• Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.All claims unpatentable
  PTAB · Feb 22, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1 and 7 are unpatentable as obvious over He and Korodi; the Board did not reach the Gustafsson and He ground.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “its claims, but instead, recited only “emits.” Patent Owner has not proffered any evidence or argument as to why “emits and dies” used in the ’279 Patent Specification, would have been abbreviated to “emits” in recitation of the claims. Nor is the term “emits” defined explicitly in the ’279 Patent Specification. Thus, we begin with the assumption that the term “emits” does not include “and dies,” as that comports with the plain and ordinary meaning of the word “emits” Thus, taking the plain and ordinary meaning at the time of the invention, we interpret “emits light in sequence” as “throws off or gives off or out light in a continuous or connected series” and interpret “emits in sequence” as “throws off or gives off or out, in a continuous or connected series” (see e.g., Merriam-Webster’s Collegiate Dictionary 377, 1065 (10th ed. 2000)). Patent Owner has not proffered sufficient evidence or argument that “emits light in sequence” and “emits in sequence” should be read more narrowly than the plain and ordinary meaning as suggested by Patent Owner. Specifically, Patent Owner’s assertion that the Specification supports the proposed interpretation of “emits light in sequence” as “emits and dies light in sequence” is misplaced. The Specification of the ’279 Patent does not explicitly define “emits light in sequence” as “emits and dies light in sequence.” Nor is any explicit definition provided for “emits light in sequence” or “emits in sequence.” Patent Owner would have us import limitations disclosed in several of the embodiments, including Embodiment 1, to interpret “emits” as “emits and dies light in sequence” or “emits and” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “Patent Owner additionally asserts “Patent Owner specifically disclaimed emission of light over the full length of the cable, but rather limited the patent to segment by segment illumination along the length of the cable,” thereby limiting the phrase “emits light in sequence” (PO Resp. 43). Patent Owner identified pages 9–10 of the Response to Office Action filed September 18, 2009 (Ex. 1002, 25–26), as providing this disclaimer (PO Resp. 48–49). However, we agree with Petitioner that the statements in the Response to Office Action do not disclaim subject matter, nor do these statements provide an explicit definition of “emits,” “emits light in sequence, and “emits in sequence.” Indeed, the discussion, limited to claim 7, discusses the object of the invention and distinguishes the invention as recited in claim 7 over the cited prior art, Baumberg et al. (US 5,869,930) (Resp. to OA 9–10). This discussion does not qualify as “clear and unmistakable” disavowing statements as required to meet the “demanding standard for finding a disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., No. 2015-1246, 2016 WL 363410, at *4 (Fed. Cir. Jan. 29, 2016). We, therefore, determine the term “emits light in sequence” and “emits in sequence” used in the claims, should not be interpreted as “emits and dies light of each electroluminescent cored bar or cord in succession, one after the other,” but instead, should be interpreted giving the terms their ordinary and customary meaning as understood by an ordinarily skilled artisan at the time of the invention, in light of the Specification.” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “(PO Resp. 37–40). A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Innovention Toys, LLC, v. MGA Entm’t, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Bigio, 381 F.3d at 1325 (citations omitted).” slip op. at 18

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

    “Nonetheless, we find Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings (Pet. 34–36; Ex. 1008 ¶¶ 98–104). Specifically, Petitioner contends an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi because “such a modification is both a predictable variation and an incremental improvement” (Pet. 35). According to Petitioner, an ordinarily skilled artisan would have found it obvious and “straight-forward” to replace the aluminum core wire in He with a power cord to create an improved illuminated cable using electroluminescent wires that light in sequence (id. at 36). Petitioner further asserts combining the teachings would “involve the merger of familiar elements according to their established functions, known methods, and predictable results” (id.). We agree with the Petitioner that an ordinarily skilled artisan would have been motivated to replace the core wire at the center of He’s cable with a power cord as taught by Korodi to create an improved illuminated cable. We find the combination of He and Korodi unites old elements with no change in their respective functions. Indeed, we agree that combining the teachings would be a merger of familiar elements, Korodi’s power cord and He’s electroluminescent cable, that perform their ordinary functions to predictably result in the recited cable which includes a main power cord and a plurality of electroluminescent cords which emit light in sequence when the main cord and the driver are live. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Additionally, as further support, we credit Petitioner’s Declarant’s, Dr. Mark Horenstein’s, testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results that an ordinarily skilled artisan would have found obvious (Ex. 1008 ¶¶ 99, 102, 103).” slip op. at 20

  Patent outcomesUS 7,671,279 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,671,279
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCInstitution denied
  PTAB · Feb 9, 2016 · CBM2015-00171 · APJ Michael W Kim · CBM · Institution

  The Board denied institution because Petitioner did not show that any existing claim qualified as a covered business method patent under AIA § 18(d)(1).

  RulingsInstitution decision

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

    “that the patent for which review is sought is a covered business method patent.” The AIA defines “covered business method patent” as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a).” slip op. at 6

  • Adverse judgmentAdverse judgmentOther

    “disclaimer under 37 C.F.R. § 1.321(a) of claims 1–10. Prelim. Resp. 13 (citing Ex. 2002). Thus, the question is whether we should consider now-statutorily disclaimed claims 1–10 in determining whether or not the ’177 patent is a covered business method patent for the purposes of instituting a covered business method patent review. We determine that we should not. 37 C.F.R. § 1.321(a) is the rule promulgated by the Office for creating a procedure for a patentee to avail itself of the provisions of 35 U.S.C. § 253. See Manual of Patent Examining Procedure § 1490. Our reviewing court has held that a patent with a statutory disclaimer is to be treated as though the disclaimed claims never existed. See Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). Accordingly, for the purposes of whether or not to institute a covered business method patent review, we treat claims 1–10 as never having existed. See Google Inc. v. SimpleAir, Inc., CBM2015-00019 slip op. at 14– 15 (PTAB May 19, 2014) (Paper 11); but see J.P. Morgan Chase v. Intellectual Ventures, Case CBM2014-00157 slip op. at 12–15 (PTAB Jan. 12, 2016) (Paper 40) (although the panel states that “petitioner’s standing to file a petition for covered business method patent review is evaluated based on the time the petition was filed,” in this proceeding, Patent Owner” slip op. at 7

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

    “unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.300(b); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1328 (2015) (affirming use of the broadest reasonable construction standard in a covered business method patent review). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 5

  Claim construction
  Patents in suitUS 7,516,177
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,269,127
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 19, 2015 · IPR2015-00976 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because the patent did not disclose sufficient structure for certain means-plus-function limitations and Hendel did not show claim 63’s required access-control matching.

  RulingsInstitution decision

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

    “Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Other

    “The corresponding structure need not be explicitly identified but must disclose to a person of ordinary skill in the art what structure is identified in the specification. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). It is unclear from the Specification whether the CPU, shown in Figure 2 as part of access control element 120, is the “higher-level processor” which is described at Ex. 1001, 5:21–25, or some other processor running IOS described at Ex. 1001, 1:33–37. It is also unclear which part of the access control element 120 is composed of “circuits adapted to particular process steps and data structures” as described at 3:36–39. Here, the patent is at best unclear whether the claimed function is implemented in software executed on a general purpose CPU or in hardware as a collection of circuits. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus-function’ form must disclose the particular structure that is used to perform the recited function.”). We also find that it is equally unclear whether the following means- plus-function limitations in claim 46, which appear to involve access control element 120, are implemented in hardware or in software structure (or some combination of both): means for matching matchable information, said matchable information being responsive to said packet label, with said set of access control patterns in parallel; means for making a routing decision in response to said access result; means for permitting or denying access for said packet; and means for receiving a packet label responsible to a packet, said packet label being sufficient to perform access control processing for said packet. Because the Specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of independent claim 46, and claims 47–52, 54, 56, and 59–62 that depend therefrom, cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained. Thus, we decline to institute an inter partes review as to any ground challenging claims 46–52, 54, 56, and 59–62.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14

  Claim construction§ 102 anticipation
  Patents in suitUS 7,023,853
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 6, 2015 · IPR2015-00974 · APJ Matthew R Clements · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving unpatentability under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “Systems, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “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); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims 1–10, 12, 13, 15–28, 30, 31, 33–43, 45–49, 51–64, 66, 67, and 69–72 of the ’668 patent. Accordingly, pursuant to 35 U.S.C. § 314, we do not institute an inter partes review of claims 1–10, 12, 13, 15–28, 30, 31, 33–43, 45–49, 51–64, 66, 67, and 69–72 of the ’668 patent.” slip op. at 2

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

    “interpreted according to their “broadest reasonable construction in light of the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Applying that standard, we interpret the claim terms according to their ordinary and customary meaning in the context of the patent’s written description. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for ten terms. Pet. 9–14. Patent Owner disputes some of those constructions and proposes an additional term for construction. Prelim. Resp. 9–19. For purposes of this Decision, we determine that we need not expressly construe any of the terms for which the parties have proposed constructions.” slip op. at 6

  • Skill levelOther

    “expressly disclose a limitation, may nevertheless anticipate if a person of ordinary skill in the art would understand the prior art to disclose the limitation and could combine the prior art description with his own knowledge to make the claimed invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000). After reviewing the arguments of the parties and the testimony of Dr. Lin, however, we are not persuaded that a person of ordinary skill in the art1 would understand the cited sentence in Amara as necessarily disclosing that the network interface ports of Amara’s internetworking device are configurable by its internal applications. Dr. Lin relies on pages 132 to 134 of Habraken, which is a textbook that describes, inter alia, configuring the interfaces of a Cisco router through a Setup dialog. While this passage describes configuring a port, it is not clear what aspect of the Cisco router is providing the Setup dialog. Nothing, for example, attributes the Setup dialog to “control plane processes” or “internal applications” or the like of the Cisco router. Even assuming that the Setup dialog is provided by an “internal application” of the Cisco router, 1 Petitioner asserts, and Patent Owner does not dispute, that a person of ordinary skill as of the critical date would have had a Master of Science Degree in an academic area emphasizing computer networking or, alternatively, a Bachelor Degree in an academic area emphasizing the design of electrical, computer, or software engineering and several years of experience in computer network engineering and the design of computer networks. Pet. 7. nothing in Habraken supports the determination that the network interface ports of all routers, such as the 3Com router described in Amara, are configurable by “internal applications” of that router. At best, Habraken establishes that a person of ordinary skill in the art at the time would have known that Cisco routers include a Setup dialog for configuring router interfaces. This is not sufficient, however, to persuade us that a person of ordinary skill in the art would have read Amara as necessarily disclosing that the network interface ports of the “device” are configurable by the internal applications.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Amara’s express disclosure is not sufficient. Amara’s disclosure that internal applications control or configure the device only “typically” suggests that they do not necessarily serve that purpose and, therefore, that another component of device 100 may serve that purpose. Moreover, Amara’s disclosure that internal applications control or configure the “device” is not sufficiently specific as to whether the interface ports are an aspect of the device being controlled or configured by the internal applications. Our reviewing court has held that a prior art reference that does not expressly disclose a limitation, may nevertheless anticipate if a person of ordinary skill in the art would understand the prior art to disclose the limitation and could combine the prior art description with his own knowledge to make the claimed invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000). After reviewing the arguments of the parties and the testimony of Dr. Lin, however, we are not persuaded that a person of ordinary skill in the art1 would understand the cited sentence in Amara as necessarily disclosing that the network interface ports of Amara’s internetworking device are configurable by its internal applications. Dr. Lin relies on pages 132 to 134 of Habraken, which is a textbook that describes, inter alia, configuring the interfaces of a Cisco router through a Setup dialog. While this passage describes configuring a port, it is not clear what aspect of the Cisco router is providing the Setup dialog. Nothing, for example, attributes the Setup dialog to “control plane processes” or “internal applications” or the like of the Cisco router. Even assuming that the Setup dialog is provided by an “internal application” of the Cisco router, 1 Petitioner asserts, and Patent Owner does not dispute, that a person of ordinary skill as of the critical date would have had a Master of Science Degree in an academic area emphasizing computer networking or, alternatively, a Bachelor Degree in an academic area emphasizing the design of electrical, computer, or software engineering and several years of experience in computer network engineering and the design of computer networks. Pet. 7.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,224,668
• Juniper Networks, Inc. v. Brixham Solutions, Ltd.All claims unpatentable
  PTAB · Jul 27, 2015 · IPR2014-00425 · APJ Peter P Chen · IPR · Final written decision

  Claims 1–5, 8–11, 13–15, and 17 are unpatentable as obvious over either Hofmeister, RFC 3386, and Owens or Halabi, RFC 3386, and Owens.

  RulingsFinal written decision

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

    “In reply, Petitioner cites KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), noting, “KSR set forth a number of ‘Exemplary Rationales’ that support an obviousness finding . . . . Many of these rationales apply here and support the obviousness of the claims.” Pet. Reply 6. Petitioner describes in detail why it would have been obvious to combine Hofmeister with RFC 3386 and Owens, under several rationales set forth in KSR: combining prior art elements according to known methods to yield predictable results; using known techniques to improve similar methods in the same way; applying known techniques to known methods ready for improvement to yield predictable results; and using teachings, suggestions, or motivations in the prior art to modify or combine references to arrive at the claimed invention. Pet. Reply 6–10. As Petitioner contends, it would have been a natural fit and a predictable step for a [person having ordinary skill in the art] to use the Setup/Holding priority described in Hofmeister to make preemption decisions during network failure . . . to take advantage of well-known protection mechanisms, such as those in RFC 3386/Owens. Pet. Reply 10–11. We determine that Petitioner has provided adequately articulated reasoning for combining Hofmeister, RFC 3386, and Owens, supported by rational underpinnings, that are reasonable. See KSR, 550 U.S. at 418. Thus, we conclude that Petitioner has proved by a preponderance of the evidence that claims 1–5, 8–11, 13–15, and 17 are obvious in view of Hofmeister, RFC 3386, and Owens.” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “Opp. to Mot. to Excl. 6–7. While we agree with Petitioner that Patent Owner’s motion is procedurally defective for the reasons argued by Petitioner, for purposes of this decision we also review Patent Owner’s substantive arguments, which we also determine to be lacking in merit. Patent Owner argues that Ex. 1003 and Ex. 1027 should be excluded due to the “general evasiveness” of Dr. Lavian and “interference of counsel.” Mot. to Exclude 1. Petitioner contends that Dr. Lavian’s responses were not evasive but were proper, and Petitioner’s objections to the “content” and “form” also were proper under 37 C.F.R. § 42.53(f)(8). Opp. 8–13. Patent Owner responds that it “seeks to exclude the entirety of Dr. Lavian’s declaration . . . because of the behavior of the witness and his counsel at the deposition.” PO Reply 1. We agree with Petitioner that Dr. Lavian’s responses were not “evasive.” For example, Patent Owner’s argument directs us to a specific portion of the deposition where Dr. Lavian was asked, “did you add that element, 584b?” Mot. to Exclude 2 (quoting Ex. 2003, 34:18). We agree with Petitioner that this “only concrete example of this supposed ‘evasiveness’ identified” by Patent Owner concerns not the ’652 patent being challenged herein, but rather, the patent at issue in IPR2014-00431. Opp. 11. Although Patent Owner states that “this type of evasiveness pervaded the entirety of the deposition,” (Mot. to Excl. 3), based on our review of Ex. 2003, we are persuaded that Dr. Lavian responded to Patent Owner’s questions to the best of his ability and was not “evasive.” We further agree with Petitioner that its deposition objections were proper. See 37 C.F.R. § 42.53(f)(8)(“Any objection to the content, form, or manner of taking the deposition, including the qualifications of the officer, is waived unless made on the record during the deposition and preserved in a timely filed motion to exclude.”). Based on our review of Ex. 2003, Petitioner’s objections were directed to the content, form, or manner of taking the deposition, and, therefore, were proper under 37 C.F.R. § 42.53(f)(8). We are also not persuaded that the alleged behavior of opposing counsel, alone or “in combination with the other occurrences at the deposition” (Mot. to Exclude 4), is a sufficient basis to exclude Ex. 1003 and Ex. 1027. Accordingly, we deny Patent Owner’s Motion. As noted in our Decision to Institute, however, we reiterate that we have not considered any of Petitioner’s arguments made solely by virtue of incorporation by reference from either of the Lavian declarations. See supra n.1; Dec. to Inst., 11–12 n.1.” slip op. at 19

  • Skill levelSkill level board ownOther

    “Bachelor’s in computer science, electrical engineering, or the equivalent; and at least 7 years of professional experience in network communications and Internet protocols, or an advanced degree and 4 years’ experience.” Pet. 14 (citing Ex. 1003 ¶ 46). Patent Owner does not propose a level of ordinary skill in the art. 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 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). Here, Patent Owner has not proposed a level of ordinary skill, and Petitioner has not provided a sufficient explanation as to how its specific proposal regarding the level of ordinary skill (for example, the importance of the inclusion of “at least”) affects the analysis in this case. Therefore, we find the level of ordinary skill in the art to be reflected in the cited references and we determine that no express statement of the level of ordinary skill in the art is required.” slip op. at 9

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Patent Owner further contends there would have been no motivation to combine Hofmeister with RFC 3386 and Owens. PO Resp. 5–6. Patent Owner’s support for its arguments is the Declaration of Dr. George N. Rouskas, to which we accord little weight because his testimony is conclusory and unsupported by evidentiary explanations. See 37 C.F.R. § 42.65(a). At the oral hearing, Patent Owner’s counsel stated that “we heard [Petitioner’s] presentation about all this prior art out there that talks about preempting network traffic, and it’s legion. . . . And yes, it’s true, again, as with the other references, this is a concept that people would have known reading all of these references, prioritizing, working traffic under normal operating conditions.” Tr. 18:1–2, 28:11–14. Thus, Patent Owner concedes the existence of references disclosing the recited limitations in the challenged claims, but nevertheless argues that there is not any motivation to combine such references.” slip op. at 13

  Patent outcomesUS 7,940,652 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 7,940,652
• Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.Rehearing granted
  PTAB · Jun 1, 2015 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing

  Rehearing was granted for claims 1 and 7 under § 103 over He and Korodi, and denied for the He and Currie ground.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “Therefore, we conclude that we did not abuse our discretion in declining to institute an inter partes review based the combination of He and Currie. Accordingly, we do not institute an inter partes review based on this ground. III. CONCLUSION For the foregoing reasons, on rehearing, based on our review of the record before us, we determine Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the combination of He and Korodi. Therefore, we modify our Decision to institute an inter partes review of claims 1 and 7 for obviousness over He and Korodi. We determine, however, that we did not abuse our discretion in declining to institute review on the asserted ground based on He and Currie, and rehearing is denied as to that ground. At this stage in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, including the claim construction.” slip op. at 12

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

    “a reasonable likelihood that an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi. Specifically, we determine, based on the current record, Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings. “‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We credit Dr. Horenstein’s testimony that an ordinarily skilled artisan would have found it obvious simply to replace the aluminum core wire in He with a power cord as taught by Korodi. Ex. 1008 ¶¶ 99, 102. We additionally are persuaded, on the record before us, that the combination of He and Korodi unites old elements with no change in their respective functions. See KSR, 550 U.S. at 415–16. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Indeed, we credit Dr. Horenstein’s testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results. Ex. 1008 ¶ 103.” slip op. at 10

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

    “Based on the record before us, we are persuaded Petitioner has shown a reasonable likelihood that an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi. Specifically, we determine, based on the current record, Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings. “‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We credit Dr. Horenstein’s testimony that an ordinarily skilled artisan would have found it obvious simply to replace the aluminum core wire in He with a power cord as taught by Korodi. Ex. 1008 ¶¶ 99, 102. We additionally are persuaded, on the record before us, that the combination of He and Korodi unites old elements with no change in their respective functions. See KSR, 550 U.S. at 415–16. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Indeed, we credit Dr. Horenstein’s testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results. Ex. 1008 ¶ 103. Accordingly, based on the record before us, we are persuaded the combination of He and Korodi is a proper combination.” slip op. at 10

  • Burden

    “With regard to the asserted ground of unpatentability of claims 1 and 7 for obviousness over He and Currie, Petitioner does not explain adequately the relative strengths or weaknesses of this ground and the grounds on which we have instituted. See Cisco Systems, Inc. v. Constellation Tech. LLC, Case IPR2014-01180, slip op. at 29–30 (PTAB Feb. 8, 2015) (Paper 8). The Currie reference has a filing date of September 24, 2004 and an issuance date of October 17, 2006. Thus, the Currie reference would not be prior art if Patent Owner were successful in establishing a conception date “at least as early as April 2004” and diligence from conception to reduction to practice. See Prelim. Resp. 11. Accordingly, the arguments presented in Petitioner’s Request for Rehearing do not apply to the combination of He and Currie. Therefore, we conclude that we did not abuse our discretion in declining to institute an inter partes review based the combination of He and Currie. Accordingly, we do not institute an inter partes review based on this ground.” slip op. at 11

  § 103 obviousnesscites KSR
  Patents in suitUS 7,671,279
• Facebook, Inc. v. Everymd LLCOther
  PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision

  The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10

  • 112 supportDenied

    “its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12

  • ScopeDecided for patent owner

    “2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11

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

    “In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice
  Patents in suitUS 8,499,047
• Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentable
  PTAB · Mar 18, 2015 · IPR2013-00598 · APJ Peter P Chen · IPR · Final written decision

  Claims 1, 2, 6–13, 15–31, 35–42, and 44–46 are unpatentable as obvious over Bi and Erekson, or over Bi, Erekson, and Janik.

  RulingsFinal written decision

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

    “its proposed construction state that songs from a playlist “may be played in the order selected, in random order, or in any other desired order.” PO Resp. 14; Ex. 1001, 3:20–24, 11:41–43. As Petitioner contends in its Reply, the cited excerpts refer to songs selected by the user, and not to the playlist itself. Pet. Reply 4. In addition, these portions of the ’873 patent expressly provide that songs merely “may” be played in an order selected, or even that songs may be played “in a random order.” The term “sequence,” urged by Patent Owner for its construction, appears only once in the specification, in an unrelated summary of the detailed description of the preferred embodiments (“[t]he description sets forth the functions and the sequence of steps for constructing and operating the invention in connection with the illustrated embodiments”). Id. at 7:5–8. Patent Owner also cites to excerpts of the deposition testimony of Petitioner’s expert witness, Dr. V. Michael Bove, Jr., whose testimony that a playlist may be played in a “sequence” refers to how a playlist is played by a media player, rather than to what constitutes a playlist. PO Resp. 14–15; see Pet. Reply 5; Ex. 2012, 217:1–218:7.” slip op. at 8

  • Skill levelSkill level board ownOther

    “bachelor’s degree in computer science or electrical engineering, and at least one year of practical experience with networked multimedia.” Ex. 1002 ¶ 8. Patent Owner’s proposal is similar, requiring “a person with a bachelor’s degree in computer science or electrical engineering and one year of practical experience with networked media.” Prelim. Resp. 10–11. The parties dispute Petitioner’s use of the qualifying phrase “at least” in describing the level of education and work experience. While we disagree with Patent Owner’s argument that “at least” is “improper because it is open-ended” (PO Resp. 11),2 we determine that an express definition of the level of ordinary skill is not required.” slip op. at 9

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

    “inoperable, because Erekson’s remote would not be able to control an analog stereo of Bi. PO Resp. 36–38. Petitioner contends that Patent Owner improperly isolates Bi and Erekson individually, citing to KSR and also to Randall Manufacturing v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013), and notes that actual, physical substitution of elements is not required in a determination of obviousness, citing In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Pet. Reply 11–12. Petitioner further contends that its expert Dr. Bove “reached the unremarkable conclusion that it would have been obvious to one of ordinary skill in the art to combine the features of Bi and Erekson in order to advantageously provide a single remote control to control various devices that would be used together with the audio playing system of Bi.” Pet. Reply 8. Petitioner adds: There is nothing incompatible about providing the remote navigator of Bi with both Bluetooth control for new devices, which would facilitate remote control of, for example, a new amplifier having Bluetooth capability, and IR control that provides for “legacy” devices. . . . Whether a stereo that is used with the system of Bi is “analog” (i.e., receives an analog audio signal for 18 powering speakers) is unrelated to what kind of signal (e.g., IR or Bluetooth) is used to provide for remote control of that device. Pet. Reply 13. We agree with Petitioner’s arguments that a person of ordinary skill in the art would have added Erekson’s improved control of multiple devices to Bi’s Bluetooth-controlled playback device.” slip op. at 18

  • ExcludeOther

    “The moving party has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. §§ 42.20(c), 42.62(a). Exhibits 1018 and 1019 were submitted by Petitioner as extrinsic evidence in support of its proposed construction of “playlist.” Pet. Reply 7; Reply on Mot. to Excl. 4–5. As stated in section II. A, our construction of “playlist” is based on intrinsic evidence and we do not rely upon either Exhibit 1018 or 1019. The motion therefore is dismissed as moot as to these Exhibits. Exhibit 1020 was submitted by Petitioner to support its proposal for level of ordinary skill in the art. Pet. Reply 2–3; Reply on Mot. to Excl. 7–10. As stated in section II. D, our analysis of the level of ordinary skill in the art is informed by relevant case law authority and we do not rely on Exhibit 1020. The motion to exclude is dismissed as moot for this Exhibit. Exhibit 1022 was submitted by Petitioner with its Reply to support its arguments for combining Bi and Erekson. Pet. Reply 14; Reply on Mot. to Excl. 6–7. As with the other Exhibits, our analysis on the issue did not rely on Exhibit 1022, and the motion to exclude is dismissed as moot for this exhibit as well.” slip op. at 22

  Patent outcomesUS 8,214,873 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,214,873
• Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentable
  PTAB · Mar 18, 2015 · IPR2013-00593 · APJ Stacey G White · IPR · Final written decision

  Claims 9, 10, and 14 are unpatentable as anticipated by Berman and Wolff; claim 13 is unpatentable as obvious over Berman.

  RulingsFinal written decision

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

    “from the Specification of the ’952 Patent, which defined “playlist 1528 . . . [as] a list of audio files and associated URL’s of where the audio files were retrieved from.” Ex. 1001, 21:6365. Petitioner persuasively argues that the Specification and the claims reflect that the playlist and associated URLs are separate items. Reply 5–6. For example, the Specification discusses a server having “a playlist for the Device 1110” and also “maintain[ing] a list of URL’s from which the device 1110 received audio files listed in the playlists.” Ex. 1001, 16:67–17:6; see also Reply 5–6 (citing Ex. 1001, 21:63–65, 21:45–46, 21:49, 21:51–52, Fig. 15) (pointing out examples in the Specification that discuss the playlist and URLs as separate items); Ex. 2012 ¶¶ 66–71, 75–76, 81–84 (explanation by Patent Owner’s declarant as to why a list of URLs is not a playlist). Thus, we are persuaded that URLs are not part of the playlist. Therefore, the broadest reasonable construction of playlist is “a list of audio files.”” slip op. at 8

  • Skill levelOther

    “a bachelor’s degree in computer science or electrical engineering, and at least one year of practical experience with networked multimedia.” Ex. 1002 ¶ 8. Patent Owner’s proposal is similar, requiring a person with “a bachelor’s degree in computer science or electrical engineering or its equivalent and 1–2 years of practical experience with media file sharing.” PO Resp. 9–10 (citing Ex. 2012 ¶¶ 26–29). We find this dispute between the parties to be of little value. An express definition of the level of ordinary skill is not required in all situations, as the level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the 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). Neither party has provided a sufficient explanation as to how their specific proposal regarding the level of ordinary skill (and in particular the importance of the inclusion or exclusion of “at least”) changes the analysis in this case. We find the level of ordinary skill in the art to be reflected in the cited references, and we determine that no express statement of the level of ordinary skill in the art is required.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Pet. 15–18. Specifically, Petitioner argues that Berman discloses a playback unit that receives a song list from the DUL server. Pet. 17 (citing Ex. 1012, Fig. 3 (step 308)); see also id. at 10:23–28 (describing song list packet sent to playback unit with a user ID “to confirm that the updated song list information was sent to and received by the correct playback unit”). Petitioner also asserts that the songs identified in the song list are stored on audio material server 104, and, thus, the songs are not stored on the playback unit. Id. at 18 (citing Ex. 1012, 4:5152). The playback unit receives URLs for songs on the song list from the audio material server. Id. (citing Ex. 1012, Fig. 3 (step 314), 7:22–54). Finally, Petitioner asserts that the playback unit obtains songs from the audio material server. Id. (citing Ex. 1012, Fig. 4 (step 412), 8:31–34). We agree with Petitioner’s arguments regarding the disclosures of Berman.” slip op. at 14

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

    “rendered obvious by the teachings of Berman. Pet. 34–35. Claim 13 depends from 9 and adds further limitations regarding the useage of web sites, which is not disclosed expressly by Berman. Petitioner asserts that it would have been obvious to one of ordinary skill in the art to use a web site as a remote source in place of Berman’s servers. Pet. 20–21. Dr. Bove supports Petitioner’s argument by testifying that “[i]t would have been well known to one of ordinary skill in the art in 2000 that music files could be provided by a Web server. As one example, the MP3.com music server site launched in 1997.” Ex. 1002 ¶ 19. We credit Dr. Bove’s testimony and find Petitioner’s arguments to be persuasive. Patent Owner does not proffer any additional arguments directed to the patentability of claim 13. PO Resp. 40. We determine that Petitioner has demonstrated by a preponderance of the evidence that dependent claim 13 would have been obvious over Berman.” slip op. at 16

  Patent outcomesUS 8,045,952 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,045,952

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.