• Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Aug 19, 2015 · IPR2014-00631 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, and 15–23 under specified obviousness combinations.

  RulingsFinal written decision

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

    “Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundTerm construed board ownDecided for petitioner

    “[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. The statement on which Patent Owner relies is only part of a sentence; the full sentence reads as follows: In amended Claim 1, a trigger condition and associated threshold [are] selected by a user in a step prior to image capture, the image capture device then monitors a signal corresponding to the trigger condition so that the image capture device can automatically determine when an image should he captured without intervention by a user. Ex. 1015, 6 (emphasis added). The thrust of that sentence, as explained in the paragraph that follows it in the prosecution history, is that, in claim 1, “the timing of image capture[] is determined automatically by the image capture device without the involvement of the user.” Id. (emphasis added). The Beck reference is not distinguished by the applicant on the basis of how the threshold level is selected, but rather on how an image is captured “after a trigger condition and associated threshold ha[ve] been satisfied.” Id. As such, whether “a trigger condition and associated threshold” are selected by a user, or by the device itself, is not central to applicant’s argument distinguishing the Beck reference. Accordingly, the statement that “a trigger condition and associated threshold [are] selected by a user” does not evidence a clear intent to disavow claim scope, contrary to Patent Owner’s contention. For the reasons discussed above, we determine that the broadest slip op. at 24

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

    “In opposition, Patent Owner argues that Mishima fails to disclose entering a threshold level corresponding to the automatic trigger condition, because, as asserted by Dr. Bovik, “the user is not involved in setting the threshold in any way.” PO Resp. 31 (citing Ex. 2006 ¶ 72). As discussed above, however, the user does not need to be involved in setting the threshold level under our interpretation of “entering.” See supra Section II.A.4. That is, the term “entering” is not limited to acts of entering performed by a user, but encompasses acts of entering performed by the image capture device itself. See id. We determine that Petitioner has made a sufficient showing that Mishima discloses “entering a threshold level.” See PO Resp. 32. In particular, Petitioner has shown that, when the user sets Mishima’s device in the automatic mode and selects a reference image for comparison with a captured image or photographic subject, the device sets or selects a threshold level, such as Kn, P, or 40%, and, thus, satisfies the “entering a threshold level” requirement under our claim construction. See Pet. 13–15; Pet. Reply 13–15; Ex. 1002 ¶ 43; Ex. 1016 ¶¶ 13, 48–50; Ex. 1005 ¶ 40 (describing “setting a threshold value Kn” based on reference brightness value K0), ¶ 90 (setting or selecting “X < P” to determine a match, where P is a threshold value and X is the average square of differences between the part that is subject to recognition and the user-selected image pattern); ¶ 114 (describing setting a threshold level as “40%” of “the number of pixels that produce 1”). Moreover, we are not persuaded by Dr. Bovik’s testimony that “the user [in Mishima] is not involved in setting the threshold in any way.” See Ex. 2006 ¶ 72. Dr. Bovik does not address adequately Mishima’s disclosure that the user places the camera in the automatic imaging mode and selects a reference image6 for comparison with a captured image or photographic subject. See, e.g., Ex. 1005 ¶¶ 26, 37, 38, 83, 85, 87, 97, 98, 107, 108; see Pet. Reply 14 (citing Ex. 1005 ¶¶ 37, 83). Those acts satisfy “selecting an automatic image trigger condition.” See Pet. 14; Ex. 1002 ¶ 42. Dr. Bovik does not discuss whether those acts also satisfy “entering a threshold level corresponding to the automatic image trigger condition.” As such, Dr. Bovik’s analysis of Mishima is inconsistent with his” slip op. at 31

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

    “In opposition, Patent Owner argues that a person of skill in the art would not have combined the teachings of Mishima and Misawa because: (1) the devices of Mishima and Misawa are not similar as Petitioner contends and, in fact, operate in fundamentally different ways, (2) the reasons Petitioner provides for combining Mishima and Misawa are undermined by the teachings of those references, and (3) Misawa would discourage one of ordinary skill from combining it with Mishima to arrive at the inventions of claims 3-6. PO Resp. 34. Patent Owner argues, for example, that Misawa “has nothing to do with automatic image trigger conditions, thresholds, or automatic image capture.” Id. at 35 (citing Ex. 2006 ¶ 91). We are persuaded by Petitioner, however, that Patent Owner’s argument is largely unresponsive to Petitioner’s asserted reason to combine, which “does not rely on Misawa for automatic image capture, but for an example user interface for creating an image database.” See Pet. Reply 15. We also are persuaded that a person of ordinary skill “would have looked to Misawa’s user interface as an example of how to construct/control image feature database 80 used in Mishima’s camera.” Id. at 16 (citing Ex 1005 ¶¶ 80, 94); see Ex. 1016 ¶¶ 53–55. Patent Owner has not persuaded us that using Misawa’s selection/extraction process in Mishima’s camera would have been outside the skill in the art, or yielded an unpredictable result. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Further, we are not persuaded by Patent Owner’s argument that Misawa would have led one in a divergent direction and, thus, teaches away from the recited method. See PO Resp. 44–45 (citing Ex. 2006 ¶¶ 108–111). Patent Owner has not shown that Misawa criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009 (“A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed.”) (emphases added; citation omitted). Patent Owner makes essentially the same arguments for claims 4–6 as” slip op. at 37

  Patent outcomesUS 7,817,914 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,817,914
• Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Aug 19, 2015 · IPR2014-00632 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, 15–18, 22, and 23 as obvious over specified combinations.

  RulingsFinal written decision

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

    “Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “7 Patent Owner does not dispute Petitioner’s definition of the level of skill in the art as “(1) a Bachelor’s degree in electronics, computer science, or a related discipline and 2-3 years of camera electronics design and implementation experience, or (2) a Master’s degree or higher in a field such as electronics, computer science, or a related discipline with some concentration in imaging systems or image processing.” PO Resp. 5 n.2 (citing Ex. 1002 ¶¶ 16–17; Ex. 2006 ¶¶ 25–27). We adopt that definition for purposes of this Final Written Decision. 8 Patent Owner does not contend in the Patent Owner Response that any secondary considerations are present that would render the challenged claims patentable over the combined teachings of these references.” slip op. at 35

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “electronic device.” See Pet. Reply 2 (citing Ex. 1016 ¶¶ 9–16). We credit Dr. Stevenson’s testimony on this point: Data entry in electronic devices occurs through a variety of different mechanisms. For instance, in the context of electronic devices, including digital cameras, “entering” of data encompasses the electronic input of data into a component of the electronic device, such as a processor or memory. An electronic device’s operating instructions may cause the device to input data into a processor or memory. The entered data may be data from another memory (e.g., read-only memory (“ROM”)), a removable memory card, or a network.” slip op. at 19

  Patent outcomesUS 7,817,914 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,817,914
• Hulu, LLC v. Intertainer, Inc.All claims unpatentable
  PTAB · Jun 12, 2015 · CBM2014-00052 · APJ Jennifer M Meyer · CBM · Final written decision

  Claims 1–3, 5, 8, 10, 11, and 13–15 are unpatentable: claims 1–3, 5, 8, 10, 11, 13, and 14 as anticipated by Chen, and claim 15 as obvious over Chen and Hartanto.

  RulingsFinal written decision

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

    “in view of the Specification of the ’246 patent, requires the link program be limited to a single program. The claim language itself does not indicate a single program is required. Further, we see no language in the Specification, and Patent Owner has not pointed us to any such language, that indicates clearly or persuades us that the claims should be limited as such. The only” slip op. at 7

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

    “We are persuaded also that Chen’s disclosure of pausing the video and displaying the linked page on the computer, in response to clicking a hot-link, discloses the claimed “creating a link program adapted to both: (a) interrupt streaming of the video at the remote storage medium . . . and (b) access ancillary content . . . .” Pet. 16–17 (citing Ex. 1003, 4:5–10, 4:21–25, 4:28–40, 7:30–33; Ex. 1008 ¶ 16); see also Ex. 1003, 2:11–17 (“The [HyperVideo Authoring] tool allows one to prepare video clips with the hot-link information and then to link them with other types of media.”); id. at 5:55–6:26 (discussing “[c]reation of hot video content”). As discussed above, Patent Owner admitted, during prosecution of the ’884 application, “the fact that [a] computer performs the disclosed functions when a user interacts with an interface link necessarily requires that there is a link program.” Ex. 1002, 60, 83 (emphases added). We are persuaded additionally that Chen’s disclosure of encoding the embedded hyperlinks in the video (e.g., inserting the hot-link information into frames in the video), and identifying incoming data as a “hot” video such that a hot video decoder may display the “hot” video, including the video, audio, and hot-link information, corresponds to the claimed steps of “associating the link program with the video” and “providing the link program over the network.” Pet. 17–19 (citing Ex. 1003, 4:4–10, 5:56–6:39, 6:48–7:2; Ex. 1008 ¶ 18). We are persuaded further that Chen’s disclosure of transmitting a signal to the URL, from which the video is being streamed, to request delivery of a linked html file (containing instructions to display text or multimedia content), in response to a user clicking on a hot-link, corresponds to the claimed step of “receiving an indication of an interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:20–25; Ex. 1008 ¶ 19). We are persuaded also that Chen’s disclosure of having the URL, from which the video is being streamed, pause the video, in response to a user clicking on a hot-link, while the text or multimedia content is being displayed, corresponds to the claimed step of “interrupting, at the first site, the streaming of the video in response to receiving the indication of the interaction with the link program.” Pet. 19 (citing Ex. 1003, 4:28–34; Ex. 1008 ¶ 16). We are persuaded additionally that Chen’s disclosure of allowing the user to resume the video corresponds to the claimed step of “continuing the streaming of the video over the network from the point in time when the streaming of the video was interrupted.” Pet. 19 (citing Ex. 1003, 4:38–40; Ex. 1008 ¶ 20).” slip op. at 12

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

    “under 35 U.S.C. § 103 as obvious based on Chen and Hartanto. Pet. 28–30. Claim 15 recites that the network includes a wireless network. Ex. 1001, 10:43–44. Petitioner contends that use of wireless networks as a mechanism for the transmission of videos was well known in the art prior to the filing date of the ’246 patent, and provides declaration evidence that one of skill in the art would have understood the network for data transfer could be a wireless network. Pet. 28–29; Ex. 1008 ¶ 24. Petitioner cites Hartanto as an example of disclosure of wireless networks used with video transmission. Id. Petitioner further contends that the combination of using a wireless network connection as the network in Chen would have yielded a predictable result. Pet. 29–30; Ex. 1008 ¶ 24. We determine that Petitioner’s analysis and evidence is persuasive. Patent Owner does not argue specifically the patentability of claim 15 based on any limitations other than those discussed above with respect to independent claim 1. See PO Resp. 33. After reviewing the entire record, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 15 of the ’246 patent would have been obvious to a person of ordinary skill in the art7 over Chen and Hartanto.” slip op. at 18

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We note, as a general matter, that although the claims in the ’592 reexamination may be similar, they are not identical to the claims of the ’246 patent. Further, Patent Owner has not filed a Motion to Exclude Dr. Bove’s testimony. In any case, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. See Gnosis S.p.A. v. S. Alabama Med. Sci. Found., Case IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). In rendering our decision, we have assigned weight to the evidence as appropriate in view of the entire record before us.” slip op. at 17

  Patent outcomesUS 8,479,246 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,479,246
• Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentable
  PTAB · Mar 18, 2015 · IPR2013-00593 · APJ Stacey G White · IPR · Final written decision

  Claims 9, 10, and 14 are unpatentable as anticipated by Berman and Wolff; claim 13 is unpatentable as obvious over Berman.

  RulingsFinal written decision

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

    “from the Specification of the ’952 Patent, which defined “playlist 1528 . . . [as] a list of audio files and associated URL’s of where the audio files were retrieved from.” Ex. 1001, 21:6365. Petitioner persuasively argues that the Specification and the claims reflect that the playlist and associated URLs are separate items. Reply 5–6. For example, the Specification discusses a server having “a playlist for the Device 1110” and also “maintain[ing] a list of URL’s from which the device 1110 received audio files listed in the playlists.” Ex. 1001, 16:67–17:6; see also Reply 5–6 (citing Ex. 1001, 21:63–65, 21:45–46, 21:49, 21:51–52, Fig. 15) (pointing out examples in the Specification that discuss the playlist and URLs as separate items); Ex. 2012 ¶¶ 66–71, 75–76, 81–84 (explanation by Patent Owner’s declarant as to why a list of URLs is not a playlist). Thus, we are persuaded that URLs are not part of the playlist. Therefore, the broadest reasonable construction of playlist is “a list of audio files.”” slip op. at 8

  • Skill levelOther

    “a bachelor’s degree in computer science or electrical engineering, and at least one year of practical experience with networked multimedia.” Ex. 1002 ¶ 8. Patent Owner’s proposal is similar, requiring a person with “a bachelor’s degree in computer science or electrical engineering or its equivalent and 1–2 years of practical experience with media file sharing.” PO Resp. 9–10 (citing Ex. 2012 ¶¶ 26–29). We find this dispute between the parties to be of little value. An express definition of the level of ordinary skill is not required in all situations, as the level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Neither party has provided a sufficient explanation as to how their specific proposal regarding the level of ordinary skill (and in particular the importance of the inclusion or exclusion of “at least”) changes the analysis in this case. We find the level of ordinary skill in the art to be reflected in the cited references, and we determine that no express statement of the level of ordinary skill in the art is required.” slip op. at 11

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

    “Pet. 15–18. Specifically, Petitioner argues that Berman discloses a playback unit that receives a song list from the DUL server. Pet. 17 (citing Ex. 1012, Fig. 3 (step 308)); see also id. at 10:23–28 (describing song list packet sent to playback unit with a user ID “to confirm that the updated song list information was sent to and received by the correct playback unit”). Petitioner also asserts that the songs identified in the song list are stored on audio material server 104, and, thus, the songs are not stored on the playback unit. Id. at 18 (citing Ex. 1012, 4:5152). The playback unit receives URLs for songs on the song list from the audio material server. Id. (citing Ex. 1012, Fig. 3 (step 314), 7:22–54). Finally, Petitioner asserts that the playback unit obtains songs from the audio material server. Id. (citing Ex. 1012, Fig. 4 (step 412), 8:31–34). We agree with Petitioner’s arguments regarding the disclosures of Berman.” slip op. at 14

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

    “rendered obvious by the teachings of Berman. Pet. 34–35. Claim 13 depends from 9 and adds further limitations regarding the useage of web sites, which is not disclosed expressly by Berman. Petitioner asserts that it would have been obvious to one of ordinary skill in the art to use a web site as a remote source in place of Berman’s servers. Pet. 20–21. Dr. Bove supports Petitioner’s argument by testifying that “[i]t would have been well known to one of ordinary skill in the art in 2000 that music files could be provided by a Web server. As one example, the MP3.com music server site launched in 1997.” Ex. 1002 ¶ 19. We credit Dr. Bove’s testimony and find Petitioner’s arguments to be persuasive. Patent Owner does not proffer any additional arguments directed to the patentability of claim 13. PO Resp. 40. We determine that Petitioner has demonstrated by a preponderance of the evidence that dependent claim 13 would have been obvious over Berman.” slip op. at 16

  Patent outcomesUS 8,045,952 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,045,952
• Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentable
  PTAB · Mar 18, 2015 · IPR2013-00597 · APJ Peter P Chen · IPR · Final written decision

  Claims 2, 6, and 10–12 are unpatentable: Bi anticipates claims 2, 6, and 10–12; Gladwin anticipates claims 2, 6, 11, and 12; Berman renders claims 2, 6, 11, and 12 obvious.

  RulingsFinal written decision

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

    “[a] playlist is a list of a user’s favorite selections.” Ex. 1001, 1:33–34. Patent Owner quotes from the specification of the ’099 Patent: Playlists also facilitate the playing of a plurality of selections in a particular order. That is, the playlist may be compiled in an order in which the playing of selections therefrom is desired. The selections may then be automatically played sequentially from the playlist. Typically, selections may also be played randomly from a playlist. PO Resp. 10; Ex. 1001, 1:45–52 (emphasis added).2 As noted by Petitioner, this passage reflects that a playlist may have a particular order of selections (see Pet. Reply 6), but also expressly discloses that selections may be played randomly from a playlist. slip op. at 8

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

    “wireless handheld remote control which is associated with and separate from the media player device,” arguing that the term requires “a handheld remote control that can operate as an independent device relative to the media player that it control.” PO Resp. 14–16 (emphasis and grammatical error in original); see also Tr. 70:1–14 (“independent and separate would be synonyms.”). Petitioner argues that Patent Owner’s proposal is narrow and excludes “a standard remote control for a device,” Pet. Reply 8–9. We agree, as in addition to the Petitioner’s contentions, we note the terms “operate” and “independent” do not appear in the ’099 patent. 9 We decline to adopt Patent Owner’s proposed construction over the ordinary and customary meaning of the term.” slip op. at 9

  • Skill levelOther

    “year of practical experience with networked multimedia.” Ex. 1002 ¶ 8. Patent Owner’s proposal is similar, requiring “a person with a bachelor’s degree in computer science or electrical engineering and one year of practical experience with networked media.” PO Resp. 7. The parties dispute Petitioner’s use of the qualifying phrase “at least” in describing the level of education and work experience. While we disagree with Patent Owner’s argument that “at least” is “improper because it is open-ended” (PO Resp. 7–8),3 we determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, neither party has provided a sufficient explanation as to how their specific proposal regarding the level of ordinary skill (and in particular the importance of the inclusion or exclusion of “at least”) affects the analysis in this case. Therefore, we find the level of ordinary skill in the art to” slip op. at 11

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

    “B. Motion to Amend In its Motion to Amend, Patent Owner moves to cancel independent claim 1 and dependent claim 9. Paper 25. Petitioner’s Reply does not oppose the motion. Pet. Reply 1. We grant the motion to amend, and proceed to analyze the remaining five claims.” slip op. at 10

  Patent outcomesUS 8,230,099 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,230,099
• Baxter Healthcare Corp. / Apatech, Inc. et al. v. Millenium Biologix, LLCAll claims unpatentable
  PTAB · Mar 18, 2015 · IPR2013-00582 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1 and 8–13 are unpatentable as anticipated by Ruys ’93a; claim 6 is unpatentable as obvious over Ruys ’93a and Bioceramics.

  RulingsFinal written decision

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

    “The word “isolated” in claim 1 is used in accordance with its plain and ordinary meaning to those skilled in the art—separated from all other substances. See Ex. 1005, 4 (right-hand column, “1isolate,” definition “2”).12 The isolated compounds disclosed in the ’251 patent are stabilized calcium phosphates synthesized and isolated as calcium phosphate “phases” or as a calcium phosphate “phase.” Therefore, we determine that the broadest reasonable interpretation of “isolated . . . compound” in the context of the claimed invention, consistent with the ’251 Specification, is “a stabilized 11 Patent Owner does not contest our construction of “isolated . . . compound” in its Response to the Petition. PO Resp. 22–23. 12 “to separate (as a chemical compound) from all other substances: obtain pure or in a free state” single phase or multi-phase calcium phosphate compound separated from all other substances.”” slip op. at 10

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

    “do not describe interconnected microporosity as critical or necessary to the microporous structure of the claimed compound. Id. at 5:37–38 (“compound having a microporous morphology based on inter-connected particles”); 11:50–52 (“the surface morphology is that of an interconnected set of rounded particles with a high degree of porosity”); 13:61–64 (“The ceramic comprises rounded, inter-connected particles . . . with a large degree of localized porosity.”); 22:3–6 (“A characteristic microporous morphology that arises from the agglomeration of particles . . . and the sintering of the material to produce a network of interconnected particles.”); Ex. 1134 ¶ 146. Patent Owner does not explain how interconnected microporosity results necessarily from interconnected particles. Interconnected microporosity may be preferred for supporting percolation of physiological fluids and bone cell activity,14 but interconnected microporosity is neither recited in claim 1 nor required for a functional biomaterial. As established by Dr. Mikos’s testimony and Dr. Ong’s testimony, dense HA (without interconnected microporosity) is suitable for implantation at load bearing sites in patients. Ex. 1003 ¶¶ 68, 69; Ex. 1134 ¶ 149 (citing Dr. Ong’s deposition testimony, Ex. 1133, 150:18–151:1). Therefore, we decline to read “interconnected microporosity” into the construction of “microporous structure.”” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “’93a must inherently disclose “interconnected microporosity” in order to satisfy the wherein clause recitation of “a microporous structure” in claim 1 of the ’251 patent. See section II A.2. above. Further, there is no dispute that Ruys ’93a discloses a silicon-substituted CaP compound having a porous structure, graphically demonstrated by the “apparent porosity” curve in Figure 2 of Ruys ’93a. Ex. 1011, 4 (left column); Pet. 44 (citing Ex. 1003 ¶¶ 388–391); Pet. Reply (citing Ex. 1003 ¶ 631; Ex. 2026 ¶¶ 38–39; Ex. 1133, 59:14–18, 242:12–15). The silicon-substituted CaP compound analyzed in Ruys ’93a demonstrates an apparent porosity as high as 50% of the material tested. Ex. 1011, 4 (Fig. 2); Tr. 20:7–15. Petitioner and Patent Owner both recognize, however, that Ruys ’93a does not report pore size. Pet. Reply 4; Tr. 52:22–24. Therefore, the dispute boils down to whether the porous structure of the silicon-substituted CaP compound disclosed in Ruys ’93a is inherently “microporous,” i.e. whether the method disclosed in Ruys ’93a would necessarily result in “pore sizes of about 2 microns or less in diameter,” in accordance with our claim construction. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)(“the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference’”(citation omitted)).” slip op. at 30

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

    “2. Analysis Petitioner acknowledges Ruys ’93a does not teach the formation of a macroporous, open-cell structure, but Petitioner argues that formation of such a structure using Ruys ’93a’s silicon-substituted CaP material would have been an “obvious design choice” for one skilled in the art in view of the Bioceramics reference. Pet. 45 (citing Ex. 1003 ¶ 683). Petitioner, relying on the Declaration of Dr. Mikos, asserts that methods of making a biomaterial compound having a macroporous structure were conventional and well known. Id. at 48 (citing Ex. 1003 ¶¶ 147–164, 690); Tr. 34:14–20. Petitioner notes that Bioceramics was not considered during examination of the application resulting in the ’251 patent. Id. at 46 (citing Ex. 1003 ¶ 523). Petitioner emphasizes the Bioceramics disclosure that “[a]n ideal cancellous bone graft substitute would mimic osteon-evacuated cancellous bone and have a thin lattice interconnected by pores of 500–600 µm” (Ex. 1021, 110) and that “[p]orosity and interconnectivity are key determinants of amount and type of ingrowth” of CaP bone implant material (id. at 116–17). Pet. 46–47 (citing Ex. 1003 ¶¶ 155, 528–530, 685–87). Petitioner asserts that one of ordinary skill in the art would have been motivated by the teachings of Bioceramics to form the silicon-substituted CaP compound disclosed in Ruys ’93a into a macroporous open cell structure with interconnected voids having pore sizes within the claimed range of 50 to 1000 microns. Id. at 47– 48 (citing Ex. 1003 ¶¶ 689–90). Patent Owner argues that, even though techniques for forming CaP compounds into a macroporous structure were well known prior to the ’251 patent’s August 1996 priority date, there was no prior publication of forming elementally-substituted CaP compounds into a macroporous structure. PO Resp. 36–37. Patent Owner further argues Petitioner has failed to prove one of ordinary skill in the art would have had a reasonable expectation of success in forming the silicon-substituted CaP powder disclosed in Ruys ’93a into the macroporous structure recited in claim 6. Id. at 37–39. Patent Owner further relies on asserted secondary considerations in support of Patent Owner’s argument for the nonobviousness of claim 6. Id. at 27–36, 40–54. Dr. Ong agreed with Dr. Mikos that interconnected macroporosity was known to be “critical” to vascularization, bone cell differentiation, and bone implantation, as stated in the 1993 Bioceramics textbook. Pet. Reply 9 (citing Ex. 1133, 159:16–160:3). Figure 4 in chapter 10 of Bioceramics illustrates an “[i]dealized microstructure for cancellous bone regeneration” having “a thin lattice interconnected by pores of 500–600 [microns]” in diameter. Id.; Ex. 1021, 110–111. Bioceramics, therefore, expressly discloses the claim 6 recitation of a “macroporous structure” of “interconnected voids having a pore size of approximately 50 to 1000 microns,” and Bioceramics provides sound physiological reasons for forming a CaP biomaterial compound into a macroporous structure.” slip op. at 37

  Patent outcomesUS RE41,251 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
• Blackberry Corporation v. NXP B.V.All claims unpatentable
  PTAB · Sep 19, 2014 · IPR2013-00232 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–4 are unpatentable: anticipated by Ueno and obvious over Chesebro and Rostoker for claims 1–2, and over Chesebro, Rostoker, and Nowak for claims 3–4.

  RulingsFinal written decision

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

    “1. “pattern density for the surface of the semiconductor wafer” “[A] claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). The ’697 patent uses lexicography to define the portion of the claim limitation that recites a “pattern density for the surface of the semiconductor wafer” as: “The pattern density of topography is defined as the ratio of the overall surface area of raised areas on a wafer surface to the total surface area of the wafer.” Ex. 1001, 4:60–63. This definition is consistent with the repeated references in the ’697 patent to wafer surface topography as having raised areas, the combined surface area of which is a ratio or percentage of the total surface area of the wafer. Id. at Abstract, 3:34–38, 57–61, 4:54–63, 6:26–40. Therefore, we adopt the definition recited above for the portion of the claim limitation reciting a “pattern density for the surface of the semiconductor wafer.” See PO Resp. 16.” slip op. at 8

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

    “(Merriam-Webster Dictionary Online, http://www.merriam-webster.com/dictionary/standard (last visited September 4, 2014)). The ’697 patent does not describe how to determine a “standardized” pattern density (Tr. 20), but it does describe “commonizing” pattern density to reduce variation in pattern density across the surface of a single wafer layer, from layer to layer within a wafer, or from IC product to IC product on different wafers, to improve CMP removal rate consistency. E.g., Ex. 1001, 3:13–18 (“[D]ummy raised areas . . . commonize the pattern density of topography from layer to layer of an integrated circuit, as well as from product to product.”) (emphasis added), 3:23–29 (“The overall surface area of the raised areas . . . typically varies from layer to layer. In order to commonize the pattern density of topography from layer to layer of an integrated circuit and from product to product, dummy raised areas are added to the same layers on which active conductive traces are situated.”) (emphasis added), 7:39–42 (“It should be clear that dummy raised lines may be added to a single layer of a wafer in order to achieve a desired pattern density of topography on that layer alone.”). In the context of the entire ’697 patent disclosure, “commonizing” pattern density refers to reducing variation in pattern density (see Ex. 1010 (Decl. of Ron Maltiel) ¶ 17), or, similarly, increasing the commonality of pattern density (see Ex. 2006 (Decl. of Dr. Bruce Smith) ¶ 15 (citing Ex. 1001, 1:1721)), on one or more surface layers of one or more semiconductor wafers to be polished. The claimed method step permits flexibility in how to reduce pattern density variation in order to accommodate different concentrations of raised surface areas (Ex. 1001, 2:4–9, 3:23–25, 5:26–29), different fabrication processing requirements (id. at 2:51–61, 5:1–5, 6:61–7:18), and various device requirements and operating conditions. A person skilled in the art would understand, in particular, that the claim phrase in question “does not refer to a single specific pattern density value that is used for all workpieces undergoing CMP.” Ex. 2006 ¶ 85. For example, the ’697 patent discloses a standard that is flexible enough to determine different pattern densities for different surface layers of a wafer. Ex. 1001, 5:34–39; PO Resp. 17; Pet. Reply 3–4; Ex. 1021, 7; Ex. 1022, 6–7 (¶¶ 56–57); Tr. 29. It is also flexible enough to determine a pattern density for a single surface layer of a wafer (Ex. 1001, 7:39–42; Pet. Reply 2–4; Ex. 1021, 7; Ex. 1022, 5 (¶ 55)), which reduces pattern density variation across the wafer surface in comparison to the wafer surface without any dummy raised areas in the gaps between active conductive traces. See Ex. 1001, 7:39–42, Figs. 3A–C, 4a–e; PO Resp. 4; Ex. 2006 ¶¶ 38, 39, 98, 101, 115; Tr. 6, 8. We conclude that the claimed method step incorporates a flexible standard for reducing variation in pattern density when determining the surface area ratio of active conductive traces and dummy raised areas for one or more surface layers on one or more wafers to be polished.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We agree with Petitioner’s expert, Mr. Maltiel, that by combining an original IC design with a dummy fill pattern at each layer, particularly a fill pattern having the same pattern density as that of the densest part of the original IC design, Chesebro teaches a reduction in the variation in that layer’s pattern density. See Ex. 1010 ¶ 61. We also credit Mr. Maltiel’s opinion that a person of skill in the art would have recognized that Chesebro’s process steps “describe a simultaneous filling of this multi-level structure, which would be most easily and beneficially executed by using the same fill pattern for every level in the entire structure” as a matter of prudent cost and process efficiency. See Ex. 1024 ¶ 28. Thus, we are persuaded that Chesebro teaches a process for using the same fill pattern on each layer of a multi-layer wafer, thereby reducing pattern density variation between multiple layers. See Ex. 1010 ¶ 61. Chesebro teaches one of skill in the art to determine pattern density “as a ratio of the overall surface area of raised areas on the wafer surface to the total surface area of the wafer,” by describing a percentage, e.g., 25%, for the raised areas-not-to-fill and the raised areas-to-fill on each wafer surface layer of the IC to be fabricated. Ex. 1004, 1:52–56, 5:27–40. The raised areas of the selected pattern density in Chesebro are determined so as to reduce variation across the wafer surface, with the effect of improving CMP polishing. Id. at 1:62–2:6, 2:29–33; Ex. 1010 ¶ 65. To the extent one of ordinary skill in the art might have required more detail regarding the CMP process, Rostoker describes CMP in detail. E.g., Ex. 1006, 1:43–50, 1:56–59, 5:32–52, Fig. 1. We also credit Mr. Maltiel’s opinion that a person of ordinary skill in the art “would have been motivated to use Chesebro’s addition of dummy structures to reduce variation and improve wafer planarization of deposited layers using the CMP process described in Rostoker.” Ex. 1010 ¶ 66 (referring to ¶¶ 36–39). With regard to Patent Owner’s argument that Rostoker’s use of a “stop” structure would have led one of skill in the art away from the process claimed in the ’697 patent (PO Resp. 28–29), we determine, as we did above with the challenge based on Ueno, that the use of a stop structure and raised dummy areas in the gaps between active wiring are not mutually exclusive or inconsistent. See Ex. 1024 ¶¶ 25–26 (citing Ex. 1006, 5:58–6:42; Ex. 1003 ¶ 4). Therefore, we are persuaded by Petitioner’s evidence and” slip op. at 26

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

    “construction, shows an “arrangement of active conductive traces [212, 214, and 216] and dummy raised areas [218] on a surface of a semiconductor wafer.” Ueno Figure 1(c) (above right) also shows an “arrangement of active conductive traces [13A] and dummy raised areas [13B] on a surface of a semiconductor wafer.” Both figures show a “uniform” arrangement of raised areas on the semiconductor surface. Figure 2 of Ueno shows a uniform pattern of rectangular dummy raised areas regularly spaced apart to fill gaps between active wiring lines. Ex. 1003, Fig. 2; see also Ex. 1024 ¶ 21. Ueno’s method also teaches one of skill in the art “to reduce variation in pattern density with respect to one or more surface layers on one or more wafers to be polished,” in much the same way as taught by the ’697 patent. As explained above, Ueno adds dummy raised areas between active conductive lines according to a set of gap width, spacing, and line width dimensions to increase the pattern density of the raised surface area, thereby reducing variation of pattern density and the potential for “dishing” across the surface of the wafer. Ex.1003 ¶¶ 6, 8–10, 12, 17, Figs. 1c, 3c, 4c, 5; Pet. 17; Ex. 1010 ¶¶ 44–45; Pet. Reply 6–7; Ex. 1024 ¶¶ 17, 20–21. Ueno’s method and rationale for increasing pattern density on a wafer surface is comparable to the ’697 patent’s “commonized” pattern density that reduces variation across a wafer surface. Ex. 1001, 7:39–42, Figs. 3A–C, 4a–e; Pet. 17; Ex. 1010 ¶¶ 44–45; PO Resp. 4; Ex. 2006 ¶¶ 38, 39, 98, 101, 115; Pet. Reply 2. Patent Owner argues that Ueno does not disclose determining a “standardized” pattern density because Ueno uses a plasma nitride “stopper” layer to control CMP planarization, rather than a method where the same depth of material is removed from every layer of every product during CMP, using a fixed set of CMP process parameters. PO Resp. 18–24 (citing Ex. 2006 ¶¶ 92–97). Patent Owner’s argument rests squarely on its proposed claim construction, which we have declined to adopt. The claim phrase at issue does not require a fixed set of CMP process parameters to remove the same depth of material from every wafer surface layer to be polished, as argued by Patent Owner. PO Resp. 19 (citing Ex. 2006 ¶¶ 94, 96). 6” slip op. at 18

  Patent outcomesUS 5,639,697 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,639,697

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.