- NVIDIA Corporation v. Samsung Electronics Company, Ltd.Institution deniedPTAB · May 4, 2016 · IPR2016-00134 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims, exercising discretion against the follow-on petition and alternatively rejecting it under § 325(d) because Hsu and Yamakawa were substantially the same.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Given the undisputed facts as noted above, it would be unjust to Patent Owner to institute review in this proceeding. Petitioner has provided no rationale on why it waited until November 4, 2015, more than five months after filing of the first petition on June 1, 2015, in IPR2015-01318, to file the Petition in this proceeding, given that Petitioner was aware of Hsu at least by May 8, 2015. Notably, in IPR2015-01318, Patent Owner’s preliminary response was filed on September 10, 2015. On the other hand, not instituting review in this proceeding would not be unjust to Petitioner, because Petitioner was aware of Hsu when the first petition was filed on June 1, 2015, in IPR2015-01318, and subsequently waited too long to file the second petition relying on Hsu with no apparent justification. Under the circumstances of this case, as explained above, we hold Petitioner accountable for its own actions and inactions. Given the limited resources of the Board, we exercise our discretion not institute review in this proceeding, which is the second petition filed by Petitioner against claims 1– 8 and 10–15 of the ’675 patent. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“discussion of Hsu, we find that Yamakawa and Hsu are substantially the same insofar as claims 1–8 and 10–15 of the ’675 patent are concerned. In IPR2015-01318, Petitioner asserted that claims 1–8 and 10–15 of the ’675 patent are anticipated by Yamakawa. In this proceeding, Petitioner asserts that claims 1–8 and 10–15 of the ’675 patent are anticipated by Hsu. Neither assertion is based on any inherency argument, and both assertions rely on a direct reading of each claim limitation onto the prior art. Nothing in either Yamakawa or Hsu had to be specially construed and neither Yamakawa nor Hsu sets forth any special definition of terms. With respect to the challenged claims, we are not cognizant of any necessary disclosure that is provided by Hsu but not Yamakawa. The differences between Hsu and Yamakawa have not been shown to be significant with respect to the challenged claims. The types of steps said to be disclosed by Hsu are the types of steps said to be disclosed by Yamakawa, and vice versa. If Yamakawa anticipates the challenged claims, it would be expected that the same assertion would be made about Hsu, and the same is true the other way around.” slip op. at 13
Discretionary denialPatents in suitUS 8,252,675 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Mar 17, 2016 · IPR2014-01412 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1, 2, 4–7, 10–16, 18–21, 24–28, and 32 are unpatentable, principally because the cited references anticipate or render them obvious.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On July 10, 2015, we joined IPR2015-01077 to this proceeding and instituted trial on the following grounds: Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a) over the ’450 patent; Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a) over the combination of the ’450 patent and the ’219 patent; and Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a) over the combination of the ’450 patent and Bungum.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“have its plain and ordinary meaning as “a communications path in a communications network.” Dec. to Inst. 8. Patent Owner contends that we should not construe this term at all because its plain and ordinary meaning is clear. PO Resp. 6–7. Patent Owner disputes the authority of the IEEE reference we used to establish the plain and ordinary meaning, arguing that Exhibit 1017 is not a standard, but a functional requirements document generated to assist a working group and is subject to change. Id. at 7–8. However, Patent Owner does not propose a “plain and ordinary meaning.” Id. Nor does Patent Owner argue that the scope of the term would be different if we rely on other evidence of the plain and ordinary meaning. Id. Although our Decision to Institute notes that the construction of “transmission path” is not particularly material to the decision, Dec. to Inst. 7–8, it is helpful to establish a baseline definition of the meaning as understood by those of ordinary skill in the art. Patent Owner’s assertion that the definition we applied was used by an IEEE working group supports our determination that our construction in the Decision to Institute applies the plain and ordinary meaning to those of ordinary skill in the art. Accordingly, we adopt the construction of “transmission path” as “a communication path in a communications network.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Time-Slot In this proceeding, neither party proposed a construction for the term “time- slot,” and we did not construe it in our Decision to Institute. However, in related case IPR2015-01471, which concerns a continuation-in-part of the ’557 Patent, it became clear that a construction of the term “slot” was in dispute, and it was discussed extensively at the consolidated oral hearing. In this proceeding, Patent Owner argues that the ’450 Patent does not disclose transmitting payload data on time slots allocated by the network control terminal (NCT), because the NCT in the ’450 Patent assigns only one slot, so that a small aperture terminal (SAT) transmits data beginning on a single slot. PO Resp. 15–19. In IPR2014-01471, we construed “slot” to mean “a duration of time.” Ericsson Inc. and Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLC, Case 2014- 01471, slip op. at 7 (PTAB, March 17, 2015) (Paper 33, Final Written Decision). We address the implications of this issue in our analysis of Representative Claim A and the ’450 patent.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As discussed above, there is evidence that MPEG2 could have been used to transmit video via satellite. As previously discussed, Petitioner has cited credible evidence that satellites transport MPEG2 packets. Reply 14. The claims are drawn to a three channel arrangement in which one channel is used to transmit data from the central controller to the station and two channels are used to transmit data from the station to the central controller. As discussed above, that arrangement is disclosed in the ’450 patent. The further limitation in claims 11 and 25 that the first path is a broadcast channel carrying MPEG2 data is a restriction to a field where Petitioner has demonstrated it was known to use such a format. Thus, Petitioner has produced persuasive evidence that combining the use of known MPEG2 transport packets with a managed access satellite communication system, such as that disclosed in the ’450 patent, would have been obvious to one of ordinary skill. Therefore, we conclude that Patent Owner has demonstrated by a preponderance of the evidence that claims 11 and 25 are unpatentable as obvious under 35 U.S.C. § 103(a) over the ’450 patent.” slip op. at 36
Patent outcomesUS 5,963,557 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,963,557 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLC And Intellectual Ventures II LLCAll claims unpatentablePTAB · Mar 17, 2016 · IPR2015-01077 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1, 2, 4–7, 10–16, 18–21, 24–28, and 32 are unpatentable, principally as anticipated or obvious over the ’450 Patent and related combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Transmission Path In our Decision to Institute, we construed the term “transmission path” to have its plain and ordinary meaning as “a communications path in a communications network.” Dec. to Inst. 8. Patent Owner contends that we should not construe this term at all because its plain and ordinary meaning is clear. PO Resp. 6–7. Patent Owner disputes the authority of the IEEE reference we used to establish the plain and ordinary meaning, arguing that Exhibit 1017 is not a standard, but a functional requirements document generated to assist a working group and is subject to change. Id. at 7–8. However, Patent Owner does not propose a “plain and ordinary meaning.” Id. Nor does Patent Owner argue that the scope of the term would be different if we rely on other evidence of the plain and ordinary meaning. Id. Although our Decision to Institute notes that the construction of “transmission path” is not particularly material to the decision, Dec. to Inst. 7–8, it is helpful to establish a baseline definition of the meaning as understood by those of ordinary skill in the art. Patent Owner’s assertion that the definition we applied was used by an IEEE working group supports our determination that our construction in the Decision to Institute applies the plain and ordinary meaning to those of ordinary skill in the art. Accordingly, we adopt the construction of “transmission path” as “a communication path in a communications network.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Time-Slot In this proceeding, neither party proposed a construction for the term “time- slot,” and we did not construe it in our Decision to Institute. However, in related case IPR2015-01471, which concerns a continuation-in-part of the ’557 Patent, it became clear that a construction of the term “slot” was in dispute, and it was discussed extensively at the consolidated oral hearing. In this proceeding, Patent Owner argues that the ’450 Patent does not disclose transmitting payload data on time slots allocated by the network control terminal (NCT), because the NCT in the ’450 Patent assigns only one slot, so that a small aperture terminal (SAT) transmits data beginning on a single slot. PO Resp. 15–19. In IPR2014-01471, we construed “slot” to mean “a duration of time.” Ericsson Inc. and Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLC, Case 2014- 01471, slip op. at 7 (PTAB, March 17, 2015) (Paper 33, Final Written Decision). We address the implications of this issue in our analysis of Representative Claim A and the ’450 patent.” slip op. at 8
- BurdenUnpatentable
“Claim element A.5 concerns actions taken by the station. As noted above, the elements of Representative Claim A, including element A.5, are common to independent claims 1 and 15. Patent Owner’s argument does not consider other language in claim 1 that provides context for limitation A.5 concerning the central controller that provides the grant to which the station responds. Apparatus claim 1 recites that, upon receiving a reservation request, the central controller responds by “transmitting on said first path a payload data transmission grant to said station for transmitting payload data on said third path on said time-slots allocated by said centralized controller.” Almost identical language appears in method claim 15. Claims 1 and 15 do not limit the form of the grant, nor do claims 1 and 15 limit the time-slots allocated by the central controller. For example, there is no requirement in the claims that the grant authorize a specific number of time-slots or that the time slots be of any particular duration. Claims 1 and 15 recite that, in response to receiving a request on the second path, the centralized controller transmits on the first path a “grant” authorizing payload data transmission on the third path at allocated time-slots. Claims 1 and 15 do not limit the allocated time slots to any particular frame or time. Nor do claims 1 and 15 preclude allocating sufficient time slots for the terminal to transmit its entire message. Given the language of the claims, we conclude that Petitioner has shown by a preponderance of the evidence that the ’450 patent discloses the recited features in element A.5, which appears in the challenged claims illustrated by Representative Claim A (independent claims 1, 4, 5, 7, and 10–14, as well as corresponding dependent claims 2–4) and Representative Claim B (independent claims 15, 21, and 25–27, as well as corresponding dependent claims 16–19).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“The Specification of the ’557 Patent describes a cable system implementation and specifically states: (1) that “the implementation of the invention in a cable network was merely illustrative” (Ex. 1001, col. 19, ll. 39–40); (2) that another example is an implementation in a wireless system in which the central controller is a base station and that the communication units are cordless or cellular telephones (id. at col. 19, ll. 41–42); and (3) that when employed in a satellite system the central controller is a satellite and the subscriber stations are earth stations (id. at col. 19, ll. 50–54). As previously discussed, the ’450 patent discloses in Figure 1 NCT 12, which communicates with portable terminals 14 through satellite 11, using two upstream channels and one downstream channel. Ex. 1005, Abstract, Fig.1. Thus, the ’450 patent discloses the NCT in the context of a satellite network. Claims 7 and 21 recite only that the centralized controller is a base station, that the network is a wireless network, that the transmission medium is air, and that the station is a mobile or stationary communication unit. Claims 7 and 21 do not limit a wireless network to a non-satellite network, or, in the case of a satellite network, limit the base station to any particular node. Thus, we conclude that Petitioner has shown by a preponderance of the evidence that the ’450 patent anticipates the base station limitation of claims 7 and 21. Petitioner further notes that the question is not whether cellular base stations and satellites have differences, but whether media access controller and contention resolution access principles used in satellite and cellular applications are translatable to each other. Reply 12. To the extent that the base station is considered to be limited to a cellular wireless network as argued by Patent Owner, we note (1) that the Specification of the ’557 patent extends the concept of using two upstream channels and one downstream channel to a wireless network (Ex. 1001, col. 19, ll. 50–57) and (2) that the ’450 patent discloses the two upstream, one downstream channel approach in the context of a satellite network, in which the transmission medium is air and the central controller is the satellite (Ex. 1005, 4:50–57). Thus, we conclude that Petitioner has shown by a preponderance of the evidence, that this limitation, which recites that the central controller is a mobile or stationary base station in a wireless network in which the transmission medium is air, is obvious under 35 U.S.C. § 103(a) over the ’450 patent.” slip op. at 21
Patent outcomesUS 5,963,557 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,963,557 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Mar 17, 2016 · IPR2014-01471 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–27 are unpatentable: claims 1, 4–6, 9–12, 18, 21–24, and 27 as anticipated; all remaining claims as obvious over the listed combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“of fixed or variable size.” Pet. 8. Patent Owner initially responded that Petitioner’s proposed construction is not supported by the specification and that the term “slot” did not require construction. Prelim. Resp. 9. In our Decision to Institute, we construed “slot” to mean “a duration of time.” Dec. to Inst. 7. In the Patent Owner Response, Patent Owner argues that “slot” should be construed to mean “a predetermined division of the time domain for a channel.” PO Resp. 9– 10. Patent Owner notes that the ’153 Patent discloses that “[e]ach channel illustratively is divided into slots or mini-slots.” Id. at 9 (citing Ex. 1001, col. 8, ll. 60–61). However, the mere division of a channel into slots, does not define a slot. Patent Owner argues that “slot” should be further limited to a predetermined division because in the context of the ’153 Patent, the central controller responds to a reservation request by “assigning specific slots to each station.” Id. at 9–10 (citing Ex. 1001, col. 9, ll. 11–13). However, the assignment of specific slots to each station neither defines a slot nor limits a slot to some predetermined division of the time domain. Indeed, the ’153 Patent states that “the upstream payload channel UPC carries a stream of only payload packets in slots (which may be fixed or variable in size).” Ex. 1001, col. 12, ll. 9–12. Although it is unclear whether the literal text is intended to mean that either the payload packets or the slots vary in size, the text does not restrict the slots to any particular size or preclude adapting the size of the slots to the size of the payload packets.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “A reference anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.’” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (emphasis omitted) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“slots (e.g., 3 or 4) is available ran[d]om access.” Id. (citing Stark Decl. ¶ 194; Ex. 1007, col. 1, ll. 42–48). Petitioner contends that a person of ordinary skill would have been motivated to use such a message to reduce collisions by more precisely identifying the available slots on the reservation channel for requesting slots on the (return) payload channel. Id. The ’398 patent discloses that a known technique for reducing the probability of collisions is dynamic frame based slotted aloha random access and that in this arrangement, an access command is transmitted by a central unit on the downlink indicating that the common control channel on the uplink in the next N slots (e.g., 3 or 4 random slots) is available for access . . . [T]his arrangement has the result that access requests are spread over N frames and are therefore less likely to collide.” slip op. at 28
- Expert testimonyPetitioner expert creditedDecided for petitioner
“disclose sufficiently selecting different modulation schemes for the upstream control and payload channels to optimize the robustness of the control channel without degrading the robustness of the payload channel, as recited in claim 13, this feature is taught in the ’219 patent. Pet. 44. Petitioner notes, and we agree, that the ’219 patent discloses using quadrature amplitude modulation for the telephony data and binary phase shift keying (BPSK) modulation techniques for the synchronization channel and for IOC control data to provide robustness in the system. Id. at 45. Petitioner cites the Declaration of Dr. Stark to support its contention that one of ordinary skill would have combined these teachings of the ’450 and ’219 patents. We are persuaded by this testimony. Claim 14 recites that the upstream control channel on which the bitstream containing the reservation request is transmitted in step (a) of claim 1 is one of a plurality of upstream control channels. As Petitioner notes, and we agree, the ’219 patent discloses that a plurality of control channels are interspersed among the telephony channels of the second frequency bandwidth. Pet. 45–46 (citing Ex. 1008, col. 5, ll. 49–51; col. 4, ll. 59–66). Petitioner cites testimony of Dr. Stark to support persuasively its contention that the disclosure of at least 3 separate data channels in the ’450 patent would suggest to a person of ordinary skill that two or more control channels could be used in the upstream channel. Id. at 46 (citing Stark Decl. ¶ 201). The three data channels discussed in the ’450 patent are a forward channel outbound from the NCT, a reservation channel inbound from the PT, and a return channel inbound from the PT. Ex. 1005, col. 4, ll. 50–57. We are persuaded by Petitioner’s argument and evidence presented.” slip op. at 31
Patent outcomesUS 6,370,153 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,370,153 - NVIDIA Corporation v. Samsung Electronics Company, Ltd.Rehearing deniedPTAB · Mar 1, 2016 · IPR2015-01318 · APJ Jameson Lee · IPR · Rehearing
The Board denied NVIDIA’s rehearing request and left in place the denial of institution for claims 1–15 because the Petition did not explain Yamakawa’s differing embodiments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
NonePatents in suitUS 8,252,675 - Under Armour, Inc. v. Adidas AGRehearing deniedPTAB · Feb 29, 2016 · IPR2015-01532 · APJ Justin Busch · IPR · Rehearing
The Board denied Under Armour’s rehearing request, leaving in place the denial of institution on claim 17 for anticipation by Bouve and, alternatively, Kim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner argues it just needs to show “that Kim discloses storing data that falls within the scope of the plain words ‘a length of the route.’” We agree with Petitioner that the plain meaning of “a length of the route” is the appropriate construction because, on this record, we find no reason to give the phrase a special meaning. The Petition, however, did not present persuasive argument that the plain meaning of “a length of the route” encompasses Kim’s total altitude distance.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“users needed to manually estimate route distances between points of interest. Pet. 17–18 (quoting Ex. 1004, 1:28–35). The Petition asserted “Bouve improved upon the prior art system by maintaining route length information in a database.” Id. at 18 (emphasis added). In support of that assertion, the Petition pointed to Bouve’s disclosure that “The processors . . . compute the mileage indication, along the retrieved travel route(s), for each individual item of travel information which is retrieved from the data bases,” and concluded that Bouve computes mileage information along a route and route length between points of interest using route length information stored in a database. Id. (quoting Ex. 1004, 8:18–22 (underlining added). The Petition, however, failed to identify any disclosure in Bouve that “route length information” is maintained in a database. The Petition also argued Bouve discloses recommending a route “based on that stored length of a route” because Bouve allows a user to select the shortest route between two points. Id. at 19.” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 8,652,009 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Jan 29, 2016 · IPR2014-01195 · APJ Justin Busch · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over Li, Yamaura, Zhuang, and UTRA, and over Li, Yamaura, Mody, Nobilet, Popovic, and UTRA.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“addition to the portion of the ’431 patent referred to by the parties, we find informative the entirety of the section, including the heading – “Radio Operation Via Core-Band,” in which the cited disclosures are included. Ex. 1001, 4:63–5:62. The section starts by stating that “specific signaling and control methods are required” in order for “user terminals to operate in a variable bandwidth (VB) environment.” Id. at 4:64–66 (emphasis added). Although this description mentions both “signaling” and “control methods,” it does not distinguish between control signals and operations signals. As Patent Owner points to one embodiment disclosing that the core-band includes various channels (i.e., “essential control channels, a set of data channels and their related dedicated control channels”) “to maintain basic radio operation.” Id. at 5:8–13. That embodiment further describes basic radio operation as a state that a mobile station may be in when entering a network before transitioning to normal operation, which uses the full bandwidth including “sidebands for additional data and radio control channels.” Id. at 5:13–17, Abs. (stating also that mobile stations use the “core-band to initiate communication and obtain essential information” before switching to full bandwidth “for the remainder of the communication”).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“An important factor that we considered is that the plain language of “substantially not wider” does not seem to support an application of “substantially” as a term of magnitude because such a construction would essentially read out a portion of “not wider.” Reading “substantially” as a term of magnitude would essentially require substituting “significantly” for “substantially.” Patent Owner’s proposed construction, however, not only substitutes significantly for substantially, but changes “not wider” to “narrower than.” The plain and ordinary meaning of “not wider” is less than or equal to. Thus, simply treating “substantially” as a term of magnitude would result in a construction of “significantly less than or equal to.” As a result, Patent Owner’s proposed construction is not a reasonable interpretation in that it makes little sense to recite being “significantly” equal to. Patent Owner agrees that “[n]ot wider does mean less than or equal to,” but argues that the recitation of “substantially not wider” “tak[es] out equal to.” Tr. 57:23–58:10. Thus, Patent Owner’s proposed construction reads out the “equal to” portion of “not wider,” which is inconsistent with the ordinary meaning of “not wider.” Patent Owner does not provide a persuasive rationale for disregarding the term’s ordinary meaning. If we apply substantially to the phrase “not wider” as a term of approximation, however, we are led to a construction that one item (the core-band) is not wider, within some range of tolerance, than another item (the smallest operating channel bandwidth). Such an interpretation is consistent with the term’s ordinary meaning and the context of the specification. Finally, the drafter of the ’431 patent chose to use the phrase “not wider” in claim 1 rather than “narrower” or “less than,” which was used on at least one occasion on the specification. Accordingly, on balance, we find no explicit construction is necessary but determine that “substantially” modifies “not wider” as a term of approximation rather than a term of magnitude.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We have reviewed the parties’ arguments as well as the testimony of Dr. Haas (Ex. 1012 ¶¶ 34–51) and Dr. Zeger (Declaration of Kenneth Zeger, Ph.D., Ex. 2001 ¶¶ 67–85, 132–142), and we find that Petitioner has demonstrated that a person having ordinary skill in the art would have combined the teachings of Li and Yamaura in the manner proposed by Petitioner. We agree with Petitioner that Li and Yamaura focus on complementary aspects of wireless communication systems. Yamaura teaches one way to provide control and synchronization signaling using OFDM. Li teaches that “there are typically other channels [not described in detail in Li], pre-allocated for the exchange of control information and other purposes,” which would have led an ordinarily skilled artisan to look to specific implementations of control and synchronization signaling, including the implementation taught by Yamaura. See Ex. 1002, 5:1–17. We acknowledge that Li does teach certain control signaling on both uplink and downlink channels. Nevertheless, we find Petitioner’s assertion, supported by Dr. Haas’s testimony, that an ordinarily skilled artisan would have looked elsewhere for control and synchronization channels prior to establishing communication with a mobile station, is supported by Li’s explicit statement that there are typically other channels pre-allocated for that purpose.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“a narrowband frequency centered within its operating channel bandwidth, which Petitioner maps to the recited core-band. Petitioner further argues that, in order to maintain the benefit of Yamaura’s centered control channel when incorporating Li’s teaching of multiple communication schemes, an ordinarily skilled artisan would have added clusters so that Yamaura’s narrowband control signals would remain centered. Reply 12–14 (citing Ex. 1034 ¶¶ 24, 25). Petitioner relies on Yamaura for teaching transmission of control signals centered within the frequency band it is using, and relies on Li for teaching a variable bandwidth system, in which a mobile station can have its bandwidth increased or decreased, as needed. As discussed above, we find no flaw with Petitioner’s proposed combination of Yamaura and Li. We also find persuasive Petitioner’s assertion, supported by testimony from Dr. Haas (Ex. 1034 ¶¶ 24–25), that it would have been desired by and within the abilities of a person having ordinary skill in the art to combine Li and Yamaura in a way that Yamaura’s subcarriers that are carrying control signaling stay substantially centered. Accordingly, we find Petitioner has demonstrated, by a preponderance of the evidence, that the combination of Li and Yamaura teaches a core-band “substantially centered at an operating frequency of the different communication schemes,” as recited in claim 1. Patent Owner asserts that Petitioner has not demonstrated that the combined references teach a core-band that is “substantially not wider than a smallest possible operating channel bandwidth of the system,” because Petitioner points to a core-band that has the same bandwidth as the smallest possible operating channel bandwidth of Petitioner’s proposed system. PO Resp. 30–32. Patent Owner’s assertion depends on a construction of “substantially not wider” that we declined to adopt. See id. As discussed above, we construe substantially to modify “not wider” as a term of approximation. Accordingly, we find Petitioner’s proposed combination, which results in a system having a core-band equal to its smallest operating channel bandwidth, meets the recited language.” slip op. at 21
Patent outcomesUS 7,787,431 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,787,431 - Dynamic Drinkware, LLC v. National Graphics, Inc.All claims unpatentablePTAB · Jan 27, 2016 · IPR2014-01162 · APJ Michael P Tierney · IPR · Final written decision
Claims 1–46 are unpatentable: claims 1, 2, 23, 24, and 27–29 as anticipated by Quadracci ’995; the remaining claims as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“in the lenticular art “is one who has several years of work experience in the lenticular industry.” Ex. 1013 ¶ 11. Patent Owner’s declarant, Dr. Garcia, testifies that a person of ordinary skill in the art would have five or more years of experience in the lenticular lens industry or have an understanding of optical engineering including first and higher order geometric and physical optics principles. Ex. 2001 ¶ 13. The parties’ definitions of one of ordinary skill in the art are substantially the same and neither party states how any difference in the parties’ articulated levels of skill impacts the proceeding. For purpose of this decision, we hold that the level of ordinary skill in the art is reflected by the prior art of record, such that one of skill in the art would have had years of experience in the lenticular lens industry or had an understanding of optical engineering, including higher order geometric and physical optics principles. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the 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)Term construed petitioner constructionOther
“Patent Owner does not dispute the proposed constructions, except to state that, consistent with Petitioner’s definition of focal length, one of ordinary skill in the art would have understood that focal length in the ’467 refers to the “effective focal length” of the lens. PO Resp. 3–4. We adopt Petitioner’s proposed claim constructions as they are consistent with the Patent Owner’s use of the terms in the ’467 patent Specification. For example, the term gauge thickness is defined in the ’467 patent with reference to g2 of Fig. 1A and states that the thickness is measured from the outermost edge of the curved surface of the lens to the flat back surface of the lens. Ex. 1001, 2:27–33.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“describe . . . each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)).” slip op. at 8
- Expert testimonyPetitioner expert discountedPetitioner expert creditedDecided for patent owner
“Based on the evidence of record, we credit the ray tracing testimony of Mr. Raymond and are persuaded that the lenticular lens disclosure of Quadracci ’995 is enabling. Specifically, Dr. Garcia acknowledges that focal length formulas other than those recited in the ’467 patent were known in the art and Mr. Raymond demonstrates that, consistent with the teachings of Quadracci ’995, one of ordinary skill in the art could make the described lenses. c. Mr. Raymond’s Gauge Thickness and Focal Length Calculations Patent Owner states that Mr. Raymond’s thickness calculation in his first declaration is either wrong, or it uses an unacceptable index of refraction. Mr. Raymond, in his first declaration, testifies that using the general lens formulas described in the ’467 patent, he arrived at a gauge thickness of 3.4 mils. Ex. 1013 ¶¶ 26–28. Mr. Raymond, however, does not disclose the index of refraction that he used to determine the gauge thickness. Expert testimony that does not disclose the underlying data on which the opinion is based is entitled to little or no weight. 37 C.F.R. 42.65(a). As Mr. Raymond failed to disclose the index of refraction used in his calculations and provide support for his selected refraction index, we do not credit Mr. Raymond’s gauge thickness calculation in his first declaration with respect to Quadracci ’995. As discussed below, however, Mr.” slip op. at 14
Patent outcomesUS 6,424,467 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,424,467 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Jan 21, 2016 · IPR2014-01185 · APJ Peter P Chen · IPR · Final written decision
Claims 1–10 and 17 are unpatentable: claims 1–3 and 5 as obvious over Schmidl and Arslan; claims 4 and 6–10 over those references and Kim; claim 17 over those references and Heiskala.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Our interpretation of the disputed term begins with the language of the claim. See Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292, 1299 (Fed. Cir. 2015). Claim 1 recites that pilot symbols are inserted “into data blocks.” We construe claim 1’s plain language using the plural form of “data blocks” to mean that pilot symbols may be inserted not only within a single data block, as Patent Owner contends, but also between one data block and another data block, as Petitioner contends. Claims should also be read in light of the specification and teachings in the underlying patent. Cuozzo, 793 F.3d at 1280; Microsoft, 789 F.3d at 11 1298. Here, the specification also uses the plural form of data blocks in explaining that “[t]ypically, pilot symbols may be inserted at any point in the data blocks.” Ex. 1001, 16:55–56, 7:28–29. There is no language in the specification disclaiming the insertion of pilot symbols between data blocks. We are persuaded that based on the claim’s usage of the plural “data blocks,” which is supported by the description in the specification, the broadest reasonable construction is “pilot/training symbol inserter configured to insert pilot symbols within, or between, one or more data blocks,” and accordingly, does not exclude the insertion of pilot symbols between two data blocks that are in a group of data blocks.” slip op. at 11
- Skill levelSkill level board ownOther
“We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the 13 cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“that “both Schmidl and Arslan are directed at improving synchronization between a wireless transmitter and a wireless receiver, and disclose frame structures including information for the same.” Pet. 16. In particular, Schmidl discloses an encoder that inserts training symbols in the frequency domain, to form training symbols in the time domain. Pet. Reply 13, 17 (citing Ex. 1036 ¶ 21); see Ex. 1002, 2:7–17. Arslan discloses a frame structure in the time domain containing pilot symbols interspersed among data symbols. Pet. Reply 16–17 (citing Ex. 1036 ¶¶ 20, 22). Petitioner further states: [I]t would have been obvious to use pilot symbols as separate time domain symbols for tracking time variations to calibrate or synchronize the receiver to the transmitter by using time-domain pilot symbols in Schmidl’s system. . . [citing to Supplemental Declaration of Dr. Zygmunt Haas ¶ 22.] As discussed above, Schmidl discloses inserting symbols in the frequency domain for an OFDM system, for calibration and synchronization. See id. It would have been obvious to create those time-domain pilot symbols in the same manner as the time-domain training symbols are created in Schmidl’s encoder – that is, by inserting blocks of known pilot symbols in the frequency domain that would result in time-domain pilot symbols. See id. It would be obvious to a POSA that the same circuitry in Schmidl’s encoder 14 used to insert training symbols would be used to insert pilot symbols, resulting in the claimed “pilot/training symbol inserter configured to insert pilot symbols into data blocks.” See id. Pet. Reply 17–18; see Pet. 16, 29–30.” slip op. at 22
Patent outcomesUS 7,269,127 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,269,127 - NVIDIA Corp. v. Samsung Electronics Co., Ltd.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01316 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show that VESA P&D and VESA Flat Panel were publicly accessible printed publications, so claims 6–10 could not rely on them.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] response . . . 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). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 6–10 of the ’724 patent. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“We find Patent Owner’s arguments persuasive. Petitioner does not explain adequately whether or how the VESA documents were made “sufficiently accessible to the public interested in the art.” Lister, 583 F.3d at 1311. Instead, Petitioner merely asserts that “VESA is a well-known standards setting organization that promulgates standards relating to video in electronics.” Pet. 14 (citing Ex. 1003 ¶ 58); id. at 22 (citing Ex. 1003 ¶ 75). As such, we determine that Petitioner has not made a sufficient showing that the VESA documents are printed publications under § 102(b). See Lister, 583 F.3d at 1317 (burden is on the proponent to show the purported reference was publicly available). Therefore, based on the record before us, we conclude Petitioner has not made a sufficient showing that either VESA P&D or VESA Flat Panel may be relied upon as prior art with respect to claims 6–10 of the ’724 patent.” slip op. at 6
§ 102 anticipationcites PhillipsPatents in suitUS 6,804,724
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.