- Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentablePTAB · Jan 6, 2025 · IPR2023-01169 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1, 2, and 4–20 are unpatentable over Thomas; claim 3 is not shown unpatentable. Substitute claims 22–36 are unpatentable, and substitute claim 21 is not reached.
RulingsFinal written decision- BurdenFwd mixedMixed
“g) Conclusion—Claim 1 Based on the arguments and evidence of record, we determine that” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“g) Conclusion—Claim 1 Based on the arguments and evidence of record, we determine that” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“with the computer program 110.” Ex. 1005, 3:54–55. Thomas describes that (1) the “collected data is then stored in the database 130,” (2) the collected “data is stored in a data structure, generally referred to as a user’s profile,” and (3) the collected “data is logically linked to an event, or situation, that initiated the user’s input.” Id. at 3:56–61. Thomas describes creating or establishing a user profile by simulator 120 recording “the user’s decision/input” and storing “the user’s input in the field or sub-profile associated with the particular situation and/or event.” Id. at 4:67–5:5, Fig. 6. Patent Owner does not dispute Petitioner’s showing for element [1.3]. Also, contrary to Patent Owner’s arguments, we must consider what Thomas discloses rather than whether Thomas uses the exact claim term “instruction sets.” Cf. Gleave, 560 F.3d at 1334 (a reference does not have to satisfy an ipsis verbis test to disclose a claimed element). For these reasons, we are not persuaded by Patent Owner’s argument that Thomas does not “mention instruction sets” or “anything related to an instruction set.” PO Resp. 36–37; PO Sur-reply 17.” slip op. at 42
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“C. Indefiniteness Petitioner argues that proposed substitute claims 22–36 are indefinite.” slip op. at 72
Patent outcomesUS 10,607,134 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 10,607,134 - Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentablePTAB · Jan 3, 2025 · IPR2023-01172 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–9, 11–14, 16–24, 26, 28, 29, and 31–34 are unpatentable as anticipated by Grotmol; claim 15 was not shown unpatentable because Grotmol does not disclose its required sequence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning.” Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner “adopts” Petitioner’s description of the level of ordinary skill in the art. PO Resp. 4–5. We also adopt Petitioner’s description for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties appear to agree that the term “connection” refers to a relationship, but dispute whether it includes a link. PO Resp. 7; Pet. Reply 23. We need not resolve this claim construction issue in order to resolve the parties’ disputes about the asserted ground of unpatentability. Specifically, as discussed below, even if we assume for the purposes of this Decision that the term “connection” means a “relationship that includes a link,” the asserted prior art still discloses the disputed claim limitation. See Section II.D.23.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that claim 15 requires modifying the first instruction set before determining the modified first instruction set based on an at least partial match between the new digital picture and the first digital picture. Claim 15 recites “modifying: the first one or more instruction sets” and “determining the modified the first one or more instruction sets . . . based on the at least partial match between the new one or more digital pictures and the first one or more digital pictures.” Ex. 1001, 162:65–163:15 (emphasis added). The phrase “the modified . . . instruction sets” in the determining limitation indicates an order because it refers back to the instruction sets modified in the modifying limitation. Id. Further, the phrase “based on the at least partial match” indicates that a partial match between the new picture and the first picture returns the modified first instruction set. Id. In order for a partial match to return the modified first instruction set, it is logical that the first instruction set previously was modified and correlated to the first picture. Id. Thus, claim 15 indicates that the modifying limitation is performed before the determining limitation. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (“First, we look to the claim language to determine if, as a matter of logic or grammar, [the recited steps] must be performed in the order written.”).” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“3. Means-plus-function limitations Petitioner contends that the corresponding structure for the “means for receiving or generating a first one or more digital pictures,” the “means for receiving or generating a first one or more instruction sets for operating the first device,” and the “means for learning the first one or more digital pictures correlated with the first one or more instruction sets for operating the first device” in claim 34 is “one or more processor circuits.” Pet. 4 (citing Ex. 1001, 16:8–60). Patent Owner does not dispute Petitioner’s proposed construction. PO Resp. 11. We adopt Petitioner’s proposed construction for purposes of this Decision. D. Anticipation of Claims 1–9, 11–24, 26, 28, 29, and 31–34 by Grotmol Petitioner argues that claims 1–9, 11–24, 26, 28, 29, and 31–34 are” slip op. at 10
Patent outcomesUS 11,055,583 mixedClaim construction§ 102 anticipationPatents in suitUS 11,055,583 - Google LLC v. Nobots LLCSome claims unpatentablePTAB · Nov 29, 2023 · IPR2022-00940 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–17 and 20 are unpatentable; claims 18 and 19 were not shown unpatentable, because the asserted grounds failed to establish the required limitations for those claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’008 patent “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. PO Resp. 2. We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In considering Patent Owner’s explanation, and upon further reflection, we agree with Patent Owner’s reading of the pertinent sentence. In that regard, consistent with the remainder of the Specification of the ’008 patent, it follows that the noted sentence does not alter the contours of “acquired” data to also encompass “passive” data where that premise is entirely absent from other portions of the Specification. Rather, as Patent Owner explains, the sentence is consistent with the understanding that it is “active data” that is connected to the word “acquired” and “passive data” that is connected to the word “available.” See, e.g., id. Patent Owner’s explanation alleviates the ambiguity that was postulated in the Institution Decision. We have considered Petitioner’s views to the contrary (see, e.g., Pet. Reply 21–25) but find them unavailing. In particular, Petitioner does not reconcile its position that, although acknowledging that “acquired data” is defined in the ’008 patent, the term “acquiring” is not so defined and should be regarded as an “individual word” whose meaning is somehow entirely unconnected to “acquired.” See, e.g., Pet. Reply 21. We note, as we did in the Institution Decision, that the ’008 patent states that “acquired data” and “its equivalents and verb forms” is “a type of active data.” See Inst. Dec. 30 (citing Ex. 1001, 3:25–32). We are not persuaded by Petitioner’s view (see, identifiable as a verb form of “acquired.” See PO Sur-reply 8. We determine that, in the context of the ’008 patent, it clearly is. Having considered the competing views of Petitioner and Patent Owner, we conclude that Patent Owner’s construction of the term “acquiring interest data” is consistent with, and supported by, the Specification of the ’008 patent. In that regard, we conclude that, as is advanced by Patent Owner, “acquiring interest data” must encompass the retrieval of some active data.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1–3 and 6–17 are found in Willner. Pet. 9–26. During trial, Patent Owner presented no arguments challenging Petitioner’s proposed ground of unpatentability of claims 1–3 and 6–17 based on Willner. During oral argument, upon questioning, counsel for Patent Owner expressed that “We did not present any arguments on Claims 1 to 3, 6 to 17 on Ground 1.” Tr. 30:3–4. We determine that Petitioner, via its Petition, has established adequately where all the features of claims 1–3 and 6–17 are present in Willner. See Pet. 9–26. Given that determination, and in the absence of any argument during trial challenging Petitioner’s ground of unpatentability based on Willner as to those claims, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–3 and 6–17 are unpatentable under 35 U.S.C. § 102 based on Willner.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Here, we conclude that: (1) the parties’ recognized level of ordinary skill in the art (see Pet. 4; PO Resp. 2); (2) the knowledge of a skilled artisan as set forth by record evidence, including the teachings of Willner and Kitts; and (3) the nature of the problem addressed in both of those references, i.e., click fraud detection, all support a determination that a skilled artisan would have had adequate reasons to combine Willner and Kitts, and would have had a reasonable expectation in doing so. To that end, we find persuasive Petitioner’s arguments in the Petition as to the proposed reasoning to combine Willner and Kitts, and also credit Dr. Lopresti’s supporting testimony. See Pet. 28–29; Ex. 1003 ¶ 118. We are mindful of the contrasting testimony referenced by Patent Owner’s declarant, Dr. Russ. See, e.g., PO Resp. 38 (citing Ex. 2011 ¶¶ 107–110). Dr. Russ testifies that, in his view, there are “practical” and “technical” “considerations” in combining Willner and Kitts that a “POSA would have had to consider in determining whether a reasonable expectation of success exists, none of which are addressed or discussed in the Petition.” See Ex. 2011 ¶¶ 107–110. The example considerations listed by Dr. Russ are reproduced below: 1. How Kitts’ passive data could be collected and stored in conjunction with the mouse vector data already being collected by Willner; 2. How to collectively analyze fundamentally different types of data—Willner’s mouse vector data on one hand, and Kitts’ passive data on the other; 3. How to generate a useful confidence score that is more accurate than the scores already generated by Willner, again taking into consideration that passive data is a fundamentally different type of data than active data; assessment using the complex statistical model of Kitts; and 5. To what extent additional computer hardware would be necessary to enable the combined system to effectively operate and whether such hardware could be reasonably implemented, taking into consideration both cost and feasibility. Ex. 2011 ¶ 108. Those considerations are generally directed to collection and use of” slip op. at 36
Patent outcomesUS 9,595,008 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,595,008 - Ericsson Inc. v. Koninklijke KPN N.V.Some claims unpatentablePTAB · Oct 4, 2023 · IPR2022-00557 · APJ Kevin F Turner · IPR · Final written decision
Claims 1, 10–12, 21, 22, 24, and 25 are unpatentable as obvious; claims 2, 3, 6, and 8 were not shown unpatentable; the contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art at the time of the invention “would be a person with a B.S. degree in electrical engineering, computer engineering, or equivalent training or job experience, with two years of experience in computer networking technology, or a Master’s degree in electrical engineering, computer engineering, or other equivalent degree.” Pet. 13 (citing Ex. 1003 ¶ 47). Patent Owner indicates that it does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. PO Resp. 14. We find 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, we continue to adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“associated sessions” With respect to the limitation “associated sessions,” Patent Owner asserted that the ’669 Patent defines those sessions as those that “should not be managed independent from each another,” and continues to assert the same in its Response. PO Resp. 14–15 (quoting Ex. 1001, 7:37–38). Based on the recitations of the Specification, we construe “associated sessions” as “sessions that should not be managed independent from each other,” as proffered by Patent Owner. Ex. 1001, 7:37–38. slip op. at 8
- Prior constructionTerm construed board ownDecided for petitioner
“Patent Owner asserts that the United States District Court for the Eastern District of Texas rejected Petitioner’s proposed construction in the District Court Case, and following briefing and oral argument in that proceeding, the District Court concluded that “composition session” means “a signaling session that is separate from the associated sessions and that is for facilitating management of the associated sessions.” PO Resp. 16. Having reviewed the District Court’s determination, we do not discern a significant difference in scope between it and Petitioner’s formulation, and we, thus, adopt its construction of “composition session” in the analysis below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As such, we continue to determine that Petitioner has sufficiently established that an ordinarily skilled artisan would have had a rationale to combine the teachings of Foti with RFC 3261, RFC 4566, RFC 2326, Wright, and Lloyd, and would have had a reasonable expectation of success in achieving that combination, as we determined in the Institution Decision. See Inst. Dec. 17–18. We continue to be persuaded that one of ordinary skill in the art would have consulted and utilized disclosures in the RFC references to understand and implement the protocols disclosed by Foti. We are further persuaded by Petitioner’s arguments that such skilled artisans would have had a rationale to combine the teachings of Wright and Lloyd with those of Foti for the reasons provided. Petitioner has asserted that each of the supporting references would have been used by persons of ordinary skill in the art to modify or enhance the system described in Foti for the benefits described for the proposed changes. Absent reasons the references should not be combined, we determine that the motivation proffered by the Petition is sufficient to support the combination, under the preponderance of the evidence standard.” slip op. at 16
Patent outcomesUS 9,667,669 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,667,669 - Apple Inc. v. Corephotonics, Ltd.Some claims unpatentablePTAB · Nov 2, 2021 · IPR2020-00878 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 are unpatentable; claims 3, 8, 16, 19, 24, and 30 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 of the ’897 patent are unpatentable and that Petitioner has not shown, by a preponderance of the evidence, that claims 3, 8, 16, 19, 24, and 30 of the ’897 patent are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would include someone who had, at the priority date of the ’897 Patent, (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing multi-lens optical systems. Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems for manufacturing, and would have been familiar with the specifications of lens systems and their fabrication. In addition, a POSITA [person of ordinary skill in the art] would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. Pet. 6–7 (citing Ex. 1003 ¶¶ 19–20). Patent Owner applied the same level of skill for the purposes of this IPR. PO Resp. 14–15 (citing Ex. 2001 ¶ 19). We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’897 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that no “dispute between the parties in this IPR depends on the construction of EFL, TTL, or of any other claim term [and] submits that the Board should refrain from construing any terms in the patent for the purposes of this proceeding.” PO Resp. 17. Petitioner does not respond to this argument. See generally Pet. Reply. We agree with Patent Owner. If we were to adopt either construction, it would not change the determination made in this Decision. Thus, we decline to construe any claim terms for purposes of this Final Written Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“unpatentable under 35 U.S.C. § 102 as anticipated by Ogino. Pet. 10–40. Patent Owner does not present arguments related to this ground. See generally PO Resp. For the reasons that follow, we are persuaded that the evidence supports Petitioner’s arguments and thus, Petitioner establishes by a preponderance of the evidence that claims 1, 4, 9–15, 17, 20, and 25–29 are unpatentable under 35 U.S.C. § 102 as anticipated by Ogino.” slip op. at 17
Patent outcomesUS 10,330,897 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,330,897 - Power Integrations, Inc. v. Semiconductor Components Industries, LLCSome claims unpatentablePTAB · May 23, 2019 · IPR2018-00180 · APJ Kamran Jivani · IPR · Final written decision
Claims 4–7, 9–16, and 18 are unpatentable over Hwang or Hwang and Balakrishnan; claim 17 was not shown unpatentable over Hwang.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Although the parties formulate slightly differently their respective assessments of the skill level, neither party disputes directly the other’s assessment nor makes any arguments related to the assessments. See generally Pet.; PO Resp. The ’221 patent states its disclosure “relates, in general, to integrated circuits and, more particularly, to power converter integrated circuits.” Ex. 1001, 1:9–11. In view of the foregoing, we adopt Patent Owner’s formulation of the level of ordinary skill in the art. Further, this level of ordinary skill is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction must begin with the words of the claims themselves.”); In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)) (“As with any claim construction analysis, we begin with the claim language.”). None of the challenged claims (nor even unchallenged claim 8) recites the claimed disabling or terminating occurs in response to the detect signal independent of other circuit conditions or in response only to the detect signal. See Ex. 1001, 12:5–14:36. For instance, independent claim 4 merely recites, “wherein the control circuit disables the switched drive control signal in response to the detect signal.” Id. at 12:49–51. Independent claim 7 similarly recites, “wherein the gating circuit disables the drive control signal in response to the detect signal.” Id. at 13:11–13. Independent claim 9 discloses only, “a first comparator . . . having an output for disabling the pulse generator.” Id. at 13:27–30. Finally, independent claim 15 requires, “comparing the error signal to a reference signal . . . to terminate the step of generating in response to the error signal.” Id. at 14:21–23. Therefore, the plain language of the challenged claims does not, standing alone, support adoption of Patent Owner’s proposed construction.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony from their respective declarants on whether one of ordinary skill in the art would understand “in response to” as requiring “independent of other circuit conditions.” Compare Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1) with PO Resp. 14–15, 17 (citing Ex. 2001 ¶¶ 42, 44–45.) and Sur-Reply 11–12 (citing Ex. 2001 ¶ 45). Patent Owner further directs our attention to a single sentence of deposition testimony in which Petitioner’s declarant Dr. Szepesi appears to agree with Patent Owner’s construction by stating, in the context of claim 9, that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” PO Resp. 8 (citing Ex. 2003, 44:16– 45:1). Petitioner rebuts Patent Owner’s arguments by identifying additional deposition testimony and statements made in a second declaration offered by Dr. Szepesi opposing Patent Owner’s construction. Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1). For instance, immediately before the statement Patent Owner cites, Dr. Szepesi testified: Q: “So is it your opinion that an output for disabling the pulse generator must disable the pulse generator regardless of the other conditions in the circuit?” . . . A: “I don't understand your question. I said disabling the pulse generator means that the output of the pulse generator which is providing the pulses to the gate of the main switch, those pulses are disabled. That’s what it means in my opinion in this context.” Ex. 2003, 43:24–44:9. And, in his supplemental declaration, Dr. Szepesi states: As a first matter, I opined during my deposition that “an output disabling a pulse generator” means that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” But, at the time of my deposition I had not done a focused claim construction analysis of the limitation “a first comparator […] having an output for disabling the pulse generator.” This is because I hadn’t anticipated there being a dispute relevant to the validity analysis in view of what I understood as the plain meaning of the language. Despite the quote that Patent Owner relied upon, I believe now that a POSITA would not understand the claim language to require the first comparator to disable the output pulses independent of anything else. This belief is consistent with my responses to the first two of three successive questions in which I was asked about “disabling the pulse generator.” It is my opinion that the operation of the disclosed embodiment requires the presence of other conditions precedent before the first comparator can disable the drive pulses and this requirement is not excluded by the claim language. Ex. 1016 ¶ 18 (emphasis added). Our reviewing court has made clear that extrinsic evidence “is generally of less significance than the intrinsic record” in matters of claim construction. Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (citation omitted). Here, beyond competing declarant testimony, neither party has entered into the record extrinsic evidence, such as dictionary definitions or contemporaneous usage in the art, addressing the scope of “in response to.” Having considered the testimony upon which Patent Owner relies and weighing it against the claim language itself, the Specification’s disclosures set forth above, and the contrary testimony of Petitioner’s declarant, we find on balance that it does not warrant departing from the plain and ordinary meaning of “in response to” as Patent Owner urges. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision”) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Claim 4 further recites, “a control circuit having an input coupled for receiving the detect signal, wherein the control circuit disables the switched drive control signal in response to the detect signal.” Patent Owner’s sole contention with respect to claim 4 is that “[t]he alleged detect signal in Hwang does not satisfy this limitation” because “unlike the ’221 patent, the alleged ‘control circuit’ does not disable the switched drive control signal ‘in response to the detect signal’ independent of other circuit conditions.” PO Resp. 15–16. As discussed above, we decline to import into claim 4 a requirement that the claimed disabling must occur independent of other circuit conditions. See supra Section III.C.1. Because Patent Owner’s argument relies on a claim construction that we rejected above, we are not persuaded that Hwang fails to meet the limitations of claim 4. Rather, having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of independent claim 4, arranged as recited in the claim. Petitioner’s analysis, as supported by the Szepesi Declaration, further demonstrates where Petitioner contends each element of dependent claims 5 and 6 is disclosed in Hwang. Pet. 21–24. Patent Owner does not dispute Petitioner’s analysis beyond the argument raised with respect to claim 4. See PO Resp. 17. Having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of dependent claims 5 and 6, arranged as recited in these claims, and we adopt that analysis as our own. Accordingly, for the foregoing reasons, we find Petitioner has shown by a preponderance of the evidence that Hwang anticipates claims 4–6.” slip op. at 25
Patent outcomesUS 6,597,221 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,597,221 - Emerson Electric Co. v. Sipco, LLCSome claims unpatentablePTAB · Nov 28, 2018 · IPR2017-00359 · APJ Bryan F Moore · IPR · Final written decision
Claims 32, 34, 37–38, 55–57, and 59 are unpatentable over Cunningham; claims 1, 3–8, 11–14, 24–31, 36, 42, 43, 46–49, 51–54, and 60–64 were not shown unpatentable.
RulingsFinal written decision- BurdenNot shown unpatentable
“This argument is conclusory and not supported by sufficient evidence. Moreover, the stated conclusion is vague with respect to the limitation at issue. Petitioner argues that “the node 18 must translate messages” (id. (emphasis added)), but does not explicitly argue that all three recited pieces of information—“the select information, the transmitter identification information, and transceiver identification information”—must be translated. Even assuming Mason’s node must translate all three recited pieces of information, Petitioner does not show that all such translated pieces of information must be further transmitted to the AMR server over the WAN. In particular, Petitioner does not show that transceiver identification information would have to be further transmitted.” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Moreover, we agree with Petitioner that such a construction is “non- specific, vague and unhelpful” in the context of the ’692 patent. Reply. 16. Patent Owner’s construction limits “low power” to signals having a “limited transmission range,” but provides no guidance of what “limited” means, or what its boundaries might be. Petitioner argues correctly that Patent Owner’s construction fails to address questions its proposed construction raises, such as, what a ‘limited’ transmission range means and how ‘limited’ the range must be (i.e., what the range’s distance should be), whether the transmission range depends on the particular system or application, and whether other factors should be considered in determining whether the transmission range is limited.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Notably, Petitioner says these contentions are “further evidence” but does not explain how this evidence is to be used to buttress Cunningham’s disclosure or how it is to be combined with Cunningham’s disclosure. Specifically, given the limited contentions in the Petition detailed above, Petitioner does not explain how Energy Management Services or the “routines” described in the Provisional send control signals from the computer to the actuator as required by the claims. For example, even if we to accept that the “Williams Network Control Center” creates control signals as required by the claim Petitioner has not explained how those signals are translated from network transfer protocol to RF signals and then translated to an analog signal that can be used at an actuator. Even though the ’978 Provisional is allegedly incorporated by reference, an obviousness determination still requires--“[w]hether a [obviousness challenge] is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference[--] a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan Co., 868 F.3d 1342, 1346 n. 1 (Fed. Cir. 2017); c.f. Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (finding obviousness shown despite fact that “all of the limitations are found in two separate embodiments pictured side by side in the patent, not in one embodiment” because the party showed motivation to combine and reasonable likelihood of success). Additionally, “there must be evidence presented on the obviousness of the claim as a whole.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1337 (Fed. Cir. 2015) (citing KSR, 550 U.S. at 420, 127 S.Ct. 1727); see also Acorda Therapeutics, Inc. v. Roxane Labs., Inc., 903 F.3d 1310, 1352 (Fed. Cir. 2018) (“The determination of obviousness is made with respect to the subject matter as a whole, not separate pieces of the claim”). Here, the “routines” described in the ’978 Provisional work differently than the “utility prices” embodiment of Cunningham. Petitioner has not explained how those would work together to meet the claim limitations.” slip op. at 30
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Patent Owner’s argument is inapposite, as it is premised on reading a limitation into the claims, namely that the information encoded in the RF signal must be translated in real time. Further, we agree with Petitioner, that even under such an erroneously narrow construction, Cunningham would meet the limitation. In that regard, Petitioner argues that, “although Cunningham discloses sending cumulative data readings, individual signals from the sensor are identified by the gateway and this information is then transmitted (with transmitter identification information) to a computer on the WAN.” Reply 6 (citing Ex. 1046 ¶¶31–32; Ex. 1004, 31:6–28). Petitioner argues, and we are persuaded, that “Cunningham explains that the ‘most current cumulative reading’ is the current absolute ‘reading’ (i.e., information signal) from the sensor (Ex. 1004, 13:44–46) and that two cumulative readings can be used to ‘interpolate’ and ‘recover’ a missed reading (i.e., a signal from the sensor).” Reply 7 (citing Ex. 1004, 13:44–56; 31:6–27; Pet. 75; Ex. 1002 ¶¶115, 152; Ex. 1046 ¶32). We are persuaded that Cunningham discloses this limitation. Lastly, claim 32 also recites “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” To meet this limitation, Petitioner accurately points out that “Cunningham discloses that[,] in response to receiving information from the sensor interface module through the data collection modules, the host module compiles the information into a user specified readable format and stores it for later retrieval upon demand from a customer computer or workstation.” Pet. 83 (citing Ex. 1004, 7:19–27, 44:12–41, 44:53–64, 46:44–61, 47:44–54, Ex. 1002 ¶¶138–140). Patent Owner does not contest that Cunningham discloses “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” See PO Resp. 22–29, 41–46. We are persuaded that Cunningham discloses this limitation. For the forgoing reasons, Petitioner has shown by a preponderance of” slip op. at 37
Patent outcomesUS 6,437,692 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,437,692 - Google LLC / Microsoft Corporation et al. v. Koninklijke Philips N.V.Some claims unpatentablePTAB · Sep 6, 2018 · IPR2017-00447 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–11 are unpatentable as obvious over SMIL 1.0 and SMIL 1.0 with Hua; claims 12–16 were not shown unpatentable, and anticipation was not established for claims 1–7 and 9–13.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “an undergraduate degree in computer science or computer engineering, or the equivalent” and “3-5 years’ experience developing multimedia presentations using a markup language and/or developing software tools to automate the development of multimedia presentations, or equivalent academic experience (e.g., a master’s degree with a similar focus).” Pet. 15 (citing Ex. 1002 ¶ 23). Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. See PO Resp. 10. Patent Owner also does not provide its own definition. See id. Based on the evidence of record, including the types of problems and solutions described in the ’806 patent and the asserted prior art, we adopt Petitioner’s definition of the level of ordinary skill in the art. Pet. 15; Ex. 1002 ¶¶ 22–23.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Ex. 1001, 5:54–55, 6:29–30. Petitioner proposes construing the phrase “a given segment of [a/the] media presentation” to mean “part or all of the media presentation.” Pet. 19. Petitioner argues that its proposed construction is supported by the claim language and specification of the ’806 patent. Id. at 17–19. Patent Owner proposes construing the phrase “a given segment of [a/the] media presentation” to mean “a media presentation with multiple segments.” PO Resp. 11. Patent Owner argues that its proposed construction is supported by the claim language and specification of the ’806 patent. Id. The dispute between the parties focuses on whether a media presentation can consist of only a single file or must have multiple segments. Pet. 17–19; PO Resp. 11. The ’806 patent consistently uses the term “segment” to indicate that a media presentation is divided into multiple segments. Ex. 1001, Abstract (“An electronic file, e.g., an MP3 file, is partitioned into a sequence of segments at the server side.”), 1:65–66 (“To this end the content file is split into multiple parts. Each part or segment requires a relatively short download time.”), 2:60–62, 2:67–3:2, 3:14–16, 3:31–33, 4:15–26 (“The segmentation of the content file into separately downloadable segments . . . .”), 4:35–38, Fig. 1. In contrast, the ’806 patent does not use the term “segment” to refer to a media presentation that consists of only a single file. Id. at 2:7–9. Therefore, because Patent Owner’s proposed construction is consistent with the specification of the ’806 patent, we construe the phrase “a given segment of [a/the] media presentation” to mean “a media presentation with multiple segments.”4” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“constraints.” Ex. 1001, 5:57, 6:33. Petitioner proposes construing the terms “system restraints” and “system constraints” to mean “constraints upon a system.” Pet. Reply 9. Petitioner argues that its proposed construction is supported by the specification of the ’806 patent. Id. at 9–11. Patent Owner proposes construing the terms “system restraints” and “system constraints” to mean “constraints on a system imposed by resources.” PO Resp. 14. Patent Owner argues that its proposed construction is supported by the specification of the ’806 patent. Id. For the reasons discussed below, we determine that Petitioner has shown by a preponderance of evidence that claims 1 and 9 are unpatentable even if we apply Patent Owner’s narrower proposed construction of the terms “system restraints” and “system constraints.” See infra Sections II.D.2, II.D.10. Therefore, we determine that it is unnecessary to resolve the parties’ dispute regarding the meaning of the terms “system restraints” and “system constraints” in order to resolve the parties’ disputes regarding the asserted grounds of unpatentability in this case. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms 4 Our construction is consistent with the District Court’s determination that the term “media presentation” means “data having multiple segments.” Ex. 1014, 7. need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“3. Means-Plus-Function Limitations Claim 12 recites several limitations that begin with the phrase “means for.” Ex. 1001, 6:41–62. The parties agree that these limitations of claim 12 are means-plus-function limitations. Pet. 19–20; PO Supp. Resp. 1–2. We address the means-plus-function limitations of claim 12 in detail below. See infra Sections II.C.2, II.D.13.” slip op. at 9
Patent outcomesUS 7,529,806 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,529,806 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Some claims unpatentablePTAB · Aug 14, 2017 · IPR2016-00591 · APJ Garth D Baer · IPR · Final written decision
Claims 1, 3, 6, 9, 12-14, 16, 19, 22, and 23 are unpatentable as anticipated by Avrahami; claims 10, 15, and 25 were not shown obvious.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Avrahami describes its algorithm as providing “for semi-automatic 3D spatial polygon extraction from a pair of colored aerial images with a known external model solution.” Ex. 1004, 43 (emphasis added). Avrahami touts that one of the advantages of its system is that “the operator can identify at a glance which buildings can be mapped by this method so as to combine it with traditional manual extraction or other semi-automatic method.” Id. at 48 (emphasis added). Further to this point, Figure 1 shows a side-by-side comparison of the images in the pair. See id. at Fig. 1 (displaying left and right polygons going through Avrahami’s iterative matching process). Further, we credit the testimony from Petitioner’s Expert, Mr. Schuch, that one skilled in the art would understand Avrahami’s images to be what “you see . . . on a computer screen” as “part of the production.” Ex. 2017, 69:20–21; see also id. at 71:2–4 (explaining that “[t]his is an actual production image”). Therefore, we find that Petitioner has proffered sufficient evidence that Avrahami discloses the disputed limitation.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
“We are persuaded by Patent Owner’s extensive evidence of nexus between its Render House and Twister products and the challenged claims. Patent Owner steps through each challenged claim on an element-by-element basis and directs us to images and specific passages from its Render House and Twister user guides that it argues embody the limitations of each challenged claim. PO. Resp. 50–58. Patent Owner also supports its assertion of nexus with testimony in the form of a Declaration from Dr. Chandrajit L. Bajaj that includes a claim chart detailing where each limitation of the challenged claim is found in its Twister and Render House products. Ex. 2010, 44–91.5 The Federal Circuit has held that “if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). Patent Owner has put forth sufficient evidence to show that its Twister and Render House products embody the elements of the challenged claims and thus, we look to Petitioner to rebut this presumed nexus and acknowledge that the presumption “cannot be rebutted with mere argument; evidence must be put” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner
“with the purportedly unique characteristics of the claimed invention and that for which there is alleged commercial success.” Reply 23–24. Our reviewing court has held that for evidence of commercial success to be relevant, “the patentee must establish a nexus between the evidence of commercial success and the patented invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). As noted above, however, Patent Owner has provided extensive evidence that the Twister and Render House products are coextensive with claims 10, 15, and 25 and that the reports sold were created using the Twister and Render House products. Thus, we are persuaded that nexus exists between the challenged claims and the commercially successful products at issue. Petitioner also asserts that “Patent Owner has failed to make any showing as to market share, thus rendering their sales figures irrelevant and not adequately defined.” Reply 24. Patent Owner provided unrebutted evidence that “approximately 96 percent of the top 25 insurance carriers rely on [Eagle View Technologies 3D aerial roof measurement reports] in their claims departments.” Ex. 2020, 1; see also Ex. 2029, 8 (Verisk Analytics presentation noting that 24 of top 25 insurance companies and 30,000 contractors are Eagle View customers). In addition, Patent Owner’s evidence shows that its products are used by “about one-fifth of the roofing contractor market, according to an estimate by market researcher IbisWorld.” Ex. 2024. Patent Owner’s financial reports show both that it sold a significant number of roofing reports and that its sales grew significantly between 2009 and 2015. See PO Resp. 60–61. We find that this information, taken together with statement from others in the industry (see Ex. 2029) gives us a view of Patent Owner’s place in the relevant market and persuades us that Patent Owner’s Twister and Render House products experienced significant commercial success and wide-spread use in the industry.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › Skepticism / industry praiseDecided for patent owner
“iii. Industry Praise Praise from industry participants, especially competitors, is probative as to obviousness because such participants “are not likely to praise an obvious advance over the known art. Thus, if there is evidence of industry praise of the claimed invention in the record, it weighs in favor of the non-obviousness of the claimed invention.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1053 (Fed. Cir. 2016). Petitioner described Patent Owner’s products as “[u]sing aerial photography and patent-pending software [to] accurately calculate[] measurements for the roof’s ridges, rafters, valleys, slopes and more.” Ex. 2021, 1. Petitioner further noted that the “process saves contractors and roofers hours of time spent measuring and scoping a roof.” Id.” slip op. at 23
Patent outcomesUS 8,209,152 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,209,152 - Arista Networks, Inc. v. Cisco Systems, Inc.Some claims unpatentablePTAB · May 25, 2017 · IPR2016-00303 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 7–10, 12–16, 18–22, 25, and 28–31 are unpatentable as obvious over Huey and ATM UNI; claim 2 was not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedMixed
“PO Mot. 13–14. A motion to exclude is the wrong vehicle to challenge public availability, which is a substantive issue that goes to the sufficiency of the evidence, not to admissibility at issue here. FLIR Sys., Inc. v. Leak Surveys, Inc., IPR2014-00411, slip. op., Paper 113 at 4 (PTAB September 3, 2015) (“A motion to exclude is not a vehicle for addressing the weight to be given evidence.”); see also 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“A motion to exclude . . . may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). For the reasons above, we do not exclude Exhibit 1028.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates prior to the critical date. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (finding both hair brush art and toothbrush art to be analogous to a claim to a hair brush) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. (citations omitted). The scope of the field of endeavor is a factual determination based on the scope of the application's written description and claims. Bigio, 381 F.3d at 1326. slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“There are two problems with Petitioner’s assertion. First, Petitioner has not shown a reason to combine Kogge with Huey and the ATM UNI Specification. Second, to the extent this reference is used to show the scope and content of the art at the time of the invention, Kogge makes it clear that parallelism and pipelining are different concepts that are “generally discernably different in their general approach.” Ex. 1033, 1. Petitioner has not explained how Kogge shows that putting packets through the pipeline without waiting for the previous packet to finish would be considered operating in parallel given that this reference distinguishes parallel operation from pipeline operation. Petitioner argued at the oral hearing that Patent Owner was advocating “a particular flavor of parallelism, as opposed to what’s understood by normal parallel pipelining.” Tr. 41:6–14. However, neither Petitioner nor its declarant has explained what “normal parallel pipelining” is or what the basis is for us to define “normal parallel pipelining.” Thus, we are not persuaded by Petitioner’s contention that one of ordinary skill in the art would modify Huey to meet the limitation of performing at least two of said steps “in parallel using a pipeline.”” slip op. at 33
Patent outcomesUS 6,377,577 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,377,577
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.