- PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentablePTAB · Apr 24, 2025 · IPR2024-00209 · APJ Scott B Howard · IPR · Final written decision
Claims 1–11 and 13–19 are unpatentable as obvious over Ho and Aoki; claims 12 and 20 were not shown unpatentable over Jiau and Aoki or Jiau and Kim.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner argues for a slightly different level of ordinary skill in the art: “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems.” PO Resp. 2 (citing Ex. 2006 ¶ 29). Patent Owner further argues that the person having ordinary skill in the art “may have additional education that might substitute for some of the experience, and additional experience might substitute for some of the educational background.” Id. (citing Ex. 2006 ¶ 29). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. Id. at 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” Id. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner argues that the plain and ordinary meaning of “downloading” excludes “real-time fetching of data by a client from a server system.” PO Resp. 34; see also PO Sur-reply 16–17; Tr. 32:22–34:7. Because we need not expressly construe any claim terms, we do not construe any terms of the ’662 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“date of the ’662 patent, Ho is not a “printed publication” within the meaning of 35 U.S.C. § 311(b). PO Resp. 30–33; PO Sur-reply 15–16. The Federal Circuit has rejected this argument, holding that: a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–20 are unpatentable under 35 U.S.C. § 103(a) on the basis of Ho, which is a prior art printed publication, and either Aoki or Kim.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“A person having ordinary skill in the art would have combined Aoki’s teaching of using user-identification information as part of the request for an advertisement with Ho’s system, which also teaches a client device sending information to a server to request hot spot information, such as advertisements. See Ex. 1003 ¶¶ 103–107, 111, 114, 117. Because both Ho and Aoki are directed to improvements in game design and monetization from using advertisements (id. ¶ 106; Ex. 1004, 1:26–28; Ex. 1005 ¶¶ 6–8), a person having ordinary skill in the art would have looked at both Ho and Aoki and combined the relevant features with a reasonable expectation of success (Ex. 1003 ¶¶ 103, 106, 117). A person having ordinary skill in the art would have appreciated that using Aoki’s teaching of sending user-identification information with Ho, which includes sending information with a request for information relating to interactive information elements (hot spots), allows for targeted advertisements, which was a known advantage in advertising. Id. ¶ 117; Ex. 10089 ¶¶ 54–55 (describing advantages of targeted advertising).” slip op. at 26
Patent outcomesUS 9,427,662 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,427,662 - Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.Some claims unpatentablePTAB · Apr 5, 2022 · IPR2020-01597 · APJ Russell E Cass · IPR · Final written decision
Claims 1–5, 12, and 13 are unpatentable; claim 6 was not shown unpatentable because Young does not disclose claim 5’s flip-flop limitation.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). In our Institution Decision, we agreed with Patent Owner that the phrase “modules for implementing tasks, the module being reconfigurable” in independent claims 1 and 5 was not a “means-plus-function” limitation that must be construed under 35 U.S.C. § 112, paragraph 6. Inst. Dec. 15–18. We also construed the term “module” as “logic configured to perform a task that can receive and/or transmit communication signals.” Id. at 21. In doing so, we rejected Patent Owner’s argument that “‘reconfigurable modules” are not “logic that ‘may be programmed or reconfigured’ to implement tasks,” but rather “are circuits that have already been programmed to implement tasks and can then be updated.” Id. at 18–21 (quoting Prelim. Resp. 9). In its Patent Owner Response, Patent Owner included a footnote stating that it “maintains that this limitation should be construed to require that existing modules be updatable.” PO Resp. 12, n.1. Patent Owner, however, does not provide additional elaboration or set forth arguments explaining why the reasoning in our Institution Decision is in error. See id. (“For the remainder of this Petition, however, [Patent Owner] assumes that the Board’s broader construction is correct.”). Based on the complete record, we adhere to the interpretation set forth in our Institution Decision for the reasons discussed therein. See Inst. Dec. 18–21.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). In our Institution Decision, we agreed with Patent Owner that the phrase “modules for implementing tasks, the module being reconfigurable” in independent claims 1 and 5 was not a “means-plus-function” limitation that must be construed under 35 U.S.C. § 112, paragraph 6. Inst. Dec. 15–18. We also construed the term “module” as “logic configured to perform a task that can receive and/or transmit communication signals.” Id. at 21. In doing so, we rejected Patent Owner’s argument that “‘reconfigurable modules” are not “logic that ‘may be programmed or reconfigured’ to implement tasks,” but rather “are circuits that have already been programmed to implement tasks and can then be updated.” Id. at 18–21 (quoting Prelim. Resp. 9). In its Patent Owner Response, Patent Owner included a footnote stating that it “maintains that this limitation should be construed to require that existing modules be updatable.” PO Resp. 12, n.1. Patent Owner, however, does not provide additional elaboration or set forth arguments explaining why the reasoning in our Institution Decision is in error. See id. (“For the remainder of this Petition, however, [Patent Owner] assumes that the Board’s broader construction is correct.”). Based on the complete record, we adhere to the interpretation set forth in our Institution Decision for the reasons discussed therein. See Inst. Dec. 18–21.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Preliminary Response, Patent Owner stated that it did not object to Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 7. In our Institution Decision, we adopted Petitioner’s assessment of the level of skill in the art with the exception of the open-ended phrase “at least,” finding that this level of skill is consistent with the ’184 patent and the asserted prior art of record. Inst. Dec. 23. In its Response, Patent Owner states that it “does not object to the” level of skill in the art in the Institution Decision. PO Resp. 11–12 (citing Inst. Dec. 23); see also Ex. 2012 ¶ 57 (Dr. Brogioli’s testimony that he does “not object to the Board’s finding in the Institution Decision on the level of skill in the art.”). Based on the complete record, we adhere to the level of ordinary skill adopted in our Institution Decision. Inst. Dec. 23.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We do not agree with Patent Owner’s argument that Eggers is deficient because it “does not disclose the existence of reconfiguration data for the Shift Register and Output Connections modules or any means of generating such data.” PO Resp. 13. Claim 1 does not require “reconfiguration data” or a configuration memory, and thus Eggers need not expressly disclose such data or memory to anticipate. To the extent Patent Owner argues that configuration data is necessary for a reconfigurable module, the evidence indicates that one of ordinary skill would have understood that such data would be used in the modules of Eggers. In this regard, Dr. Nelson testifies that one of ordinary skill in the art “would understand that the AT6000 device is not sold ‘out-of-the-box’ with a shift register and output connections modules pre-configured” and that “Eggers necessarily had to reconfigure the AT6000 from its default state to implement these modules,” which would require reconfiguration data. Ex. 1033 ¶ 12. Indeed, Patent Owner acknowledges that the AT600 is necessarily loaded with configuration data to configure the shift register and output connections modules on startup. PO Sur-reply 3. We also do not agree with Patent Owner’s argument that the configuration data for the shift register and output connections modules is not “reconfiguration” data because “[t]he ’184 patent establishes that ‘reconfiguration’ refers to reprogramming after startup, not programming on startup.” PO Sur-reply 3. As noted above, claim 1 does not require “reconfiguration data;” it only requires “modules” that are “reconfigurable.” Ex. 1001, 10:20–21. We therefore need not enter into a debate about the precise definition of “reconfiguration data” because the evidence shows that Eggers discloses modules that are reconfigurable, as claim 1 requires. As discussed above, one of ordinary skill would have understood that Eggers’s shift register and output connections modules are “reconfigurable” because they are created with reconfigurable logic in the Atmel AT6000. Ex. 1002 ¶¶ 92–93. Consequently, Petitioner has shown by a preponderance of the evidence that Eggers discloses limitation 1[a].” slip op. at 21
Patent outcomesUS 7,224,184 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,224,184 - Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.Some claims unpatentablePTAB · Apr 1, 2022 · IPR2020-01531 · APJ John F Horvath · IPR · Final written decision
Claims 1–3, 7–9, 13–17, and 19 are unpatentable as anticipated by Xia; claims 12 and 18 were not shown unpatentable over Xia or Iwata.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the time of the invention as someone who would have had “the equivalent of a Bachelor’s degree in electrical engineering and four or more years of experience in analog circuit design.” Pet. 6 (citing Ex. 1003 ¶ 23). In our Institution Decision, we identified a person having ordinary skill in the art at the time of the invention as someone with “a Bachelor’s degree in electrical engineering, or its equivalent, and four years of experience in analog 1 Petitioner also relies upon the Declarations of Un-Ku Moon, Ph.D. (Exs. 1003, 1031) and Sylvia Hall-Ellis, Ph.D. (Ex. 1022). Patent Owner relies on the Declaration of Dr. Marwan Hassoun (Ex. 2008). we maintain here. See PO Resp. 8; Pet. Reply 2–28.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Owner, we maintain our preliminary construction of the connection limitation. Claims 1 and 8 require a programmable interconnect circuit coupled between an I/O port and a plurality of ADCs that enables a connection of the ADCs to the I/O port. Ex. 1001, 14:21–26, 14:51–53, 14:57–62. Figure 9 of the ’071 patent illustrates such “a programmable interconnect circuit.” Id. at 9:20–21, Fig. 9. It can be “implemented as an ADC interface, or more particularly, the routing network 704 or 804.” Id. at 9:22–24. In Figure 10, routing network 804 “enables the coupling of the analog input signal at input/output port 604 to each of 8 ADC circuits 602.” Id. at 10:3–8, Fig. 10. In Figure 11, routing network 804 together with sampler 1102 “enable[s] t[he] routing of a sample of the analog input signal periodically change the routing of the sampled signal to a different ADC.” Id.at 10:60–11:2, Fig. 11. Thus, the programmable interconnect circuit or routing network 804 enables both direct and continuous connections between the I/O port and ADC circuits as shown in Figure 10, and indirect and periodic connections as shown in Figure 11. Accordingly, for the reasons discussed above, we find the connection limitation has its plain and ordinary meaning, which includes enabling both a direct and continuous connection of the I/O port to the plurality of ADCs and an indirect and periodic connection.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner. First, as discussed above, claims 12 and 18 are directed to the embodiment of Figure 10 of the ’071 patent, while claims 13 and 19 are directed to the embodiment of Figure 11. The Specification makes this clear by using language similar to that in claims 12 and 18 to describe the Figure 10 embodiment, and using language similar to that in claims 13 and 19 to describe the Figure 11 embodiment. For example, the Specification contrasts “coupling the analog input signal to each analog-to-digital converter circuit of the plurality of analog-to-digital converter circuits” (the same language used in claim 18) with the “alternative[]” embodiment of “periodically coupling a sample of the analog input signal to an analog-to-digital converter circuit of the plurality of analog-to-digital converter circuits” (the same language used in claim 19). Ex. 1001, 2:50–59. Similarly, the Specification contrasts “rout[ing] the analog input signal to each of the ADC circuits 602 of a group of ADC circuits” (similar to the language of claim 12) as shown in Figure 10 with input signal to a selected ADC circuit 606” (similar to the language of claim 13) as shown in Figure 11. Id. at 10:56–66. Based on these disclosures, we find that one of ordinary skill in the art would have understood the language of claims 12 and 18 to require routing the analog input signal received at the input/output port to each analog-to-digital converter without the use of a sampler, as shown in the Figure 10 embodiment. The use of a sampler is covered by claims 13 and 19, which cover the alternative Figure 11 embodiment.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“E. Obviousness over Iwata and Hsueh Petitioner argues claim 2, which depends from claim 1, would have been obvious over the combination of Iwata and Hsueh. See Pet. 100–102. Patent Owner disagrees. See PO Resp. 53. As discussed in § II.C.4, supra, Petitioner has demonstrated by a preponderance of evidence that claim 2 is anticipated by Xia. Therefore, we need not consider whether Petitioner has also demonstrated that claim 2 would have been obvious over the combination of Iwata and Hsueh. See Beloit, 742 F.2d at 1423.” slip op. at 36
Patent outcomesUS 8,548,071 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,548,071 - Intel Corporation v. VLSI Technology LLCSome claims unpatentablePTAB · Jan 12, 2021 · IPR2019-01195 · APJ Minn Chung · IPR · Final written decision
Claims 13 and 14 are unpatentable as anticipated by Kim; claims 17, 18, and 20 were not shown unpatentable over Kim and Lee because the proposed combination was inadequately explained.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“’026 patent would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Pet. 16 (citing Ex. 1102 ¶ 49). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, preliminarily adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Inst. Dec. 15. Neither Patent Owner, in its Response, nor Dr. Annavaram, in his declaration, proposes a level of ordinary skill in the art. Instead, Patent Owner states that “Patent Owner applies Petitioner’s stated skill level for this response” (PO Resp. 26), and Dr. Annavaram similarly states that “[f]or the purpose of this declaration, I adopt Dr. Harris’ definition of a [person of ordinary skill in the art]” (Ex. 2009 ¶ 24). Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Based on the complete record, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Inst. Dec. 15; see Pet. 16 (citing Ex. 1102 ¶ 49).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“To the extent Patent Owner argues that these particularized selection clauses recited in different claims must have the same or similar meaning because they all use the word “selecting” (see PO Resp. 28–29), we disagree with Patent Owner. See IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray. Claim language must be construed in the claim in which it appears.” (emphasis added)). The selection clauses recited in these claims are plainly different on the face of the claims when considering the material differences in the claim language set forth above. According the same meaning to the limitations that recite “select . . . based on” indicators, “select . . . when” certain conditions are met, and “select . . . out of a group” of values would be improper because it would blur the material differences in the claim language recited expressly in the claims. Instead, we interpret the selection clauses recited in the challenged claims “in the context of the particular claim in which the disputed term appears” and “in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. In other words, we do not construe the single word “selecting” in isolation, but, rather, interpret the full selection clauses recited in the challenged claims in the context of the entire patent. Claim 13 recites “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator.” In our view, the plain meaning of this limitation is clear on the face of the claim—a value of a control signal is selected based on two indicators, the mode indicator and the leakage indicator.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Tr. 47:7–23. Because the output of Kim’s NAND gates will be different depending on the value of Kim’s memory cells C1–CN allowed to “pass through,” we agree with Petitioner that the value of Kim’s memory cells C1– CN (the claimed “leakage indicator”) “plays a role” in deciding what the output of Kim’s NAND gates (the claimed “value of the control signal”) will be. Moreover, Patent Owner acknowledged that the output of Kim’s NAND gate is determined based on the inputs to the NAND gates (i.e., the sleep signal input and the memory cell signal input). JUDGE CHUNG: But, knowing a little bit about how a NAND gate works, isn’t it the case that the input to the NAND gates, G1 through GN, with the input of the sleep signal and the C1 through CN signal, isn’t it the case that input to the NAND gate determines what the output is? MS. ZHONG: Okay. So any logic gate, the output will depend on the input. That’s for sure. Tr. 44:18–25; but see id. at 45:3–10 (stating that even if the “output is in control of the input, . . . that does not mean the selection is based on that input”). Thus, we find that Kim’s NAND gate (the claimed “control circuit”) operates to determine its output (the claimed “value of the control signal”) based on its input of the sleep signal (the claimed “mode indicator”) and the memory cell value input (the claimed “leakage indicator”). As discussed in Section III.B, the Specification indicates that “select[ing] the value of the control signal based on the mode indicator and on the leakage indicator” recited in claim 13 is synonymous to determining the value based on the recited indicators. See Ex. 1101, 4:4–11. Thus, the evidence of record shows that Kim teaches “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator,” as recited in claim 13.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s argument and evidence. First, although Petitioner proposes “[s]ubstituting Lee’s inputs of leakage current and temperature for generating a power gate control signal” (i.e., Lee’s “control signal (BIAS)”) for “Kim’s inputs of leakage current and other ‘stimuli’ for generating a power gate control signal” (Pet. 64 (citing Ex. 1102 ¶ 115)), neither Petitioner nor Dr. Harris explains adequately how they are proposing to “substitute” Kim’s control signal with Lee’s “control signal (BIAS).” For example, Figure A reproduced above does not show how Petitioner or Dr. Harris proposes to use Lee’s “control signal (BIAS)” in the proposed combination. Petitioner asserts that “[a]lthough Lee’s control signal is analog and Kim’s control signal is digital, it was well known to apply teachings in an analog domain to a digital domain, and conversions between analog and digital domains were easy to implement.” Pet. 66 (emphases added) (citing Ex. 1102 ¶ 121; Ex. 1115). Dr. Harris similarly states that Figures A and B show examples of obvious ways to use in Kim’s system Lee’s teaching of setting conductance of the array based on temperature. A POSA would have found both of these ways obvious. That Lee uses an analog control signal and Kim uses a digital control signal would have presented no obstacle to a POSA. . . . That is, converting analog circuit elements and signals to digital was well known long before the ’026 patent. Ex. 1102 ¶ 121 (emphases added) (citing (Ex. 1115) (“Analog-to-digital converters (ADC’s) are ubiquitous, critical components of software radio and other signal processing systems.”)). But Dr. Harris does not explain adequately how “to use in Kim’s system” the digitized BIAS signal of Lee. See id. The only additional input signal shown in Figure A compared to Figure 4 of Kim is the temperature line that has the value of 0 when the temperature is cold and the value of 1 when the temperature is hot. See Ex. 1102 ¶ 116 (Fig. A). There is no explanation of how the modified teaching of the BIAS signal of Lee (i.e., modified or converted to a digital signal) would have worked in the proposed combination of Figure A.” slip op. at 69
Patent outcomesUS 8,081,026 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,081,026 - Intel Corporation v. VLSI Technology LLCSome claims unpatentablePTAB · Feb 6, 2020 · IPR2018-01033 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 17 is anticipated by Bednar, and claims 1 and 17 are obvious over Bednar and Gunther; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“requesting institution of inter partes review of claims 1, 4–6, and 17–19 of U.S. Patent No. 8,004,922 B2 (Ex. 1001, “the ’922 patent”). VLSI Technology LLC (“Patent Owner”) filed a Preliminary Response (Paper 12). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims. Paper 17 (“Inst. Dec.”).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8–9; see Pet. 36 (citing Ex. 1002 ¶¶ 26–27).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 45
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“preponderance of the evidence, that (1) claim 17 is anticipated by Bednar, and (2) claims 1 and 17 would have been obvious over the combination of Bednar and Gunther. For the reasons discussed above, Petitioner has not demonstrated, by a preponderance of the evidence, that (1) claim 1 is anticipated by Bednar or (2) claims 4–6, 18, and 19 would have been obvious over the combination of Bednar, Gunther, and Willingham. The chart below summarizes our conclusions.” slip op. at 91
Patent outcomesUS 8,004,922 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,004,922 - Intel Corporation v. VLSI Technology LLCSome claims unpatentablePTAB · Feb 6, 2020 · IPR2018-01144 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 2, 7, and 8 are unpatentable as obvious over Bednar and Gunther; claim 3 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8; see Pet. 29 (citing Ex. 1102 ¶¶ 26–27).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“construction is erroneous. Accordingly, because the ’922 patent defines “power island,” we maintain and reaffirm that “power island” means a “group of components with similar power requirements.”” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“not to expressly construe “conversion controller” was erroneous or that an express construction is required to resolve any dispute between the parties. Accordingly, we maintain and reaffirm that because the construction of “conversion controller” does not resolve a controversy in the matter before us, we decline to construe it expressly.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 86
Patent outcomesUS 8,004,922 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,004,922 - Wabco Holdings Inc. / Laydon Composites Ltd. v. Transtex Composites Inc.Some claims unpatentablePTAB · Jan 10, 2020 · IPR2018-01319 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 5–11, and 15–19 are unpatentable as obvious over Layfield and Rinard; claims 2–4, 12–14, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Micklow does not explain how or why he proposes a different level of ordinary skill in the art as compared to the level proposed by Petitioner and preliminarily adopted in our Decision on Institution. See generally id. ¶¶ 28–31. Additionally, neither Patent Owner nor Dr. Micklow argues that the difference in the proposed level of ordinary skill in the art affects the outcome of this proceeding; Dr. Micklow, in fact, states the contrary—that his opinions are the same under either level of skill. See Ex. 2001 ¶ 31.7 Nothing in the full record is sufficient to persuade us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm our preliminary finding that the level of ordinary skill in the art at the time of the invention would have been “a bachelor’s degree in mechanics, aeronautics, materials, or a related field of study, or equivalent experience, and at least two years of experience in the development of components of vehicles, or an equivalent amount of relevant work or research experience.” Inst. Dec. 10–11; see Pet. 10.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer. that because thermoplastic material is more resilient than aluminum, we should adopt Petitioner’s argument. Pet. Reply 15–16 (citing Ex. 1058, 1– 12; Ex. 1010 ¶¶ 77–82). We must base our decision in this case on the arguments and evidence presented. As explained above, the record before us has contradictory evidence in the form of Dr. Micklow’s testimony that was not before the examiner. 16 Petitioner does not cite Exhibit 1018 in the Petition, but instead cites to Mr. Tres’s testimony regarding the exhibit. Id. Thus, from the video, it is unknown whether the skirt panel is attached to the trailer by one strut, multiple struts, or additional features. Second, Petitioner does not identify clearly how the tested system precisely corresponds to the teachings of Layfield. For example, Patent Owner raises a number of issues with the struts and panels in the video to which Petitioner provides either no response or an unconvincing response. For example, Patent Owner argues that each embodiment of Layfield uses trusses 36 to “interconnect each skirt panel and reinforce the panel assembly,” while it is asserted that the skirt panels in the video do not have trusses and are not interconnected. PO Resp. 26. Petitioner argues that the skirt panels in the video were made according to the teachings of Layfield and did include “integral vertical lateral side edges as the connecting mechanism for adjacent panels.” Pet. Reply 19 (citing Exs. 1018, 2003, 2005; Ex. 1004, 18:36–39; Ex. 1010 ¶¶ 63–64; Ex. 1055 ¶¶ 37–38). Other than stating that the skirt panels have connecting mechanisms, Petitioner does not address the fact that the panels are not interconnected according to the teachings of Layfield, as Patent Owner correctly pointed out. See generally id. at 19–21.” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“components (see, e.g., id. at 17:1–10), Layfield does not contain any express disclosure concerning the flexibility of the struts. Nor does Layfield include any discussion about the desirability of strut flexibility. The closest Layfield comes to discussing flexibility of the struts is by frequently referring to the struts as “support struts” (see, e.g., id. at 18:40) and discussing the use of a “bracket means,” which is on the struts, to “rigidly secure” the skirt panels to the trailer (id. at 6:48–49). Further, Layfield’s detailed discussion of the embodiment of support strut 58 shown in Figure 10, reproduced below, highlights the bracing and reinforcement features. Figure 10, above, shows the construction detail of a support strut 58. Ex. 1004, 15:45. Specifically, Layfield discloses that strut 58 includes “a pair of spaced-apart vertical members 160, which are braced by horizontal cross-members 162” and “reinforcing rectangular lattice 170.” Id. at 15:46– 54. Thus, we agree with Patent Owner’s argument that “Layfield does not expressly teach that the ‘support struts 58’ are ‘resilient.’” PO Resp. 42 (citing Ex. 2001 ¶¶ 148–149). We reiterate that Petitioner’s first challenge is based on anticipation. Thus, Petitioner must show that resilient struts are “either expressly or inherently described, in” Layfield. Verdegaal Bros. Inc., 814 F.2d at 631; see also PO Resp. 42. In its Reply Brief and at the oral hearing, Petitioner contends that its challenge is based on express disclosure, not inherency. See Pet. Reply 17–18; Tr. 9:21–11:4 (arguing that “this is not a case of inherency”). Petitioner contends one of ordinary skill in the art “would have understood, based upon Layfield’s express disclosures concerning the material, structure, and connection of the strut, that the Layfield strut is resilient and can sustain significant and substantial elastic deformation.” Pet. Reply 18 (citing REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 960–61 (Fed. Cir. 2016)). Whether we analyze Petitioner’s argument based on express disclosure or inherency, we reach the same result. To begin, although we agree with Petitioner that a prior art reference “need not satisfy an ipsissimis verbis test” (Pet. Reply 17 (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), there is no express statement that Layfield’s strut is resilient or otherwise exhibits a characteristic synonymous with resiliency. Additionally, we do not agree that Petitioner’s reliance on the thermoplastic materials, disclosed by Layfield for construction of the strut, establishes whether the strut is resilient and capable of elastic deformation. The evidence submitted by the parties is contradictory as to whether one of ordinary skill in the art would have understood Layfield’s struts to be resilient based on the material alone.15 Compare Ex. 1010 ¶¶ 74–82 15 Petitioner also points to a finding by the examiner, during prosecution of the ’017 patent application, that an aluminum strut was resilient, and argues (Mr. Tres opining as to the materials disclosed by Layfield), with Ex. 2001 ¶¶ 160–164 (Dr. Micklow contradicting Mr. Tres’s testimony regarding the materials disclosed by Layfield). Further, the evidence is contradictory as to whether one of ordinary skill in the art would have understood from the design of Layfield’s strut, specifically the taper design and mechanism by which the strut connects to the trailer I-beam, that the strut is resilient. Compare Ex. 1010 ¶¶ 83–90 (Mr. Tres’s testimony regarding the design and connection mechanism), with Ex. 2001 ¶¶ 165–175 (Dr. Micklow’s contradictory testimony). Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Additionally, Patent Owner similarly contends that the modifications proposed are redundant of Layfield’s “flexible lower panel 20,” which already “allow[s] flexing when impacting a road object.” PO Resp. 59 (citing Ex. 1004, 14:13–18); see PO Sur-reply 26–27. We disagree. Again, the proposed modifications here are to Layfield’s struts. In the context of Petitioner’s anticipation challenge, we agreed with Patent Owner and found that Petitioner had not established sufficiently on the record that Layfield’s struts were resilient. See supra, § II.D.a.i., ii. Therefore, the proposed modification addressed here, to make Layfield’s struts resilient, does not duplicate the objective of Layfield’s flexible lower panel 20 at least because (a) Layfield’s struts are a different structure than lower panel 20 and (b) modification of Layfield’s struts would provide greater impact protection to other panels aside from just lower panel 20. See Pet. Reply 26–27 (One of ordinary skill in the art “would have been motivated to do so because Rinard and Layfield both seek to provide fairing panels with ‘sufficient flexibility’ to bend when encountering objects.” (citing Ex. 1004, 12:67– 13:4; Ex. 1006, 10:43–50; Ex. 1055 ¶ 47)). We determine that Petitioner has shown that one of ordinary skill in the art would have had a reason with rational underpinning to look to other similar types of trailer components that are flexible to make further improvements to Layfield’s design. 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.”). Third, Patent Owner contends one of ordinary skill in the art “would not have a reasonable expectation of success at achieving the claimed technology by looking to the vertical supports of Rinard’s air scoops to modify the Layfield skirt panels 10 and support struts 58.” PO Resp. 61 (citing Ex. 2001 ¶¶ 237–240). Patent Owner asserts that because Layfield’s upper skirt panels are rigid and non-moving one of ordinary skill in the art “would not reasonably expect the hypothetical modified panels (with their reinforcing trusses 36) to move.” Id. Patent Owner also argues that Rinard teaches “an upper skirt panel that is rigid and non-moving” and so it is not reasonable to expect modifying Layfield as proposed would somehow cause Layfield’s fixed skirt panels to be able to move as claimed. PO Sur-reply 27–28 (citations omitted). We disagree for the same reasons discussed above—namely, we find Layfield’s upper skirt panels to be resilient. Therefore, one of ordinary skill in the art would have a reasonable expectation of success in achieving a resilient strut adapted as claimed by modifying Layfield’s strut in light of Rinard, for the reasons proposed by Petitioner. See Pet. Reply 27 (“Applying this solution to the Layfield skirt panel and struts would yield the predictable result of allowing the Layfield skirt panel 10 and struts 58 to absorb greater impacts without having to be repaired or replaced.” (citing Ex. 1021, 7–8, 11–12)).” slip op. at 42
Patent outcomesUS 8,449,017 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,449,017 - NVIDIA Corporation v. Polaris Innovations LimitedSome claims unpatentablePTAB · Nov 20, 2018 · IPR2017-01346 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1, 4, 8–12, 16, 18, 43, 45, and 48–51 are unpatentable; claims 2, 19, 20, 22, 26–30, and 44 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Tredennick, testifies that “[a] person of ordinary skill in the art as of the time of the ’344 patent (POSITA) would have had a Bachelor’s degree in Electrical Engineering and at least 2 years of experience working in the field of semiconductor logic design.” Ex. 1003 ¶ 13. Neither Patent Owner, nor its declarant, Dr. Przybylski, offers a different assessment of the level of ordinary skill in the art. See Ex. 2002 ¶ 38 (“I am applying the definition of the level of experience of a person of ordinary skill in the art that has been put forward by Dr. Tredennick in his declaration. I do not necessarily agree with the definition offered there, but I do not presently believe that the exact level of experience of a person of ordinary skill impacts my opinions offered herein.”). Based on the evidence of record, we adopt Dr. Tredennick’s statement of the level of ordinary skill in the art with the exception of the language “at least.” Thus, we determine that the skill level of a person of ordinary skill in the art would have been that of a person with a bachelor’s degree in electrical engineering and two years of experience working in the field of semiconductor logic design.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Thus, “data arrangement alteration” requires the alteration of the arrangement of data, not merely the alteration of data.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownOther
“Structure: first error coding path 120 and equivalents. See Ex. 1001, 3:27–34, 3:57–4:25, 5:53–64, Figs. 1A, 1E. Function: performing a data Claim 19: means for performing a data arrangement alteration arrangement alteration algorithm algorithm Structure: data arrangement alteration devices 122, 132, and 222 and equivalents. See id. at 3:27–34, 5:65–6:25, 6:42–65, 8:55–57, 10:34–45, Figs. 1–4. Dec. on Inst. 8–9.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Digital Subscriber Line (ADSL) Metallic Interface, and it bears a copyright date of 1999. Ex. 1004. Citing the Declaration of Jessica Coral Sheldon- Hess, Petitioner contends ADSL is prior art under 35 U.S.C. § 102(b). Pet. 2 (citing Ex. 1014, 4–5). Ms. Sheldon-Hess testifies that, based on ADSL’s Machine Readable Cataloging (MARC) record obtained from Illinois State Library, ADSL was available to the public as of 1999. Ex. 1014 ¶¶ 8–10. Patent Owner does not dispute the prior art status of ADSL. Petitioner’s evidence establishes that ADSL was publicly available as a printed publication more than one year before the U.S. filing date for the ’344 patent, which is March 11, 2008. See Ex. 1001, [22]. Based on this evidence, we determine that ADSL qualifies as a prior art printed publication under 35 U.S.C. § 102(b).” slip op. at 17
Patent outcomesUS 8,161,344 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,161,344 - EMC Corporation / Lenovo (United States) Inc. et al. v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Jun 20, 2018 · IPR2017-00439 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1, 3–6, 8, 9, 13, 15–18, 20, and 21 are unpatentable over Carter; claims 5 and 17 are also obvious over Carter and Pitzel.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner
“We agree with Patent Owner regarding the ordinary meaning of the term “respectively.” Specifically, we understand that the word “respectively” can be an adverb that means “for each separately or in turn, and in the order mentioned.” The use of “respectively” as an adverb in the English language requires parallelism. See Ex. 3002. In other words, there must be a direct one-to-one correspondence and specific referents must be individually identified before there can be a “parallel list” of attribute values applicable to each, in that order. The term “respectively” also can be an attributive adjective that means “concerning or appropriate to each of several individually.” Id. In the present case, the term “respectively” appears to modify “the selected distributed devices.” Because specific referents are not individually identified, we understand the term to act as an attributive adjective modifying each of several selected distributed devices. Although we agree with Patent Owner regarding the use of the term “respectively,” we do not understand its use to require “the selected distributed devices to cause each selected distributed device to separately appear to network-connected user devices as a dedicated NAS device.” We cannot construe individual terms in isolation. Rather, we must consider claims as a whole in view of the specification. Specifically, we must consider the implications of other terms recited in claims 1 and 13 (e.g., “location information”) and how the claims are supported by the disclosed embodiments.” slip op. at 11
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner contests Petitioner’s definition of a person of ordinary skill in the art, specifically arguing that “Petitioners’ proposed requirements especially with regard to work experience, are higher than can be reasonably supported.” PO Resp. 5. Patent Owner notes that Petitioners’ declarant, Dr. Kubiatowicz, testified on cross-examination that “somebody coming directly out of college, likely, would need a couple of extra years to understand this,” and that “a little bit of professional experience might help them -- would help them understand the details involved in this case.” Id. (citing Ex. 2002, 25:13–14; 26:2–5). Patent Owner’s declarant, Dr. Shenoy, testified that, “at the time of the ’827 patent, a person of ordinary skill in the art should have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” Ex. 2003 ¶ 19. According to Dr. Shenoy, “[l]ack of experience can be remedied by additional education or vice versa.” Id. Based on our review of the ’827 patent, the types of problems and solutions described in the ’827 patent and cited prior art, and the testimony of Dr. Kubiatowicz and Dr. Shenoy, we adopt and apply Patent Owner’s definition of a person of ordinary skill in the art, specifically that a person of ordinary skill in the art at the time of the claimed invention would have had “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” See id. We also determine that such a person would have been familiar with computer systems architecture and design, and would have been aware of design trends relating to distributed processing systems.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Despite Patent Owner’s arguments, we find that Carter’s policy element 290 (a software module) is configured to assess unused or under-utilized storage resources in selected distributed devices of the plurality of distributed devices. We understand policy element 290 to satisfy this limitation because Carter specifically discloses that policy element 290 “acts as a controller to determine the availability of resources, such as printer capabilities, hard-disk space, available RAM and other such resources.” Ex. 1140, 36:27–29 (emphases added). We credit the testimony of Dr. Kubiatowicz, who during his deposition stated, “I would say this policy controller certainly can evaluate the hard disk space on the local node, but could also potentially evaluate storage throughout the system by communicating with other nodes.” Ex. 2002, 86:13–16; see id. at 88:5–7; see also id. at 88:12–16 (“What I said was that this policy element is determining the availability of resources. So it’s assessing whether or not hard disk space of various sorts is available. So it’s availability, not just available.”); see id. at 88:18–89:18, 90:5–91:1. We further credit the testimony of Patent Owner’s declarant, Dr. Shenoy, who testified that Carter discloses “determin[ing] the free volume space available for allocation.” See Ex. 1144, 142:19–20 (referencing Ex. 1140, 19:14–17). Reading directly from Carter, Dr. Shenoy further testified that Carter discloses “request[ing] the total available space information and us[ing] this information to quickly determine whether to proceed with the allocation processing.” Id. at 142:14–17, 143:1617. In view of the explicit disclosure of Carter and the testimony of both declarants, we find that Carter’s controller performs an “assessment” in order to “determine the availability of resources.” Additionally, Carter states that policy controller 290 “can employ any of the suitable heuristics to direct the elements, such as the paging controller, disk directory manager, and other elements to dynamically distribute the available resources.” Ex. 1140, 36:29–37:2. Thus, we agree with Petitioner’s argument, as supported by the testimony of Dr. Kubiatowicz, that policy element 290 assesses the unused or underused storage resources when it determines the availability of such resources and uses some heuristics when distributing those resources that were assessed. See Pet 39 (citing Ex. 1102 ¶ 118). Accordingly, based on the entirety of the record before us, we find Petitioner has shown by a preponderance of the evidence that Carter discloses the “assessing” limitations of claims 1 and 13.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner fails to offer sufficient explanation as to why a person of ordinary skill in the art would have combined the teachings of Carter and Condor. Rather, Petitioner appears to argue that, based on the advantages described by Condor (Ex. 1017, 5), and using well-known techniques with unspecified predictable results, a person of ordinary skill in the art would have had sufficient reason to combine these disparate elements taught in the prior art references to render the challenged claims obvious. Pet. 61–66. Yet, other than Petitioner’s cursory assertion of “advantageously incorporat[ing] the central coordinator in Condor to provide a centralized mechanism to manage resource sharing” (Pet. 66), which cites equally cursory and unsupported testimony by Dr. Kubiatowicz (Ex. 1102 ¶ 199), Petitioner fails to identify what particular advantages or efficiencies would have prompted a person of ordinary skill in the art to combine Condor’s scheduler with Carter’s system. Furthermore, Dr. Kubiatowicz’s testimony regarding predictable results and obviousness to try are similarly lacking in elaboration and substantiation. See Ex. 1102 ¶¶ 200–201. Such conclusory statements and unspecific testimony without evidence on the record cannot satisfy the Petitioner’s burden of demonstrating obviousness. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); I/P Engine, Inc. v. AOL Inc., 576 F. App’x 982, 999 (Fed. Cir. 2014) (“The testimony of the Defendants’ expert amounts to a ‘mere conclusory statement’ that may not serve as a basis for finding the asserted claims obvious.”); see also InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (holding that expert’s testimony could not support a finding of obviousness where “testimony primarily consisted of conclusory references to [the expert’s] belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so”); see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Although Petitioner has not provided a sufficient rationale to combine in this asserted ground of unpatentability, Petitioner has otherwise demonstrated that claims 4, 6, 16, and 18 are unpatentable under 35 U.S.C. § 102(b) because they are anticipated by Carter. Petitioner, however, has not asserted claims 7 and 19 are unpatentable under any other ground in this proceeding. Therefore, we determine Petitioner has failed to establish by a preponderance of the evidence that claims 7 and 19 of the ’827 patent are unpatentable under 35 U.S.C. § 103(a) in view of Carter and Condor.” slip op. at 59
Patent outcomesUS 8,275,827 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR · GrahamPatents in suitUS 8,275,827 - Fredman Bros. Furniture Company, Inc. v. Bedgear, LLCSome claims unpatentablePTAB · Jun 12, 2018 · IPR2017-00350 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–11, 13, 15–22, 24, 25, and 27–34 are unpatentable; claim 23 was not shown unpatentable, because the Rasmussen anticipation challenge failed.
RulingsFinal written decision- BurdenFwd mixedMixed
“Accordingly, Petitioner has not persuaded us that claim 23 is” slip op. at 62
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Accordingly, Petitioner has not persuaded us that claim 23 is” slip op. at 62
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
Patent outcomesUS 8,887,332 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,887,332
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.