- Marvell Semiconductor, Inc. v. Uniloc 2017 LLCSome claims unpatentablePTAB · Feb 1, 2021 · IPR2019-01350 · APJ Jameson Lee · IPR · Final written decision
Claims 3 and 9 are unpatentable as obvious over Shellhammer; claim 8 was not reached on the merits.
RulingsFinal written decision- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteDecided for patent owner
“Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020) (footnote omitted). This is such a situation. We cannot reach a decision on the merits with respect to whether Petitioner has established the unpatentability of claim 8 under any ground of unpatentability asserted by Petitioner, i.e., (1) obvious over Sherman and Trompower, (2) obvious over Shellhammer and Trompower, and (3) obvious over Shellhammer and Panasik.” slip op. at 77
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“challenged claims indeed do satisfy the requirements of 35 U.S.C. § 119 with respect to the foreign application the priority of which it claims.5 Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). Dynamic Drinkware stated that because the USPTO does not examine priority claims unless necessary, the Board has no basis to presume that a patent is necessarily entitled to the filing date of its provisional application. Id. at 1380. Under the reasoning of Dynamic Drinkware, the same would be true for a foreign application the priority of which has been claimed. Patent Owner has made no substantive showing in this proceeding of actual entitlement to the filing date of the German Application, by satisfaction of all pertinent requirements of 35 U.S.C. § 119. Accordingly, the effective filing date of the ’676 patent is August 8, 2001, not the earlier filing date of German Application No. 100 39 532.5.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“supported by the underlying disclosure of Sherman. Dr. Roy in paragraph 175 of his Declaration (Ex. 1003) cites to column 4, lines 1–8, of Sherman, which states: “The CFP occurs with a regular period, and all 802.11 terminals set their NAV’s during the CFP. To realize such a super frame the following sequence of frames/phases can be used as shown in the graph of FIG. 5.” Ex. 1004, 4:1–5. This disclosure does not indicate, as Dr. Roy concludes, that the control station “relinquish[es]” time to 802.11 CP access if no HIPERLAN/2 transmission requests are pending. Ex. 1003 ¶ 175. We also find unpersuasive Dr. Roy’s testimony that if there is sufficient HIPERLAN/2 traffic, Sherman teaches that the HIPERLAN/2 phase may be extended to very close to the entire superframe. Id. As discussed above, in Sherman, the CFP already is preset, without regard to whether or how many HIPERLAN/2 requests are pending. Ex. 1004, 6:5–6. Dr. Roy’s conclusion is not supported by the disclosure of Sherman and also is not adequately explained.” slip op. at 34
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“III. CONSTITUTIONAL APPOINTMENT Patent Owner argues that Administrative Patent Judges (“APJs”) “are principal officers under the Appointments Clause of the Constitution” “but undisputably are not appointed through the constitutionally-mandated mechanism of appointment for principal officers.” PO Resp. 60. The Federal Circuit, however, addressed this issue and devised a remedy in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1325 (Fed. Cir. 2019) cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13, 2020). Patent Owner argues that the remedy devised by the Federal Circuit “impermissibly rewrites the statutes governing APJs.” Id. at 61. We decline to consider the argument because the Arthrex decision states otherwise. See Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”).” slip op. at 77
Patent outcomesUS 7,016,676 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,016,676 - Marvell Semiconductor, Inc. v. Uniloc 2017 LLCAll claims unpatentablePTAB · Feb 1, 2021 · IPR2019-01349 · APJ Jameson Lee · IPR · Final written decision
Claims 1 and 2 are unpatentable over Shellhammer; claim 5’s patentability could not be reached because its scope is ambiguous.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for patent owner
“Further, even assuming that the Patent Owner successfully shows that the Examiner erred in not accepting the applicant’s foreign priority claim, that does not mean Patent Owner, in this proceeding, is automatically entitled to the filing date of the foreign application. If Patent Owner wished to challenge the prior art status of a reference, after Petitioner satisfied its initial burden of production by arguing the reference is prior art, Patent Owner would then have to demonstrate, in this proceeding, that the challenged claims indeed do satisfy the requirements of 35 U.S.C. § 119 with respect to the foreign application the priority of which it claims.5 Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). Dynamic Drinkware states that because the USPTO does not examine priority claims unless necessary, the Board has no basis to presume that a patent is necessarily entitled to the filing date of its provisional application. Id. at 1380. Under the reasoning of Dynamic Drinkware, the same would be true for a foreign application, the priority of which has been claimed. Patent Owner has made no substantive showing in this proceeding of actual entitlement to the filing date of the German Application, by satisfaction of all pertinent requirements of 35 U.S.C. § 119. 5 “[I]f the effective filing date of what is claimed in a United States application is at issue, to preserve symmetry of treatment between sections 120 and 119, the foreign priority application must be examined to ascertain if it supports, within the meaning of section 112, ¶ 1, what is claimed in the United States application.” In re Gosteli, 872 F.2d 1008, 1011 (Fed. Cir. 1989). Accordingly, the effective filing date of the ’676 patent is August 8, 2001, not the earlier filing date of German Application No. 100 39 532.5.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we have no reason to disagree with Petitioner’s articulation of the level of ordinary skill, which is supported by the testimony of Dr. Roy (Ex. 1003 ¶¶ 62–63), except to note that the open-ended qualifier “or more” as applied to years of experience expands the level to encompass that of an expert, which is inappropriate for the level of 7 Patent Owner has not presented any objective evidence of nonobviousness or any argument in that regard. “ordinary skill.” Petitioner’s articulation without the expansive qualifier appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Therefore, we adopt the Petitioner’s articulation of the level of ordinary skill, but without the expansive qualifier “or more” as applied to the amount of experience. C.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“stations which operate in accordance with a first radio interface standard and/or a second radio interface standard” Claim 1 recites: “stations which operate in accordance with a first radio interface standard and/or a second radio interface standard.” Ex. 1001, 6:24–26. Although Petitioner asserts that no construction is necessary for this phrase and that the plain and ordinary meaning applies, Petitioner nonetheless proposes that the phrase, according to its plain and ordinary meaning, means “stations, each of which operates in accordance with a first radio interface standard, a second radio interface standard, or both.” Pet. 14. Patent Owner asserts that no construction is necessary. PO Resp. 14. Regarding Petitioner’s articulation of the plain and ordinary meaning of the phrase, Patent Owner has not refuted it in any way, and it appears consistent with what the phrase ostensibly indicates. Thus, on the record before us, we accept and adopt Petitioner’s articulation of the plain and ordinary meaning for this phrase. slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“renders the frequency band available for access by the stations working in accordance with the second radio interface standard if stations working in accordance with the first radio interface standard do not request access to the frequency band” Claim 1 recites: “renders the frequency band available for access by the stations working in accordance with the second radio interface standard if stations working in accordance with the first radio interface standard do not request access to the frequency band.” Ex. 1001, 6:32–36. For this phrase, Petitioner asserts that “claim construction is not necessary.”8 Pet. 15. Patent Owner, likewise, “submits that the Board need not construe this claim term.” PO Resp. 14. We agree with the parties that express claim construction of this claim term or phrase is not necessary. Although no additional discussion is necessary, we point out certain inaccuracies in the Patent Owner Response, to avoid potential confusion. slip op. at 16
Patent outcomesUS 7,016,676 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,016,676 - Amazon.Com, Inc. / Amazon Digital Services, Inc. et al. v. Uniloc Luxembourg S.A.Some claims unpatentablePTAB · Aug 1, 2018 · IPR2017-00948 · APJ David C Mckone · IPR · Final written decision
Claims 1–8, 18–22, and 25 are unpatentable; claims 9–17, 23, and 24 are not unpatentable; substitute claims 26–28 are denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The “verify” limitation of claim 1 expressly recites a check based “at least in part on a device identity.” The specification describes such a check as occurring at steps 15 and 16, not step 13. Steps 15 and 16 check whether the device identity is on record and, in response to that check, allow a digital product to be used on a device (steps 17, 18) or start a process to authorize the device. Id. at 5:1–9, 5:13–18. Although steps 15 and 16 are not expressly described as a verification of validity, steps 15 and 16, not step 13, logically track and most closely align with the language of claim 1’s “verify” and “in response to” limitations. Thus, the specification supports Petitioner’s view that the “verify” limitation can encompass checking whether unique device information is reflected in a database as authorized for a license.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“claim 1 is limiting, with Patent Owner arguing that it is and Petitioner arguing that it is not. Id. at 12–13. Patent Owner now argues that “[t]he preambles [of claims 1 and 22] expressly state that the claimed system and method are both directed to ‘adjusting’ the license in terms of its allowed copy count, which the preambles expressly define.” PO Resp. 9. We explained in the Institution Decision, however, that even if the preamble is limiting (e.g., by virtue of it providing antecedent basis (“at least one allowed copy count”) for “set the allowed copy count”), the language “[a] system for adjusting a license for a digital product over time” constitutes a 2 The preamble of claim 25 is not similar to that of claims 1 and 22, and Patent Owner does not propose an “adjusting” limitation for the language “in response to the device identity not being on the record, set the allowed copy count to a first upper limit for a first time period after an initial authorization of the digital product,” as recited in claim 25. statement of intended purpose and does not purport to modify any particular claim language, such as “set the allowed copy count.” Dec. 13–14. Patent Owner argues that our preliminary construction would vitiate the purpose of the preamble language and that, instead, “the claim limitations must be understood in light of the ‘adjusting’ context introduced in the preamble.” PO Resp. 9. However, “the mere fact that a structural term in the preamble is part of the claim does not mean that the preamble’s statement of purpose or other description is also part of the claim.” Marrin v. Griffin, 599 F.3d 1290, 1295 (Fed. Cir. 2010). Rather, the Federal Circuit has held that “a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Thus, an intended purpose set forth in a claim preamble and the context that purpose might provide, without more, are not limiting. Moreover, as Petitioner points out, “the claimed invention could be used to adjust an allowed device limit, at least to a higher limit, thereby satisfying the intended purpose of the invention.” Reply 4.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“On the complete record, we find that DeMello’s authentication, which checks a Passport ID and machine ID against stored records to authenticate a device, discloses executable code for the processor to “verify that a license data associated with the digital product is valid based at least in part on a device identity generated by sampling physical parameters of the given device,” as recited in claim 1 and similarly recited in claim 22.” slip op. at 29
- Obviousness (§103) › KSR rationalesUnpatentableNot shown unpatentableMixed
“The Federal Circuit has cautioned that “references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). That is not the case here. As explained above, both the ’960 patent and DeMello describe precise numbers of days as arbitrary and that their respective inventions contemplate other numbers. We find that it would have been reasonable for the skilled artisan to have selected six days, as recited in claim 6, in light of DeMello’s disclosure.” slip op. at 45
Patent outcomesUS 8,566,960 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Alice · Bilski · Berkheimer · GrahamPatents in suitUS 8,566,960 - Nokia Solutions And Networks US LLC / Nokia Solutions And Networks OY v. Huawei Technologies Co. Ltd.Institution deniedPTAB · Jul 26, 2017 · IPR2017-00592 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 5, 8, 9, 11, 16, 17, and 19 were obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“’575 patent would have been obvious over TS 23.125 and Tdoc ’930. Pet. 66–70. For the reasons explained below, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on this asserted ground.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Based on the record before us, we are unpersuaded by Petitioner’s argument that the challenged claims of the ’575 patent are not entitled to the benefit of the filing date of the Chinese application. As Patent Owner points out, independent claims 1 and 16 do not require determining a charging method to be offline. Prelim. Resp. 14. Rather, the claims recite “determining a charging method” or “determine a charging method,” without specifying offline as a required charging method. Patent Owner points us to where the Chinese application discloses a CRF determining a charging method to be online, as discussed above. See, e.g., Ex. 1031, 19 (cited at Prelim. Resp. 14). We find that such disclosure sufficiently describes the disputed limitations “determining a charging method” and “determine a charging method.”” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Tdoc ’930 is a “temporary document” that contains 3GPP member “contributions for consideration by the Technical Specification Group or Working Group.” Ex. 1013; Ex. 1004 ¶ 17 (declaration testimony explaining that “Tdocs” refer to “temporary documents”). Petitioner asserts that Tdoc ’930 “was publicly available as early as May 23, 2004,” the date on which Petitioner relies as the prior art date. Pet. 33. Petitioner supports this assertion with the declaration testimony of both Dr. Min (Ex. 1003) and Balazs Bertenyi (Ex. 1004). See id. (citing Ex. 1003 ¶ 124; Ex. 1004 ¶ 37). According to Petitioner, Tdoc ’930 qualifies as prior art under 35 U.S.C. § 102(a)4 “because the ’575 Patent is not entitled to the priority date of the [] Chinese priority document.” Id. As discussed above, however, we find that the challenged claims are entitled to the benefit of the filing date of the Chinese application, namely, May 12, 2004. Accordingly, Tdoc ’930 does not qualify as prior art against the challenged claims of the ’575 patent under 35 U.S.C. § 102(a). 4 Because the application for the ’575 patent was filed before the enactment of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), the pre-AIA version of 35 U.S.C. § 102(a) applies in this proceeding. In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that claims 1– 3, 5, 8, 9, 11, 16, 17, and 19 would have been obvious over TS 23.125 and Tdoc ’930.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“It is not sufficient, however, for Petitioner to demonstrate that each of the claim elements is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner must also provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner argues that one of ordinary skill in the art would have found it obvious to combine TS 23.125 and the Tdoc list because, according to Dr. Min, “a POSITA would have followed the instructions explicitly provided by [the Tdoc list], namely include an OCS address.” Pet. 36; Ex. 1003 ¶ 131. We are not persuaded by Petitioner’s argument. Petitioner does not explain sufficiently why one of ordinary skill in the art would have considered combining TS 23.125 and the Tdoc list to arrive at the claimed invention, namely a CRF providing a TPF with address information of a charging system. As to the case where the address information is provided to the TPF by another node (as opposed to being preconfigured in the TPF), we note Petitioner’s explanation that the CRF is the only node that would have provided the TPF with address information because the CRF and the charging system are the only nodes connected to the TPF, and the charging system would not have provided its own address to the TPF. See Pet. 54–55; Ex. 1003 ¶¶ 158–59. However, we find this explanation to be inconsistent with the teachings in TS 23.125 and the ’575 APA. For example, TS 23.125 teaches that “[a] TPF may be served by one or more CRF nodes,” and that “[t]he appropriate CRF is contacted based on UE identity information,” where “UE” refers to “User Equipment.” Ex. 1006, at 8, 16; see also id. at Fig. 7.1 (showing the UE communicating with the TPF). Similarly, the ’575 APA teaches that “the UE sends an Establish Bearer Service Request to the TPF.” Ex. 1001, 4:65–66. These teachings indicate that at least another node, namely the UE, is connected to the TPF. Accordingly, we find that these teachings also indicate that the address information of a charging system could have been provided by the CRF or the UE in the case where the address information is provided to the TPF by another node. As Patent Owner points out, neither Petitioner nor Dr. Min explains why a person of ordinary skill in the art would have combined TS 23.125 and the Tdoc list to arrive specifically at a CRF providing a TPF with address information of a charging system, rather than to arrive at a UE providing a TPF with the address information or at a TPF that is already preconfigured with the address information. See Prelim. Resp. 36 (“Neither Petitioner nor its declarant articulate a reasoning with rational underpinnings as to . . . why such modification would occur specifically to the CRF element of TS 23.125.”); id. at 37 (“the Petitioner had a burden to show why a POSITA in 2004 would have modified the ‘CRF’ element, in particular, of TS 23.125 to add the OCS address rather than modifying another element of TS 23.125”). Accordingly, on this record, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. See Kahn, 441 F.3d at 988.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,798,575 - LG Display Co., Ltd. v. Delaware Display Group LLCAll claims unpatentablePTAB · Jun 23, 2016 · IPR2015-00506 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–5 are unpatentable because Shinohara anticipates them.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Following institution, LG Electronics, Inc. filed timely a Petition and Motion for Joinder in Case IPR2015-01666, challenging the same claims of the ’973 patent on the same ground as that on which we instituted review in this proceeding, plus one additional ground. See Paper 24, 2. LG Electronics, Inc. agreed to abandon the additional ground should IPR2015- 01666 be joined with this proceeding. See id. at 2 n.1. To administer the proceedings more efficiently, we granted LG Electronics, Inc.’s Motion for Joinder, joining Case IPR2015-01666 with the instant proceeding. Id. at 5. For purposes of this Decision, we refer to LG Display Co., Ltd. and LG Electronics, Inc., jointly, as “Petitioner.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner repeats its unsuccessful argument that, “[w]ithout offering a construction for this term, the Petitioner has failed to meet the burden of 37 C.F.R. § 42.104(b)(3).” Id. Petitioner responds that this term (1) does not require construction; (2) is limited to a specific embodiment in the specification; (3) and imports a limitation from the specification into the claims. Reply 3–4. Having considered the full record developed during trial, we agree with Petitioner that this term does not require construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner’s arguments distinguishing the prior art do not rely on a particular construction for this term. See infra.” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“the ’176 grandparent application is insufficient. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997); see also Reply 5–6. We find that the cited disclosures in the ’176 grandparent application do not describe the density, size, depth, or height of the deformities at approximate midpoints between adjacent pairs of light sources. As discussed above, Patent Owner maintains that a skilled artisan reading the ’176 grandparent application would know that “the approximate midpoint between the two light sources is an area farther away from a light source.” PO Resp. 28 (emphasis added). We are not persuaded by this argument, for it does not establish that the approximate midpoint between adjacent pairs of light sources is the only area farther away from a light source. As Petitioner points out, “the increased distance from the light source is not limited to a distance along the length of the panel member, along the width of the panel member, or along any direction at all.” Reply 11. Thus, Patent Owner fails to meet its burden under Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015) (burden of production shifted to patent owner to prove entitlement to earlier filing date).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner
“In view of the foregoing, we determine that Patent Owner has not demonstrated that the ’176 grandparent application, as originally filed, provides written description support for the disputed limitation. Therefore, we determine that claims 1–5 are not entitled to the benefit of the filing date of the ’176 grandparent application and Patent Owner is thus entitled only to the effective filing date of the application for the ʼ973 patent, February 9, 2007. As a consequence, we find that Shinohara qualifies as prior art.” slip op. at 11
Patent outcomesUS 7,434,973 unpatentableClaim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 7,434,973 - Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentablePTAB · Jul 15, 2015 · CBM2014-00060 · APJ Bart A Gerstenblith · CBM · Final written decision
Claims 1–28 are unpatentable for lack of adequate written description under § 112, first paragraph.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“that “hyperlink” is a well-understood term that the ’022 patent uses in accordance with its ordinary meaning. As explained above, the Microsoft Computer User’s Dictionary makes clear that a hyperlink includes a connection to another element or document. Patent Owner points to no persuasive evidence that the ’022 patent describes a hyperlink as separate from this connection such that the connection can be changed with the hyperlink remaining the same. Indeed, the ’022 patent describes “replac[ing] all links in the translated web page 7 with links that point to the translation manager 4” as part of the translation process. Ex. 1001, 3:37–38. Thus, as described in the patent, changing the connection to point to the translation manager requires a new link. This is consistent with the ordinary meaning of a hyperlink as including a specific connection from one document to another element or document. Our preliminary construction of “hyperlink” included “a link or connection” but did not include a recitation of the element or document linked. To resolve the parties’ dispute, consistent with the ordinary meaning and the specification, we conclude, on the full record before us, that one of ordinary skill in the art at the time of the invention would have understood “hyperlink” to mean “a connection between an element in a hypertext document, such as a word, phrase, symbol, or image, and a different element in the document, another hypertext document, a file, or a script.”” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“First, the inter partes reexamination of the ’022 patent is relevant to our consideration of the claim construction issues presented here because claim construction was at issue in the reexamination. Second, we see no risk of undue prejudice that would outweigh the probative value of the documents and evidence submitted in the reexamination. Of note, is that this proceeding is not a jury trial and, thus, the risk of prejudice in this forum is less than what may otherwise exist before a jury. Third, we agree with Petitioner that Exhibit 1013 is not hearsay at least under Federal Rule of Evidence 801(d)(2)(B) because the testimony in Dr. Nakhimovsky’s Declaration was submitted by, and on behalf of, Patent Owner to the Patent Office, thus evidencing that Patent Owner manifested a belief that the statements contained therein were true. Accordingly, Patent Owner’s Motion to Exclude as applied to Exhibit 1013 is denied.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Patent Owner’s first argument is contrary to our constructions of the term “hyperlink” and the phrase “said hyperlink.” As reflected in our construction, “said hyperlink” in each of independent claims 1, 17, and 26, refers back to the original recitation of “one or more hyperlinks” in the original (untranslated) electronic communication. The portion of the specification relied upon by Patent Owner does not disclose providing translation of said further electronic communications when the original one or more hyperlink is activated. Rather, this disclosure indicates that the translation manager may replace all of the links (i.e., hyperlinks) in the translated web page with links that point to the translation manager. These replaced links are in the translated electronic communication (e.g., web page 7), and not in the original untranslated electronic communication (e.g., web page 2). Thus, this disclosure does not reasonably convey to one of ordinary skill in the art that the inventors had possession of a translation manager that provides translation of further electronic communications when the one or more hyperlinks in the original untranslated electronic communication is activated (i.e., one or more hyperlinks with unmodified destination addresses). See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 25
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached
“E. Indefiniteness of Claims 23 and 25–28 Under 35 U.S.C. § 112, Second Paragraph Our determination that each challenged claim is unpatentable for lack of an adequate written description renders it unnecessary to reach Petitioner’s contentions that claims 23 and 25–28 of the ’022 patent are indefinite.” slip op. at 31
Patent outcomesUS 6,857,022 unpatentableClaim construction§ 112 disclosurecites PhillipsPatents in suitUS 6,857,022
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.