- Ericsson Inc. v. Koninklijke KPN N.V.Some claims unpatentablePTAB · Oct 4, 2023 · IPR2022-00557 · APJ Kevin F Turner · IPR · Final written decision
Claims 1, 10–12, 21, 22, 24, and 25 are unpatentable as obvious; claims 2, 3, 6, and 8 were not shown unpatentable; the contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art at the time of the invention “would be a person with a B.S. degree in electrical engineering, computer engineering, or equivalent training or job experience, with two years of experience in computer networking technology, or a Master’s degree in electrical engineering, computer engineering, or other equivalent degree.” Pet. 13 (citing Ex. 1003 ¶ 47). Patent Owner indicates that it does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. PO Resp. 14. We find Petitioner’s proposal consistent with the level of ordinary skill in the art 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), and, therefore, we continue to adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“associated sessions” With respect to the limitation “associated sessions,” Patent Owner asserted that the ’669 Patent defines those sessions as those that “should not be managed independent from each another,” and continues to assert the same in its Response. PO Resp. 14–15 (quoting Ex. 1001, 7:37–38). Based on the recitations of the Specification, we construe “associated sessions” as “sessions that should not be managed independent from each other,” as proffered by Patent Owner. Ex. 1001, 7:37–38. slip op. at 8
- Prior constructionTerm construed board ownDecided for petitioner
“Patent Owner asserts that the United States District Court for the Eastern District of Texas rejected Petitioner’s proposed construction in the District Court Case, and following briefing and oral argument in that proceeding, the District Court concluded that “composition session” means “a signaling session that is separate from the associated sessions and that is for facilitating management of the associated sessions.” PO Resp. 16. Having reviewed the District Court’s determination, we do not discern a significant difference in scope between it and Petitioner’s formulation, and we, thus, adopt its construction of “composition session” in the analysis below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As such, we continue to determine that Petitioner has sufficiently established that an ordinarily skilled artisan would have had a rationale to combine the teachings of Foti with RFC 3261, RFC 4566, RFC 2326, Wright, and Lloyd, and would have had a reasonable expectation of success in achieving that combination, as we determined in the Institution Decision. See Inst. Dec. 17–18. We continue to be persuaded that one of ordinary skill in the art would have consulted and utilized disclosures in the RFC references to understand and implement the protocols disclosed by Foti. We are further persuaded by Petitioner’s arguments that such skilled artisans would have had a rationale to combine the teachings of Wright and Lloyd with those of Foti for the reasons provided. Petitioner has asserted that each of the supporting references would have been used by persons of ordinary skill in the art to modify or enhance the system described in Foti for the benefits described for the proposed changes. Absent reasons the references should not be combined, we determine that the motivation proffered by the Petition is sufficient to support the combination, under the preponderance of the evidence standard.” slip op. at 16
Patent outcomesUS 9,667,669 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,667,669 - Apple Inc. v. Memoryweb, LLCSome claims unpatentablePTAB · Jun 7, 2023 · PGR2022-00006 · APJ Jason M Repko · PGR · Final written decision
Claims 1–12, 17–44, and 49–59 are unpatentable over A3UM or for lack of written description; claims 13–16 and 45–48 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“2. Analysis A person is not entitled to a patent if their invention was “described in” slip op. at 9
- Skill levelOther
“B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“e. Conclusion Petitioner provides articulated reasoning, supported by rational” slip op. at 68
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“11. Written Description: Claims 6, 7, 38, and 39 Petitioner asserts that claims 6, 7, 38, and 39 are unpatentable as lacking adequate written-description support. Pet. 91–93. Claim 6 recites, in part, “The method of claim 4, wherein, in the people view, the first name is displayed adjacent to the first digital file associated with the first thumbnail image and the second name is displayed recites similar limitations. See id. at 38:47–50. Claim 7 depends from claim 6, and claim 39 depends from claim 38. Id. at 35:63–65 (claim 7), 38:51–53 (claim 39). Petitioner asserts that claims 6 and 38 require that the “people view” includes at least the following: (i) “a first thumbnail image associated with a first person,” (ii) “a first name associated with the first person,” (iii) “a second thumbnail image associated with a second person,” (iv) “a second name associated with the second person,” and (v) a “first digital file associated with the first person.” Pet. 91. Petitioner argues that the ’020 patent lacks written-description support for a people view with these features. Id. at 92 (citing Ex. 1003 ¶ 315). Under Petitioner’s interpretation, digital files are “plainly distinct”” slip op. at 96
Patent outcomesUS 11,017,020 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 11,017,020 - Marvell Semiconductor, Inc. v. Uniloc 2017 LLCSome claims unpatentablePTAB · Feb 1, 2021 · IPR2019-01350 · APJ Jameson Lee · IPR · Final written decision
Claims 3 and 9 are unpatentable as obvious over Shellhammer; claim 8 was not reached on the merits.
RulingsFinal written decision- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteDecided for patent owner
“Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020) (footnote omitted). This is such a situation. We cannot reach a decision on the merits with respect to whether Petitioner has established the unpatentability of claim 8 under any ground of unpatentability asserted by Petitioner, i.e., (1) obvious over Sherman and Trompower, (2) obvious over Shellhammer and Trompower, and (3) obvious over Shellhammer and Panasik.” slip op. at 77
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“challenged claims indeed do satisfy the requirements of 35 U.S.C. § 119 with respect to the foreign application the priority of which it claims.5 Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). Dynamic Drinkware stated that because the USPTO does not examine priority claims unless necessary, the Board has no basis to presume that a patent is necessarily entitled to the filing date of its provisional application. Id. at 1380. Under the reasoning of Dynamic Drinkware, the same would be true for a foreign application the priority of which has been claimed. Patent Owner has made no substantive showing in this proceeding of actual entitlement to the filing date of the German Application, by satisfaction of all pertinent requirements of 35 U.S.C. § 119. Accordingly, the effective filing date of the ’676 patent is August 8, 2001, not the earlier filing date of German Application No. 100 39 532.5.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“supported by the underlying disclosure of Sherman. Dr. Roy in paragraph 175 of his Declaration (Ex. 1003) cites to column 4, lines 1–8, of Sherman, which states: “The CFP occurs with a regular period, and all 802.11 terminals set their NAV’s during the CFP. To realize such a super frame the following sequence of frames/phases can be used as shown in the graph of FIG. 5.” Ex. 1004, 4:1–5. This disclosure does not indicate, as Dr. Roy concludes, that the control station “relinquish[es]” time to 802.11 CP access if no HIPERLAN/2 transmission requests are pending. Ex. 1003 ¶ 175. We also find unpersuasive Dr. Roy’s testimony that if there is sufficient HIPERLAN/2 traffic, Sherman teaches that the HIPERLAN/2 phase may be extended to very close to the entire superframe. Id. As discussed above, in Sherman, the CFP already is preset, without regard to whether or how many HIPERLAN/2 requests are pending. Ex. 1004, 6:5–6. Dr. Roy’s conclusion is not supported by the disclosure of Sherman and also is not adequately explained.” slip op. at 34
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“III. CONSTITUTIONAL APPOINTMENT Patent Owner argues that Administrative Patent Judges (“APJs”) “are principal officers under the Appointments Clause of the Constitution” “but undisputably are not appointed through the constitutionally-mandated mechanism of appointment for principal officers.” PO Resp. 60. The Federal Circuit, however, addressed this issue and devised a remedy in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1325 (Fed. Cir. 2019) cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13, 2020). Patent Owner argues that the remedy devised by the Federal Circuit “impermissibly rewrites the statutes governing APJs.” Id. at 61. We decline to consider the argument because the Arthrex decision states otherwise. See Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”).” slip op. at 77
Patent outcomesUS 7,016,676 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,016,676 - Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentablePTAB · Dec 2, 2015 · IPR2014-00825 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 are unpatentable as obvious; the petition did not prove claims 2, 5, 8, 9, 11, 12, and 14–18 unpatentable.
RulingsFinal written decision- BurdenDecided for patent owner
“Applying these principles to the instant case, in an inter partes review, the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See Dynamic Drinkware, 800 F.3d at 1379. (explaining petitioner “had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 13–36.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“Even if we were to find that Petitioner’s citation to two pages of its declarant’s testimony, without explanation, does not amount to improper incorporation by reference, the testimony of Petitioner’s declarant, Leonard J. Forys, Ph.D., is insufficient to show one of ordinary skill in the art was in possession of the subject matter of the claims at issue. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). First, the testimony of Petitioner’s declarant, Dr. Forys, is conclusory, merely quoting some portions of the ’357 patent without adequately explaining how the quoted portions relate to the subject matter recited by the claims. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, during cross-examination Dr. Forys explained his analysis, “I just went through the ’167 patent and just picked a few things out that seem to indicate that they are already there. . . . So it was illustrative. It’s not a detailed analysis. It is just suggestive.” Ex. 2006, 48:1–7.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“The ’357 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system of Claim 1 would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is 25 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8 (emphasis omitted). Therefore, in light of the plain language of the claim, the Specification of the ’357 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 25
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony14 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least three years of academic or industry experience in telephony systems.” slip op. at 29
Patent outcomesUS 7,529,357 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,529,357 - Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentablePTAB · Dec 2, 2015 · IPR2014-00824 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1, 3, 4, 6, 7, 10, 19, and 20 are unpatentable over Spadaro and Hodge; claim 13 is unpatentable over Spadaro, Hodge, and Cree. Claims 2, 5, 8, 9, 11, 12, and 14–18 were …
RulingsFinal written decision- BurdenDecided for patent owner
“the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See id. (explaining petitioner “had the burden of 11 Dynamic Drinkware issued after the time of the trial hearing and post-hearing briefing. 11 persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 19–35.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“production under § 103(c)(1), Petitioner contends it carried its burden of production to show that the ’167 patent (grandparent) sufficiently would have conveyed to one of ordinary skill in the art that the Patent Owner had possession of the claimed subject matter and, therefore, the ’260 patent is entitled to the benefit of the filing date of the ’167 patent. Reply 7. As Petitioner recognizes (Reply 6), a claim in an application is entitled, under 35 U.S.C. § 120, to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims in the later application, as required by 35 U.S.C. § 112. 35 U.S.C. § 120; In re Chu, 66 F.3d 292 (Fed. Cir. 1995). Petitioner’s argument consists of a single paragraph identifying claim numbers and locations where the ’167 patent purportedly describes the subject matter of most, but not all, of the claims at issue and a citation to a single paragraph in its declarant’s supplemental declaration supporting Petitioner’s Reply. Reply 7 (listing claims 2, 8, 9, 11, and 14–18, but not listing claims 5 and 12; citing Ex. 1020 ¶ 16).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The ’260 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to 26 receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8. Therefore, in light of the plain language of the claim, the Specification of the ’260 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 26
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. We consider the level of ordinary skill in the art to be 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 at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The prior art references, like the ’260 patent, relate to telephone communication systems. See Ex. 1001, 1:60–62 (indicating the technical field relates to inmate management and call processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field of the invention relates to telephone communication systems). In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony15 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry 15 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2112 (6th ed. 2003) (defining telephony as “[t]he transmission of speech to a distant point by means of electric signals”) (Ex. 3001). 30 experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of” slip op. at 30
Patent outcomesUS 8,340,260 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,340,260
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.