of each of those claims, which corresponds to the “servo control” in the provisional application), where each element provides a feedback signal regarding current orientation of the mirror or current location of the optical beam.” slip op. at 15

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We are not persuaded that Chande and Buchin are non-analogous art to each other because, as Petitioner points out, both references are directed to optical switching and coupling of laser light to receptors with rotational reflective elements. Id. at 22. We still address, however, whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Chande and Buchin when making the optical switch of claims 130 and 132.” slip op. at 34

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

    “As an initial matter, we note that Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions. Id. In any event, Petitioner does not explain sufficiently how, or show by a preponderance of the evidence why, one would have added a stationary mirror or focusing lens “disposed between a source and one of the first movable mirrors,” as Petitioner contends is disclosed in Buchin, to the system described in Chande. Petitioner’s assertion that “inclusion of additional sources” would have been predictable or accomplished does not explain, nor provide evidence, as to why one would have included an additional stationary mirror or a focusing lens in a different location, i.e., elements that differ from “additional sources,” in the optical switch of Chande. Id.; see also Reply 12 (stating only that Chande and Buchin are both in the field of optical switching, and Patent Owner’s “attempts to read limitations from the specification into the claims is improper”). Thus, we are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included a stationary mirror, or focusing lens “disposed between a source and one of the first movable mirrors,” as recited in challenged claims 130 and 132 and Petitioner contends are disclosed in Buchin, in the optical switch disclosed in Chande.” slip op. at 35

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

    “Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). Thus, a motion to amend claims must identify how the proposed substitute claims are to be construed, especially when the proposed substitute claims introduce new claim terms. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). In its Motion to Amend, Patent Owner introduces three new claim terms— i.e., “communications,” “fiber,” and “fiber optical”—in its proposed substitute claims. Patent Owner argues that those claim features distinguish the proposed substitute claims from the prior art. See, e.g., Motion 11–14. Patent Owner does not provide, however, adequate claim constructions or explanations for how the new claim terms should be construed. For example, in relation to the term “communications,” Patent Owner offers, at most, that the addition of this term means that the recited subject matter “involve[s] switches only in the fiber optic communications field of endeavor,” and that the term identifies claimed components as “related to a fiber optic switching device that switches optical beams containing communications signals.” Id. at 5, 11–12. Simply referring to the terms “communications,” “fiber,” and “fiber optic” in the Motion to Amend does not define adequately an ordinary and customary meaning of “communications,” as would be understood by one of ordinary skill in the art in the context of the Specification (which itself does not define “communications”). Ex. 1001, 1:11–14 (presenting the one time the term “communication” is used in the ’332 patent Specification). During the oral hearing, Patent Owner’s counsel, upon questioning, proposed that “communication” means “a beam of light, with a frequency around approximately 1500 nanometers.” Paper 39, 47:4–13. The Motion to Amend, however, does not suggest such a claim construction, nor refer to any evidence, e.g., a dictionary or scientific definition, in support. Moreover, as discussed during the oral hearing, it is not clear from the record if “communication” might mean simply “transmission of information,” a definition not limited to a beam of light at 1500 nm. Id. at 53:14–55:18. Without a reasonable construction of the new claim features added by the proposed substitute claims, Patent Owner’s Motion does not provide adequate information for us to determine whether its proposed substitute claims are patentable over the prior art generally. Thus, we are not persuaded that Patent Owner has met its burden to demonstrate patentability of the proposed substitute claims under 37 C.F.R. § 42.20(c). 2. Written Description Support A motion to amend claims must identify clearly the written description support for each proposed substitute claim. 37 C.F.R. § 42.121(b). The written description test is whether the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, the motion should account for the claimed subject matter as a whole, i.e., the entire proposed substitute claim, when showing where there is sufficient written description support for each claim feature. See Nichia Corp. v. Emcore Corp., Case IPR2012-00005, slip op. at 4 (PTAB June 3, 2013) (Paper 27).” slip op. at 50

  Patent outcomesUS 6,430,332 mixed
  § 103 obviousness§ 112 disclosure
  Patents in suitUS 6,430,332
• Munchkin, Inc. / Toys “r” US, Inc. v. Luv N’ Care, Ltd.All claims unpatentable
  PTAB · Apr 21, 2014 · IPR2013-00072 · APJ Michael J Fitzpatrick · IPR · Final written decision

  The sole claim is unpatentable as obvious over Hakim ’225 and Hakim ’604; the motion to amend is denied because it would enlarge claim scope.

  RulingsFinal written decision

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

    “The test for sufficiency of the written description, which is the same for either a design or a utility patent, has been expressed as “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). In the context of design patents, the drawings provide the written description of the invention. Thus, when an issue of priority arises under § 120 in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application. Owens, 710 F.3d at 1366 (citations omitted).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “likelihood that the claim of the ’465 patent would have been obvious over each of Hakim ’225 and Hakim ’604. Dec. on Pet. 23. In response, Patent Owner does not argue that the claim is patentably distinct from those references. PO Resp. 6-7; Tr. 31:10-17. Rather, Patent Owner argues that the references are not prior art. PO Resp. 6-7; Tr. 31:10-17.” slip op. at 5

  • ScopeMotion to amend, deniedDenied

    “Owner relies on this distinction, between infringement of design patents and that of utility patents, to argue that the proposed amended claim is not broader than the issued claim because, to “an ordinary observer,” the designs are “substantially the same.” PO Reply 4 (emphasis added). However, Patent Owner does not direct us to, and we are not aware of, any authority that has applied the “ordinary observer” test—first enunciated as a test for infringement in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871) and adopted as the sole test for design patent infringement in Egyptian Goddess, 543 F.3d at 678—to compare the scope of two claims. The scope of the issued claim and the proposed amended claim are defined by the respective drawings. See id. at 679 (design patents typically are claimed as shown in the drawings). Those drawings differ with respect to the spout tip and the vent. Specifically, the proposed amended claim is broader than the issued claim because it is broader with respect to racetrackshaped spout tips and raised rim vents, even though it may be narrower with respect to egg-shaped spout tips and vents without raised rims. See In re Rogoff, 261 F.2d 601, 603 (CCPA 1958) (“[A] claim is broadened if it is broader in any respect than the original claim, even though it may be narrowed in other respects.”). In other words, a drinking cup, having the racetrack-shaped spout tip and raised rim vent of the proposed amended claim, could infringe the proposed amended claim based on its overall design, yet not infringe the issued claim. See Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d 691, 692 (Fed. Cir. 1997) (“A new claim enlarges if it includes within its scope any subject matter that would not have infringed the original patent.”). Therefore, the proposed amended claim would enlarge the claimed subject matter in violation of 35 U.S.C. § 316(d)(3) and 37 C.F.R. § 42.121(a)(2)(ii).” slip op. at 14

  Patent outcomesUS D617,465 unpatentable
  § 103 obviousness§ 112 disclosure
• CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc.All claims unpatentable
  PTAB · Jan 21, 2014 · CBM2012-00005 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 3, 6, 7, 16, 24, and 33 are unpatentable under § 101 because they claim abstract substitute fulfillment using generic computing technology without meaningful limitations.

  RulingsFinal written decision

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

    “the act of conveying or supplying for use making information available For each of the claim terms discussed above, we conclude that either definition would result in the same § 101 analysis. In other words, each of the challenged claims is unpatentable under § 101 whether or not we adopt CRS’s proposed claim constructions. Therefore, we conclude that each of the claim terms is given its ordinary and customary meaning and the issue of claim construction will not be addressed further.” slip op. at 8

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

    “We conclude that claims 3, 16, 24, and 33 are directed to abstract, and, therefore, unpatentable, methods for substitute fulfillment. The claims are directed to concepts for taking the preexisting process of substitute fulfillment and implementing it in a networked computing environment. We do not agree with Frontline’s argument that the computer technology is integral to the claimed subject matter. As we explained in the Decision to Institute, the “one or more computers,” “Internet communication link,” and “website” recited in claim 3 are not analogous to the GPS receiver in SiRF. Decision to Institute 10-11. Frontline has not directed us to anything in the record at trial to cause us to change our position. Frontline asserts that because the claimed limitations “generating and posting by one or more computers a list of one or more positions of one or more absent workers that need to be filed by one or more substitute workers on a website” and “receiving via at least one communication link absentee information” are required for the claimed process to work as intended, they, like the GPS receiver in SiRF, are integral to the claimed subject matter. PO Resp. 25-26. We, however, disagree. We find these additions of generic computer technology to be more akin to the addition of “computer-aided” to the claims of Dealertrack, and the additions of “transaction database” and “transmitting information” to the claims of Accenture. Accenture, 728 F.3d at 1339; Dealertrack, 674 F. 3d at 1333. Like the terms “computer-aided” in Dealertrack, and “transaction database” in Accenture, the terms “one or more computers,” “website,” and “communication link” at issue in this case do not impose meaningful limits on the challenged claims’ scope. This particular technology is employed only for the purposes of creating more efficient communication and data storage—basic functions of those components. Ex. 1001, col. 4, ll. 46-58 (stating that the advantages of the present invention are “to provide a reliable, efficient system . . . . that has low overhead and requires little . . . oversight. . . . includ[ing] an interface to the Internet . . . .[and] a central database”); see also col. 3, ll. 36-64 (describing the prior art automated systems). In other words, the claims here, even with the recitation of computing technology, are not part of a “technological advance” of any sort. See Bancorp, 687 F.3d at 1279.” slip op. at 13

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

    “Like the terms “computer-aided” in Dealertrack, and “transaction database” in Accenture, the terms “one or more computers,” “website,” and “communication link” at issue in this case do not impose meaningful limits on the challenged claims’ scope. This particular technology is employed only for the purposes of creating more efficient communication and data storage—basic functions of those components. Ex. 1001, col. 4, ll. 46-58 (stating that the advantages of the present invention are “to provide a reliable, efficient system . . . . that has low overhead and requires little . . . oversight. . . . includ[ing] an interface to the Internet . . . .[and] a central database”); see also col. 3, ll. 36-64 (describing the prior art automated systems). In other words, the claims here, even with the recitation of computing technology, are not part of a “technological advance” of any sort. See Bancorp, 687 F.3d at 1279.” slip op. at 14

  Patent outcomesUS 6,675,151 unpatentable
  Claim construction§ 101 eligibility
  Patents in suitUS 6,675,151

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.