• Marvell Semiconductor, Inc. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · 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 · Graham
  Patents in suitUS 7,016,676

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