• Shure Incorporated v. Clearone, Inc.No claims unpatentable
  PTAB · Feb 14, 2022 · PGR2020-00079 · APJ David C Mckone · PGR · Final written decision

  Claims 1–24 were not shown unpatentable because the petitioner failed to prove the asserted §112 grounds and obviousness grounds by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “As we stated in the Institution Decision (at 30), Petitioner’s proposal is reasonable in light of the descriptions in the ’653 patent and prior art, and is supported by expert testimony. We further find that Patent Owner’s proposed addition, that a skilled artisan would have had experience with digital signal processing, is consistent with the descriptions in the ’653 patent and prior art. Because the parties do not contend that their disagreement over “at least” has any bearing on this proceeding, we need not evaluate whether a skilled artisan might have had more than three years of work experience or whether that would lead to vagueness. Instead, we adopt Petitioner’s proposal, with Patent Owner’s addition, and omit “at least”: A skilled artisan would have possessed: (i) a bachelor’s degree in mechanical engineering, electrical engineering, physics, or acoustical engineering that included coursework on the design of acoustic and/or antenna arrays, phased arrays, and/or beamforming; or (ii) three years of work experience in the field of directional microphone arrays; and the skilled artisan would have had experience with digital signal processing.” slip op. at 10

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

    “We disagree with Patent Owner that the claim limitation at issue here specifies a single device that has multiple properties. Rather, claim 1 broadly recites “a ceiling tile combined with the beamforming microphone array.” We agree with Petitioner that the plain language of claim 1 does not require that the entire beamforming microphone array is physically integrated into a single ceiling tile, as combining a ceiling tile and a microphone array is broader than physically installing the microphone array in the ceiling tile. Nor can the language of claim 1 reasonably be read to exclude combining more than one ceiling tile with the microphone array. Where claim 1 assigns specific properties to a ceiling tile, it does so expressly, reciting “the ceiling tile being sized and shaped to be mountable in a drop ceiling in place of at least one of a plurality of ceiling tiles included in the drop ceiling.” Thus, the plain language of claim 1 requires at least one ceiling tile combined in some way with a beamforming microphone array, and each ceiling tile (if there is more than one) is a particular size and shape.” slip op. at 13

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

    “Second, Patent Owner argues that our construction “should reflect the fact the microphones of a [beamforming microphone array] are located in positions relative to each other, by design, to establish constructive interference in one or more preferred beam directions.” PO Resp. 18–19 (citing Ex. 2013 ¶¶ 31–37, 48). Petitioner responds that claim 1 recites “beamforming” broadly and that Patent Owner attempts to limit “beamforming” to one technique out of several, including techniques that determine time delay between microphones rather than knowing the distances between the microphones. Reply 3 (citing Ex. 1029 ¶¶ 11–21). The parties’ competing proposals here are directed to Petitioner’s allegations that CTG System and Levit render the challenged claims obvious. However, as explained below, Petitioner has not established whether CTG System performs beamforming under either proposed construction. Thus, we need not resolve the parties’ claim construction dispute. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 19

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Despite an obligation to identify in the Petition the evidence that supports its indefiniteness allegations,5 Petitioner largely failed to discuss the Specification. Pet. 30; see also Dec. 41 (“Despite enumerating five techniques that it contends exemplify ‘adaptive acoustic processing,’ Petitioner does little to address the description of those techniques in the Specification.”). In one passage cited by Petitioner, the Specification states that an “embodiment of Array 116 may include adaptive acoustic processing that automatically adjusts to the room configuration for the best possible audio pickup.” Ex. 1001, 6:13–16. Petitioner argues that this description “lacks any disclosure providing objective boundaries of the claim’s scope, either through definitions or working examples.” Pet. 30. Petitioner also acknowledges that the Specification “discusses acoustic echo cancellation (in general) as an additional feature from adaptive acoustic processing,” and admits that a skilled artisan “would have recognized that echo cancellation processing occurring automatically in response to a room configuration would be a meaning of adaptive acoustic processing.” Id. at 35 (citing Ex. 1001, 6:5–22). However, Petitioner does not discuss the rest of the Specification in the Petition. Petitioner should have addressed in the Petition the express descriptions of Dr. Vipperman’s enumerated examples of adaptive acoustic processing in the Specification in order to support its 5 Our rules require Petitioner to make its case in the Petition, including identifying “[h]ow the challenged claim is to be construed,” “the specific part of the claim that fails to comply with the statutory grounds raised and . . . how the identified subject matter fails to comply with the statute,” and “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.204(b). Indeed, “[t]he Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. at § 42.204(b)(5). otherwise conclusory statement that “[n]one of these techniques are described in the specification,” Pet. 32. If it was Petitioner’s position that these express descriptions were nevertheless not examples of adaptive acoustic processing, Petitioner should have made those arguments in the Petition.” slip op. at 24

  Patent outcomesUS 10,728,653 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 10,728,653
• Google LLC / Samsung Electronics Co., Ltd. et al. v. Parus Holdings, Inc.All claims unpatentable
  PTAB · Oct 19, 2021 · IPR2020-00846 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 2, 4–7, 9, 10, 13, and 14 are unpatentable as obvious over the stated prior-art combinations.

  RulingsFinal written decision

  • BurdenNew argument disregardedDecided for petitioner

    “According to our rules, “[a]rguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). For example, the Board has explained that “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 35–36 (November 2019) (“TPG”)3 (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of Mr. Lipoff, contends that a person of ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” and that “[m]ore education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–48). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On the complete record, we are persuaded that Petitioner’s proposal is consistent with the technology 7 The complete record does not include allegations or evidence of objective indicia of nonobviousness. described in the Specification and the cited prior art and adopt Petitioner’s proposed level of skill.” slip op. at 26

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

    “proposed combination with Kovatch. PO Resp. 37. According to the Federal Circuit, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Mouttet, 686 F.3d 1322, 1333–34 (Fed. Cir. 2012) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)) (alteration in original). However, “the ‘mere disclosure of alternative designs does not teach away.’” Id. at 1334 (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Indeed, “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” Id. (citing Gurley, 27 F.3d at 553). Specifically, Patent Owner (PO Resp. 37), points to disclosure in Neal describing disadvantages of a keyword search strategy (e.g., “users must be familiar with the appropriate key word terms that are likely to yield the desired data records”) and disadvantages of a classification search strategy (e.g., “users may not always anticipate the proper classification of certain records, and may search the wrong categories for their desired database record”). Ex. 1007, 2:16–65. Neal then describes a “preferred embodiment” in which “the system manager will expand the scope of the search strategies from ‘exact’ string matches, along a continuum of search methodologies, including perhaps fuzzy logic strategies.” Id. at 7:14–17. According to Neal, “[t]he purpose of expanding the search strategies is to avoid the situation wherein the search fails to identify the desired item from any data set, and thereby drops into logical block 222 a negative search result is reported to the user.” Id. at 7:28–32. Patent Owner argues that “Neal advocates for employing a sequence of search algorithms from the narrowest to the most broad.” PO Resp. 38 (citing Ex. 1007, 7:56–58; Ex. 2059 ¶ 124). Patent Owner contends that Neal teaches away from a combination “that employs a single keyword matching search strategy.” Id. Patent Owner argues that Petitioner’s combination of Kovatch and Neal results in a system that only sequentially searches datasets using a single keyword matching search strategy, and not the cascading sequence of search methodologies described by Neal. Id. at 37–39. We do not agree with Patent Owner that Neal teaches away from a system that employs a single keyword matching search strategy. Indeed, Neal’s preferred embodiment expressly contemplates such a system. For example, Neal describes employing a first “exact string search” methodology to search a first data set (Figure 2, block 206). Ex. 1007, 6:34– 46. This appears to be what Patent Owner considers a “single keyword matching search strategy.” PO Resp. 37–38. Neal describes that if this search of the first data set does not yield a match, the system searches a second data set using a second search methodology (Figure 2, block 210). Ex. 1007, 6:47–52. However, in the preferred embodiment there is no requirement that the second search methodology in 210 must be different from the first search methodology in 206. For example, if the first preferred supplier did not yield an exact string match to the input search term, the same search methodology could be applied to a second preferred supplier’s catalog. Id. at 6:59–65. Thus, Neal expressly teaches using a single keyword search strategy on a first dataset and the same keyword search strategy on a second dataset, without necessarily employing a cascading sequence of different search methodologies. See Reply 19.” slip op. at 39

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

    “advertisements while waiting for information to be retrieved; rather, it first retrieves the requested information and then generates an audio stream with both the commercials and retrieved information. Reply 22–23 (citing Ex. 1005, 14:1–8, 18:1–15; Ex. 1057 ¶ 18). Petitioner’s characterization of Kovatch is correct (and Patent Owner’s incorrect). Kovatch’s system first navigates to a destination and retrieves requested information (step 6), then generates commercials (step 8), then intermixes the commercials and information (step 9), and finally returns speech to the user (step 10). Ex. 1005, 14:1–8. We find unavailing Patent Owner’s argument that, when combined, Neal’s teachings would have an adverse impact on Kovatch’s generation and presentation of advertisements.” slip op. at 45

  Patent outcomesUS 7,076,431 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 7,076,431
• Google LLC / Samsung Electronics Co., Ltd. et al. v. Parus Holdings, Inc.Other
  PTAB · Oct 19, 2021 · IPR2020-00847 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1, 2, 4–7, 10, and 14 are unpatentable as obvious over Kurganov-262 and Chakrabarti; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “Turning now to obviousness, Petitioner identified disclosure within Kurgonov-262 and Chakrabarti which teaches or suggests the limitations of claim 1. Pet. 11–21. Furthermore, Petitioner identified multiple reasons that would have prompted the skilled artisan to combine the teachings of Kurganov-262 and Chakrabarti to arrive at the subject matter of claim 1. Id. at 21–22. Because Patent Owner focused its arguments solely on the issue of whether Kurganov-262 is prior art, Petitioner’s assertions regarding the substantive teachings of Kurganov-262 and Chakrabarti remain unrebutted on the complete record. PO Resp. 31–34; Sur-reply 1–3. Patent Owner likewise failed to substantively address Petitioner’s proffered reasons why the skilled artisan would have been motivated to combine these teachings. PO Resp. 31–34; Sur-reply 1–3. We have reviewed the disclosures of Kurganov-262 and Chakrabarti relied on by Petitioner, as well as the explanations provided by Mr. Lipoff, and are persuaded that the limitations of claim 1 are disclosed in the prior art. Pet. 11–21; Ex. 1002 ¶¶ 103–109; Ex. 1004; Ex. 1008. Petitioner also persuades us that the skilled artisan would have been motivated to apply Chakrabarti’s techniques for web crawling to Kurganov-262’s system, and would have had a reasonable expectation of successfully doing so, thus arriving at the subject matter of claim 1 of the ʼ084 patent. Pet. 21–23; Ex. 1002 ¶¶ 110–114. Therefore, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 of the ʼ084 patent would have been obvious over the combined disclosures of Kurganov-262 and Chakrabarti.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner describes a person having ordinary skill in the art as having “a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing. More education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–47). Patent Owner does not contest Petitioner’s definition of the skilled artisan. See generally, PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Moreover, the level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Thus, on the complete record, we accept Petitioner’s assessment of the level of one of ordinary skill in the art. C. Asserted Obviousness based on Kurganov-262 and Chakrabarti” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Rather, on the complete record, Patent Owner makes inadequately supported assertions regarding what the skilled artisan “would understand” based on the ʼ084 patent’s disclosure. See PO Resp. 33–34. For example, Patent Owner asserts that “[a] POSITA would understand that” polling or pinging “describes a process where by existing and new devices and/or websites are discovered,” and that “‘polling’ includes asking for information from a website, including a listing of URLs or asking a website of a search engine to provide new website information.” Id. at 34 (citing Ex. 2059 ¶¶ 154–155). We reject this line of argument because we afford minimal weight to Patent Owner’s reliance on paragraphs 153–155 of Exhibit 2059. PO Resp. 33–34. These declaration paragraphs provide little detail beyond what is argued in the Patent Owner Response. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “We are persuaded by Petitioner’s arguments that sufficient written description support does not exist in the ʼ996 application for “limitation 1.i” which requires the computing device to be “configured to periodically search via the one or more networks to identify new web sites and to add the new web sites to the plurality of web sites.” Pet. 6–11. Thus, we determine that Kurganov-262 is available as prior art against the challenged claims. On the complete record, Patent Owner fails to direct us to specific disclosure within the ʼ996 application that evinces written description for limitation 1.i. Rather, Patent Owner’s citations to the ʼ084 patent fail to describe with adequate precision a computing device configured to periodically search the network(s) to identify new web sites and add such new web sites to the plurality of web sites that are accessed. See PO Resp. 31–34.” slip op. at 20

  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,451,084
• Election Systems & Software, LLC v. Hart Intercivic, Inc.All claims unpatentable
  PTAB · Sep 1, 2021 · PGR2020-00031 · APJ Jason M Repko · PGR · Final written decision

  Claims 1–30 are unpatentable: claims 1–5, 15–19, 25, and 11–14, 28 on obviousness grounds; claims 6, 7, 9, 10, 23, 24, 29, 30 on anticipation; claims 20–22 on obviousness.

  RulingsFinal written decision

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

    “On September 2, 2020, we instituted an inter partes review of all challenged claims based on all grounds in the Petition. Paper 6 (“Inst. Dec.”). Patent Owner filed a Response. Paper 14 (“PO Resp.”). Petitioner filed a Reply. Paper 19 (“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 20 (“Sur-reply”). An oral hearing was held on July 6, 2021. A transcript of that hearing has been entered into the record. Paper 28 (“Tr.”).” slip op. at 2

  • Skill levelDecided for petitioner

    “B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art at the time the ‘966 patent was filed (“POSITA”) would have had at least a Bachelor’s degree in electrical engineering or computer science or an equivalent field, or equivalent work experience and, in addition, at least two years’ experience with electronic voting machines, including familiarity with ballot marking devices (“BMDs”), optical character recognition, bar codes and hash functions. Pet. 24 (citing Shamos Decl. ¶¶ 50–51). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 6. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. (PO Resp. 3). We continue to find that the level of ordinary skill identified by Petitioner (Pet. 24) is consistent with the record. See Inst. Dec. 6. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 6

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

    “testimony also support Petitioner’s conclusion that the accuracy of Brockhouse’s OCR could be improved. Pet. 56; Ex. 1005, 1:20–21 (disclosing that OCR is error prone); Shamos Decl. ¶ 231. On this record, Petitioner provides sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “4. Claims 7, 9, 10, 24, and 30, Anticipation The Petition states that the statutory basis for challenging claims 7, 9, 10, 24, and 30 is “35 U.S.C. §§ 102 and/or 103.” Pet. 3. In this section, we consider anticipation under Section 102. Patent Owner does not contest Petitioner’s analysis. See generally PO Resp.; PO Sur-reply. Upon review of the entirety of the record, we credit the undisputed testimony of Dr. Shamos and are persuaded by Petitioner’s uncontested analysis. In particular, claims 7 and 24 depend from claims 6 and 23, respectively. Both claims 7 and 24 add “wherein the bar code is utilized to confirm the printed vote record is valid.” Ex. 1001, 9:30–31 (claim 7), 11:18–19 (claim 24). For claims 7 and 24, Petitioner asserts that Nadaf counts the vote only after confirming that the PVR is valid. Pet. 70 (citing Ex. 1007, 6:2–10). In the cited passages, Nadaf refers to the process as “confirming the institutional provenance and integrity of the content of the printed vote.” Ex. 1007, 6:2–6. According to Nadaf, “Only after being audited will the printed vote be validated for counting.” Id. at 6:7–10. On this record, Petitioner supports the assertion that Nadaf confirms the printed vote’s validity with the bar code, as recited. See Pet. 69–70. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 7 and 24 are anticipated by Nadaf. Claim 9 recites a “two dimensional bar code.” Ex. 1001, 9:35–36. Claims 10 and 30 recite “a QR code bar code” Id. at 12:34–35. As for claims 9, 10, and 30, Petitioner asserts that Nadaf’s PVR contains both voter-readable text and a bar code encoded with voter selections. Pet. 71 (citing Ex. 1006, Fig. 4). Petitioner asserts that (1) Nadaf’s Figure 4 shows an example QR code and (2) a QR code is a two-dimensional bar code. Id. (citing Ex. 1007, 18:9; Ex. 1003 ¶ 296). On this record, Petitioner shows that Nadaf discloses the two-dimensional bar code that is a QR code, as recited in claims 9, 10, and 30. Thus, we determine that Petitioner has shown by a preponderance of the evidence that claims 9, 10, and 30 are anticipated by Nadaf.” slip op. at 56

  Patent outcomesUS 10,445,966 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,445,966
• U.D. Electronic Corp. v. Pulse Electronics, Inc.All claims unpatentable
  PTAB · Jul 22, 2020 · IPR2019-00511 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1, 3–9, and 11–16 are unpatentable; the motion to amend is denied for substitute claims 17, 20, and 21 as indefinite and granted for claims 18, 19, 22, and 23.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner states that a person of ordinary skill in the relevant art in of the ’302 Patent would have had a bachelor’s degree in electrical engineering, or mechanical engineering, with two or more years of experience designing connectors with EMI shielding. Pet. 24 (citing Ex. 1006 ¶¶ 55–58). Patent Owner’s definition of a person of ordinary skill in the relevant art is largely the same, urging a similar amount of education and experience, detailing “at least one year of experience with electrical connectors having internal electronic components, or at least two years’ experience with designing electrical connectors having internal electronic components.” Prelim. Resp. 18 (citing Ex. 2002 ¶ 27). We determined previously that the proffered definitions were largely the same and we determined them to be appropriate for the technology addressed by this proceeding. Inst. Dec. 7. Patent Owner subsequently agreed that “there are not meaningful differences between the parties’ definitions of a POSITA for purposes of this proceeding.” PO Resp. 9–10. We continue to adopt Petitioner’s definition for purposes of this decision.” slip op. at 10

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

    “After review of the proffered arguments, we remain persuaded that Petitioner’s construction is consistent with the plain and ordinary meaning in the context of the ’302 Patent. Patent Owner cites to multiple cases regarding the use of embodiments of the invention set forth in the specification to interpret limitations, despite claim language that could be interpreted more broadly. PO Resp. 16–18; PO Sur-reply 8–10 (citing Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1301–02 (Fed. Cir. 1999); Gen. Am. Transp. Corp. v. Cryo–Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996); Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1550–51 (Fed. Cir. 1996)). We determine that the portions of the specification cited by Patent Owner are not express or implied definitions of the term “effectively curved portion.” See Phillips at 1321 (the specification “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”). Patent Owner continues that “the only embodiments disclosed in the ’302 Patent have the substrates positioned substantially orthogonal and substantially vertical to the face of the housing,” and “the run of the conductors must make an approximately 90° change in direction to provide an electrical interconnection.” Id. at 18. Such arguments and case law would be pertinent if we interpreted claim 1, for example, as requiring substrates to not be orthogonal or if we required the “effectively curved portion” to not result in a 90° change in direction. We do not interpret claim 1 that way, so Patent Owner’s arguments are not persuasive. disclosure into a claim that does not recite such requirements. It is improper to add a limitation appearing in the specification and the drawings, but not appearing in the unambiguous language of a claim. See Gart v. Logitech, Inc., 254 F.3d 1334, 1343 (Fed. Cir. 2001). This is particularly true where the specification does not define the term at issue to include that additional limitation or otherwise include language requiring it. Claims 1–3, 7, 9, and 13–16 recite, in part, that the first conductors include an “effectively curved portion,” and each claim recites that limitation unambiguously. Although we acknowledge the varying embodiments disclosed in the ’302 Patent, we are persuaded that confining the “effectively curved portion” to be “approximately 90º” is overly narrow. We continue to determine that adopting Patent Owner’s construction would unduly limit the cited claims, i.e., claims 1–3, 7, 9, and 13–16, by importing limitations that are not part of the claims. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). As such, we continue to determine that “effectively curved portion” should be construed as any form of bend of the first conductors.” slip op. at 15

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

    “unpersuasive because the unfiltered connector of Hughes does not disclose an internal board, and that any combination of Kan with Hughes would result, at most, in the “second conductors,” but not the “first conductors,” being bent so that the internal conductors mate with the internal substrate. PO Resp. 43 (citing Ex. 2006 ¶¶ 124, 128). Patent Owner additionally asserts that the reorientation envisioned by the combination would add to material costs, reduce performance due to longer conductor runs, necessitate additional alterations, and provide no space savings or advantage. Id. at 43– 44 (citing Ex. 2006 ¶¶ 122, 129). Petitioner responds that the rationale for combining Kan and Hughes merely involves a design choice, and would apply a known technique to a known device to yield predictable results in an improved system. Pet. Reply 19–20 (citing KSR, 550 U.S. at 415–421). We agree with Petitioner. “The test for obviousness is not whether the features primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Any modification of a prior art device will result in changes thereto, as a matter of course; the question, rather, is whether there existed sufficient motivation for a person of ordinary skill to make the proposed modifications in light of the evidence of record. We find that Petitioner’s evidence of the benefits resulting from the combination, i.e., saving space for the connector assembly and reorienting the plug-receiving opening for insertion of a connector plug in accordance with the desired implementation based on where the housing is mounted, provide sufficient motivation to make these changes, and that Patent Owner’s arguments about the materials costs and possible reduced performance are insufficient to defeat the evidence of motivation to combine.” slip op. at 35

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

    “Kan is the product of impermissible hindsight, and the combination would change the basic principles of operation of the connectors for which they were designed. PO Resp. 45–47. Patent Owner argues that “Hughes was designed to operate by mounting to an external circuit board, and Kan was designed to operate by engaging a circuit board inside of the housing,” and their combination would render Kan unfit for its intended purpose of supporting a compact size. Id. at 46–47. We do not agree. Mr. Baxter has acknowledged that Hughes and Kan are analogous technologies directed to the common problem in the art of incorporating a circuit board with a connector so that it may offer additional functions. See Ex. 2006, ¶¶ 145– 148. We disagree that the combination of Kan and Hughes would change combination of Kan and Hughes would not be the same as the individual connectors, and we are not persuaded that the size of Kan would need to be increased such that it would be unfit for its intended purposes. As such, we do not determine Patent Owner’s argument to be persuasive.” slip op. at 36

  Patent outcomesUS 6,773,302 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 6,773,302
• Amazon.Com, Inc. / Amazon Digital Services, Inc. et al. v. Uniloc Luxembourg S.A.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Alice · Bilski · Berkheimer · Graham
  Patents in suitUS 8,566,960
• Alcohol Monitoring Systems, Inc. v. Soberlink, Inc.Other
  PTAB · May 3, 2016 · IPR2015-00556 · APJ David C Mckone · IPR · Final written decision

  The Board canceled claims 6–8, 12–14, and 18–20 at Patent Owner’s request and denied entry of substitute claims 23–28 for lack of written-description support and failure to show nonobviousness.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “only upon Patent Owner’s having demonstrated the patentability of the substitute claims. As the moving party, Patent Owner bears the burden of proof to establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c). The amendment must respond to a ground of unpatentability involved in the trial and must not seek to enlarge the scope of the claims or introduce new subject matter. See 37 C.F.R. § 42.121(a)(2). As we have stated, “[f]or a patent owner’s motion to amend, 37 C.F.R. § 42.20(c) places the burden on the patent owner to show a patentable distinction of each proposed substitute claim over the prior art.” Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). Such prior art may include: a. any material art in the prosecution history of the patent; b. any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and c. any material art of record in any other proceeding before the Office involving the patent.” slip op. at 4

  • Strike new argumentNew argument consideredDecided for patent owner

    “Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the Director.” 35 U.S.C. § 316(d)(2). To that end, 37 C.F.R. § 42.121(c) provides: In addition to the requirements set forth in paragraphs (a) and (b) of this section, any additional motion to amend may not be filed without Board authorization. An additional motion to amend may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement. In determining whether to authorize such an additional motion to amend, the Board will consider whether slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “had a BS degree in engineering, knowledge of cellular telephone technology, and two to four years of experience designing, optimizing, and/or testing portable, battery-operated products. Pet. 18. Petitioner supports its argument with Mr. Wojcik’s testimony (Ex. 1124 ¶¶ 57–60), which does not itself cite evidence. In its Motion, Patent Owner argues that a skilled artisan would have had at least two to five years of experience working in the field of sobriety monitoring, developing sobriety monitoring and treatment programs. Mot. 4. Patent Owner also argues that a skilled artisan would have had a practical understanding of methodologies used to monitor sobriety and an understanding of human behavioral patterns as they relate to alcohol addiction. Id. at 4–5. Patent Owner cites to Dr. Jaffe (Ex. 2000 ¶ 13), whose testimony is as conclusory and devoid of evidence as Mr. Wojcik’s. In IPR-577, we found that the level of ordinary skill in the art is reflected in the prior art itself, reflects solutions to engineering problems, and does not require a physician’s knowledge of the behavior of alcoholics. IPR-577 FWD, 17–19. On the record of the current proceeding, considering similar testimony and substantially the same prior art, we maintain the finding 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 27

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

    “We read the Specification’s use of “discrete” rather than “discreet” to be an obvious typographical error. We note that the Specification includes other instances in which it erroneously uses “discrete” where context calls for “discreet.” For example, in describing concerns with remote monitoring of blood alcohol levels using ankle bracelets, the Specification explains that “users are often stigmatized by their indiscrete presence and therefore find healthy societal interaction while wearing such bracelets difficult.” Ex. 1102, 2:14–17 (emphasis added); see also id. at 1:66–2:5 (“Thus, the discrete remote monitoring of a person under such a program by the court, or other authority, without requiring the monitored person to excuse themselves from society for more than a brief period of time would be useful in reintegrating the monitored person into society without the awkward and embarrassing effects of traditional monitoring procedures.”). Thus, the use of “discreet” in the proposed substitute claims is not new matter. Petitioner further contends that this claim phrase “wherein the case is a size that can be discreetly concealed” is indefinite. Specifically, Petitioner argues that the Specification provides “no reasonable certainty as to how big a manufacturer needs to make the breath testing device case such that the skilled artisan would consider the case to not be discreetly concealable.” Opp. 9. We are not persuaded that this limitation is indefinite. Rather, the Specification provides a standard for measuring whether a device can be discreetly concealed, namely “it is readily able to be carried by hand, or inserted in to a handbag, purse, pocket or the like.” Ex. 1102, 5:47–50. This is consistent with the dictionary provided by Petitioner, defining “discreet” to mean “unobtrusive, unnoticeable.” Ex. 1162. Thus, “wherein the case is a size that can be discreetly concealed” means that the size is unobtrusive such that it can be carried by hand, or concealed in a handbag, purse, pocket, or the like. Nevertheless, a device of “a size that can be discreetly concealed” is not distinguishable from “[a] portable, cordless, hand-held” device, as recited in original claims 1 and 15. That language is supported by the same description in the Specification. Tellingly, Patent Owner also provides constructions for “hand-held” and “portable,” namely “designed to be operated while being held in the hand” and “easy to carry or move around,” respectively. Reply 4. At the oral argument, Patent Owner was unable to provide a meaningful distinction between a device that can be discreetly concealed and one that is portable and handheld. Tr. 11:19–13:4. We see no evidence that sufficiently supports a distinction between these two phrases.” slip op. at 14

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,381,573
• Apple Inc. v. Tracbeam, LLCInstitution denied
  PTAB · Feb 12, 2016 · IPR2015-01700 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Apple had not shown a reasonable likelihood that claims 1–3, 6, 7, 15, 17, 18, 20, 21, 23, 24, 27–29, 32, 33, 35–39, and 42 were obvious over PCT ’307 …

  RulingsInstitution decision

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

    “LLC, filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows 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).” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “1. Whether the ’153 Patent is Entitled to the Filing Date of the ’367 Application Petitioner asserts that the challenged claims are not entitled to priority because “they lack written description support.” Pet. 33. In particular, Petitioner contends that PCT ’892, published as PCT ’307, “does not contain any disclosure whatsoever of a GPS handset.” Id. at 36. Patent Owner points out correctly that the challenged claims do not recite expressly “GPS handset.” Prelim. Resp. 8. However, even assuming that the claims encompass a GPS handset, we are not persuaded, based on the arguments and evidence presented, that PCT ’307 fails to disclose a GPS handset. Petitioner asserts that the parent application to which the priority claim is made was published as PCT ’307 (Ex. 1003). Pet. 2–3. PCT ’307 provides more than 200 pages of textual description and more than 50 pages of drawings. See, generally, Ex. 1003. We note that PCT ’307 includes a similar definition section to that in the ’153 Patent Specification. Id. at 11. 3 We also note that PCT ’307 provides a non-exclusive list of wireless technologies that the mobile stations may use to communicate with any of “infrastructure base stations 122,” “mobile base stations(s) 148,” and “LBS [location base stations] 152.” Id. at 26. Furthermore, as Patent Owner points out (Prelim. Resp. 13–14), PCT ’307 discloses that the “mobile location unit” in a mobile base station may be similar to that in a mobile unit “For example . . . the electronics of the 3 Citations are to the page numbers of the PCT ‘307, not to the page numbering provided in the footer. mobile location unit may be little more than an onboard MS 140.” Ex. 1003, 102. This is consistent with the definitions section, which indicates that the term “mobile station” (“MS”) is synonymous with “location unit.” Id. at 11(explaining in definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 6

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “we are not persuaded, based on the arguments and evidence presented, that PCT ’307 fails to disclose a GPS handset. Petitioner asserts that the parent application to which the priority claim is made was published as PCT ’307 (Ex. 1003). Pet. 2–3. PCT ’307 provides more than 200 pages of textual description and more than 50 pages of drawings. See, generally, Ex. 1003. We note that PCT ’307 includes a similar definition section to that in the ’153 Patent Specification. Id. at 11. 3 We also note that PCT ’307 provides a non-exclusive list of wireless technologies that the mobile stations may use to communicate with any of “infrastructure base stations 122,” “mobile base stations(s) 148,” and “LBS [location base stations] 152.” Id. at 26. Furthermore, as Patent Owner points out (Prelim. Resp. 13–14), PCT ’307 discloses that the “mobile location unit” in a mobile base station may be similar to that in a mobile unit “For example . . . the electronics of the 3 Citations are to the page numbers of the PCT ‘307, not to the page numbering provided in the footer. mobile location unit may be little more than an onboard MS 140.” Ex. 1003, 102. This is consistent with the definitions section, which indicates that the term “mobile station” (“MS”) is synonymous with “location unit.” Id. at 11(explaining in definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 6

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “GPS receiver in a mobile base station 152 [is] separate from the mobile station 140.” Pet. 37 (citing Ex. 1002 ¶¶ 35–38). Mr. Judge testifies that “one of ordinary skill in the art would have understood the disclosure of GPS in the ’892 application as applying to use of GPS only in base stations, not GPS in mobile stations or handsets.” Ex. 1003 ¶ 37. Mr. Judge acknowledges that PCT ’307 describes (1) “use of a GPS receiver in a mobile base station” and (2) use of “the included GPS” to determine “the mobile station’s location.” Id. ¶ 35. Mr. Judge, however, testifies “if the inventors had contemplated and were in possession of GPS in a mobile station or handset, one of skill in the art would have expected them to have similarly included such disclosure in the application as was included for GPS in the mobile base station.” Id. ¶ 37. We are not persuaded by Mr. Judge’s testimony, which is conclusory and does not disclose sufficiently the underlying facts or data on which his opinion is based. See 37 C.F.R. § 42.65(a). As a result, we give little weight to Mr. Judge’s testimony regarding, for example, the expectation of one of ordinary skill in the art in light of the disclosure of PCT ’307 considered in its entirety. As Patent Owner points out, Mr. Judge and the Petition also do not consider sufficiently the “definitions” section of PCT ’307, which we are persuaded is highly relevant to understanding what PCT ’307 discloses. Prelim. Resp. 15.” slip op. at 7

  § 103 obviousness§ 112 disclosure
  Patents in suitUS 8,032,153
• Apple Inc. v. Tracbeam, LLCInstitution denied
  PTAB · Feb 12, 2016 · IPR2015-01694 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–6, 13–19, 24, 25, 28, 31–33, 47, 50, 54, 55, 60–62, 65–67, 69, 72, 74, 76, and 80 were obvious over …

  RulingsInstitution decision

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

    “Patent Owner, TracBeam, LLC, filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows 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).” slip op. at 2

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

    “2. Analysis For the purposes of this Decision, we are not persuaded that any of the terms identified by Petitioner requires express construction, because even if we were to adopt Petitioner’s proffered positions on claim construction, Petitioner has not met its burden to show that it is reasonably likely to succeed in showing that the challenged claims are unpatentable. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “definition 3.2 that “in some contexts herein instead or in addition to MS, the following terms are also used . . . ‘location unit’ (LU). In general these terms may be considered synonymous.”). PCT ’307 further discloses that a GPS receiver may be incorporated into that “mobile location unit”—which may be “little more than an onboard MS 140.” Id. (“In an enhanced version of the mobile location unit, a GPS receiver may also be incorporated so that the location of the mobile location unit may be determined.”). Therefore, in light of these disclosures and the arguments before us, we determine that even if the claims require a GPS handset as Petitioner asserts, the evidence considered in its entirety supports the conclusion that the inventor had possession of the invention as of the PCT ’892 filing date.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 7,298,327
• Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 112 disclosurecites Phillips
  Patents 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.