- PTAB · Aug 27, 2025 · IPR2025-00574 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–7 on all asserted grounds after finding a reasonable likelihood that Petitioner would prevail on claim 1 over Choe and Workman.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted). Thus, at this stage and on this record, we preliminarily agree that the combination of Choe and Workman teaches the subject matter of limitation [1B] sufficiently to meet Petitioner’s burden on institution.” slip op. at 11
- Skill levelOther
“would have had a Bachelor’s in Computer Science with a focus on computer/machine vision, and at least two years of experience with each of: (1) machine learning (including neural network) methods as applied to machine/computer vision and (2) classical machine/computer vision algorithms (e.g., edge detection, line identification, computation of camera parameters from horizon line, etc.)” and that additional education “could serve as a substitute for the experience requirement.” Pet. 7–8 (citing Ex. 1003 ¶ 77). Patent Owner disagrees with Petitioner’s definition and asserts that a POSITA “would have a bachelor’s degree in engineering or computer science with one- or two-years training and/or experience in design of software for camera/sensor systems in the automotive industry.” Prelim. Resp. 12 (citing Ex. 2003 (Declaration of Scott Andrews) ¶ 35). 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 the parties continue to disagree regarding the level of ordinary skill in the art during trial, we encourage the parties to explain how an automotive-focused definition, or the lack thereof, would affect any obviousness analysis in our final written decision. B. slip op. at 5
- Expert testimonyOther
“For purposes of institution, we find sufficient Dr. Darrell’s testimony that a person of ordinary skill in the art would have been motivated to combine Choe and Workman because Workman discloses predictive models to identify the horizon line (Ex. 1003 ¶ 146), and additionally, because using Workman’s model to identify the horizon line would have been combining known elements (CNNs and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way. Pet. 48 (citing Ex. 1003 ¶ 150). We find sufficient for institution Dr. Darrell’s testimony that because these models were well known, a person of skill in the art would have had a reasonable expectation of success in combining the teachings of Choe and Workman to achieve the method of claim 1. Id. at 49 (citing Ex. 1003 ¶ 150). We have reviewed Mr. Andrews’s testimony to the contrary (Ex. 2003 ¶¶ 71–80) but, at this stage, do not find it persuasive. For example, to the extent Patent Owner and Mr. Andrews assert that Choe does not identify any “shortcomings” that would motivate a POSITA to look for a better approach like that of Workman (see Prelim. Resp. 29; Ex. 2003 ¶ 74), we note that it is “not necessary to show that a combination is ‘the best option, only that it be a suitable option,’” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill,” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (citations omitted).” slip op. at 11
§ 103 obviousnessPatents in suitUS 11,875,580 - 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 - 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 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Feb 8, 2017 · IPR2015-01664 · APJ Justin Busch · IPR · Final written decision
The Board held claims 8–12 and 18–22 not shown unpatentable as obvious over Dulin, Yamaura, Zhuang, and Hwang because the combination did not teach the entire broadcast channel within the core-band.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Upon further review of the ’431 patent, particularly in view of Patent Owner’s arguments supported by Dr. Zeger’s testimony discussed above, we are persuaded that our preliminary partial construction was unreasonably broad to the extent that construction indicated the transmitting a broadcast channel limitation would be met by the transmission of a broadcast channel that is only partially within the core-band. Thus, we agree with Patent Owner that to show that the transmitting “a broadcast channel in an” OFDMA core-band limitation is met, Petitioner must demonstrate that the prior art teaches or suggests transmitting a broadcast channel, wherein the entire channel is contained within the core-band.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“as calling signals) in a “broadcast burst” (including Yamaura’s BCH and FCH) using only a subset of the subcarriers near the center of the bandwidth that makes up the channel. Pet. 27–29, 36–37; PO Resp. 30; Ex. 1003, 1:65–67, 6:5–8, 20:65–67, 21:30–32, 24:6–14; Ex. 1012 ¶¶ 65–68. There is some ambiguity, however, regarding whether Yamaura transmits signals outside of its narrow band during the time slots assigned to the alleged broadcast channels BCH and FCH (e.g., SC1 and SC2 as depicted in Figure 17 of Yamaura). See Ex. 1003, 21:1–43, Fig. 17. After reviewing the relevant portions of Yamaura, we determine Petitioner has not demonstrated by a preponderance of the evidence that Yamaura transmits signals only in its narrow band during the BCH and FCH time slots for the reasons discussed below.” slip op. at 13
- Expert testimonyPetitioner expert creditedOther
“Petitioner argues there are no signals other than calling signals sent during BCH and FCH because “the whole broadcast burst is part of the calling signal.” Tr. 102:17–103:2. However, upon review of the complete record and in the context of Yamaura’s entire disclosure, we credit Dr. Haas’s testimony that Yamaura’s repeated references to calling signals being specific control signals or part of the control signals indicates that Yamaura transmits other control signals during the BCH and FCH time slots. PO Resp. 30–31; Ex. 2001 ¶ 107.” slip op. at 15
Patent outcomesUS 7,787,431 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,787,431 - Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Jan 27, 2017 · IPR2015-01645 · APJ Beth Z Shaw · IPR · Final written decision
Claims 21, 22, 24, 25, 29, and 36 are unpatentable as obvious over the stated combinations of prior art.
RulingsFinal written decision- 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. Yet, we are persuaded that the statement “that’s correct” (in response to the question made during cross examination about his review of the prosecution history of four patents) appears to be a misstatement as to Mr. McNamara’s review of the ’363 patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury, and made other statements during cross-examination that are consistent with his declaration testimony that he reviewed the relevant prosecution history. See Ex. 1003 ¶ 13; Ex. 2006, 154:11–20. We agree with Petitioner that Mr. McNamara’s inconsistent testimony (i.e., “that’s correct”) appears to illustrate a momentary lapse in memory. Compare e.g., Ex. 2006 at 153:11– 15, with id. at 154:11–20. Moreover, Patent Owner has not explained why Mr. McNamara’s testimony displays a lack of understanding of any particular part of the prosecution history, or how such testimony is dispositive to any particular issue in this case. In light of the foregoing, we credit the declaration testimony of Mr. McNamara that he reviewed the prosecution history of the ’363 patent over his cross-examination statement to the contrary. See Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate”) (quoting Velander v. Garner, 348 F. 3d 1359, 1371 (Fed. Cir. 2003)).” slip op. at 8
- Skill levelOther
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In the Institution Decision, we determined that no terms required express construction. Dec. 7. In its Response, Patent Owner proposes constructions for “interface device,” “processing device,” “first signal,” “second signal,” and “third signal.” PO Resp. 9–11. We determine that it is not necessary to expressly construe these terms to resolve the controversy here. To the extent it is necessary for us to construe any additional claim terms in this decision, we do so below in the context of analyzing whether the prior art renders the claims unpatentable.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner contends a person having ordinary skill would have combined the teachings of Frossard with those of Spaur for various reasons, including that both references describe systems for remotely communicating information to a vehicle, and receivers located on the vehicle that receive a signal from a remote device, and because one of ordinary skill in the art would recognize that it would be advantageous to use a device associated with a web site to send a shutdown signal to the vehicle. Pet. 16–17 (citing Ex. 1003 ¶ 49). Petitioner also contends that one of ordinary skill in the art would have combined Spaur and Frossard because it would achieve the predictable result of using a processing device associated with a web site for the controlled shutdown of a vehicle. Id.” slip op. at 14
Patent outcomesUS 7,397,363 unpatentableClaim construction§ 103 obviousnesscites 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 - Microsoft Corporation And Microsoft Mobile, Inc. v. Global Touch Solutions, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01928 · APJ Justin Busch · IPR · Final written decision
Claims 1, 3, and 20 are unpatentable as obvious over Jahagirdar and Schultz because their combination would have been a predictable substitution of familiar touch sensors for keys.
RulingsFinal written decision- BurdenUnpatentable
“III. CONCLUSION Based on the evidence and arguments, Petitioner has demonstrated, by a preponderance of the evidence, that claims 1, 3, and 20 of the ’494 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Jahagirdar and Schultz. IV. ORDER Accordingly, it is: ORDERED that claims 1, 3, and 20 of the ’494 patent have been shown to be unpatentable; and” slip op. at 19
- Skill levelOther
“touch sensors were not limited by size or arrangement, and a person of ordinary skill could have taken the Schultz sensors and put them into touch sensors the size of the buttons on Jahagirdar. Ex. 1017, 138:17–21, 140:2– 13. Additionally, as Dr. Morley acknowledges, the claims of the ’494 patent contain no limitations as to the physical form, internal architecture, or arrangement of the touch sensors. Id. at 172:12–173:10. Patent Owner presents no argument that the proposed combination would have been beyond the capabilities or knowledge of a person having ordinary skill in the art. As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results.”). Patent Owner does not point us to objective evidence of nonobviousness to overcome the textbook case of obviousness here.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Notwithstanding Patent Owner’s position that the proposed combination would increase accidental actuations when grabbing or holding Jahagirdar’s mobile station, Petitioner points to Dr. Morley’s testimony that touch sensors would alleviate accidental actuation by inanimate objects (e.g., “clothes, objects in a bag, [and] surfaces of furniture”). Pet. Reply 2 (citing Ex. 1017, 157:20–158:23; Ex. 2006 ¶ 63). Accordingly, Petitioner argues a person having ordinary skill in the art looking to reduce inadvertent actuation by inanimate objects would be motivated to incorporate Schultz’s touch sensor. Id. at 2–3 (citing Ex. 1023 ¶¶ 4–5). Moreover, Petitioner’s unrebutted evidence in the record demonstrates Schultz’s touch sensor could have been integrated into Jahagirdar’s keys 144 in multiple ways, depending upon what might have been convenient or desirable. Id. at 3–4 (citing Ex. 1015 ¶ 75); Ex. 1023 ¶ 5. For example, a person of ordinary skill would have been readily able to relocate those touch sensors to different locations, or “one of skill could have easily programmed Jahagirdar’s controller such that touch sensor inputs were only recognized at appropriate times for example, depending on whether the mobile station 102 was opened or closed.” Ex. 1015 ¶ 75. In such a way, inadvertent actuation of the touch sensors would be minimized or eliminated.” slip op. at 13
Patent outcomesUS 7,265,494 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,265,494
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.