• Hamamatsu Corporation v. Sionyx, LLCSome claims unpatentable
  PTAB · Mar 28, 2018 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 2, 4–11, 13–18, 21, and 23–25 were held unpatentable; claims 12 and 26 were not, based on the stated anticipation and obviousness grounds.

  RulingsFinal written decision

  • BurdenMixed

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the prior art anticipates the challenged claims and how the proposed combinations of prior art would have rendered the challenged claims unpatentable. We analyze the challenges presented in the Petition in accordance with the above-stated principles. slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Souri, testifies that a person of ordinary skill in the art relevant to the ’591 patent “would hold a bachelor’s degree in physics, electrical engineering, or a related discipline, and have at least one year of experience working in the field of semiconductor processing or optoelectronic device design.” Ex. 1010 ¶ 32; Pet. 8. Patent Owner applies Petitioner’s proposed level of ordinary skill in the art for purposes of this proceeding. PO Resp. 7 n.2. Based on our review of the ’591 patent, the types of problems and solutions described in the ’591 patent and cited prior art, the testimony of Petitioner’s and Patent Owner’s declarants, and the arguments and evidence adduced at trial, we agree with and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. See Inst. Dec. 14–15.” slip op. at 17

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “that it would not affect incident light.7 We agree with Petitioner that Nakashiba’s “contact surface S1 is exposed to air, which has a refractive index of about 1, and is formed on a silicon substrate, which has an index of refraction between 3.5-6.5, depending on the wavelength of light,” and “[t]hus, there will be an interaction (reflection and/or refraction) with [incident] light at the contact surface S1.” Reply 6 (citing Ex. 1014 ¶¶ 30, 31); see id. at 7. We credit the testimony of Dr. Souri, who testifies as to differences in the refractive indices of air, silicon, and a finger, and that, when there is a change in refractive index between materials, there is an interaction with light. See Ex. 2012, 119:22–121:16. Dr. Souri further testifies that [W]hen light is incident upon a boundary between materials of different refractive index, both refraction and reflection occur, as is depicted in the diagram above. The fraction of incident light that is refracted, and the fraction which is reflected, may be calculated by Fresnel’s equations, using the angles of incidence and refraction given by Snell’s law. . . . [A] person of ordinary skill in the art would understand that these reflection and refraction effects constitute an interaction with electromagnetic radiation; and, consequently, said person would understand that the roughened surface S1 of Nakashiba satisfies the requirements of the term “interact” as used in the claims of the ’591 patent.” slip op. at 23

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

    “a textured region interacting with electromagnetic radiation in a manner that results in an enhanced response and/or filtering of the radiation, the embodiments do not require the textured region to provide this enhanced response and/or filtering and further, do not define the term “interaction” as an enhanced response or filtering. See Liebel-Flarsheim, 358 F.3d at 908 (“[T]he specification does not describe the invention as limited to embodiments having pressure jackets, and none of the other reasons that have been invoked for giving claims a narrow reading are present.”). The claim language “interact with” is plainly broader than Patent Owner’s proffered construction, and the “position” limitations can be read to encompass features not described in the written description. See Liebel-Flarsheim, 358 F.3d at 908 (“The fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.”)” slip op. at 9

  Patent outcomesUS 8,680,591 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,680,591
• Department Of Justice v. Discovery Patents, LLCSome claims unpatentable
  PTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision

  Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8

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

    “We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10

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

    “We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11

  Patent outcomesUS 7,323,980 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,323,980
• Qualcomm Incorporated v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Aug 23, 2017 · IPR2016-00623 · APJ James B Arpin · IPR · Final written decision

  Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyOther

    “of a “clear” channel is “a channel that is not already in use by a non-frequency hopping communications system” and that the broadest reasonable interpretation of an “occupied” channel is “a channel that already is in use by a non-frequency hopping communications system.”” slip op. at 21

  • Skill levelSkill level petitioner adoptedOther

    “would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art. slip op. at 14

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

    “Id. Thus, Petitioner argues that, because multiple tests must be applied to determine the continued presence of interference regardless of the source, limiting “occupied” to NFH communications systems is overly narrow. Nevertheless, the words chosen by the patentee to describe its invention have significance. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not the PTO’s.”). As noted above, “occupied” is only used in the Specification with respect to NFH communications systems, and neither claims 4 and 19 nor their base claims nor the intervening claims specify a single or multiple tests. Therefore, we find Petitioner’s arguments, which attempt to incorporate the teachings of “bad” and “good” channels from elsewhere in the Specification into the interpretation of these claim limitations, unpersuasive. See Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (“[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 17

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

    “4. Other Claim Terms For purposes of this Decision, we discern no other claim terms that require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting to allow us to construe the terms “occupied” and “clear,” we relied less on Dr. Ding’s testimony regarding how a person of ordinary skill in the art would understand these terms. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”). Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see PO Resp. 7.” slip op. at 21

  Patent outcomesUS 8,873,500 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,873,500
• Qualcomm IncorporatedSome claims unpatentable
  PTAB · Aug 23, 2017 · IPR2016-00620 · APJ James B Arpin · IPR · Final written decision

  Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “F. Assessment of Person of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the relevant art “would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art.” slip op. at 14

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

    “1. “hopping sequence” (Claims 1, 14, 16, and 29 and others) In the institution decisions, we determined that, in light of the Specification of the ’500 patent, the broadest reasonable interpretation of the phrase “hopping sequence” is “the order in which the communications network hops among the set of frequencies.” E.g., 620 Dec. on Inst. 10–11 (citing 620 Pet. 11–12). Patent Owner does not contest this construction. PO Resp. 6–7. For the reasons set forth in the Decision on Institution in Case IPR2016-00620, we remain persuaded that Petitioner’s proposed construction is the broadest reasonable interpretation of the phrase “hopping sequence.”” slip op. at 15

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

    “Petitioner also provides a persuasive rationale for combining the teachings of Dabak and Kockmann. Id. at 39–40. Petitioner asserts that they are both references directed to the same problem, namely, “to communication performance improvements through adapted frequency hopping to avoid channels disturbed by interference.” Id. at 40 (citing Dabak, Abstract; Kockmann, 2:49–3:20; 620 Ex. 1002 ¶ 113). In addition, according to Petitioner, a person of ordinary skill in the art would have had reason to modify the teachings of Dabak regarding the MSD technique in view of the teachings of Kockmann “to utilize multiple channels to communicate with the slave device over the subset of communication channels according to an adapted hopping sequence” in order to accomplish the shared goals of these references. Id. at 40 (citing 620 Ex. 1002 ¶ 113); see In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.”). According to Petitioner, the combination of these teachings “is a simple use of known teachings to yield predictable results.” Id. (citing KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)). Based on our review of Petitioner’s arguments and evidence, we find that Petitioner demonstrates that combined teachings of Dabak and Kockmann teach or suggest all of the limitations of independent claims 1 and 16 and find that a person of ordinary skill in the art would have had reason to combine the teachings of Dabak and Kockmann to achieve the methods of claim 1 and the devices of claim 16. See 620 Pet. 17–20, 33–35, 38–40, 48–49. We conclude that Petitioner has shown by a preponderance of the evidence that independent claim 1 would have been obvious over the combined teachings of Dabak and Kockmann. Moreover, because Petitioner’s arguments for the obviousness of independent claim 16 over Dabak and Kockmann rely on the arguments and evidence presented with respect to independent claim 1, we also conclude that Petitioner has shown by a preponderance of the evidence that independent claim 16 would have been obvious over the combined teachings of Dabak and Kockmann, as well as on its related challenges to dependent claims 2, 3, 5, 8, 9, 12, 14, 15, 17, 18, 20, 23, 24, 27, and 29–31. See 620 Pet. 25–26, 40 (claim 2; citing Dabak, 7:57–60, 8:1–2, Fig. 1; 620 Ex. 1002 ¶ 51, 52), 26–27, 40 (claim 3; citing Dabak, 2:39–40, 3:1–5, 3:50–54, 3:60–62; 620 Ex. 1002 ¶¶ 54, 55), 27–28, 42 (claim 5; citing Dabak, 7:57–67; 620 Ex. 1002 ¶ 57), 28, 44 (claim 8; citing Dabak, 2:58–59; 620 Ex. 1002 ¶ 59), 44–47 (claim 9; citing Kockmann, 7:44–47, 8:39–48; 620 Ex. 1002 ¶¶ 136, 137), 31, 47 (claim 12; citing Dabak, Fig. 3B; 620 Ex. 1002 ¶ 65), 31–32, 47 (claim 14; citing 620 Ex. 1002 ¶¶ 69–75, 152), 32–33, 48 (claim 15; citing Dabak, 3:1–5, 7:57–” slip op. at 31

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

    “Patent Owner contends, however, that the combined teachings of Dabak and Kockmann fail to teach or suggest all of the limitations of claim 4. In particular, Patent Owner contends that, “[a]s described in Kockmann, ‘disturbed’ does not in fact mean ‘occupied,’ but rather it only means that ‘[a] disturbed carrier frequency is thus a carrier frequency onto which a signal is modulated that exceeds a specific threshold.’” PO Resp. 14 (citing Kockmann, 6:43–49). Patent Owner contends that determining whether a channel is “occupied” “requires analysis beyond the measurements called for by Kockmann (i.e.[,] determining more than just the mere presence of a modulated signal ‘that exceeds a specific threshold,’ but rather whether its source was FH or NFH).” Id. at 15; see 620 Ex. 2001 ¶¶ 33–37. Initially, Petitioner again states that Kockmann discloses that “[d]isturbance thereby means that either a disturbance in the actual sense or an occupancy by some other transmitter is present.” Kockmann, 6:41–43 (emphasis added). Patent Owner contends, however, “that a channel ‘occupied’ by an NFH system and a channel ‘disturbed’ by another transmitter are somehow different because an occupancy determination requires additional ‘analysis.’” Reply 10. Nevertheless, we agree with Petitioner that Patent Owner does not show where the claims recite one type of analysis or prohibit another. Id. Thus, we find that the combined teachings of Dabak and Kockmann teach or suggest all of the limitations of claim 4. Petitioner’s arguments with respect to claim 4 apply equally to claim 19. Based on our review of the arguments and evidence, we conclude that Petitioner has established by a preponderance of the evidence that claims 4 and 19 would have been obvious over the combined teachings of Dabak and Kockmann.” slip op. at 34

  Patent outcomesUS 8,873,500 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,873,500
• Arista Networks, Inc. v. Cisco Systems, Inc.Some claims unpatentable
  PTAB · May 25, 2017 · IPR2016-00303 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 7–10, 12–16, 18–22, 25, and 28–31 are unpatentable as obvious over Huey and ATM UNI; claim 2 was not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMixed

    “PO Mot. 13–14. A motion to exclude is the wrong vehicle to challenge public availability, which is a substantive issue that goes to the sufficiency of the evidence, not to admissibility at issue here. FLIR Sys., Inc. v. Leak Surveys, Inc., IPR2014-00411, slip. op., Paper 113 at 4 (PTAB September 3, 2015) (“A motion to exclude is not a vehicle for addressing the weight to be given evidence.”); see also 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“A motion to exclude . . . may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). For the reasons above, we do not exclude Exhibit 1028.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates prior to the critical date. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).” slip op. at 17

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (finding both hair brush art and toothbrush art to be analogous to a claim to a hair brush) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. (citations omitted). The scope of the field of endeavor is a factual determination based on the scope of the application's written description and claims. Bigio, 381 F.3d at 1326. slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “There are two problems with Petitioner’s assertion. First, Petitioner has not shown a reason to combine Kogge with Huey and the ATM UNI Specification. Second, to the extent this reference is used to show the scope and content of the art at the time of the invention, Kogge makes it clear that parallelism and pipelining are different concepts that are “generally discernably different in their general approach.” Ex. 1033, 1. Petitioner has not explained how Kogge shows that putting packets through the pipeline without waiting for the previous packet to finish would be considered operating in parallel given that this reference distinguishes parallel operation from pipeline operation. Petitioner argued at the oral hearing that Patent Owner was advocating “a particular flavor of parallelism, as opposed to what’s understood by normal parallel pipelining.” Tr. 41:6–14. However, neither Petitioner nor its declarant has explained what “normal parallel pipelining” is or what the basis is for us to define “normal parallel pipelining.” Thus, we are not persuaded by Petitioner’s contention that one of ordinary skill in the art would modify Huey to meet the limitation of performing at least two of said steps “in parallel using a pipeline.”” slip op. at 33

  Patent outcomesUS 6,377,577 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,377,577
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Some claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1, 3, 5, and 7–15 are unpatentable as anticipated by Rabinovich; Petitioner did not prove claims 1–15 obvious over Rabinovich.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 16. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 19–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 21. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating object xs if the ratio of cnt(s,xs) over aff(xs) is greater than m, i.e., a non-zero value. PO Resp. 34; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication step. This means that Rabinovich will not replicate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that Rabinovich object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independently of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer. We are not persuaded by Petitioner’s argument that Rabinovich” slip op. at 18

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

    “pieces” Claim 1 recites “each file including a plurality of individual pieces, the pieces containing parts of the files.” Ex. 1002, 25:67–26:1. The other independent claims recite limitations commensurate in scope. Neither party proposes explicitly a construction of the term “piece.” Petitioner argues that “files are inherently composed of pieces in the form of bits that make up bytes, the bytes themselves being pieces of the file.” Pet. 32. Patent Owner argues that construing “piece” to cover “bits and bytes” of a file “would read out the ‘pieces’ limitation from the claim entirely” (PO Resp. at 29–30) and that “one of ordinary skill in the art would not read the ‘pieces’ limitation of the claim to include bits and bytes” (id. at 30). The claims themselves define “piece” by requiring that a “file” have a “plurality of individual pieces,” but do not establish a lower bound—i.e., a minimum number of bits or bytes—to qualify as a “piece.” Patent Owner identifies no support in the ’680 patent for its contention that “piece” or “pieces” excludes a byte or bytes of a file, relying instead solely on the testimony of Dr. Paul S. Jacobs. Id. (citing Ex. 2006 ¶¶ 38, 39). We are not persuaded by Dr. Jacobs’s conclusory testimony. Because “piece” and “pieces” are limited by the claims only to being a subset of a file and because a byte or collection of bytes of a file is a subset of that file, we are persuaded that the broadest reasonable interpretation of “piece” and “pieces” in light of the Specification of the ’680 patent encompasses a byte or bytes. slip op. at 7

  Patent outcomesUS 7,904,680 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,904,680
• Apple Inc. / ZTE Corporation And ZTE (USA) Inc. v. E-Watch, Inc.Some claims unpatentable
  PTAB · May 6, 2016 · IPR2015-01366 · APJ Jameson Lee · IPR · Final written decision

  Claims 12–14 are unpatentable as obvious over McNelley and Umezawa; claims 1–8 were not shown unpatentable because the claimed user interface was not established.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “3. Claims 1, 6, and 12 With respect to claims 1 and 6, as explained below, Petitioner has not established the unpatentability of either claim by a preponderance of the evidence. With respect to claim 12, notwithstanding the arguments and evidence presented by Patent Owner, which are discussed below, we are persuaded by the arguments and evidence presented by Petitioners. Claim 12 has been shown as unpatentable by a preponderance of the evidence.” slip op. at 21

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Id. at 8–10. Despite the representations made by Patent Owner regarding the exchanges between the Applicant and the Examiner during prosecution, we agree with Petitioners that Patent Owner’s proposed constructions for these terms are excessively narrow under the rule of broadest reasonable interpretation. The prosecution history recounted by Patent Owner above indicates that the articulated distinction from the Ida reference centers on Ida’s failure to describe displaying an image selected from within the memory. Whether Ida’s memory stores one image or a plurality of images was not of significance. Under this circumstance, it is not justifiable, under the rule of broadest reasonable interpretation, to require a selection from among a plurality of images stored in memory. The claims are broad enough to encompass storing just one image in memory and having that image selected for displaying and for transmission. The fact that the Specification of the ’871 patent discloses embodiments in which more than one images is stored in memory does not justify importing limitations from the Specification into the claims. See SuperGuide Corp., 358 F.3d at 875. We find no express definition in the Specification of the ’871 patent or in any of the prosecution history identified by Patent Owner, for the terms at issue here, much less one set forth with reasonable clarity, deliberateness, and precision. If a patentee desires to be his or her own lexicographer, the purported definition must be set forth in the specification or prosecution history. CCS Fitness, Inc., 288 F.3d at 1366. Such a definition must be set forth with reasonable clarity, deliberateness, and precision. Renishaw PLC, 158 F.3d at 1249; Paulsen, 30 F.3d at 1480. Patent Owner also identifies nothing in the Specification or prosecution history of the ’871 patent that constitutes a disclaimer or disavowal with regard to these terms that is sufficiently specific so as to require the storage of more than one image in the memory.” slip op. at 13

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

    “Patent Owner argues that “alphanumeric” means “consisting of both letters and numbers and often other symbols,” citing a dictionary definition (Ex. 2009). Id. at 26. The Specification of the ’871 patent does not contain any definition for the term “alphanumeric.” Dictionaries are a relevant source of information, but they are not controlling. We also are cognizant that there are numerous dictionaries and their entries for the same term are not necessarily the same. For example, in this instance, Petitioner has submitted two dictionary definitions for “alphanumeric” that are broader than that offered by Patent Owner: (1) “Consisting of letters or digits, or both, and sometimes including control characters, space characters, and other special characters” (Ex. 1015, 3); and (2) “[a]ny letter of the English alphabet, upper or lower case, or any of the decimal digits, 0 to 9” (Ex. 1016, 3). Reply 5. As discussed above, in this proceeding, we apply the broadest reasonable interpretation, to construe the meaning of claim terms. We note further that, as pointed out by Petitioner (Reply 5), even the definition offered by Patent Owner indicates that an alphanumeric character is a character in an alphanumeric system. Ex. 2009. That would mean although a character cannot be both a letter and a numeral, it still can be an alphanumeric character. Applying the rule of broadest reasonable interpretation, we agree with Petitioner that “alphanumeric” is sufficiently broad to encompass each of these three cases: all numerals, all letters, or a combination of numerals and letters. Patent Owner’s argument to the contrary is unpersuasive, and rejected.” slip op. at 33

  • Skill levelSkill level board ownDecided for patent owner

    “does not expressly set forth a definition. Patent Owner asserts: The technical art associated with the ’871 Patent relates to the field of integrating a camera together with a mobile phone to create a device capable of both audio and image communications on cellular networks. A person of ordinary skill in the relevant art (“POSITA”) of the ’871 Patent would have had at least a bachelor’s degree and/or relevant professional experience in electrical engineering, computer science, or a related field, and at least one year of experience related to the design of both cellular communications devices and digital imaging products. PO Resp. 3–4. We are not persuaded that one with ordinary skill in the art necessarily would have had experience in designing cellular communications devices. Based on the Specification of the ’871 patent, we determine that the invention is not about achieving improvements in cellular communication technology. Rather, it is necessary for one with ordinary skill in the art only to be familiar with what a cellular communication network required as an input source and what the expected format and/or protocol would be for sending and receiving information to and from the cellular network. It is noted that even Patent Owner’s stated definition does not require any actual experience in designing cellular communication devices, but just experience “related to” the design of cellular communication devices. Other than the foregoing, we determine that no express finding is necessary, on this 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).” slip op. at 16

  Patent outcomesUS 7,365,871 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,365,871
• Apple Inc. / ZTE Corporation et al. v. E-Watch, Inc.Some claims unpatentable
  PTAB · May 6, 2016 · IPR2015-00412 · APJ Jameson Lee · IPR · Final written decision

  Claims 12–14 are unpatentable as obvious over McNelley and Umezawa; claims 1–8 were not shown unpatentable because the required user interface was not established.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “The technical art associated with the ’871 Patent relates to the field of integrating a camera together with a mobile phone to create a device capable of both audio and image communications on cellular networks. A person of ordinary skill in the relevant art (“POSITA”) of the ’871 Patent would have had at least a bachelor’s degree and/or relevant professional experience in electrical engineering, computer science, or a related field, and at least one year of experience related to the design of both cellular communications devices and digital imaging products. PO Resp. 3–4. We are not persuaded that one with ordinary skill in the art necessarily would have had experience in designing cellular communications devices. Based on the Specification of the ’871 patent, we determine that the invention is not about achieving improvements in cellular communication technology. Rather, it is necessary for one with ordinary skill in the art only to be familiar with what a cellular communication network required as an input source and what the expected format and/or protocol would be for sending and receiving information to and from the cellular network. It is noted that even Patent Owner’s stated definition does not require any actual experience in designing cellular communication devices, but just experience “related to” the design of cellular communication devices. Other than the foregoing, we determine that no express finding is necessary, on this 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).” slip op. at 16

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

    “The prosecution history recounted by Patent Owner above indicates that the articulated distinction from the Ida reference centers on Ida’s failure to describe displaying an image selected from within the memory. Whether Ida’s memory stores one image or a plurality of images was not of significance. Under this circumstance, it is not justifiable, under the rule of broadest reasonable interpretation, to require a selection from among a plurality of images stored in memory. The claims are broad enough to encompass storing just one image in memory and having that image selected for displaying and for transmission. The fact that the Specification of the ’871 patent discloses embodiments in which more than one images is stored in memory does not justify importing limitations from the Specification into the claims. See SuperGuide Corp., 358 F.3d at 875. We find no express definition in the Specification of the ’871 patent or in any of the prosecution history identified by Patent Owner, for the terms at issue here, much less one set forth with reasonable clarity, deliberateness, and precision. If a patentee desires to be his or her own lexicographer, the purported definition must be set forth in the specification or prosecution history. CCS Fitness, Inc., 288 F.3d at 1366. Such a definition must be set forth with reasonable clarity, deliberateness, and precision. Renishaw PLC, 158 F.3d at 1249; Paulsen, 30 F.3d at 1480. Patent Owner also identifies nothing in the Specification or prosecution history of the ’871 patent that constitutes a disclaimer or disavowal with regard to these terms that is sufficiently specific so as to require the storage of more than one image in the memory.” slip op. at 14

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

    “PO Resp. 34 (emphasis added). We see no reason to disparage the above-referenced reasoning of Petitioners as “boilerplate language” that “does little” to clarify why prior art teachings may be combined. To the contrary, the language conveys substantial meaning. The fact that Petitioners use the same reasoning multiple times does not, somehow, diminish its significance.” slip op. at 51

  • Strike new argumentNew argument disregardedDecided for patent owner

    “purported reasoning, i.e., that a user creating a video message recording for McNelley’s device used as an answering machine obviously would have selected the recorded video greeting for viewing to check if it is satisfactory for actual use, and thus any transmission of the recorded message upon actual use would have been a “subsequent” transmission as is required by claim 6. Tr. 73–75. The argument is inappropriate because it is a new argument raised for the first time at oral argument.4 It would be unjust to Patent Owner to consider it at this late stage, without Patent Owner having had a fair opportunity to respond. See Dell Inc. v. Acceleron, LLC, Nos. 2015-1513, -1514, 2016 WL 1019075, at *6–7 (Fed. Cir. March 15, 2016); CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case IPR2013- 00033, slip op. at 2–3 (PTAB October 23, 2013) (Paper 118) (discussing new argument and demonstrative exhibits at oral hearing). Thus, the argument is not considered. Moreover, the argument does not cure the deficiency that in the answering machine mode, neither dialing controls 186 nor telecamcorder controls 188 is used to cause transmission of the recorded message. During oral argument, counsel for Petitioners presents still another new reasoning, i.e., that if the answering machine answers two calls, then the second transmission would be subsequent to a first display. Tr. 75:16–23. The argument also is belatedly presented, for the first time at oral argument, and thus it is not considered. In any event, like the first new argument mentioned above, this new argument also does not cure the deficiency that in the answering machine mode, neither dialing controls 186 nor telecamcorder controls 188 is used to cause transmission of the recorded message.” slip op. at 40

  Patent outcomesUS 7,365,871 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,365,871
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics, Inc.Some claims unpatentable
  PTAB · Jan 25, 2016 · IPR2014-01204 · APJ Matthew R Clements · IPR · Final written decision

  Claims 51, 56, 57, and 59–61 are unpatentable as obvious; claims 12 and 13 were not shown unpatentable because Broggi did not teach ignoring edges not indicative of objects of interest.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “The premise of Patent Owner’s argument is that evidence that is not based on personal knowledge is not relevant. Personal knowledge is not a necessary condition of relevance. Rather, evidence is relevant if it has any tendency to make a fact more or less probable than it would be without the evidence and the fact is of consequence in determining this case. See FRE 401.” slip op. at 13

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Under the broadest reasonable interpretation, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In the Decision to Institute we determined that neither “algorithmically processes captured image data to a reduced data set” nor “target zone” required express construction. Dec. to Inst. 14–15. Neither party disputes our determination or proposes additional terms for construction.” slip op. at 22

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “upon a public use or a sale; rather, the ground must be based upon prior art in the form of a patent or a printed publication. 35 U.S.C. § 311(b); 35 U.S.C. § 102. The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Neither distribution nor indexing is a necessary condition for being a “printed publication;” rather, the key inquiry is whether or not a reference has been made “publically accessible.” Id. at 1348.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s expert, Dr. Frahm, provided testimony regarding the level of skill in the art. See Ex. 1013 ¶¶ 43–48. Although the level of skill in the art is not discussed in the Petition, Dr. Frahm acknowledged that obviousness is viewed from the perspective of a person of ordinary skill in the art, and applied that standard to his evaluations. Id. at ¶¶ 28–29. That is, Dr. Frahm’s evaluations of the grounds of unpatentability based on obviousness is based on the perspective of a person of ordinary skill in the art at the time of the claimed invention, and this analysis is cited and explained in the Petition. Patent Owner’s contention is unpersuasive, in part, because it does not address the merits of the level of skill in the art provided. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Patent Owner’s assertion fails to address how the level of skill in the art impacted the obviousness analysis.” slip op. at 35

  Patent outcomesUS 8,386,114 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,386,114
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics, Inc.Some claims unpatentable
  PTAB · Dec 21, 2015 · IPR2014-01208 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 2, 3, 5, 7, 11, 12, 18, 19, 21–23, 25, 26, 28, 32–35, 37, 40, and 44–46 are unpatentable; claim 24 was not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “§ 42.64(c). Patent Owner seeks to expunge (vice exclude) the Broggi Declaration (Ex. 1033) because it was not timely served in response to Patent Owner’s first set of objections. See id. at 12; Opp. Reply 1–2.; Ex. 1036, 2; Ex. 2015; 37 C.F.R. § 42.64(b)(2). As the moving party, Patent Owner bears the burden of proof. See 37 C.F.R. § 42.20(c). We address first Exhibit 1033 and then the remaining exhibits in reverse chronological order of their filing. 1. Broggi Declaration (Ex. 1033) As explained above, the Broggi Declaration is not supplemental evidence because the objection to which it was served in response was not proper. Because the Broggi Declaration is not evidence, supplemental evidence, or supplemental information, we expunge it.” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “4. Summary Broggi is a printed article titled “Multi-Resolution Vehicle Detection using Artificial Vision.” The first page makes reference to the 2004 IEEE Intelligent Vehicles Symposium held at the University of Parma in Parma Italy on June 14–17, 2004, and includes a copyright date of 2004 that is consistent with this information. Broggi is not marked with any limitations regarding dissemination. Dr. Frahm, as a person who has chaired an IEEE conference and regularly attended IEEE conferences, states that it is his experience that IEEE papers, such as Broggi, that are presented are made publically available at that conference as is indicated on the face of the paper. Although he did not attend the Symposium, the Senior Director of Publishing Technologies for IEEE, Mr. Grenier, states that IEEE records indicate that Broggi was published and presented as part of the proceedings on the date of the Symposium. The Office Manager of the Internet Archive, Mr. Butler, provides records that indicate that Broggi was posted to a public website no later than October 12, 2004.” slip op. at 34

  • Skill levelDecided for patent owner

    “Petitioner’s expert, Dr. Frahm, provided testimony regarding the level of skill in the art. See Ex. 1010 ¶¶ 43–48. Although the level of skill in the art is not discussed in the Petition, Dr. Frahm acknowledged that obviousness is viewed from the perspective of a person of ordinary skill in the art, and applied that standard to his evaluations. Id. ¶¶ 28–29. That is, Dr. Frahm’s evaluations of the grounds of unpatentability based on obviousness is based on the perspective of a person of ordinary skill in the art at the time of the claimed invention, and this analysis is cited and explained in the Petition. address the merits of the level of skill in the art provided. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Patent Owner’s assertion fails to address how the level of skill in the art impacted the obviousness analysis.” slip op. at 35

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Patent Owner’s Preliminary Response argued that we should deny the Petition based on 35 U.S.C. § 325(d). See Prelim. Resp. 2, 7–12. We considered this argument and declined to exercise our discretion to deny the Petition. See Dec. 12–15. Patent Owner’s current argument adds nothing to 30 We presume the second citation, which is to “§ 315(d)” is a typographical error and “§ 325(d)” was intended. the Petition on that basis.” slip op. at 36

  Patent outcomesUS 7,991,522 mixed
  § 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,991,522

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.