- PTAB · Jun 13, 2025 · IPR2025-00351 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–26 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. Under the second Fintiv factor, the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision weighs against exercising our authority to deny institution because there is no trial date scheduled. Id. at 9; see Ex. 1031, 3. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). For the reasons that follow, we grant institution of inter partes review.” slip op. at 2
- Skill levelOther
“have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). Petitioner further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition (see Prelim. Resp. 13–14), but states that a POSITA “would understand that . . . the subject of the patent is a software-based solution to broadcasting multimedia streams, and the skillset and expertise in hardware-based systems would not make one knowledgeable about software-based systems.” Prelim. Resp. 13–14. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is 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). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Claim 1 does not limit the “caching unit” in any way. With this in mind, we preliminarily agree that Farber discloses the subject matter of limitation 1a sufficiently to meet Petitioner’s burden on institution. b.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 11,140,441 - PTAB · Jun 13, 2025 · IPR2025-00350 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–13 for all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“After Patent Owner made these arguments, though, the district court in the Florida Litigation (1) stayed all deadlines indefinitely and (2) said that the October trial will not go forward as scheduled. Ex. 1028, 3. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 14
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, Here, a Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. . . . A person with less formal education but more experience, or more formal education but less experience, could also meet the standard. Pet. 19 (citing Ex. 1007 ¶¶ 68–69). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the inventions in the ‘002 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art. Prelim. Resp. 12 (citing Ex. 2006 ¶ 59) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. at 12–13 (citing Ex. 2006 ¶ 60). At this stage, our decision would be the same under either definition. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“There is no dispute that (1) Avellan’s user initiates the request and eventually receives the stream and (2) gateway server 134 receives a request for a media stream for playback on a broadcast channel. See id. at 32–39; Pet. 22. The issue here is whether claim 1 requires that the recited “content provider” originates the request. We agree with Petitioner that claim 1 does not require this. Prelim. Reply 7. Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:51–54. Claim 1 recites “comprising” in the preamble of the method (id. at 14:50), which is a encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n. Pet. 22. That is, Avellan’s gateway platform 134 receives a request for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 24 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 22. ii. Remaining Limitations Apart from the arguments discussed above, Patent Owner does not present arguments specifically directed to the other limitations of claim 1. See Prelim. Resp. We determine that Petitioner’s arguments made in connection with those limitations are sufficient at this stage and on this record. Pet. 24–32. We agree with Petitioner that Avellan teaches obtaining content from the networks 150 and 152, as recited in 1b; rendering a webpage by a browser at gateway 134, as recited in 1c; generating the screen captures at gateway 134, as recited in 1d; and assembling and providing the media stream when gateway server 134 compresses the image or video format and sends it to the browser 106, as recited in 1e and 1f. Id. at 24–29. Petitioner has provided a sufficient rationale at this stage why a method with the subject matter recited in lg and 1h would have been obvious. Id. at 29– 32. Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 12
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,524,002 - PTAB · Jun 13, 2025 · IPR2025-00349 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–21 and all petition grounds, finding a reasonable likelihood that Avellan anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. slip op. at 6
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, A Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA. Pet. 14–15 (citing Ex. 1002 ¶ 68). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the claimed inventions in the ‘074 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art Prelim. Resp. 10 (citing Ex. 2006 ¶ 58) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. (citing Ex. 2006 ¶ 59). Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:48–50. Claim 1 recites “comprising” in the preamble of the method (id. at 14:47), which is a term that does not exclude additional, unrecited steps. Thus, claim 1 encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n and broadcast device 102. Pet. 17–18. That is, Avellan’s gateway platform 134 receives a request from broadcast device 102 for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 19 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 17–19.” slip op. at 13
§ 102 anticipationDiscretionary denialPatents in suitUS 10,123,074 - Coxcom, LLC v. Joao Control & Monitoring Systems, LLCSome claims unpatentablePTAB · Feb 15, 2017 · IPR2015-01762 · APJ Beth Z Shaw · IPR · Final written decision
Claims 1, 3–5, 8, 13–17, 20, and 84–86 are unpatentable as obvious over Koether and Crater; claim 44 was not shown unpatentable on that ground.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“owner must provide sufficient rebuttal evidence to bring reasonably into question the accuracy of Petitioner’s identification of RPIs.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012). Whether a non-party is a real party in interest is a “highly fact-dependent question” that is addressed on a “case-by-case” basis. See 77 Fed. Reg. 48,759. “A common focus of the inquiry is . . . whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. The concept of control means that “the non-party ‘had the opportunity to present proofs and argument’ . . . or ‘to direct or control the content’ of the filing.” JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00179, slip op. at 10 (PTAB Feb. 20, 2015) (Paper 11) (“JP Morgan”). “‘The evidence as a whole must show that the non-party possessed effective control over a party’s conduct of the [proceeding] as measured from a practical, as opposed to a purely theoretical standpoint.’” Id. (quoting Gonzalez v. Banco Cent Corp., 27 F.3d 751, 759 (1st Cir. 1994)).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1001, Abst. It describes the relevant problems encountered in the art as those involved in the control, monitoring, or security of vehicles or premises, in a network environment. Id. at 1:20–52; 3:12–21. The ’363 patent is not directed to specific issues associated with electrical circuits or electrical connections between devices. The Specification identifies no specific problem that stems from the apparatus being a particular type of electrical device. From this evidence, we conclude that a person of ordinary skill in the art with respect to the ’363 patent would be skilled in the field of networked systems. For the foregoing reasons, we are not persuaded that the level of ordinary skill in the art requires specific coursework or education in the form of a degree in electrical engineering. Instead, we are persuaded by Petitioner’s statement of the level of ordinary skill in the art, and our finding of the level of ordinary skill is similar to that proposed by Petitioner, but with a slight modification, i.e., that a basic level of experience is required, at the level of at least two years of experience in networked systems. We find that the level of ordinary skill in the art is that of one having at least two years of working experience with networked systems. A more advanced degree would be paired with a shorter period of working experience.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner has not articulated a persuasive reason for giving Mr. Bennett’s testimony little or no weight. Moreover, as discussed above, we are not persuaded that a person of ordinary skill in the art of the ’363 patent would be required to have a specific degree or coursework in electrical engineering. We are, thus, not persuaded that Mr. Bennett’s answers, during deposition, to questions about his background are wrong or that the entirety of his testimony should be given little or no weight based on this testimony.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“For purposes of the Decision to Institute, we construed the terms “remote,” “premises,” and “located at.” Dec. 8–9. We reviewed and adopted Patent Owner’s explicit definitions for these terms, which Patent Owner provided in the prosecution of the application that issued as the ’363 patent. Dec. 8 (citing Ex. 2002). Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our constructions for these claim terms. For convenience, these claim constructions are reproduced in the table below. Term Citations Construction Remote Ex. 2002, “‘Remote’ means ‘separate and apart from, or 10–11 external from, or at a distance from or distant from, or not located in.’” Premises Ex. 2002, 8– “‘Premises’ means ‘a building or a structure 9 and the grounds or parcel of land associated with the building or the structure, or a building or structure or a portion, room, or office, of or in the building or structure, or a home, mobile home, mobile building, mobile structure, residence, residential building, office, commercial building, commercial office, structure, equipment, facility, machine, rig, assembly line, or edifice.’” Located at Ex. 2002, 8 “‘Located at’ means ‘situated at, or situated in, or situated on.’”” slip op. at 12
Patent outcomesUS 7,397,363 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSRPatents in suitUS 7,397,363 - Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Jan 25, 2017 · IPR2015-01585 · APJ Stacey G White · IPR · Final written decision
Claims 1–3, 11, 16, and 17 are unpatentable: claims 1 and 16 are anticipated by Frossard and Pagliaroli; the remaining claims are unpatentable on the stated obviousness grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyTerm construed patent owner constructionDecided for patent owner
“Claim 3 recites, in relevant part, “a positioning device for determining location of the vehicle, wherein said positioning device is located at the vehicle.” In the Institution Decision, we preliminarily construed the term “positioning device” to be governed by 35 U.S.C. § 112 ¶ 65. Dec. 6. Patent Owner disagrees and asserts that one of ordinary skill in the art would understand ‘“positioning device’ to be the name for the structure that performs the corresponding functions, even though the term covers a broad class of structures and/or identifies the structures by their function.” PO. Resp. 10–11. Petitioner maintains that the preliminary construction should govern this Final Written Decision. Reply 1–2. In Patent Owner’s view, “positioning device” is similar to terms such as filters, brakes, and clamps that have functional names, but still provide sufficient structure to remove the term from the reach of § 112 ¶ 6. PO Resp. 10–11. Patent Owner argues that Petitioner’s position is inconsistent because Petitioner argues that “positioning device” is not sufficient structure while arguing for a construction that includes the same term. Id. at 11 (noting that the proposed structure is a “satellite-based global positioning device.”). We are persuaded by Patent Owner’s arguments. Thus, we find that “positioning device” is not governed by 35 U.S.C. § 112 ¶ 6. For the purposes of this decision, we adopt Patent Owner’s proposed construction of “positioning device” which is “a device that determines the location of the vehicle.” PO Resp. 12.” 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 have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary and any such intermediary may append additional information to the received signals. III. ANALYSIS” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We, however, are persuaded that the statements made during cross examination appear to be misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2005, 154:11–20. In addition, we have reviewed the relevant prosecution history and we are in the position to evaluate whether Mr. McNamara’s testimony is at odds with the evidence in this case, which include the relevant prosecution history. Accordingly, we are not persuaded Mr. McNamara’s testimony should be accorded little or no weight due to the statements he made during cross-examination regarding his review of the prosecution history.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner is correct in arguing that Patent Owner improperly attempts to limit “control device” in a way that contradicts the construction of the term. We agree with Petitioner that Frossard’s server center 1 and resource 2 may disclose the claimed “second control device” because by definition a “control device” can comprise “part of a device”; therefore, it follows that if something may be “part of a device” then it is permissible for that device to have multiple parts. Thus, a “control device,” which necessarily is a type of device, can include multiple parts. Therefore, the question is whether the cited elements of Frossard (server center 1 and resource 2) reasonably can be interpreted to be the parts of the second control device. To that end, Petitioner compares the combination of Frossard’s server center 1 and resource 2 with the ’405 patent’s combination of server 952 and transmitter 957. Id. at 8–9. It is Petitioner’s contention that “Frossard’s server 1 corresponds to server 952 of the ’405 patent because both generate a signal for remote control. Frossard’s resource 2 corresponds to transmitter 957 of the ’405 patent because both transmit the signal.” Id. at 12. According to Petitioner, “[t]he specification describes that, in response to a command received by the server receiver 953, the server 952 sends a control signal via the transmitter 957.” Id. at 8 (citing Ex. 1001, 58:41–48, 5:55– 58). Further, Petitioner asserts that “[a]ll of the described second devices use transmitters (e.g., server 952 uses transmitter 957 in Fig. 11B).” Id. at 9. Thus, in Petitioner’s view, Patent Owner’s argument that the control device may not be the combination of a server and transmitter is not supported by the specification. Id. We agree and find that Frossard discloses the claimed second control device. We also determine that because Patent Owner acknowledged, in its own definition, that “control device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” (emphases added), it necessarily follows that the “or” implies that a control device can include multiple parts. Tr. 36:1–38:19. Thus, a “control device” that is both “[1] a device and [2] a computer” would fall within the scope of the construed claim term because the term “or” is broad enough to include a variant that has both of the listed options. Id. Here, we determine Frossard’s server center 1 and resource 2 discloses a control device (i.e., “a device or a computer”).” slip op. at 20
Patent outcomesUS 5,917,405 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 5,917,405 - Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Jan 25, 2017 · IPR2015-01508 · APJ Stacey G White · IPR · Final written decision
Claims 3, 20, 65, 73, 93, 103, 104, 108, and 205 are unpatentable: claims 3, 20, 73, 103, and 205 are anticipated by Frossard; the remaining claims are unpatentable on the stated obviousness or anticipation …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“For purposes of the Decision to Institute, we construed the term “control device.” Dec. 10–11. Neither party raised any concerns regarding this construction during trial. See PO Resp. 10–11; Reply 1. Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our construction for this claim term. For convenience, the claim construction is reproduced in the table below. Term Citations Construction Control Ex. 2002, 6 A device or a computer, or that part of a device or Device a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“In that 2007 filing, the term “signal” was defined as “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that this definition is instructive to understanding the proper scope of these claim terms. Thus, a first signal, for example, is an “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” 7 This information was modified by a Certificate of Correction issued July 1, 2003. See Ex. 1001, 95. We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We, however, are persuaded that the statements made during cross examination appear to be misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2005, 154:11–20. In addition, we have reviewed the relevant prosecution history and we are in the position to evaluate whether Mr. McNamara’s testimony is at odds with the evidence in this case, which include the relevant prosecution history. Accordingly, we are not persuaded Mr. McNamara’s testimony should be accorded little or no weight due to the statements he made during cross-examination regarding his review of the prosecution history.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner is correct in arguing that Patent Owner improperly attempts to limit “control device” in a way that contradicts the construction of the term. We agree with Petitioner that Frossard’s server center 1 and resource 2 may disclose the claimed “second control device” because by definition a “control device” can comprise “part of a device”; therefore, it follows that if something may be “part of a device” then it is permissible for that device to have multiple parts. Thus, a “control device,” which necessarily is a type of device, can include multiple parts. Therefore, the question is whether the cited elements of Frossard (server center 1 and resource 2) reasonably can be interpreted to be the parts of the second control device. To that end, Petitioner compares the combination of Frossard’s server center 1 and resource 2 with the ’076 patent’s combination of server 952 and transmitter 957. Id. at 9. It is Petitioner’s contention that “Frossard’s server 1 corresponds to server 952 of the ’076 patent because both generate a signal for remote control. Frossard’s resource 2 corresponds to transmitter 957 of the ’076 patent because both transmit the signal.” Id. at 12. According to Petitioner, “[t]he specification describes that, in response to a command received by the server receiver 953, the server 952 sends a control signal via the transmitter 957.” Id. at 9 (citing Ex. 1001, 58:41–48, 5:55–58). Further, Petitioner asserts that “[a]ll of the described second devices use transmitters (e.g., server 952 uses transmitter 957 in Fig. 11B).” Id. at 10. Thus, in Petitioner’s view, Patent Owner’s argument that the control device may not be the combination of a server and transmitter is not supported by the specification. Id. We agree and find that Frossard discloses the claimed second control device.” slip op. at 19
Patent outcomesUS 6,542,076 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,542,076 - Volkswagen Group Of America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Jan 23, 2017 · IPR2015-01612 · APJ Beth Z Shaw · IPR · Final written decision
Claims 68, 69, 74, 77, and 80 are unpatentable as anticipated by Spaur; claim 72 is unpatentable as obvious over Spaur.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Monitoring Systems, LLC, filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 6 (“Prelim. Resp.”). Based on our review of these submissions, we declined to institute review of claims 21, 24, 27, 29, 30, 31, and 33, and we instituted inter partes review of claims 68, 69, 72, 74, 77, and 80. Paper 7 (“Dec.”). Specifically, we authorized this inter partes review to proceed as to the following grounds: (1) claims 68, 69, 74, 77, and 80 under 35 U.S.C. § 102(e) as anticipated by Spaur1; and (2) claim 72 under 35 U.S.C. § 103(a) as obvious over Spaur.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“processing device” Patent Owner argues that “processing device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” PO Resp. 8. Patent Owner argues that this definition comes from the prosecution history of the ’363 patent (Ex. 1007) and is consistent with the Specification. Id. Petitioner does not dispute this construction. See Reply 2–4. We agree that this explicit definition for “processing device” was provided in the prosecution of the application that issued as the ’363 patent. See Ex. 1007. We have reviewed the definition and we find it to be instructive to understanding the proper scope of “processing device.” See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Thus, we adopt the Patent Owner’s construction of “processing device” to mean “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” for the purposes of this decision. slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner’s characterization of Spaur’s teachings and we are not persuaded by Patent Owner’s argument. Patent Owner does not direct us to any persuasive evidence that the “second processing device” of claim 68 is not encompassed by Spaur’s teaching of a CDPD network modem. Pursuant to our construction discussed above, the term “processing device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” See § II.A. This is the definition Patent Owner proposed and that Patent Owner provided during prosecution. We are unpersuaded as to why Spaur’s CDPD network modem 76 is necessarily different from “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“not address the arguments in the Petition about the obviousness of claim 72. Reply 13. In particular, the Petition stated that: (1) Spaur describes a “wireless device” contained in the vehicle for transmitting and receiving information over an air link (Ex. 1004, 6:3–5), (2) Spaur describes that such devices may be among vehicle devices 50 (id. at 10:1–9), and (3) using a wireless device, a cellular telephone, or a personal digital assistant as the communication device in the system described by Spaur would have been within the understanding of a person of ordinary skill in the art at the time the alleged invention of claim 72 was made, and it would have been obvious to do so because it would allow the user to operate the system from a mobile device. Pet. 59–60 (citing Ex. 1006 ¶ 40). We agree with Petitioner that Patent Owner does not dispute the first two statements. Rather, we interpret Patent Owner’s arguments as directed to the third statement. Petitioner argues that Mr. Andrews testified in his declaration that wireless devices, cellular telephones, and personal digital assistants were well-known as of the filing of the ’363 patent, and that the use of a mobile device in Spaur’s system would have been obvious. Id. (citing Ex. 1006 ¶ 40). During his cross examination, Mr. Andrews testified that people “could certainly contact using a cellular telephone contact, an Internet gateway, and obtain information from devices on the Internet via an Internet gateway.” Ex. 2004, 45:16–19. Thus, Petitioner argues, Patent Owner has no basis for its statement that Mr. Andrews could not support this position during cross-examination. We agree with Petitioner and are not persuaded that Mr. Andrews’s testimony is unsupported based on his statements during cross examination.” slip op. at 14
Patent outcomesUS 7,397,363 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,397,363 - Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationAll claims unpatentablePTAB · Apr 20, 2016 · IPR2015-00460 · APJ Beth Z Shaw · IPR · Final written decision
Claims 1–14 are unpatentable as anticipated by Doshi under § 102(e).
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“This portion of the Specification, however, does not persuade us that HSC’s proposed construction is the broadest reasonable construction. Rather, this sentence merely states that a nitride layer is anisotropically etched to form sidewall spacers that prevent shorting, not that the sidewall spacers are designed to prevent shorting. We are not persuaded by HSC’s argument and expert testimony that a spacer as recited in claims 1 and 9 must be a structure that is “purposefully designed into the fabrication process [in order] to achieve specific functions.” Id. at 8. Rather, in light of the Specification, we agree with Samsung that HSC’s proposed construction, which would require a structure “designed to” create physical separation, would render this claim limitation ambiguous and would focus on the intent of the manufacturer or state of mind of the accused infringer. See Reply 2–5 (citing Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1353 (Fed. Cir. 2001) (“We are not prepared to assign a meaning to a patent claim that depends on the state of mind of the accused infringer.”). As Samsung notes, the plain meaning of the term “spacer” is “one that spaces.” Pet. 9; Reply 5; Ex. 1007. This is consistent with the Specification of the ’997 patent. See Ex. 1001, Fig. 2D, 3:20–21, 36–39. In view of the foregoing, we decline to adopt HSC’s proposed claim construction. Accordingly, we construe “spacer,” as recited in claim 1, as a structure that spaces between two conductive structures. Pet. 9.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Figure 3g of Doshi. Paper 31, 71:24. We cannot disregard Figure 3g, because patents are prior art for all they contain. “‘The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.’” In re Heck, 699 F.2d 1331, 1332–33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)); see also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”); Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962) (“[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.”). We are not persuaded by HSC’s Declarant Mr. Maltiel’s testimony that the nitride etch process designed to clear the nitride layer 30 would etch away all of layer 30 exposed under the contact opening (see Ex. 2002 ¶ 67)—in direct contrast to what Figure 3g of Doshi depicts. Instead, we 19 find Figure 3g of Doshi depicts that nitride layer 30 remains after the second etch. See Ex. 1005, Fig. 3g. This is also consistent with Doshi’s written description. Doshi describes an etch that “substantially minimize[s]” damage “to the corners of gate structures 10 and sidewall filaments 11.” Id. at 10:4–16; Ex. 1011 ¶ 2E. In particular, once the nitride film 30 covering the NC of filaments 11 and gate structures 10 is etched through via the faster vertical etching of the highly anisotropic nitride etch, the subsequent additional etching time used to remove the remaining sidewall portions of film 30 would result in an etch of the NC portion of the filaments 11 and the gate structures 10. Ex. 1011 ¶ 2E. We agree with Samsung that during this additional time, given that filaments 11 are partially formed of silicon nitride, the highly anisotropic silicon nitride etch would etch into the portions of the filaments 11 formed of nitride. Reply 14 (citing Ex. 1005, 7:52–65; Ex. 1011 ¶ 2E). That scenario, proposed by HSC, would be contrary to Doshi’s Figure 3g and to Doshi’s “highly anisotropic” etch, which “minimizes damage” at the sidewall corner locations. Ex. 1005, 10:4–16. As Samsung argues, and we agree, if the goal is to minimize short circuits, then layer 30 would remain. See Reply at 15; Ex. 1011 ¶ 2E (“A POSITA would have understood that such damage to the structures 10 and sidewall filaments 11 undesirably increases the likelihood of shorts occurring between a contact plug and the gate electrode.”).” slip op. at 19
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Based on Doshi’s disclosure and the evidence before us, we agree with Dr. Rubloff’s testimony that Doshi’s anisotropic etch of the etch-barrier 22 nitride layer exposes the diffusion region and simultaneously forms a spacer on the sidewall of the gate electrode, as Dr. Rubloff’s testimony is consistent with the Doshi’s disclosure. Ex. 1003 ¶¶ A13–A14; Ex. 2004, 181:6–15; Ex. 1011 ¶¶ 2F, 5A–5D; see also Ex. 2005, 10:4–16, Figs. 3g–3k. In light of the foregoing, we credit the testimony of Dr. Rubloff over Mr. Maltiel’s testimony (Ex. 2002 ¶¶ 47–52) filed in support of HSC’s argument. See 37 C.F.R. § 42.65(a); see also Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding that the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”).” slip op. at 22
Patent outcomesUS 6,146,997 unpatentableClaim construction§ 102 anticipationPatents in suitUS 6,146,997 - Sharp Corporation / Sharp Electronics Corporation et al. v. Surpass Tech Innovation LLCAll claims unpatentablePTAB · Feb 26, 2016 · IPR2015-00021 · APJ Sally C Medley · IPR · Final written decision
Claims 4, 8, and 9 are unpatentable as anticipated by Ham under § 102(e).
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Patent Owner faults Petitioner for not providing a construction for the term “generating” as recited in claim 4, but does not propose a construction for the term. PO Resp. 27–28. We find it unnecessary to expressly construe the term, because both parties agree that at least converting digital signals into analog data signals (impulses) meets the claimed “generating a plurality of data impulses” limitation. Pet. Reply 3–4; Ex. 1010 ¶¶ 50–54, 59; Ex. 1009, 114:3–12; Tr. 23.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We begin with the language of claim 4. Claim 4 recites generating a plurality of data impulses for each pixel within every frame period. The claim further recites applying the data impulses to the liquid crystal device of one of the pixels within one frame period in order to control a transmission rate of the liquid crystal device of the pixel. Based on the words of claim 4, data impulses (more than one) are applied to one of the pixels within one frame period to control a transmission rate of the liquid crystal device of the pixel. Absent from the claim 4 language is that (more than one of) the data impulses are “overdriven.”” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We give Mr. Marentic’s testimony substantial weight because his testimony is consistent with the description of Ham and the ’843 patent. In other words, Ham describes performing the generating of data in the same way as is described in the ’843 patent. Even Patent Owner’s Declarant, Mr. Bohannon, agrees that Ham describes converting digital data into analog data and applying that data to data lines, e.g., the generating step. Ex. 1009, 114:3–12. And during oral hearing, Patent Owner also acknowledged that converting digital data into analog data would read on the generating step. Tr. 23. For all of these reasons, we determine that Petitioner has shown by a preponderance of the evidence that Ham describes generating a plurality of data impulses for each pixel within every frame period according to the frame data.” slip op. at 17
- ExcludeMotion to exclude, deniedOther
“Marentic’s declaration (Exhibit 1010) and deposition testimony (Exhibit 2007). PO Mot. to Exclude. In particular, Patent Owner argues that Mr. Marentic offers no facts or data to support his opinion on the level of skill in the art, and that his testimony is also inconsistent with what was presented in the Petition. Id. at 2. These arguments go to the weight that we give the evidence and, therefore, are an improper basis for excluding evidence. In any event, as discussed above, in rendering this Final Written Decision, we look to the prior art of record to inform us of the level of skill in the art, notwithstanding what the experts opine as to the level of skill in the art. See Okajima v. Bourdeau, 261 F.3d at 1355; In re GPAC Inc., 57 F.3d at 1579; In re Oelrich, 579 F.2d at 91. Patent Owner further argues that portions of Mr. Marentic’s declaration (Ex. 1010 ¶¶ 92–93) should be excluded under FRE 802. PO Mot. to Exclude 2–4. In the objected to paragraphs, Mr. Marentic testifies, directing attention to several prior art U.S. patents (Exhibits 1012, 1013, and 1014), that “transmission rate” was a term known in the art, and that controlling a transmission rate would have been understood as merely applying a particular voltage to a pixel’s electrodes. Ex. 1010 ¶¶ 92–93. Patent Owner argues that the written statements in the prior art patents (Exhibits 1012, 1013, and 1014) are hearsay because Petitioner offers them for the truth of the matter asserted. Id. In rendering the Final Written Decision, we did not rely on Exhibits 1012, 1013, 1014, or Mr. Marentic’s testimony found at paragraphs 92 or 93. Patent Owner also objects to a portion of Mr. Marentic’s deposition testimony (Ex. 2007, 116:12–118:3) as nonresponsive. The objection goes to the weight to be given to the testimony, which is not a proper basis for a motion to exclude. For these reasons, we dismiss Patent Owner’s Motion to Exclude.” slip op. at 19
Patent outcomesUS 7,202,843 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,202,843 - Ubisoft Entertainment SA v. Princeton Digital Image CorporationAll claims unpatentablePTAB · Oct 16, 2015 · IPR2014-00635 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 1–13, 15–18, and 21–23 are unpatentable based on the grounds decided in the final written decision.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“parenthetical statements of intent” into our construction, because the ’129 patent expressly defined “virtual environment” to include those statements. Dec. on Inst. 8. Petitioner fails to persuaded us to modify that construction; thus, as in the Decision on Institution, we adopt the Specification’s express definition of “virtual environment,” which is “a computer-simulated environment (intended to be immersive) which includes a graphic display (from a user’s first person perspective, in a form intended to be immersive to the user), and optionally also sounds which simulate environmental sounds.” Id. (quoting Ex. 1001, 1:22–33). However, we agree with Petitioner that the term should be construed to encompass the specific embodiments that the ’129 patent describes. As the Federal Circuit has noted, “the specification is always highly relevant to the claim construction analysis,” and, in fact, “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (internal citation and quotation marks omitted). Here, given that the Specification does not elucidate what it means by “intended to be immersive to the user,” and given that the phrase is subjective, we find the specific embodiments discussed in the Specification to be particularly informative. As part of “the preferred VR program,” Figure 11 depicts a group of simple cylindrical objects that appear to change height in response to the sound of drums. Ex. 1001, 18:16–33. Also in the “preferred VR program embodiment,” words representing the lyrics of a song are displayed as the words are vocalized. Id. at 18:49–53. Further, as Petitioner notes, the Specification teaches that the graphic display generated by a VR system can be either two-dimensional or three-dimensional, and can be displayed on a single flat screen display that need not be stereoscopic. Pet. 4 (citing Ex. 1001, 1:34–35, 8:7–13).7 Given that a claim construction that excludes a preferred embodiment is “rarely, if ever, correct,” Vitronics, 90 F.3d at 1583, it is appropriate to construe “virtual environment” broadly enough to encompass these displays. slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner
“Having reviewed the ’129 patent, we determine that the Specification clearly associates the following structure with the first two recited functions: (1) a source of music and/or a control track, such as a four-track audio tape, video-game cartridge or compact disk (CD); and (2) a processor programmed to generate control signals from the input music and/or control track and send the control signals to the VR processor. For example, in discussing Figure 1, the Specification states: 10 The parties make essentially the same arguments with respect to two other means-plus-function limitations: “means for receiving said music signal in digital or analog form, and processing said music signal to produce control information for modification of objects in the virtual environment” (claim 13); and “means for supplying the music signal to the means for producing the virtual environment” (claim 18). See PO Resp. 15–16, 21–22; Pet. Reply 5–8. The analysis that follows applies equally to these limitations, and we determine that the structure that corresponds to the “supplying” function of claim 12 also corresponds to the functions recited in these limitations. An analog-to-digital conversion circuit within Acoustic Etch unit 3 receives and digitizes a music signal from source 1. The music signal is optionally accompanied by one or more prerecorded control tracks corresponding to the music signal. . . . Analyzer 5[11] within Acoustic Etch unit 3 receives the digitized output of [music source 1 via analog-to-digital converter 4], and generates control signals by processing the music signal (or both the music signal and the control tracks). The control signals output from analyzer 5 are supplied through interface 6 to VR processor 7 for use within processor 7 for controlling generation of the virtual environment.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“There is no dispute that Tsumura’s teaching of storing music data, including “stored pitch data” and other vocal data relating to the vocal features of the music, corresponds to claim 10’s step of “prerecording a control track having audio and/or control information corresponding to an audio signal;” stored music data constitute the control track, and the vocal data, including the pitch and strength data, constitute the claimed control information that corresponds to an audio signal. Further, we agree with Petitioner that Tsumura teaches operating the computer system in accordance with this control track, in that, among other things, the computer system will display messages to a user that depend on a comparison of the stored data and the user’s vocal performance. We have considered Patent Owner’s contrary evidence and arguments, but do not find them persuasive. Neither Patent Owner nor Dr. Kesan explains why generating and displaying messages to a user based on the comparison of stored music data and the user’s actual voice does not constitute ”operating the computer system in response to said prerecorded control track,” as recited in claim 10. Given Dr. Kesan’s failure to support his position with any analysis, we accord that position little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (affirming the Board’s determination to give little weight to an expert’s “broad conclusory statements”).” slip op. at 23
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We have considered Patent Owner’s contrary evidence and arguments, but do not find them persuasive. Neither Patent Owner nor Dr. Kesan explains why generating and displaying messages to a user based on the comparison of stored music data and the user’s actual voice does not constitute ”operating the computer system in response to said prerecorded control track,” as recited in claim 10. Given Dr. Kesan’s failure to support his position with any analysis, we accord that position little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (affirming the Board’s determination to give little weight to an expert’s “broad conclusory statements”).” slip op. at 23
Patent outcomesUS 5,513,129 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 5,513,129
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.