• 3M Company v. Bay Materials, LLCInstituted
  PTAB · Jan 18, 2023 · IPR2022-01215 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board instituted inter partes review of claims 1–4, 7, 11–14, 18, and 31 on all asserted grounds, finding at least one claim sufficiently shown anticipated by Yu.

  RulingsInstitution decision

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

    “The Petition includes detailed arguments that map the limitations of the challenged claims to specific disclosures in Yu (Sample 1). Id. at 50–62. The Petition also maps adequately the limitations of the challenged claims to specific disclosures in Stewart (Example 2). Id. at 62–66. For example, Petitioner shows sufficiently that Yu (Example 1) coextrudes “a multilayered polymeric film,” that is, a “sheet,” arranged in the hard-soft-hard-soft-hard, five-layer configuration required by claim 11. Pet. 50–51; Ex. 1002 ¶¶ 124, 126–128; Ex. 1012 ¶¶ 63, 78, 92. Petitioner also shows sufficiently that the hard layers in that configuration of Yu (Example 1) are “hard” and the hard layers are “hard” within the meaning of claim 11. Pet. 53; Ex. 1002 ¶ 131; Ex. 1012 ¶ 78. In other words, Petitioner shows sufficiently, on this record, that Yu (Example 1) anticipates claim 11. Based on the information presented, we find that Petitioner shows sufficiently, for purposes of trial institution, that at least one challenged claim of the ’263 patent is anticipated by Yu (Sample 1).” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “That prior art disclosure of elastomeric materials for use as the outer layers in an unclaimed and disfavored soft-hard-soft layer configuration does not convey, with reasonable clarity, that the inventors had possession of the claimed subject matter, in which the elastomeric material forms the inner layer of a polymeric sheet in a hard-soft-hard layer configuration. See id. ¶¶ 7, 33–35, 109–110. Even if the hardness limitation of the challenged claims would have been obvious from the relied-upon disclosure of the ’176 application (Ex. 2001 ¶ 109), that circumstance is insufficient to establish written description support. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (quotations omitted); see Pet. 21 (quoting that precedent). Accordingly, we agree with Petitioner that the invention that Patent Owner seeks to protect in the ’263 patent does not appear to be “part of the invention” described in the ’176 application. Pet. 40; see Ex. 2001 ¶ 109 (describing elastomeric materials, having the specified hardness, only in the context of an unclaimed prior art soft-hard-soft embodiment). On this record, we preliminarily agree with Petitioner that the earliest effective filing date to which the ’263 patent appears to be entitled is December 18, 2019, namely, the filing date of the ’256 application, from which the ’263 patent issued. Ex. 1001, codes (21), (22). Patent Owner may contest this issue in a timely response to the Petition.” slip op. at 9

  • Skill levelNot reached

    “The parties disagree about whether the ordinarily skilled artisan would have had specific “experience with dental appliances or access to individuals with such experience.” Prelim. Resp. 17; see Pet. 14–15 n.1 (disagreeing with that proposition). Neither party explains why a resolution of that Stat. 284 (September 16, 2011), includes revisions to Section 102(a) that became effective on March 16, 2013. For reasons explained in this Decision, on this record it appears Petitioner is correct that the challenged claims are entitled to an effective filing date no earlier than December 18, 2019 and, therefore, the AIA provisions apply in this proceeding. See Pet. 22, 39–40; Ex. 1001, code (60). 2 WO 20010/043419 A1, published Apr. 22, 2010, with English Translation (Ex. 1015). 3 We take notice that the first and second grounds identified in the Petition assert anticipation based on the same prior art disclosure. 4 US Pub. 2004/0224283 A1, published Nov. 11, 2004 (Ex. 1008). dispute is necessary to this Decision to institute review. See, e.g., Prelim. Resp. 17 n.2 (“even under Petitioner’s proposed definition, the Petition fails to show a reasonable likelihood that any claim is unpatentable”); Pet. 14–15 & n.1 (arguing about the issue without explaining how a resolution of the dispute would change the outcome of the decision on institution). If either party believes that the difference in level of skill would have a material effect on the analysis of the patentability of the challenged claims, that issue should be specifically addressed in briefing during the trial. We will resolve that dispute only to the extent necessary in any final written decision. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6

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

    “We construe terms in controversy only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). “Petitioner discusses the terms “layer A,” “layer B,” “layer C,” “layer C,” “layer B',” inner layer B,” “inner layer B',” and “inner layer D.” Pet. 15–20. Patent Owner discusses the terms “layer” and “inner.” Prelim. Resp. 19–22. Taking account of the information presented, we determine that no claim term requires express construction for purposes of deciding whether to institute review. Compare Pet. 15–20 (addressing issues of claim construction, without demonstrating that an express construction is necessary to resolve whether to institute review), with Prelim. Resp. 19–22 (same).” slip op. at 7

  Claim construction§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 10,870,263
• Satco Products, Inc. v. The Regents Of The University Of CaliforniaInstitution denied
  PTAB · Nov 8, 2021 · IPR2021-00661 · APJ Steven M Amundson · IPR · Institution

  The Board denied institution of review for claims 1 and 2 under § 314(a), finding the Fintiv factors weighed against review because of the advanced, overlapping ITC investigation.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “The Fintiv factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Fintiv, IPR2020-00019, Paper 11 at 6. A stay of parallel litigation pending resolution of a Board proceeding “allays concerns about inefficiency and duplication of efforts.” Id. That the E.D.N.Y. case was stayed “at its earliest stage,” however, does not “allay[] concerns about inefficiency and duplication of efforts” in view of the 1220 investigation. Additionally, the E.D.N.Y. case was stayed “pending completion” of the 1220 investigation, not because of any Board proceeding. Ex. 3002, 1. With dates set in the 1220 investigation for the ALJ’s initial determination and the ITC’s final determination, a stay seems highly unlikely, especially with the initial determination date about a week away. Hence, factor (1) weighs against institution. See Fitbit, Inc. v. Koninklijke Philips N.V., IPR2020-00771, Paper 14 at 16–17 (PTAB Oct. 19, 2020).” slip op. at 18

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

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). But we have discretion to deny a petition even when a petitioner satisfies the “reasonable likelihood” threshold standard for instituting trial. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). Based on the current record and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Not reached

    “essentially the same argument about the ’557 patent’s effective filing date for its challenge based on Nakamura-959 and Nakamura-949 as for its invalidity defense based on insufficient written-description support for claim 1. See Pet. 7, 12–21, 37; Ex. 2004, 29–33; Ex. 2005, 245–48; Ex. 2014, 64–65, 70. As we understand the arguments, resolving the ’557 patent’s effective filing date does not require interpreting any part of § 1.57. See Pet. 12–21; Prelim. Resp. 29–31. Instead, the issue turns on whether the ’154 application supports claim 1 according to § 112’s first paragraph. See Pet. 12–21; Prelim. Resp. 29–31. Also, the challenges based on Tanda present a similar issue whether the ’447 provisional supports claim 1 according to § 112’s first paragraph. See Pet. 12–21, 61; Prelim. Resp. 29–31, 36–37. “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Under the circumstances here, the ITC can apply the test for sufficiency of disclosure to the ’154 application and the ’447 provisional just as well as the Board.” slip op. at 27

  § 112 disclosureDiscretionary denial
  Patents in suitUS 10,658,557
• Lam Research Corp. v. Daniel L. FlammInstitution denied
  PTAB · Jun 30, 2016 · IPR2016-00468 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because Lam did not show a reasonable likelihood that claims 13–26, 64, and 65 would have been obvious over any asserted combination.

  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 shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Flamm’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Lam would prevail in challenging any of claims 13–26, 64, and 65 of the ’264 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “temperature change within a short period of time, in conjunction with Moslehi’s RF chuck that has low thermal mass, to teach “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing,” as claimed. Id. at 20– 22 (citing Ex. 1002, 6:18–62, 7:19–30; Ex. 1003, 4:45–48, 4:55–57, 10:7–9, 11:58–60; Ex. 1008 ¶¶ 73, 74). Lam also provides a rationale to combine the teachings of Kadomura’s embodiment 1 with those of Moslehi. Id. at 40–42. Flamm raises several arguments in response. First, Flamm contends that, in related Case IPR2015-01759, the Board was not persuaded by Lam’s approach of parsing phrases recited in independent claim 13 that are “interdependent” and addressing those phrases individually. PO Resp. 4 (citing Ex. 2001, 17). Flamm argues that, even though in this case Lam parses “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing” into two elements instead of three elements, this should not change the Board’s initial admonishment—namely, “[t]he claim language requires that these phrases are interdependent, and cannot be parsed into separate elements met individually.” Id. at 4 (emphasis added). Second, Flamm contends that Kadomura’s predetermined temperature change and time interval are not interdependent, as is required by independent claim 13. Id. at 5. Instead, Flamm argues that, because Kadomura’s time interval is a function of the time required to exhaust the first gas prior to introducing and stabilizing the second gas, this time interval is divorced completely from the predetermined temperature change. Id. at 5–6. We agree with Flamm that Lam’s analysis improperly breaks the elements of independent claim 13 into small phrases, and then attempts to match disclosures from the prior art to those phrases taken out of context. In particular, we note that independent claim 13 recites that “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing.” Ex. 1001, 21:1–3 (emphasis added). This claim language requires that these phrases are interdependent, and cannot be parsed into separate elements met individually. In other words, the thermal mass must be selected in order to undergo a predetermined temperature change within a specific interval of time, e.g., a change of 10°C per minute. Lam’s analysis is deficient, to the extent it separates selecting the thermal mass of the substrate holder from a predetermined temperature change within a specific interval of time and analyzes each separately.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We also do not find Dr. Cecchi’s supporting testimony on this particular issue to be persuasive. Ex. 1008 ¶¶ 73, 74. Dr. Cecchi’s analysis essentially repeats the arguments advanced in the Petition, and also breaks up the elements of the independent claim 13 into separate phrases that are then analyzed out of context. For these reasons, we do not credit his testimony that the combined teachings of Kadomura (embodiment 1) and Moslehi account for “the thermal mass of the substrate holder is selected for a predetermined temperature change within a specific interval of time during processing,” as recited in independent claim 13.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;3 and (4) when in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze this asserted ground based on obviousness with the principles identified above in mind. 2. Kadomura Overview Kadomura generally relates to a dry etching method used primarily for the production of semiconductor devices and, in particular, to a dry etching method and apparatus that provides compatibility for anisotropic fabrication and high selectivity. Ex. 1002, 1:6–10. According to Kadomura, one objective of the disclosed dry etching method is to apply an etching treatment that includes a plurality of steps to a specimen within the same 3 Relying upon the testimony of Dr. Cecchi, Lam offers an assessment as to the level of skill in the art. Pet. 13–14 (citing Ex. 1008 ¶¶ 27–30). Flamm does not challenge this assessment of the level of skill in the art or propose an alternative. For purposes of this Decision, and to the extent necessary, we accept the assessment offered by Lam and Dr. Cecchi.” slip op. at 13

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
• Qualcomm, Inc. / Qualcomm Atheros, Inc. v. Parkervision, Inc.Institution denied
  PTAB · Mar 8, 2016 · IPR2015-01822 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented in the Petition does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we deny institution of inter partes review of all the challenged claims.” slip op. at 2

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

    “entitled to claim benefit to the priority date of the ’940 patent—namely, October 21, 1998. See Pet. 11. Specifically, Petitioner contends the challenged claims cannot be entitled to a filing date earlier than April 13, 2000—the filing date of the application that led to the ’372 patent—because, according to the Declaration of Dr. Lawrence E. Larson, none of the earlier filed applications disclose “inversion means” or “‘inverting’ the ‘information signal’” as recited in the challenged claims. Id. (citing Ex. 1023 ¶ 103). Dr. Larson’s testimony merely repeats Petitioner’s assertion and provides no additional explanation or evidence with respect to this issue. Ex. 1023 ¶ 103. Other than “inversion means” or “‘inverting’ the ‘information signal,’” Petitioner does not advance arguments pertaining to other limitations regarding priority. Pet. 11 (citing Ex. 1023 ¶ 103).” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Petitioner’s combination of Dobrovolny and Krauss results in Petitioner improperly reading one component of Dobrovolny on two different claimed structures. Petitioner does not explain adequately why it would have been obvious to one of ordinary skill in the art to use Dobrovolny in the Q path of Krauss’s IQ modulator.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner

    “Absent a cogent explanation, it appears that Petitioner has engaged in impermissible hindsight reconstruction. See Grain Processing Corp. v. Am.- Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.”’). We, therefore, are not persuaded that Petitioner adequately explains why the limitations at issue in independent claim 99 would have been obvious over the combined teachings of Dobrovolny and Krauss.” slip op. at 17

  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,039,372
• Qualcomm, Inc. / Qualcomm Atheros, Inc. v. Parkervision, Inc.Institution denied
  PTAB · Mar 8, 2016 · IPR2015-01825 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented in the Petition does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we deny institution of inter partes review of all the challenged claims.” slip op. at 2

  • Skill levelOther

    “whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Instead, a determination of unpatentability on a ground of obviousness must include “‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness evaluation “should be made explicit,” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. We analyze the asserted grounds with the principles identified above in mind.” slip op. at 11

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

    “reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.LW. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under the broadest reasonable interpretation standard, and absent any special definitions, claim terms or phrases are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In its Petition, Petitioner proposes constructions for the following claim phrases or terms: (1) “inversion means for inverting the [] information signal and outputting a [] inverted information signal” (claims 99 and 100); (2) “gating [a signal]” (claims 99, 100, 126, and 127); (3) “first [second/third/fourth] gating means for gating” (claims 99 and 100); (4) “harmonically rich signal” (claims 99, 100, 126, and 127); (5) “harmonic” (claims 99 and 100); and (6) “summing means” (claims 99 and 100). Pet. 12–18. In response, Patent Owner proposes a construction for each of the claim phrases or terms identified by Petitioner. Prelim. Resp. 11–20. We, however, need not assess the parties’ proposed constructions because they are not necessary to resolve the dispositive issues discussed below. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9

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

    “entitled to claim benefit to the priority date of the ’940 patent—namely, October 21, 1998. See Pet. 11. Specifically, Petitioner contends the challenged claims cannot be entitled to a filing date earlier than April 13, 2000—the filing date of the application that led to the ’372 patent—because, according to the Declaration of Dr. Lawrence E. Larson, none of the earlier filed applications disclose “inversion means” or “‘inverting’ the ‘information signal’” as recited in the challenged claims. Id. (citing Ex. 1025 ¶ 103). Dr. Larson’s testimony merely repeats Petitioner’s assertion and provides no additional explanation or evidence with respect to this issue. Ex. 1025 ¶ 103. Other than “inversion means” or “‘inverting’ the ‘information signal,’” Petitioner does not advance arguments pertaining to other limitations regarding priority. Pet. 11 (citing Ex. 1025 ¶ 103). In response, Patent Owner argues that the specification of the ’940 patent, which is a parent patent to the ’372 patent, describes inverters 3910 and 4010. Prelim. Resp. 3–4 (citing Ex. 1016, 45:25–46:25, Figs. 39 and 40). For convenience, Figures 39A and 40A of the ’940 patent are reproduced below. Figures 39A and 40A of the ’940 patent illustrate inverters 3910 and 4010 inverting, respectively, waveforms 3902 and 4002. On this record before us, we are not persuaded Petitioner has demonstrated facts sufficient to establish a reasonable likelihood that it will prove that the challenged claims of the ’372 patent lack sufficient written description support. Specifically, Petitioner does not explain why the disclosure of inverters 3910 and 4010 would not convey to the person of ordinary skill in the art that the inventors were in possession of “inversion means” at the time the application that led to the ’940 patent was filed. Based on the current record, the challenged claims, therefore, are entitled to claim the benefit of the priority date of the ’940 patent—namely, October 21, 1998.” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,039,372
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentable
  PTAB · Jan 28, 2016 · IPR2014-01184 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 5–14 are unpatentable under § 103 as obvious over the prior art combinations addressed in the decision.

  RulingsFinal written decision

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

    “We agree with Patent Owner that the term “streaming” is often used in the context of the immediate processing and playback of audio information. -01181 Dec. on Inst. 7. The ordinary meaning of the term, however, does not require the immediate playback of streaming audio information, and the portions of the ’641 patent identified by Patent Owner do not demonstrate with reasonable clarity, deliberateness, and precision that a narrower claim definition should apply. For example, although the discussion in the ’641 patent of using high-speed communications for streaming an Internet radio station supports Patent Owner’s argument that “streaming audio” may be played immediately as it arrives, Ex. 1001, 7:3–7, the ’641 patent also discloses “downloading” “streaming audio” and “streaming Internet Broadcasts.” Id. at 3:67–4:1, 8:31–35, 17:1–2, 18:1–5. Thus, the disclosures of the ’641 patent are consistent with the dictionary definition of the term “streaming,” which contemplates the transfer of “streaming audio” as a constant stream of data for either immediate or delayed playback. Accordingly, we construe the term “streaming audio signal” as “an audio signal that is transferred in a continuous stream.”” slip op. at 10

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

    “3. remaining claim terms Patent Owner also proposes constructions for the terms wireless telephone device, a signal representing at least a portion of a song, while, and portable electronic device. PO Resp. 5–6, 8–10, 11–12. Upon review of Petitioner’s and Patent Owner’s arguments, we determine that construction of these additional claim terms is not required for purposes of this decision.” slip op. at 13

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

    “We agree with Petitioner that the addition of well-known rechargeable battery technology (as disclosed in Herrod) in the device of Abecassis would have been obvious, at a minimum, to eliminate the need to periodically replace the batteries in the Abecassis device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Moreover, we are not persuaded by Patent Owner’s argument that Abecassis and Herrod are in different fields of endeavor, as both references relate to the communication of data using a cellular phone.8” slip op. at 17

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “Ipsis verbis disclosure is not necessary, however, to satisfy the written description requirement of section 112. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). Thus, we must also determine whether, despite the lack of express disclosure, one of ordinary skill in the art would have understood that Patent Owner was in possession of the invention set forth in claim 8. Id. In conducting this analysis, we are cognizant that “a description which renders obvious a claimed invention is not sufficient to satisfy the written description requirement of that invention.” Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997). Dr. Wolf recites the same disclosures as Patent Owner and concludes that one of ordinary skill in the art would understand that the ’812 application demonstrates possession of an invention wherein a radio dial transmitted to a recipient device could be used to cause the transmission of selected information to the recipient device. Ex. 2005 ¶¶ 287, 290. Dr. Wolf does not address, however, the specific configuration set forth in claim 8 of the ’641 patent. In particular, Dr. Wolf does not explain why one of ordinary skill in the art would understand from the recited disclosures that the patentee was possession of a method of streaming a song from a portable electronic device to a recipient device in response to the selection of a selectable menu item “presented on a recipient device display.” In contrast, Dr. Quackenbush analyzes the disclosures of the ’641 patent in detail and concludes that one of ordinary skill in the art, upon review of the priority disclosures as a whole, would not understand the patentee to be in possession of the invention set forth in claim 8. Ex. 1025 ¶¶ 189–207. Specifically, Dr. Quackenbush concludes that the disclosures of the ’812 application and the ’641 Specification focus on the transmission of data from a storage device and digital engine to an electronic device, and not from a portable electronic device to a recipient device, in response to a selection of a selectable menu item presented on a recipient device display. Ex. 1025 ¶¶ 193–203. Upon careful review of both Dr. Wolf’s and Dr. Quackenbush’s” slip op. at 52

  Patent outcomesUS 8,532,641 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,532,641

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.