- PTAB · Apr 21, 2025 · IPR2024-01489 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–30 on all asserted grounds, finding a reasonable likelihood that Cohen anticipates the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Identity of terminology is not required for a claim element to be met directly by the prior art. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citations omitted) (“[T]his is not an ‘ipsissimis verbis’ test.”). For anticipation, we take into account not only the specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). B. Level of Ordinary Skill in the Art” slip op. at 13
- Parallel petitionsDecided for petitioner
“Wrinkl, Inc. v. Slack Technologies, LLC, No. 1:24-cv-00620 (D. Del. May 23, 2024). Pet. 1; Paper 4, 1. Patent Owner also states that a “second IPR was filed against the same patent in proceeding IPR2024-01490.” Paper 4, 1. Patent Owner does not argue that we should exercise discretion under 35 U.S.C. § 314(a) because Petitioner uses more than one petition to challenge the ’731 patent. challenges the alleged priority date of the ’731 patent (IPR2024-01489) (‘First Petition’) and the second petition assumes that the Patent Owner’s claimed priority date is valid, and addresses prior art references predating that priority date (IPR2024-01490) (‘Second Petition’).” Ex. 1019, 1. In accordance with the Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, “there may be circumstances in which more than one petition may be necessary” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. Such is the case here. Patent Owner does not file any Preliminary Response or other paper disputing Petitioner’s use of two petitions to challenge the claims of the ’731 patent. Based on the record before us, we consider the merits of both petitions because Petitioner’s stated reasons for filing two petitions are consistent with the CTPG. See generally Ex. 1019 (citing CTPG, 59 (“the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references)). C. The ’731 Patent” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner first must raise the issue of entitlement to a claimed priority date by “identifying, specifically, the features, claims, and ancestral application or applications allegedly lacking § 112 support for the claims based on the identified features.” Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 at 9–10 (PTAB Apr. 22, 2014); Mission Integrated Techs., LLC v. Joshua Clemente, IPR2023-01285, Paper 16 at 18 (PTAB Feb. 23, 2024). Then, Patent Owner must make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by the petitioner. See id.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“two years of experience in the graphical user interface field” or, alternatively “a master’s degree in computer science (or similar discipline) and at least two years of similar experience.” Pet. 16 (citing Ex. 1003 ¶ 40). We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we preliminarily adopt Petitioner’s formulation of the level of skill in the art, which appears consistent with the specification and prior art presented. C. Claim Construction” slip op. at 14
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 11,973,731 - PTAB · Dec 6, 2024 · PGR2024-00030 · APJ Elizabeth M Roesel · PGR · Institution
Instituted PGR of claims 1–10 and 12–18; Petitioner met the institution threshold for claim 1 based on obviousness over Schröder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In applying § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 12
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal experience, and vice versa. Ex. 1002 ¶ 21. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’178 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 8; Prelim. Resp. 25.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“Petitioner relies on Dr. Anthony’s testimony that a POSITA would have understood Figures 6–8 as showing a cavity as recited in claim 1 and the battery must be arranged within that cavity because “[o]therwise, if the battery did not fit within the ‘finger-ring,’ the ‘finger-ring’ either has (1) a battery that sticks out or is exposed to the environment or (2) a wired connection to power its components, which is contrary to the intent of having a portable, wearable device.” Ex. 1002 ¶ 166. Dr. Anthony opines that “[a] POSITA would have understood that the battery’s location within the cavity is the ‘first portion’ of the cavity because the battery necessarily occupies space in the cavity.” Id. ¶ 168. Such testimony, when viewed along with the rest of Petitioner’s showing, provides sufficient basis for institution.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,868,178 - Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.Institution deniedPTAB · Jun 20, 2023 · IPR2023-00351 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on all challenged claims because the claims receive the provisional’s earlier priority date, making Gottlieb unavailable as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute inter partes review of claims 1–3, 6, 13, 14, 16–22, 26–28, and 41 of the ’138 patent based on the grounds raised in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Reading the ’791 provisional’s description of the hydraulic link in conjunction with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, its thickness must remain unchanged, or, in the words of claim 1, be “substantially constant.” Indeed, according to the ’791 provisional, the fluid acts as a solid because O-ring seals and extremely small clearances between needle piston 72 and chamber cap 86 prevent the trapped fluid from flowing around the piston upon actuation of the force, which clearly supports that the thickness of the fluid must remain substantially constant. Those disclosures reasonably convey to one skilled in the art that the inventor had possession of the hydraulic link limitation of claim 1, including it having a substantially constant thickness, as of the ’791 provisional’s filing date. Likewise, we observe that claim 41 recites that the “hydraulic fluid acts as an incompressible solid so that movement caused by the actuation of said dimensionally responsive member is transmitted through said fluid layer.” Ex. 1001, 20:53–56 (emphases added). Again, the ’791 provisional discloses that the “trapped fluid acts as a solid and transmits the movement of the magnetostrictive material 40 to the needle valve 14, causing it to lift against the needle spring 16.” Id. at 12:5–13:14 (emphases added). We find, based on this description of the hydraulic link, with Figure 2, one skilled in the art reasonably would have surmised that, in order for the trapped fluid within the cavity to act as a solid and transmit force, it would act as an incompressible solid. Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot reached
“Petitioner does not further dispute that the ’791 provisional discloses the remaining limitations of the challenged claims. As such, the evidence of record demonstrates sufficient written description support in the ’791 provisional for the challenged claims. Thus, the challenged claims are entitled to an effective filing date of October 15, 1999, which means that Gottlieb does not qualify as prior art. And because Gottlieb forms the basis of all the challenges, its exclusion is fatal to the Petition.” slip op. at 13
§ 102 anticipation§ 112 disclosurePatents in suitUS 6,575,138 - PTAB · Apr 11, 2023 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Keith anticipates at least claims 1 and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Under the circumstances presented, where the priority date of the challenged claims is disputed, we conclude it is not unreasonable for Petitioner to present separate challenges, one of which relies on references that are prior art only if the challenged claims are not entitled to Patent Owner’s claimed priority date, which has yet to be finally determined. See TPG 59 (stating that “a dispute about priority date requiring arguments under multiple prior art references” can be a potential reason for the Board to institute trial on multiple petitions challenging the same patent). Thus, on the present record, we decline to exercise our discretion to deny institution of this Petition on the basis of Petitioner filing multiple petitions.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems,” also noting that “[m]ore education can supplement practical experience and vice versa.” Pet. 20–21 (citing Ex. 1002 ¶ 34). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’435 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that an express construction of this or any other claim term is not necessary for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only 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)).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,803,435 - 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution deniedPTAB · Jan 11, 2022 · IPR2021-01120 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 were obvious over Babayoff ’529 and Atiya.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’151 patent. Accordingly, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s description of a person of ordinary skill is supported by expert testimony and appears consistent with the technology at issue, for purposes of this Decision, we apply Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In response, Patent Owner objects that “Petitioners’ interpretation of the claims as requiring the use of unfiltered white light to determine depth data is plainly at odds with the claims themselves.” Prelim. Resp. 4. Patent Owner argues that “[t]his interpretation leads to a contradiction between the independent and dependent claims: the same light illuminating the intraoral structure would have to be simultaneously filtered (as recited in the dependent claims) and unfiltered (as Petitioners presume to be required by the independent claims).” Id. Patent Owner also suggests the possibility that the Petition’s arguments mean “the independent claims encompass using unfiltered white light to obtain depth data.” Id. at 7. We do understand the Petition’s arguments to mean that the independent claims encompass using unfiltered white light to illuminate an intraoral structure, not that the independent claims require using white light to illuminate an intraoral structure. And we agree with that understanding of the independent claims’ scope. Consistent with Patent Owner’s explanation, if we construed the independent claims to require using unfiltered white light to illuminate an intraoral structure, that would conflict directly with the dependent claims’ express requirement to use colored filters.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,750,151 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-01376 · APJ Kerry Begley · IPR · Final written decision
Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25; Pong and Smith render claims 17–24 obvious. Claim 11 is not shown unpatentable.
RulingsFinal written decision- BurdenOther
“and 37 C.F.R. § 42.73. Having considered the record before us, we determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 8, and 15–25 of the ’121 patent are unpatentable. See 35 U.S.C. § 316(e). Petitioner, however, has not demonstrated by a preponderance of the evidence that claim 11 is unpatentable.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Communications AB, Sony Mobile Communications (USA) Inc., LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc. (collectively, “Subsequent Petitioners”; and with Initial Petitioners, “Petitioner”) filed a Petition in IPR2015-01376, requesting inter partes review of claims 1–3, 8, 11, 12,3 and 15–25 of the 2 The Petition also lists Samsung Telecommunications America, LLC (“STA”) as a petitioner. Paper 6 (“Pet.”), 1. After the filing of the Petition, however, STA merged with and into Samsung Electronics America, Inc. Paper 10. Thus, STA no longer exists as a separate corporate entity. Id. 3 Subsequent Petitioners represented that they included claim 12 “merely to conform” to the Petition and motion for rehearing of the Institution Decision, regarding claim 12, that was pending before the Board and that if the motion was denied, they requested joinder on “all claims except claim 12.” IPR2015-01376, Paper 3 (“IPR2015-01376 Pet.”), 1 n.1, 33 n.5. Because we denied the motion, we understood Subsequent Petitioners to no longer maintain their challenge of claim 12 and to the extent they did, we determined they had not shown the IPR2015-01376 Petition warranted institution of review of the claim. IPR2015-01376, Paper 12, at 12–15. IPR2015-01376 Pet. Subsequent Petitioners also filed a motion for joinder with this proceeding, which we granted. IPR2015-01376, Papers 4, 12.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Decision and maintain in this Decision—in which “states” is not limited to cache coherency states—we determine that Pong’s presence bit vector discloses the recited “probe filtering information” “representative of states associated with selected ones of the cache memories,” where either the write update or the write invalidate protocol is implemented. See Inst. Dec. 7–10; supra § II.B.1.a. First, under this construction, there is no dispute that “states associated with selected ones of the cache memories” includes presence. See Inst. Dec. 9–10; PO Resp. 25 (arguing that Petitioner’s argument that the presence bit vector represents the “state” of presence allegedly is foreclosed only by Patent Owner’s proposed “construction of state as a cache coherence protocol state”); id. at 1–11, 25–27; Reply 15; Ex. 3001, 497–48 (definition of “state”); Ex. 2016 ¶ 87. Nor is there any dispute that the bits in Pong’s presence bit vector represent this state of presence. Pong discloses that when a bit in the presence bit vector is set, the processor that corresponds to the bit “has a copy of the data block,” i.e., a copy of the data block is present. Ex. 1003 ¶ 51. Accordingly, we agree with Petitioner that in both the write update and write invalidate protocols, a set bit represents the state of presence of a cached copy of the data block in a” slip op. at 42
Patent outcomesUS 7,296,121 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-00163 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 4–6 and 19–24 are unpatentable over Koster and Koster with Smith, respectively; claims 11 and 12 were not shown unpatentable, and the motion to amend was denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 19–24. We have reviewed Petitioner’s anticipation arguments and supporting evidence, including Koster’s disclosure, the detailed arguments appearing on pages 31–38 of the Petition, and the testimony of Dr. Horst. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we also have considered, Petitioner has shown, by a preponderance of the evidence, that each of claims 4–6 is unpatentable under 35 U.S.C. § 102 as anticipated by Koster. Petitioner, however, has not shown, by a preponderance of the evidence that Koster anticipates claims 11 and 12.” slip op. at 27
Patent outcomesUS 7,296,121 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-00159 · APJ Kerry Begley · IPR · Final written decision
Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25, and Pong and Smith render claims 17–24 obvious; claim 11 was not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Electronics Co. Ltd., Samsung Electronics America, Inc.,2 and Amazon.com, Inc. (collectively, “Initial Petitioners”) filed a Petition requesting inter partes review of claims 1–3, 8, and 11–25 of U.S. Patent No. 7,296,121 B2 (Ex. 1001, “the ’121 patent”). Pet. Pursuant to 35 U.S.C. § 314(a), we determined the Petition showed a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claims 1–3, 8, 11, and 15–25, and instituted an inter partes review of these claims. Paper 12 (“Inst. Dec.”). We, however, did not institute review of claims 12–14, because we determined the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to these claims. Id. at 23–30.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Dr. Horst’s testimony that as a result, from the perspective of the presence bit vector, “every processor indicated as storing a copy of the memory line in its cache is storing a valid copy.” Ex. 1014 ¶ A-11; see Pet. 26–27. In other words, as Dr. Horst testifies, “because a write update protocol always updates caches to keep them valid,” “when a cache line is present[,] it is necessarily valid.” Ex. 1025 ¶ 23; see Reply 17–18. Indeed, Dr. Oklobdzija agrees that because the write update protocol “force[s the caches] to update their value for a cache line every time it changes”—as Pong discloses— “every processor that has the cache line will have the line in a valid state.” Ex. 2016 ¶ 90 (emphasis added); Ex. 1003 ¶ 48; see also Tr. 115:1–23 (Patent Owner conceding that in a write update protocol, any cached copies could be “considered . . . to be valid” because they are “kept usable” and “updated”). Accordingly, based on Pong’s disclosures, as well as the explanatory testimony of Dr. Horst in addition to Dr. Oklobdzija, we determine that in the write update protocol, a set bit in Pong’s presence bit vector represents that the corresponding cached copy is present and valid.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“2. OBVIOUSNESS OVER PONG AND SMITH We turn to the instituted obviousness ground alleging that claims 17–” slip op. at 73
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84
Patent outcomesUS 7,296,121 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-01353 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 4–6 are unpatentable as anticipated by Koster, claims 19–24 are unpatentable as obvious over Koster and Smith, and claims 11–12 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“For the reasons discussed below, however, despite the arguments and evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner fails to proffer evidence sufficient to rebut Patent Owner’s evidence that Koster’s disclosure of a microprocessor does not necessarily disclose that the microprocessor is programmed. Dr. Horst, in his original declaration, asserts that “a requesting microprocessor must be programmed to complete a memory transaction after receiving a first number of responses to a first data request.” Ex. 1014 ¶¶ D-17–D-18. This assertion, however, is conclusory, and does not sufficiently explain why the microprocessor must be programmed or exclude possibilities other than programming. See id.; PO Resp. 27. In particular, Dr. Horst’s original declaration testimony provides no discussion or explanation as to whether a microprocessor composed solely of hardwired logic would necessarily be programmed and whether the functionality described in Koster could not be implemented using hardwired logic. See Ex. 1014 ¶¶ D-17–D-18; PO Resp. 27.” slip op. at 34
Patent outcomesUS 7,296,121 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Sony Corporation, Sony Electronics Inc., Sony Mobile Communications AB, And Sony Mobile Communications (USA) Inc. v. Memory Integrity, LLCAll claims unpatentablePTAB · May 19, 2016 · IPR2015-00158 · APJ Neil T Powell · IPR · Final written decision
Claims 19–24 are unpatentable: claim 24 as obvious over Koster, and claims 19–23 as obvious over Koster and Kuskin; the motion to amend is denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petition, Patent Owner’s Response, and Petitioner’s Reply. Based on that review, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that all of the limitations of claim 24 are taught by, or rendered obvious in view of the teachings of Koster, and that claim 24, considered as a whole, would have been obvious over Koster. Pet. 19–20, 25; PO Resp. 1–16; Pet. Reply 1–8. We find Petitioner’s citations and arguments persuasive, and we adopt them as the basis for our decision. Pet. 19–20, 25; Pet. Reply 1–8. We are persuaded that Koster’s tags and shadow tag memory teach the claim language “probe filtering information representative of states associated with selected ones of the cache memories.” For the reasons explained in Section II.A.1.a supra, we do not agree with Patent Owner’s argument that the broadest reasonable interpretation of this claim language requires cache coherency states. Additionally, as discussed in Section II.A.1.a supra, Patent Owner does not persuade us that the examples of tags and state information discussed in the ’121 patent constitute a clear disavowal of tags as necessarily excluded from state information. See PO Resp. 14–15 (citing Ex. 1001, 7:67–8:4; 13:44–14:47; Fig. 7). Furthermore, Patent Owner’s argument that tags are not state information fails to recognize that the claimed probe filtering information does not have to be states, it need only be “representative of states associated with selected ones of the cache memories.” Ex. 1001, 31:5–6 (emphasis added); see Tr. 74:11– 15, 77:2–9. Patent Owner does not dispute that Koster’s shadow tag memory and its tags indicate where specific data is cached. See PO Resp. 15; Ex. 1001, at [57], 6:9–38, 6:61–7:16, 7:25–33, Figs. 9, 10; Pet. 20; Pet. Reply 5–6; Ex. 1013 ¶ 19; Ex. 1015 ¶ 20; Ex. 1016, 186:17–24. Additionally, Koster uses the information provided by the shadow tag memory and its tags in controlling where to send data requests. See, e.g., Ex. 1001, 6:18–32; Pet. 20; Ex. 1013 ¶ 19. Accordingly, we are persuaded that Koster’s shadow tag memory and its tags are representative of whether selected ones of the cache memories contain specific data, which is representative of the states of those cache memories. See, e.g., Ex. 3001, 497–498 (setting forth definition of “state” as “[t]he condition at a particular time of any of numerous elements of computing—a device, a communication channel, a network station, a program, a bit, or other element—used to report on or to control computer operations.”); Pet. 20; Pet. Reply 1–8; Ex. 1013 ¶ 19; Ex. 1015 ¶ 20; Ex. 1016, 186:17–24.” slip op. at 25
- 112 supportMotion to amend, deniedDenied
“although Patent Owner points to several lines and one figure as describing the limitation, these disclosures simply identify the existence of a cache coherency controller with both a coherent and non-coherent protocol interface without providing any detail of how such a cache coherency controller would be implemented. See Ex. 2020, 12:20–23, 13:11–17; Ex. 2006, 12:12–15, 13:4–10; Ex. 1001, 7:44–48, 8:5–14. Figure 3 represents a concept of a cache coherence interface with two interfaces—but lacks any details that would show one skilled in the art how to make or use a cache coherence interface with two interfaces. See Ex. 2020, Fig. 3; Ex. 2006, Fig. 3. The specification describes Figure 3 as a “diagrammatic representation” of a cache coherence controller, and does not purport to show details of how the two interfaces would be implemented together in such a controller. See Ex. 2020, 5:17, 12:28–13:21, Ex. 2006, 6:16, 12:20– 13:14; Ex. 1001, 3:32–33, 7:53–8:19. This is supported by the testimony of Dr. Oklobdzija, who testified that Figure 3 (along with Figures 2 and 17 of the ’121 patent) “point[] . . . to a non-coherent interface and the interconnections,” but do not provide details regarding how to implement a coherent and non-coherent interface and instead “le[ave] someone . . . with ordinary skill in the art to . . . figure it out.” Ex. 1016, 90:5–93:1, 95:14– 96:10. Dr. Oklobdzija also agreed that “one of ordinary skill would not have already had in their knowledge how to build a system with [both] interface[s].” Id. at 90:5–17.” slip op. at 37
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledDecided for petitioner
“Ex. 2020, 12:22–14:21; Ex. 2006, 11:14–12:14; Ex. 1001, 7:44–8:19. This general description fails to provide a structure or description of how a person having ordinary skill in the art would make or use a cache coherence controller with both types of interfaces. The most detailed language— “[i]n one embodiment, the cache coherence controller 230 is a specially configured programmable chip such as a programmable logic device or a field programmable gate array” and “[a]ccording to various embodiments, each interface 307 and 311 is implemented either as a full crossbar or as separate receive and transmit units using components such as multiplexers and buffers”—does not specifically describe how to implement the system. Instead, as confirmed by Dr. Oklobzjia, the sentence related to the cache coherence controller 230 “gives kind of [a] suggestion to – that this can be implemented as a programmable chip” and the sentence describing implementation of the interfaces is simply an “implementation hint.” Ex. 1016, 100:18–102:20. According to Dr. Oklobzjia, the implementation details are “up to the engineers to – to figure out further.” Id. at 101:10–20. Indeed, Dr. Oklobdzija testified that prior to the filing date of the ’121 patent, a person of ordinary skill in the art would not have known to use both a coherent interface and a non-coherent interface at once. Ex. 2019 ¶¶ 11–12. Specifically, Dr. Oklobdzija testifies that, a reference that “reflects the state of the art of coherent and non-coherent interfaces” as of the alleged effective filing date of the ’121 patent indicated that a system could use only one or the other of a coherent or non-coherent interface, but not both. Id. ¶ 12. Noticeably absent in Patent Owner’s Motion is reference to any detailed discussion in the ’121 patent of the how the cache coherence controller would operate with both interfaces at once, let alone such full, clear, concise, and exact terms as to enable any person skilled in the art, to make and use the system. Given the testimony of Dr. Oklobdzija, we cannot determine that Figure 3 and the few corresponding lines of description apprise one of ordinary skill how to make and use a cache coherence controller with both a coherent and non-coherent protocol interface. See Automotive Techs. Int’l v. BMW of N. Am., Inc., 501 F.3d 1274, 1281–85 (Fed. Cir. 2007) (holding that electronic sensors were not enabled because the specification’s general description failed to provide a structure or description of how a person having ordinary skill in the art would make or use the sensor). This is true despite Dr. Oklobdzija’s conclusory statement to the contrary. Ex. 2042 (Reply Declaration) ¶ 7 (“As I noted in my deposition, based simply on my review during the deposition itself, I believed, and I continue to believe, that the specification of the ’121 Patent contains a number of ‘implementation hint[s]’ which would enable one of skill in the art to practice the coherent protocol interface’ and ‘non-coherent protocol interface’ limitations without undue experimentation.”). “It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.” Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997). Although the knowledge of one skilled in the art is relevant, the novel aspect of an invention must be enabled in the patent. As noted above, according to Dr. Oklobdzija, prior to filing of the ’121 patent, it was suggested that a system could use only one or the other of a coherent or non-coherent interface, but not both. Ex. 2019 ¶¶ 11–12. Given that the allegedly novel aspect of the invention is a cache coherence controller that uses both interfaces, which was unknown to a person of ordinary skill at the time, it is insufficient to merely provide “implementation hints” using known technologies to create that novel cache coherence controller. As was the case in Genentech, the portions of the specification relied upon by Patent Owner here provide “only a starting point, a direction for further research” on using a probe filtering unit with both protocol interfaces; it does not provide guidance to a person of ordinary skill in the art on how to make or use such system. 108 F.3d at 1366. Patent Owner, thus, fails to show that the specification provides “reasonable detail” sufficient to enable use of a probe filtering unit is coupled to a coherent protocol interface and a non-coherent protocol interface. We conclude that Patent Owner has not met its burden of showing that the protocol interface limitation is properly enabled under 35 U.S.C. § 112 ¶ 1.” slip op. at 39
Patent outcomesUS 7,296,121 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121
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.