• U.D. Electronic Corp. v. Pulse Electronics, Inc.All claims unpatentable
  PTAB · Jul 22, 2020 · IPR2019-00511 · APJ Kevin F Turner · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 6,773,302 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 6,773,302
• Emerson Electric Co. v. Sipco, LLCAll claims unpatentable
  PTAB · Jan 16, 2018 · CBM2016-00095 · APJ Joni Y Chang · CBM · Final written decision

  Claims 1, 7, 9, 16, and 17 are unpatentable under § 101 and § 103(a) over Tymes; unpatentability under § 112, ¶ 1 was not shown.

  RulingsFinal written decision

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

    “Upon consideration of the parties’ contentions, we are not persuaded by Patent Owner’s arguments, as they conflate “power” with “transmission range”—the claim term recites “low-power,” not “low-transmission range.” We agree with Petitioner that Patent Owner’s proposed construction would import improperly a limitation into the claims, and we credit Mr. James T. Geier’s testimony (Ex. 1038 ¶¶ 34−39) as it consistent with the other evidence of record before us. We address below each of Patent Owner’s arguments in turn. First, Patent Owner argues that “the claim language itself indicates that the claimed low-power transceiver transmits low-power signals,” citing the language of claim 2, “wherein the low-power signal comprises a logical IP address.” PO Resp. 12 (citing Ex. 1001, 14:60–61). However, “the low-power signal” does not necessarily require a transceiver to transmit signals having a limited transmission range. Patent Owner does not explain meaningfully, or provide persuasive evidence to show, how a “low-power signal” is necessarily related to the transmission range of a transceiver. Consistent with the plain and ordinary meaning of the term, “a low-power transceiver” refers to a transceiver that consumes less power, e.g., by transmitting and receiving low power signals. Ex. 1038 ¶¶ 34−39.” slip op. at 23

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “However, Patent Owner’s arguments are not commensurate in scope with the claims. The purported problems that arose with the development of networks hosting wireless device—unlawful interruption of that data, interference, and contention—are addressed by using an extremely low-power transmitter. Ex. 1001, 5:65−6:11. As discussed above, the challenged claims recite a generic “low-power transceiver,” not an extremely low-power transmitter. Additionally, the alleged problem of transforming data to a different protocol is addressed by an unclaimed feature, as the ’842 patent itself recognizes that the invention is not necessarily limited to certain protocol or requires a protocol conversion. Id. at 13:55−14:5. Moreover, the challenged claims do not requires a protocol conversion or recite a device for converting data from one protocol to a different protocol. Rather, they recite generically a “network of addressable devices.” Patent Owner’s argument that the claims are “directed to an improvement in communication technology between remote devices that are accessible by wireless communication and a central location via a circuit interface” is unavailing. Significantly, the claims are not directed to a new type of transceiver, interface circuit, or controller to establish a communication link between a remote device and the central location. Instead, the claims are directed to transmitting data between locations using conventional or generic computer components. The challenged claims essentially recite a device for communicating information that comprises: (1) a low-power transceiver for transmitting or receiving data; (2) an interface circuit for communicating with a central 33 location; and (3) a controller for establishing a communication link. The Specification confirms that these features were known in the art. Ex. 1001, 5:23–25, 6:62–64 (“As is well known by those skilled in the art, a variety of transducers can perform this functionality adequately.”), 10:13–15 (“[T]he controller 256 may be a general purpose microprocessor or microcontroller.”), 10:21–23 (“The interface 258 within the transceiver 270 is designed to interface with this typical/standard telephone circuitry 263.”), 10:23–26 (“The specific implementation of the circuitry of [interface] 258 will be appreciated by persons skilled in the art and need not be described in detail herein.”). Indeed, the FCC Bulletin also confirms that low-power wireless transmitters were “used virtually everywhere,” noting that “[c]ordless phones, baby monitors, garage door openers, wireless home security systems, keyless automobile entry systems and hundreds of other types of common electronic equipment rely on such transmitters to function.” Ex. 2001, 1. Moreover, the ’842 patent itself recognizes that the communication link between the remote device and central location can be established by initiating a phone call over a telephone line that is part of the public-switched telephone network. Ex. 1001, 2:34−38. There is no dispute that such a communication link was known in the art. Id. at 10:21−26.” slip op. at 33

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “38 For the foregoing reasons, we are persuaded that Petitioner has demonstrated sufficiently that claims 1, 7, 9, 16, and 17 of the ’842 patent are directed to a patent-ineligible abstract idea. Whether the challenged claims lack a patent-eligible inventive concept Turning to the second step in the analysis, we look for additional elements that can “transform the nature of the claim” into a patent-eligible application of an abstract idea. That is, we determine whether the claims include an “inventive concept,” i.e., an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2357. The additional elements must be more than “well-understood, routine, conventional activity.” Mayo, 768 S. Ct. at 1297−98. Here, Petitioner argues that claims 1, 7, 9, 16, and 17 are unpatentable because they are “directed only to an abstract idea with nothing more added than generic computing components and ‘well-understood, routine, conventional activity’ previously performed in the field (both individually and as an ordered combination in the claims).” Pet. 23–24 (citing Mayo, 132 S. Ct. at 1294). According to Petitioner, the challenged claims “recite the concept of establishing a communication route between two points ‘as performed by a generic computer,’ without disclosing any ‘novel or unusual’ improvement to ‘the functioning of the computer itself’ or any ‘advance in computer technology that makes the performance of [routine] functions more effective.” Id. at 24 (citing Alice, 134 S. Ct. at 2358–60). 39” slip op. at 38

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

    “As Petitioner notes (Pet. 66−68; Ex. 1003 ¶¶ 353−366), Tymes discloses “an improved, low-cost, low-power, data communication network in which a number of remote terminal units are able to send packets of data to a central station, and . . . to receive acknowledge signals and data from the central station.” Ex. 1005, 2:36−56 (emphasis added). Tymes describes that the central station includes a number of base stations connected to a central computer. Id. at 3:21−25. As shown in Figure 1, the network includes base stations 12−14, each of which “is coupled by an RF link to a number of remote units.” Id. at 4:61−5:44. The RF link is used for sending “data packets from the remote terminals to the base stations and return.” Id. at 3:48−51 (emphasis added), 6:66–7:2. In fact, Tymes teaches that the “advantage of this type of RF data link is that a band may be used which does not require site licensing by the F.C.C.” Id. at 3:55−59. Contrary to Patent Owner’s assertion that “low-power” refers to only the remote terminals, Tymes describes a low-power network that includes base stations. As Petitioner also notes (Pet. 66–67, n.38), Tymes teaches an “indoor” limited range network and an RF data link “usable without site licensing under F.C.C. regulations, so that the expense and delays incident to such licensing are eliminated or minimized.” Ex. 1005, 2:36–56. Significantly, Tymes discloses that the optimum frequency is in the 902−928 MHz range 54 for the RF transceivers in the base stations. Id. at 6:66–7:2, 13:58–61, 18:1−3. The FCC limits the power for unlicensed transmitters, and the power limit under the FCC regulations is less than or equal to one watt for the disclosed 902–928 MHz range. Ex. 1010, 217; Ex. 1017, 7:9–11, 31–34. Mr. Geier testifies that an ordinarily skilled artisan “would have understood that an indoor communications network as taught by Tymes requires only a limited range (e.g., 1 mile or less (the length of a storage facility)), so that high-powered transceivers would be unnecessary and disfavored,” and that such an artisan “would have considered a transmission of 1 Watt to be a ‘low-power’ transmission, with a limited range of approximately 1 mile.” Ex. 1003 ¶¶ 358−359. Mr. Geier also testifies that such an artisan would have had a reason to use low-power transceivers in the base stations so that they are usable indoors without licensing under the FCC regulations. Id. We credit Mr. Geier’s testimony as it is consistent with Tymes’ teachings and other evidence. Ex. 1005, 2:36–56, 6:66–7:2, 13:58−61, 18:1−3, Figs. 1, 3, 10; Ex. 1010, 21; Ex. 1017, 7:9−11, 29−34 (explaining that “unlicensed systems using conventional modulation techniques attain ranges on the order of 500−1000 feet” (emphasis added)).” slip op. at 54

  Patent outcomesUS 8,908,842 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Phillips · KSR · Graham
  Patents in suitUS 8,908,842
• Square, Inc. v. Protegrity CorporationAll claims unpatentable
  PTAB · Mar 2, 2016 · CBM2014-00182 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 33–60 are unpatentable under § 101; the motion to add substitute claims 61–68 is denied because it broadens claims and lacks written-description support.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “claim, and “it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The written description of the ’281 patent does not contain a definition of “database.” The claimed database for storing a plurality of data portions corresponds to the O-DB database disclosed in the ’281 patent. The O-DB database is part of a larger “database management system” that includes multiple databases. Id. at 5:53–6:22; Fig. 3. Similar to the other databases, the O-DB database is described as containing data and, in particular, data to be protected. Id. at 6:62–67. Contrary to Patent Owner’s argument (PO Resp. 17–18), the ’281 patent does not describe the O-DB database, or any other database, as performing any other data processing or managing functions. In particular, the ’281 patent does not describe that the O-DB database produces the compelling calling to the data protection catalogue. See Ex. 1001, 10:48–60 (“is first collected by the system”); see id. at Abstract, 2:65–3:5, 3:59–4:2, 4:26–31, 7:63–67, 8:53–61 (describing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database).” slip op. at 10

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

    “We are persuaded by Petitioner that the broadest reasonable construction, in light of the specification of the ’281 patent, of “data portion” is “a part or share of the database.” The ’281 patent contains no lexicographic definition of “data portion” and, therefore, “data portion” is given its plain and ordinary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Petitioner’s construction is consistent with the plain and ordinary meaning of “portion,” which is an individual’s part or share of something. See Ex. 3001 (MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 908 (10TH ED. 1998)). Petitioner’s proposed construction is also consistent with the words of independent claims 33 and 47, which require that the data portions are part of a database. E.g., see Ex. 1001, 11:18–19 (claim 1 recites “maintaining a database comprising a plurality of data portions”). Petitioner’s proposed construction is further consistent with dependent claims 37, 38, 51, and 52, which further define the claimed data portions to be “a column of data in the database” or “a field of data in the database.” Patent Owner’s proposed construction is overly narrow and improperly attempts to import the limitations from the specification of the ’281 patent into the claim. Limitations appearing in the specification but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily) (internal quotations and citation omitted). Although the ’281 patent describes the invention as working on the cell or data element level (see Ex. 1001, 3:52–59), we see nothing in the claims, themselves, that require the data portions to be data element values. Dependent claims 37 and 51 are inconsistent with Patent Owner’s proposed construction, because they define the data portion as a column of data, which is a larger portion of data than a data element value.” slip op. at 15

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Mr. Mattsson’s and Dr. Direen’s testimony is unpersuasive because it is inconsistent with the ’281 patent. As discussed above, the ’281 patent describes the O-DB as one database in a larger database management system. Ex. 1001, 5:52–6:22. The ’281 patent describes the O-DB database as containing data and describes the modules of the larger database management system as performing data processing. Id. at 5:62–67, 6:23–56. The ’281 patent does not describe the O-DB database as producing the compelling calling. See Ex. 1001, 10:48–60 (“is first collected by the system”); see id. at Abstract, 2:65–3:5, 3:59–4:2, 4:26–31; 7:63–67; 8:53–61 (disclosing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database). The assertion that the compelling calling is produced by the O-DB database is only found in Patent Owner’s arguments, Mr. Mattsson’s testimony, and Dr. Direen’s testimony, and not the ’281 patent. E.g., see Ex. 2045 ¶¶ 12–16, 22, 29; Ex. 2046 ¶ 19; Ex. 2078 ¶¶ 11–12; Ex. 2079 ¶¶ 7–8. Extraneous features should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). In that regard, “extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history.” Bell Atl. Network Servs. v. Covad Commc'ns Grp., 262 F.3d 1258, 1269 (Fed. Cir. 2001); see Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996) (“expert testimony, which was inconsistent with the specification and file history, should have been accorded no weight”). Further, we give little weight to Mr. Mattsson’s testimony because Mr. Mattsson is not a disinterested witness. Mr. Mattsson is Patent Owner’s Chief Technology Officer and Co-founder (Ex. 2019, 2) and has an interest in the outcome of this proceeding. Contrary to Mr. Mattsson’s and Dr. Direen’s testimony, Petitioner’s declarant Dr. Shamos testifies that one of ordinary skill in the art would know, based upon the ’281 patent, that the compelling calling is produced not by the O-DB, but by control module 20, Ex. 1014 ¶¶ 15–21. Dr. Shamos’ testimony is persuasive because it is consistent with the written description of the ’281 patent, discussed above. Patent Owner argues that we should give no weight to Dr. Shamos’ testimony. PO Resp. 61–64. According to Patent Owner, Dr. Shamos is not a person of ordinary skill in the art because Dr. Shamos lacks knowledge and expertise in database administration and security. Id. at 63. Patent Owner’s argument is unpersuasive because Dr. Shamos is testifying as an expert whose knowledge and experience qualify him to opine on what a hypothetical person of ordinary skill in the art would have understood at the time of the invention. See Ex. 1014 ¶¶ 1–2 (testimony concerning his knowledge of encryption and database technology); Ex. 1003 (Resume of Dr. Shamos). We are not persuaded by Patent Owner that Dr. Shamos is not qualified to opine as to the knowledge of person of ordinary skill at the time of the filing. We, thus, are not persuaded by Patent Owner that we should give no weight to Dr. Shamos’ testimony.” slip op. at 12

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “Independent claim 33 recites a data processing method that grants access to a requested data portion if the rules associated with a data category that is associated with the requested data portion is satisfied. Ex. 1001, 13:38–54. Claim 33 requires a database that comprises the data portions and requires a separate data protection table comprising data processing rules that must be satisfied before the data portion can be accessed. Id. The data processing rules are associated with the data category. Id. Independent claim 47 recites a corresponding computer system. Id. at 14:47–63. Independent claims 33 and 47, thus, recite a method or system that grants access to a requested data portion if the rules associated with a data category that is associated with the requested data portion are satisfied. Ex. 1001, 13:38–54. Given the above, we are persuaded by Petitioner that the claims are directed to the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied. We are not persuaded by Patent Owner that the claims are not directed to an abstract idea, because Patent Owner’s argument is based upon elements not required by the claims. See PO Resp. 21–28, 35–38. Given our construction of “data portion” and “database” in section II (A) above, the claims do not require protection on the data element level based on rules stored in a separate database, where the first database calls out to the second database. Patent Owner’s argument is not commensurate with the scope of the claims.” slip op. at 30

  Patent outcomesUS 8,402,281 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo
  Patents in suitUS 8,402,281
• 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
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentable
  PTAB · Jan 28, 2016 · IPR2014-01182 · APJ Jon B Tornquist · IPR · Final written decision

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

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided 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

  • Skill levelOther
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation 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

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for patent owner

    “We agree with Patent Owner that Petitioner’s identification of corresponding structure and its argument that § 112 ¶ 6 does not apply to the term “means for recharging the internal battery” should have been in Petition, and not presented for the first time in reply. PO Resp. 69; Tr. 84:12–85:14; see 37 C.F.R. § 42.104(b)(3). Moreover, Petitioner does not provide adequate support for its broad identification of corresponding structure in the ’641 patent. For example, we are directed to no disclosure in the ’641 patent indicating that any “battery recharger” may recharge the battery of the device. Thus, we do not adopt Petitioner’s proposed constructions. Patent Owner does not propose a construction for the term “means for recharging the internal battery.” See PO Resp. 5–11, 69–70. The ’641 patent discloses, however, that interface 904 and mount 511 allow for recharging the electronic device using an interface that provides both recharging power and data communications. Ex. 1101, 13:15–32, 18:27–39, 20:52–57. As Petitioner provides persuasive evidence to explain why one of ordinary skill in the art would have sought to add both rechargeable batteries and a USB interface—which provides both recharging power and data connectivity—to the device of Abecassis, under either Petitioner’s proposed construction or the structure for recharging the internal battery set forth in the ’641 patent, the prior art discloses the limitations of claim 14. Thus, we are persuaded that claim 14 would have been obvious over Abecassis, Herrod, and Chennakeshu.” slip op. at 28

  Patent outcomesUS 8,532,641 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,532,641
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,340,260
• Apple, Inc. v. Personalweb Technologies, LLC, And Level 3 Communications, LLCAll claims unpatentable
  PTAB · Mar 25, 2015 · IPR2013-00596 · APJ Kevin F Turner · IPR · Final written decision

  Claims 24, 32, 70, 81, 82, and 86 are unpatentable as obvious over Woodhill and Stefik.

  RulingsFinal written decision

  • Skill levelOther

    “must prove unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented 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). To establish obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974). A patent claim composed of several elements, however, is not proved obvious merely by demonstrating that each of its elements was known, independently, in the prior art. KSR, 550 U.S. at 418. In that regard, for an obviousness analysis it is important to identify a reason that would have prompted one of skill in the art to combine prior art elements in the way the claimed invention does. Id. A precise teaching directed to the specific subject matter of a challenged claim, however, is not necessary to establish obviousness. Id. Rather, obviousness must be gauged in view of common sense and the creativity of an ordinarily skilled artisan. Id. Moreover, obviousness can be established when the prior art, itself, would have suggested the claimed subject matter to a person of ordinary skill in the art. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).” slip op. at 11

  • Expert testimonyOther

    “Id. at 41–42. In support of its asserted ground of unpatentability, Apple proffers the testimony of Dr. Benjamin F. Goldberg. Ex. 1007 ¶¶ 61–88.” slip op. at 13

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

    “C. Priority of the Subject Claims Apple asserted that claims 24, 32, 70, 81, 82, and 86 of the ’310 Patent are not entitled to the benefit of the filing date of the earliest priority application under 35 U.S.C. § 120. Pet. 55–57. Specifically, Apple asserted that the earliest priority application does not provide sufficient written description support for the claim feature: “a hash function.” Id. at 55. In the Decision to Institute, we found that that the original disclosure of the earliest priority application of the ’310 Patent—namely, the application filed on April 11, 1995—provides sufficient written description support for the claimed feature “a hash function.” Dec. 11–13. We are not persuaded that any modification is necessary in light of any evidence or argument introduced during trial. Thus, we determine that Priority Web has established that it is entitled to the benefit of the April 11, 1995 filing date.” slip op. at 12

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

    “Apple further contends that a person of ordinary skill in the art reading Woodhill and Stefik would have understood that the combination of Woodhill and Stefik would have allowed for the selective access features of Stefik to be used with Woodhill’s content-dependent identifiers feature. Pet. 42. We agree in this regard and are persuaded that the combination of Woodhill and Stefik renders claims 24, 32, 70, 81, 82, and 86 of the ’310 Patent unpatentable under 35 U.S.C. § 103.” slip op. at 15

  Patent outcomesUS 7,802,310 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · KSR
  Patents in suitUS 7,802,310
• Larose Industries, LLC v. Capriola Corp.All claims unpatentable
  PTAB · Jun 26, 2014 · IPR2013-00121 · APJ James B Arpin · IPR · Final written decision

  Claims 1-27 are unpatentable over the instituted grounds; the motion to amend with substitute claims 28-31 is denied because patentability was not established and the claims would have been obvious.

  RulingsFinal written decision

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

    “bears the burden of establishing the patentability of the proposed substitute claims over the prior art of record and also other prior art known to the patent owner. See Paper 36, 32-33. We deny the motion to amend here (1) because Patent Owner has not met this burden and (2) because Petitioner has persuaded us that the substitute claims would have been rendered obvious over the teachings of Teller, Rosen I, and Pawloski.” slip op. at 35

  • ExcludeOther

    “As noted above, we do not rely on Rosen II in denying Patent Owner’s motion to amend. See supra n.7. Moreover, Patent Owner points to some alleged similarity between the invention claimed in Rosen II and Patent Owner’s invention, as recited in the substitute claims, and makes allegations that Petitioner had access to a product embodying Patent Owner’s claimed invention before the filing date of the Rosen II application. Patent Owner, however, fails to provide persuasive evidence that Petitioner copied Patent Owner’s invention. See Paper 22, 15-16 (“Petitioner (now) expressly recognizes the functional advantage achieved by interconnected cylindrical non-conductive components . . . which renders the proposed substitute claims patentable over the prior art.”); Paper 32, 2-4 (“Indeed, part of the relevance of [Rosen II] teaching the same male-female non-conductive block interface that appears in the proposed substitute claims is precisely because it was not filed until well after Petitioner learned of Patent Owner’s 45 invention.”); see also Paper 36, 13-14 (Patent Owner alleges that Petitioner saw a product embodying features recited in the substitute claims at the New York Toy Fair before the priority date of Rosen II). Thus, the current situation does not require us to assess the merits of Petitioner’s motion to exclude. Accordingly, Petitioner’s motion to exclude evidence is dismissed as moot.” slip op. at 45

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “1. Preamble Terms The substitute claims recite the following preambles: “[a] building block comprising” (claim 28), “[a] building block set comprising” (claim 29), “[a]n illuminated toy building block set comprising” (claim 30), and “[a]n illuminated building block comprising” (claim 31). As we determined with respect to the challenged claims, the preambles of the substitute claims do not recite additional structure that is absent from the bodies of the claims or is necessary to give life, meaning, and vitality to the claims. Paper 14, 8- 9. Applying the broadest reasonable interpretation of the substitute claims in light of the Specification, we again conclude that the preamble terms are not limiting and, in particular, that the recitations of “building block,” “building block set,” and “toy building block set” in the preambles do not limit the scope of the claims to toy blocks or toy block sets. Id.” slip op. at 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “3. “Means for Conducting Electrical Current Through the LED in Each Block and Each of the Electrically Conductive Mechanical Connectors of Each Block” The parties do not dispute our interpretation of “means for conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” in original claim 18. See Paper 14, 14-15. For purposes of substitute claim 30, we adopt our previous analysis and interpret the identical means-plus-function limitation to have the function of “conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” and the corresponding structure of power source 70.” slip op. at 14

  Patent outcomesUS 7,731,558 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 7,731,558
• Larose Industries, LLC v. Capriola Corp.All claims unpatentable
  PTAB · Jun 26, 2014 · IPR2013-00120 · APJ James B Arpin · IPR · Final written decision

  Claims 1–27 are unpatentable over the instituted grounds; the motion to amend with substitute claims 28–31 is denied because Patent Owner did not establish their patentability.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “II. DISCUSSION As noted above, Patent Owner did not file a patent owner response to the petitions. We have reviewed the evidence presented by Petitioner regarding the claims upon which we instituted inter partes review and determine that Petitioner has shown that those claims are unpatentable by a preponderance of the evidence. See Paper 10, 16-32 (combination of Teller and Rosen I), id. at 32-43 (Doherty, and combination of Doherty and Rosen I); Paper 14, 17-25; IPR2013-00121, Paper 1, 23-25 (combination of Feuerborn and Rosen I); IPR2013-00121, Paper 11, 18-22. Specifically, Petitioner has shown by a preponderance of the evidence that claims 1-27 are unpatentable under 35 U.S.C. § 103(a), as obvious over Teller and Rosen I; claims 1-6, 8-22, 24, 26, and 27 are unpatentable under 35 U.S.C. § 102(e), as anticipated by Doherty; claims 7, 23, and 25 are unpatentable under 35 U.S.C. § 103(a), as obvious over Doherty and Rosen I; and claims 18-25 are unpatentable under 35 U.S.C. § 103(a), as obvious over” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “1. Preamble Terms The substitute claims recite the following preambles: “[a] building block comprising” (claim 28), “[a] building block set comprising” (claim 29), “[a]n illuminated toy building block set comprising” (claim 30), and “[a]n illuminated building block comprising” (claim 31). As we determined with respect to the challenged claims, the preambles of the substitute claims do not recite additional structure that is absent from the bodies of the claims or is necessary to give life, meaning, and vitality to the claims. Paper 14, 8- 9. Applying the broadest reasonable interpretation of the substitute claims in light of the Specification, we again conclude that the preamble terms are not limiting and, in particular, that the recitations of “building block,” “building block set,” and “toy building block set” in the preambles do not limit the scope of the claims to toy blocks or toy block sets. Id.” slip op. at 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “3. “Means for Conducting Electrical Current Through the LED in Each Block and Each of the Electrically Conductive Mechanical Connectors of Each Block” The parties do not dispute our interpretation of “means for conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” in original claim 18. See Paper 14, 14-15. For purposes of substitute claim 30, we adopt our previous analysis and interpret the identical means-plus-function limitation to have the function of “conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” and the corresponding structure of power source 70.” slip op. at 14

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

    “a. Non-conductive A relevant definition of the term “conductive” is “having the property or capability of conducting.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 277 (2d Random House ed. 1999) (Ex. 3001). However, the term “conductive” is used in the Specification to describe the property of conducting electricity. Ex. 1001, col. 4, ll. 43-56. Further, the entire Specification is directed to conducting electricity to illuminate a set of building blocks, and no other type of energy conduction is described that would allow building blocks to be so illuminated. This supports interpreting the claim term as limited, under the circumstances, to conducting electricity. Thus, we construe “non-conductive” as the opposite of conductive, i.e., lacking the property or capability of conducting electricity. b. Cylindrical A relevant definition of the term “cylindrical” is “of, pertaining to, or having the form of a cylinder,” and a relevant definition of the word “cylinder” is “a surface or solid bounded by two parallel planes and generated by a straight line moving parallel to the given planes and tracing a curve bounded by the planes and lying in a plane perpendicular or oblique to 15 them.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY at 331(Ex. 3001). Further, the term “cylindrical” is used in the Specification to describe the cylindrical embodiment of Figure 1 of the ’558 Patent. Ex. 1001, fig. 1; col. 4, l. 66-col. 5, l. 1 ((“In the embodiment illustrated in [Figure 1], the body 30 is substantially cylindrical 31 with one of the mechanical connectors at either end 32 thereof.”; emphasis added)). Thus, we construe “cylindrical” as an adjective describing a structure as “of, pertaining to, or having the form of a cylinder,” where a cylinder is a surface or solid bounded by two parallel planes and generated by a straight line moving parallel to the given planes and tracing a curve bounded by the planes and lying in a plane perpendicular or oblique to them. c. At Any Degree of Rotation A relevant definition of the word “degree” is “the 360th part of a complete angle or turn . . .” (emphasis added); a relevant definition of the word “turn” is “to cause to move around or on an axis or about a center; rotate: to turn a wheel” (emphasis added); and a relevant definition of the word “rotation” is “the act of rotating; a turning around as on an axis” or “one complete turn of such a body.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY at 349, 1145, 1406 (Ex. 3001). Further, rotational axis lr is depicted in Figure 4 of the ’558 Patent and described in the Specification with respect to the rotation of a block body in the form of wheel 38. Ex. 1001, fig. 4; col. 5, ll. 9-11. Referring to Figures 7 and 8 of the ’558 Patent, wheels 38 may be used to create a wheeled structure resembling a vehicle. Id. at figs. 7, 8; col. 5, ll. 11-13. Thus, we construe the term “at any degree 16 of rotation” as any part of one complete turn of a body as on an axis, such as, for example, any part of one complete turn of a wheel on a rotational axis.” slip op. at 15

  Patent outcomesUS 7,731,558 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 7,731,558

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.