• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 21, 2022 · IPR2022-00245 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2–4 are unpatentable as obvious over Lam, Enz, and Tayloe; claims 2 and 3 are also unpatentable as obvious over Tayloe and the TI Datasheet.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above. slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23

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

    “On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24

  Patent outcomesUS 7,110,444 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,444
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 21, 2022 · IPR2021-00990 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2–4 are unpatentable under §103: claims 2–3 over Tayloe and the TI Datasheet, and claims 2–4 over Lam, Enz, and Tayloe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s option (a) is substantially the same as Petitioners’ proposal—both require a bachelor’s degree in the same or a related subject and two additional years of related work experience. Patent Owner’s option (b) adds an additional option based on work experience in lieu of a formal degree. Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively. Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value. Storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal. Ex. 2029, 66:59–67 (emphases added); see Ex. 2016, 39–40 (discussing Patent Owner’s prior arguments to construe “storage module” in IPR2014- 00948). When defining certain terms in a section titled “General Terminology,” the ’551 patent repeatedly uses the phrase “when used herein” in combination with the phrase “refer(s) to.” See, e.g., Ex. 2029, 13:56–15:27 (mentioning a term followed by “when used herein,” followed by “refers to,” followed by a definition). For example, the ’551 patent states, “[t]he term digital signal, when used herein, refers to a signal that changes between discrete states, as contrasted to a signal that is continuous.” Id. at 15:7–9. As shown, the ’551 patent defines “digital signal” by stating “when used herein” followed by “refers to.” And, the same sentence also provides a comparison between “digital signal” and a signal that is continuous. Even though the passage describing “storage module” is not listed under the “General Terminology” section of the ’551 patent, the passage provides the same indications that the patentees clearly and unambiguously intended to define the term “storage module” by stating “as used herein” and “refer to”—hallmarks that the patentees were providing a lexicographic definition of the term. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 679 (Fed. Cir. 2015) (“An applicant’s use of the phrase ‘refers to’ generally indicates an intention to define a term.”) (citing In re Imes, 778 F.3d 1250, 1252–53 (Fed. Cir. 2015); Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 1360 (Fed. Cir. 2013); Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1054 (Fed. Cir. 2009)). Additionally, as with the term “digital signal,” the above-passage provides a comparison between “storage module” and “holding module” and uses the definitions of the terms to compare and contrast them. “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above.” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23

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

    “Additional Terms Petitioners propose that we construe the following three terms: “frequency down-conversion module,” “subtractor module,” and “under-samples.” Pet. 15–18. Patent Owner responds to Petitioners’ constructions for “frequency down-conversion module” and “subtractor module.” PO Resp. 39–41. On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24

  Patent outcomesUS 7,110,444 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,444
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 17, 2022 · IPR2022-00246 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 12–15, and 17–20 are unpatentable as obvious over the prior-art combinations; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’835 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26

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

    “differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55

  Patent outcomesUS 7,292,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,292,835
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 17, 2022 · IPR2021-00985 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board held claims 1, 12–15, and 17–20 unpatentable as obvious, including over Hulkko and Gibson and over Gibson and Schiltz.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24

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

    “the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26

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

    “differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55

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

    “argument regarding the second alternative persuasive. In particular, the distinction Patent Owner seeks to draw between Hulkko and Gibson generally, does not undermine Petitioners’ argument and evidence that the particular structures proposed for combination are substantially similar, operate in a similar manner, and would have been expected, by one of ordinary skill in the art, to function predictably and with a reasonable expectation of success, once combined. Notably, we find particularly persuasive Hulkko’s teaching to use its switched capacitors as a mixer to perform down-conversion, which is the same function as Gibson’s mixers. See Ex. 1004, 5:39–49 (“switched capacitor switching elements . . . are used to implement the mixer 11 which directly demodulates the IF-signal into a base-frequency signal”). Accordingly, we find that the combination of Hulkko and Gibson teaches element [1B] and that one of ordinary skill in the” slip op. at 42

  Patent outcomesUS 7,292,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,292,835
• Snap Inc. v. Sanderling Management Ltd.All claims unpatentable
  PTAB · Oct 31, 2022 · IPR2021-00781 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 3, 18, and 20 are unpatentable as obvious over Hogeg; claims 3, 7, 17, 20, 24, and 34 are unpatentable as obvious over Hogeg and Arujunan.

  RulingsFinal written decision

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

    “Petitioner discusses the term “digital media content processing function” in claims 1 and 18 (Pet. 22–25), but states that “the Board needn’t construe [that term] to determine patentability” (Pet. 25). We did not construe that term in the Decision on Institution (Dec. Inst. 27), and Patent Owner takes the position in the Response that that term still does not need construction (PO Resp. 11). We continue to agree with both parties that “digital media content processing function” need not be construed because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “We agree with Patent Owner, however, that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:13– 14 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end-users . . . ”). As argued by Patent Owner, this is sufficiently clear language to express an intent by the patentee to define that term. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 15 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).7 For these reasons, we construe “distribution rule” in elements 1b and 18c in the manner proposed by Patent Owner—“a rule used in determining how to target a group of end-users.”” slip op. at 11

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

    “Elements 1b and 18c require a certain type of “distribution rule”— specifically one “defining a sensor data condition”—which Hogeg teaches for the reasons discussed above, but the claims do not preclude a user initiating the overall process with selection of an image. Stated differently (by Petitioner in the Reply), “whatever initiates Hogeg’s process makes no difference to Hogeg’s ‘distribution rules’” because “Hogeg’s content editing functions are still distributed according to, for example, client terminal location . . . and therefore Hogeg still uses distribution rules that target end users (e.g., users at a particular location).” Pet. Reply 8 (citing Parulski Reply Decl. ¶ 40)).” slip op. at 22

  Patent outcomesUS 10,108,986 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,108,986
• Snap Inc. v. Sanderling Management Ltd.All claims unpatentable
  PTAB · Oct 31, 2022 · IPR2021-00780 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 2, 4–6, 8–16, 18, 19, 21–23, and 25–33 are unpatentable as obvious over Hogeg.

  RulingsFinal written decision

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

    “We agree with Patent Owner, however, that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:13– 14 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end users . . . ”). As argued by Patent Owner, this is sufficiently clear language to express an intent by the patentee to define that term. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 15 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).6 For these reasons, we construe “distribution rule” in elements 1b and 18c in the manner proposed by Patent Owner—“a rule used in determining how to target a group of end-users.”” slip op. at 11

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

    “Petitioner discusses the term “digital media content processing function” in claims 1 and 18 (Pet. 21–23), but states that “the Board needn’t construe [that term] to determine patentability” (Pet. 23). We did not construe that term in the Decision on Institution (Dec. Inst. 26–27), and Patent Owner takes the position in the Response that that term still does not need construction (PO Resp. 11). We continue to agree with both parties that “digital media content processing function” need not be construed because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 19. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Pet. 19–20 (citing Parulski Pet. Decl. ¶¶ 173–174). Prior to institution, Patent Owner did not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. In the Decision on Institution, we adopted Petitioner’s proposed definition, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding, including the prior art.” Dec. Inst. 26. In the Response, Patent Owner also does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See PO Resp 10–11. We maintain the definition of the level of ordinary skill in the art adopted as of institution.” slip op. at 9

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

    “The record supports Petitioner’s argument that the system in Hogeg “targets a group of end-users” in that it assesses which of the users are, for example, at a specific location and then sends only those users a visual editing function relevant to the users’ location. For example, in a passage cited by Petitioner as to a “conditional selection process to select/distribute a subset of functions” (Pet. 33), Hogeg discloses that “if the positional data is indicative that the visual content was captured in New York, a visual content editing function which provides an overlay of the statue of liberty and/ or a sound overlay of the song New York [N]ew York may be provided.” Ex. 1004 ¶ 58, cited at Pet. 33. This system “target[s] a group of end-users” in New York based on sensor data in that other end-users—such as ones indicated as being in California—do not receive the New York overlay. Patent Owner attempts to distinguish Hogeg’s process in that the content editing functions are sent in response to image selection by the user. See PO Resp. 16 (“Thus, what Hogeg discloses is a process for sending content editing functions ad hoc based on the characteristics of specific pieces of content that are manually identified by a user. Nothing in Hogeg, however, teaches a system or process capable of targeting a group of end-users based on a sensor data condition from their mobile devices.”). This distinction, however, is not supported by the claims. Elements 1b and 18c require a certain type of “distribution rule”— specifically one “defining a sensor data condition”—which Hogeg teaches for the reasons discussed above, but the claims do not preclude a user initiating the overall process with selection of an image. Stated differently (by Petitioner in the Reply), “whatever initiates Hogeg’s process makes no difference to Hogeg’s ‘distribution rules’” because “Hogeg’s content editing functions are still distributed according to, for example, client terminal location . . . and therefore Hogeg still uses distribution rules that target end users (e.g., users at a particular location).” Pet. Reply 8 (citing Parulski Reply Decl. ¶ 40)).” slip op. at 21

  Patent outcomesUS 10,108,986 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,108,986
• Snap Inc. v. Sanderling Management Ltd.All claims unpatentable
  PTAB · Oct 31, 2022 · IPR2021-00779 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–11 are unpatentable: claims 1, 2, and 4–10 as obvious over Hogeg; claim 3 as obvious over Hogeg and Arujunan; and claim 11 as obvious over Hogeg and Svendsen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 23–24. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. (citing Parulski Decl. ¶¶ 186–187). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 7–8. We find Petitioner’s proposal consistent with the level of skill reflected in the ’866 patent and the prior art of record. See GPAC Inc., 57 F.3d at 1579. We apply Petitioner’s proffered level of ordinary skill in the art in this Decision.” slip op. at 9

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

    “a network, a Global Positioning System (GPS) location indication from each of a plurality of mobile devices” to mean “an indication, determined by a Global Positioning System (GPS), for the location of each of a plurality of mobile devices at the time of distribution,” as Patent Owner argues. See PO Resp. 11 (emphasis added). Patent Owner’s construction requires receiving a GPS location of a plurality of devices at a specific time—at the time of distribution. This attempt to read in a temporal limitation lacks support for several reasons. First, and most importantly, the claim limitation at issue does not suggest any temporal limitation tied to the generation or receipt of GPS location indications. Instead, the claim requires receiving a GPS “location indication from each of a plurality of mobile devices” without addressing when each device acquires the GPS location indication in any way. Ex. 1001, 23:50–51. Further, the limitation merely requires receiving location indications “from” the devices, not “of” the devices as Patent Owner proposes in its construction. See id. Patent Owner does not adequately address or support this second deviation from the claim language in its proposal. See PO Resp. 9–11.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “specification with persuasive testimony from the vantage point of one of ordinary skill in the art. See Pet. Reply 3–6; Parulski Reply Decl. ¶¶ 20–30. Mr. Parulski testifies that “other than this order of operations, claim 1 imposes no temporal limitation on when the received GPS location information was actually obtained by the mobile device (before it is sent to the server).” Parulski Reply Decl. ¶ 22. Mr. Parulski also testifies that the ’866 patent specification discloses obtaining location indications prior to any distribution of the processing function. Id. ¶¶ 26–28. We find Mr. Parulski’s testimony credible and persuasive because it finds support in the claim language and ’866 patent specification. Based on the foregoing, we decline to adopt Patent Owner’s proposed construction. Instead, we apply the ordinary meaning of the limitation, which does not require a location indication of each device at the time of distribution.7” slip op. at 15

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

    “We find, based on the complete record, that Petitioner has demonstrated by a preponderance of the evidence that Hogeg, as modified, satisfies the remaining limitations in claim 1. We also determine that Petitioner has adequately explained why one of ordinary skill in the art would have modified Hogeg and that there would have been a reasonable expectation of success. e. Conclusion as to Claim 1 “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). Above, based on the full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art; and (4) objective indicia of nonobviousness. In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the art of record; (2) Petitioner establishes sufficiently that Hogeg discloses or renders obvious all the limitations of claim 1 for the reasons provided by Petitioner; and (3) the parties do not introduce or rely upon any objective indicia of nonobviousness. Weighing these underlying factual determinations, Petitioner has shown, by a “any arguments for patentability not raised in the response may be deemed waived”). preponderance of the evidence, that claim 1 of the ’866 patent is unpatentable as obvious over Hogeg.” slip op. at 42

  Patent outcomesUS 9,639,866 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,639,866
• Snap Inc. v. Sanderling Management Ltd.All claims unpatentable
  PTAB · Oct 31, 2022 · IPR2021-00778 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–12 are unpatentable: claims 1, 2, and 4–12 as obvious over Hogeg, and claim 3 as obvious over Hogeg and Arujunan.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that a person having ordinary skill in the art “at the time of the alleged invention would have had at least a bachelor’s degree, or the equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience in research, design, or development of mobile imaging systems and related hardware, software, and firmware, or equivalent experience.” Pet. 21. According to Petitioner, “[a] person with less education but more relevant practical experience, or more education and less experience, may also meet this standard.” Id. (citing Parulski Decl. ¶¶ 173–174). Patent Owner does not dispute Petitioner’s proposed definition of the level of ordinary skill in the art. PO Resp. 8. We find Petitioner’s proposal consistent with the level of skill reflected in the ’412 patent and the prior art of record. See GPAC Inc., 57 F.3d at 1579. We apply Petitioner’s proffered level of ordinary skill in the art in this Decision.” slip op. at 9

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

    “We agree with Patent Owner that the patentee acted as his own lexicographer with the passage from column 6 discussed by the parties. Indeed, the sentence at issue begins with the exact same term—“distribution rule”—and continues by explaining what that term “is.” See Ex. 1001, 6:3–4 (“A distribution rule is a rule used in determining how to target a group of end-users . . . .” (emphasis added)); see also Ex. 1001, code (57) (the Abstract, providing that “[a] distribution rule is used to target a group of end users . . . ”). As Patent Owner persuasively argues, this language expresses an intent to define the “distribution rule” limitation. See PO Sur-reply 6 (citing Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (stating that “the word ‘is,’ again a term used here in the specification, may ‘signify that a patentee is serving as its own lexicographer’”); see also Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Further, we disagree with Petitioner’s assertion that the definition should include the rest of the passage in column 6 (i.e., the language from “for instance” to the end of the sentence). See Pet. Reply 4. By beginning with “for instance,” the express language of that portion of the sentence makes clear that it merely provides examples of “rule[s]” that fall within the definition previously provided in the sentence, as acknowledged by Petitioner and Mr. Parulski. Cf. id. (“The language following that clipped by [Patent Owner] (‘for instance . . . ’) is what provides ‘distribution rules’ examples.”); Parulski Reply Decl. ¶ 22 (“The language following that identified by [Patent Owner] (beginning with ‘for instance, a rule . . . ’) provides examples of what a ‘distribution rule’ may be.”).6 For these reasons, we construe “distribution rule” in claim 1 in the manner proposed” slip op. at 11

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

    “said network, a Global Positioning System (GPS) location indication from each of a plurality of mobile devices” to mean “an indication, determined by a Global Positioning System (GPS), for the location of each of a plurality of mobile devices at the time of distribution,” as Patent Owner argues. See PO Resp. 13 (emphasis added). Patent Owner’s construction requires receiving a GPS location of a plurality of devices at a specific time—at the time of distribution. This attempt to read in a temporal limitation lacks support for several reasons. First, and most importantly, the claim limitation at issue does not suggest any temporal limitation tied to the generation or receipt of GPS location indications. Instead, the claim requires receiving a GPS “location indication from each of a plurality of mobile devices” without addressing when each device acquires the GPS location indication in any way. Ex. 1001, 23:15–17. Further, the limitation merely requires receiving location indications “from” the devices, not “of” the devices as Patent Owner proposes in its construction. See id. Patent Owner does not adequately address or support this second deviation from the claim language in its proposal. See PO Resp. 11–13. Second, none of the other language in the claim addresses when the mobile devices acquire a GPS location indication. Patent Owner relies on later claim language in support of its construction that requires forwarding the processing function to a “mobile device having a GPS location indication which matches said geographic location,” but that limitation does not address when the device acquires the GPS location indication. See Ex. 1001, 23:27–29. The “device having a GPS location indication” refers back to one of the plurality of devices providing a GPS location indication without further modifying that limitation, and the “geographic location” refers back to a “distribution rule defining a geographic location,” which does not refer to when a device acquires a GPS location indication. See id. at 23:13–17, 23:27–29. Third, the specification of the ’412 patent does not require reading the limitation as Patent Owner proposes. As Petitioner points out, the ’412 patent depicts several steps in its process and suggests that the devices may acquire GPS location indications at the time a user captures images, which occurs prior to any time of distribution. See Pet. Reply 6–7 (referring to Ex. 1001, Fig. 7) (citing Parulski Reply Decl. ¶¶ 36–38). This disclosure conflicts with Patent Owner’s construction, and shows that the specification lacks any clear disclosure tying the device GPS location indication to the time of distribution. Patent Owner does not respond to this argument in its Sur-reply. See PO Sur-reply 6–8.” slip op. at 16

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

    “obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). Above, based on the full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art; and (4) objective indicia of nonobviousness. In particular, we find that (1) Petitioner’s proposed level of ordinary skill in the art is consistent with the art of record; (2) Petitioner establishes sufficiently that Hogeg discloses or renders obvious all the limitations of claim 1 for the reasons provided by Petitioner; and (3) the parties do not introduce or rely upon any objective indicia of nonobviousness. Weighing these underlying factual determinations, Petitioner has shown, by a preponderance of the evidence, that claim 1 of the ’412 patent is unpatentable as obvious over Hogeg.” slip op. at 51

  Patent outcomesUS 9,355,412 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,355,412
• Amphenol Corp. v. PPC Broadband, Inc.Instituted
  PTAB · Oct 26, 2022 · IPR2022-00721 · APJ George R Hoskins · IPR · Institution

  The Board instituted review of claims 1–6, 8–19, 21–33, 35–43, 45–50, and 52–62 on both grounds, finding a reasonable likelihood of obviousness over Youtsey, Lionetto, and Horak.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “When applying § 325(d), we utilize a two-part framework. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). First, we determine “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Id. Second, “if either condition of [the] first part of the framework is satisfied,” we consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. In the second part, we consider: (i) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (ii) whether Petitioner has pointed out sufficiently how the Examiner erred in evaluating the asserted prior art; and (iii) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art. Id. at 10–11 (citing factors (c), (e), and (f) of Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential)).” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “analysis overlook that the specific solution proposed by Petitioner’s combination is much simpler than that suggested by Patent Owner. Patent Owner acknowledges the negative effects of RF interference and Petitioner’s evidence, including the discussion in the background section of the ’083 patent, establishes on this record that it was known that preventing RF interference was an important consideration in cable connector design, and that interference is particularly disruptive where an electromagnetic buffer is not provided by an adequate electrical and/or physical interface between the port and the connector. See, e.g., Pet. 17 (quoting Ex. 1001, 1:51–67) (citing Ex. 1005 ¶¶ 61–62). Petitioner’s evidence also establishes that Youtsey’s o-rings protect a center conductor from degradation due to moisture. See id. at 17–18 (citing Ex. 1007, 1:19–22, 2:14–16, 5:50–53). And, Horak specifically provides that a conductive, compressible o-ring can address both issues by blocking RF interference and sealing from the weather, e.g., moisture. See id. at 18 (citing Ex. 1009, 5:4–7; Ex. 1005 ¶¶ 64–66). Thus, we do not agree with Patent Owner that one of ordinary skill in the art needed to be motivated to create a coupler-body grounding path in particular, as opposed to being motivated to modify Youtsey such that the connector was not only sealed off from moisture (which Youtsey already taught), but also blocked RF interference, which was a known issue of concern and which Horak taught could be addressed with the same component that also seals off from moisture. Thus, Horak’s teaching, as applied to Youtsey’s o-rings, results in the element that Patent Owner asserts does not exist in the prior art—a coupler-body grounding path—whether or not creating that coupler-body grounding path was a specific, intended goal prompting one of ordinary skill in the art to make the proposed modification to Youtsey. Accordingly, on the present record, Patent Owner’s argument does not detract from Petitioner’s stated motivation and reasons for the proposed combination.” slip op. at 62

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

    “Patent Owner’s piecemeal arguments in response to Petitioner’s analysis overlook that the specific solution proposed by Petitioner’s combination is much simpler than that suggested by Patent Owner. Patent Owner acknowledges the negative effects of RF interference and Petitioner’s evidence, including the discussion in the background section of the ’083 patent, establishes on this record that it was known that preventing RF interference was an important consideration in cable connector design, and that interference is particularly disruptive where an electromagnetic buffer is not provided by an adequate electrical and/or physical interface between the port and the connector. See, e.g., Pet. 17 (quoting Ex. 1001, 1:51–67) (citing Ex. 1005 ¶¶ 61–62). Petitioner’s evidence also establishes that Youtsey’s o-rings protect a center conductor from degradation due to moisture. See id. at 17–18 (citing Ex. 1007, 1:19–22, 2:14–16, 5:50–53). And, Horak specifically provides that a conductive, compressible o-ring can address both issues by blocking RF interference and sealing from the weather, e.g., moisture. See id. at 18 (citing Ex. 1009, 5:4–7; Ex. 1005 ¶¶ 64–66). Thus, we do not agree with Patent Owner that one of ordinary skill in the art needed to be motivated to create a coupler-body grounding path in particular, as opposed to being motivated to modify Youtsey such that the connector was not only sealed off from moisture (which Youtsey already taught), but also blocked RF interference, which was a known issue of concern and which Horak taught could be addressed with the same component that also seals off from moisture. Thus, Horak’s teaching, as applied to Youtsey’s o-rings, results in the element that Patent Owner asserts does not exist in the prior art—a coupler-body grounding path—whether or not creating that coupler-body grounding path was a specific, intended goal prompting one of ordinary skill in the art to make the proposed modification to Youtsey. Accordingly, on the present record, Patent Owner’s argument does not detract from Petitioner’s stated motivation and reasons for the proposed combination.” slip op. at 62

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, . . . would be led in a direction divergent 9 Lionetto teaches that leaf spring 22 also provides electrical contact through the conductors. Ex. 1008, 2:34–36. from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). We do not agree with Patent Owner that one of ordinary skill in the art would have been led in a direction divergent from that taken by Patent Owner. Although we agree with Patent Owner that Lionetto attributes importance to annular leaf spring 22, Lionetto also attributes importance to conductive elastomer gasket ring 34. In particular, Lionetto expressly attributes the electrical contact to both the spring and the gasket ring. See Ex. 1008, 2:34–36 (“the electrical contact is essentially through the leaf spring 22 and a conductive elastomer 34 against which the tapered surface 27 abuts”). And, Lionetto’s claims repeat the importance of both structures in providing continuous electrical contact and RFI suppression. See id. at 2:50–58 (claim 1) (“an annular electrical spring contact member which functions to provide continuous annular outer conductor electrical contact and RFI suppression . . . even during slight conductor misalignment”), 3:14–20 (“A connector of claim 1, and further comprising an electrically conductive elastomer gasket ring, carried on said male member against which said outer end taper of said female member may engage and compensates for misalignment of said male and female connector halves when fully engaged, providing continuous circumferential electrical contact and RFI suppression.”). Thus, Lionetto supports a finding that one of ordinary skill in the art would have been prompted to use an annular spring, a conductive gasket ring, or both to provide continuous electrical contact and RFI suppression across the connector. But, we disagree with Patent Owner that Lionetto would have led one of ordinary skill in the art away from using a conductive gasket ring in Youtsey, as proposed by Petitioner, because, as explained above, Lionetto uses a conductive gasket ring and expressly attributes the benefits noted above to its use (i.e., continuous electrical contact and RFI suppression). slip op. at 56

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,225,083
• Platform Science, Inc. v. Omnitracs, LLCNo claims unpatentable
  PTAB · Aug 29, 2022 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–4, 6–9, 11, 12, and 15 were not shown unpatentable because Coffee did not disclose the claimed copying, and Coffee combined with Heijden did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In our Initial and Rehearing Decisions, we noted that Patent Owner did not contest Petitioner’s proffered level of ordinary skill in the art at that stage of the proceeding and we found “Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record.” Initial Dec. 13 (citing 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)); Rehearing Dec. 16 (same). Therefore, we adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Initial Dec. 13; Rehearing Dec. 16. In its Patent Owner Response, Patent Owner states that “[f]or purposes of this proceeding, Patent Owner does not dispute Petitioner’s offered level of ordinary skill in the art.” PO Resp. 7. Accordingly, we maintain our preliminary finding by adopting Petitioner’s proposed level of ordinary skill in the art, as set forth above.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “received message 7102 and the header of the response message 7202 are not the same. PO Resp. 25 (citations omitted); Pet. Reply 14. In the Petition, Petitioner argued that “header information” was the same in each message (received and response). Pet. 32 (citations omitted), 36–37. Petitioner relies on Tables 58 and 63, which show “Header.” Id. at 32–33, 37. Petitioner also relies on paragraphs 102 and 118 of Mr. Andrews’s Declaration. Neither the Petition nor Mr. Andrews’s Declaration, however, provide any sufficient basis to find that even a portion of the header or header information is copied from the received message to the response message. Mr. Andrews states his opinion as though it were fact without providing the underlying factual support for his opinion. See Ex. 1003 ¶¶ 102, 118; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). In cross-examination, Mr. Andrews provided additional information explaining which portion of the headers he believes are the same, but he still does not provide any explanation as to why he believes the information is copied. See, e.g., Ex. 2007 at 111:3–25. The same is true of Petitioner’s Reply, which reiterates Mr. Andrews’s deposition testimony, but still fails to provide any reason as to why Coffee’s charts or Mr. Andrews’ testimony necessarily means that Coffee copies a portion of the header from the received message to the response message. See Continental Can Co. U.S.A., Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). And, despite Petitioner’s identification of a “Header” listed in Tables 58 and 63, Coffee does not expressly describe the header or part of the header as being copied from the received message to the response message. The Petition and Mr. Andrews also state that “if Coffee did not employ such copying, the response message would not automatically include information extracted from the received message.” Pet. 38 (citing Ex. 1003 ¶ 118). But, Coffee does not expressly describe the header as being “extracted from the received message” or describe automatically including the header in a response message to make the leap argued by Petitioner and Mr. Andrews. Accordingly, on the full record before us, we find that Petitioner has not established that Coffee explicitly or inherently discloses copying the header or header information and we do not credit Mr. Andrews’ testimony, discussed above, because he fails to provide the underlying factual basis for the opinions offered.” slip op. at 43

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “proceeding and on the full record before us, we do not find that Coffee’s silence is sufficient to support Petitioner’s argument. See Campbell Soup Co. v. Gamon Plus, Inc., 787 Fed. Appx. 731, 739 (Fed. Cir. 2019) (“We do not find any error in the Board changing its understanding of the teachings of [a prior art reference] from the institution decision to the final written decision. ‘The Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced that its inclinations were wrong.’” (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016))). Coffee does not explain the process by which the IOD of the received message is included in the response message; rather, Coffee just states that the response message “contains the IOD of the message being answered.” See, e.g., Ex. 1005, 56:63–67 (see full text quoted above). In particular, although Coffee attributes certain actions to the operator, the lack of attribution to the operator does not necessitate that the only viable possibility remaining is that Coffee copies the IOD from the received message to the response message. Even if it may be said that Coffee probably (or possibly) copies the IOD, that probability is not sufficient to find that Coffee necessarily copies the IOD. See Continental Can, 948 F.2d at 1269 (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).7 Additionally, on the full record before us, we determine that Mr. Andrews’s testimony, as with his testimony as to copying of the header and selected response, fails to provide any factual or underlying support for his opinions expressed therein. See Ex. 1003 ¶¶ 100–102. In particular, the leap occurs in paragraph 102, where Mr. Andrews takes the fact that some information (at least the IOD) from the received formatted message is included with the response message to opine that this means the information is “copied over.” Id. ¶ 102. But, again, Coffee is silent. And because Mr. Andrews did not provide any underlying factual basis for his opinion, we do not credit his testimony as to copying the IOD. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 48

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “generally, including the alleged benefits of such and reasons why one of ordinary skill in the art would have been prompted to include field-mapping information in Coffee’s MDT. See id. at 62–70. None of Petitioner’s discussion, however, explains how the combination of Coffee and Heijden remedies the deficiencies that we identified regarding Petitioner’s challenge based on Coffee. In particular, Petitioner does not assert or explain how the teachings of Heijden would be applied to Coffee such that Coffee would then copy or fill in the specific information from Coffee’s received message to Coffee’s response message, particularly as pertains to the header, Response, and IOD fields (which Petitioner relied on in the first ground), or any other information field from Coffee. The same is true of Mr. Andrews’s testimony. See Ex. 1003 ¶¶ 214–231. Additionally, it appears that Petitioner’s analysis of the combination of Heijden and Coffee maintains the position that Coffee copies information fields. See Pet. 70 (“Given that Coffee’s system already implements field mapping to copy information fields . . . .”). And, Mr. Andrews’s testimony similarly maintains that Coffee copies information fields. See Ex. 1003 ¶ 229 (“Coffee also discloses (at least inherently) field mapping by describing that data is copied from fields in request messages into corresponding fields in response message.”). But, as we explain in detail in the context of Petitioner’s challenge based on Coffee, Petitioner has not shown sufficiently that Coffee copies or fills in information from a received message to a response message. Thus, we do not find and Petitioner does not allege that Ground “1B” fills the gaps identified in Petitioner’s Ground “1A.”10 Accordingly, we determine that Petitioner has not established, by a preponderance of the evidence, that the combination of Coffee and Heijden would have rendered the subject matter of claims 1–4, 7–9, and 12 unpatentable.” slip op. at 60

  Patent outcomesUS 6,925,308 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308

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.