- LG Display Co, Ltd. v. Innovative Display Technologies LLCNo claims unpatentablePTAB · Jul 15, 2016 · IPR2015-01717 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1, 3, 5, 10, 13, 16, 17, 25–29, and 33–35 were not shown unpatentable under §103 over Oe and Etsuo because the proposed combinations lacked sufficient reasoned support.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“persuaded Petitioner has provided sufficient articulated reasoning with rational underpinning explaining why one with ordinary skill in the art would have modified the teachings of the applied references to address the noted differences. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). We consider Petitioner’s first reason to combine Oe and Etsuo “because they are in the same field of backlighting for liquid crystal display devices.” Pet. 36. The mere fact that both Oe and Etsuo are in the same field of endeavor falls short of an adequate rationale. The same field of endeavor analysis is merely the jumping-off point in reaching the determination of whether a claimed invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). Next, we consider Petitioner’s second reason to combine because “both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.” Pet. 36 (citing Ex. 1004 ¶ 165). Although Petitioner relies on the testimony of Dr. Escuti, he does not proffer any persuasive facts, data, or analysis to support his opinion. See Ex. 1004 ¶ 165 (“Also, both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.”). Merely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument probative value. Dr. Escuti’s opinion lacks sufficient support. For this reason, we do not credit the testimony of Dr. Escuti on this issue. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Petitioner’s second reason is also unavailing because it does not address the entirety of Petitioner’s proposed modification. As discussed above, Petitioner relies on the disclosure in Etsuo for both the position of the plurality of light sources adjacent a single input edge claim element, as well as the output distribution having a greater width component than height component claim element. Petitioner’s reasoning, directed only to the use of light sources at the edge of the light guide, does not explain sufficiently why one of skill in the art would have replaced a single light source positioned adjacent one input edge of Oe, with the plurality of light sources disclosed by Etsuo that have an output distribution defined by a greater width component than height component.” slip op. at 20
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“We have reviewed the testimony from both Dr. Escuti, and Patent Owner’s expert, Mr. Werner (Ex. 2021). We find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.5 However, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Escuti, and Mr. Werner. See, e.g., 5 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). We, therefore, are not persuaded by Patent Owner’s contention that Dr. Escuti’s testimony be disregarded in its entirety. Instead, we have accorded the testimony of both Dr. Escuti and Mr. Werner the weight that is appropriate in view of the arguments and evidence of record in this trial. 4. Overview of Oe (Ex. 1024)” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“taken into account. In making this determination, we were aided by expert testimony. According to Dr. Escuti, “a person of ordinary skill in the art relevant to the ’660 Patent would have at least an undergraduate degree in physics, optics, engineering, or applied mathematics AND 3 years of work experience (or a graduate degree) in a field related to optical technology.” Ex. 1004 ¶ 23. Mr. Werner does not take issue with this testimony, and in fact proposes a similar standard: a person of ordinary skill in the art of the ’660 patent would hold an undergraduate degree in physics, material science, electrical engineering, or mathematics and have one or both of the following: (1) three or more years of work experience in a field related to optical technology; or (2) a graduate degree in a field related to optical technology. Ex. 2021 ¶ 76. We find that Mr. Werner’s definition is too limited in that it does not include a person with an undergraduate degree in optics. We, therefore, do not accept his standard and adopt instead Dr. Escuti’s more complete definition.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“disclosure in the specification of the ’600 patent to support Patent Owner’s proposed claim construction of “height” and “width.” Indeed, our review of the specification of the ’660 patent reveals that these terms are not defined explicitly or implicitly. For example, the specification states that “the deformities may vary in shape and/or size along the length and/or width of the panel members.” Ex. 1001, 5:43–44 (emphasis added). With respect to the planar optical conductor, claims 1 and 33 each recite, in relevant part, that the input edge has “at least one input edge with a greater cross-sectional width than thickness.” Ex. 1001, 9:11–12, 10:65–67 (emphasis added). Both claims 1 and 33 recite that the output distribution generated by the plurality of light sources is “defined by a greater width component than height component.”4 Id. at 9:15–16, 11:5–6 (emphasis added). Claim 33 recites that the plurality of LED light sources each have “a greater width than height.” Id. at 11:1–2 (emphasis added). Because the terms “width” and “height” are commonly understood, we also consult a general purpose dictionary. “Width” is defined as “the horizontal measurement taken at right angles to the length.” See Merriam- Webster.com, http://www.merriam-webster.com/dictionary/width, (last viewed July 10, 2015). The dictionary definition of height is “the distance from the bottom to the top of something standing upright.” See Merriam-” slip op. at 10
Patent outcomesUS 7,404,660 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,404,660 - LG Display Co, Ltd. v. Innovative Display Technologies LLCNo claims unpatentablePTAB · Jul 15, 2016 · IPR2015-01717 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1, 3, 5, 10, 13, 16, 17, 25–29, and 33–35 were held not unpatentable under § 103 over Oe and Etsuo because the combination lacked an adequately supported reason to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“taken into account. In making this determination, we were aided by expert testimony. According to Dr. Escuti, “a person of ordinary skill in the art relevant to the ’660 Patent would have at least an undergraduate degree in physics, optics, engineering, or applied mathematics AND 3 years of work experience (or a graduate degree) in a field related to optical technology.” Ex. 1004 ¶ 23. Mr. Werner does not take issue with this testimony, and in fact proposes a similar standard: a person of ordinary skill in the art of the ’660 patent would hold an undergraduate degree in physics, material science, electrical engineering, or mathematics and have one or both of the following: (1) three or more years of work experience in a field related to optical technology; or (2) a graduate degree in a field related to optical technology. Ex. 2021 ¶ 76. We find that Mr. Werner’s definition is too limited in that it does not include a person with an undergraduate degree in optics. We, therefore, do not accept his standard and adopt instead Dr. Escuti’s more complete definition.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“Owner’s expert, Mr. Werner (Ex. 2021). We find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.4 However, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Escuti, and Mr. Werner. See, e.g., 4 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). We, therefore, are not persuaded by Patent Owner’s contention that Dr. Escuti’s testimony be disregarded in its entirety. Instead, we have accorded the testimony of both Dr. Escuti and Mr. Werner the weight that is appropriate in view of the arguments and evidence of record in this trial. 4. Overview of Oe (Ex. 1024)” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Because the terms “width” and “height” are commonly understood, we also consult a general purpose dictionary. “Width” is defined as “the horizontal measurement taken at right angles to the length.” See Merriam- Webster.com, http://www.merriam-webster.com/dictionary/width, (last viewed July 10, 2015). The dictionary definition of height is “the distance from the bottom to the top of something standing upright.” See Merriam- 3 In a related district court proceeding, the claim term “output distribution defined by a greater width component than height component” was determined to have its plain meaning. Ex. 2008, 47. See TR. 21:24–22:8. Webster.com, http://www.merriam-webster.com/dictionary/height, (last viewed July 10, 2015). Within the context of the claims, we are not persuaded by Patent Owner’s contentions that the term “width” is used other than according to its ordinary and customary meaning with respect to the shape of the input edge of the optical conductor, the output distribution of the light source, and the shape of the LED light source. Along this vein, we are not persuaded by Patent Owner’s contentions that the term “height” is used other than according to its ordinary and customary meaning with respect to the light output distribution. Based on this usage in the claims, no express construction is necessary.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“persuaded Petitioner has provided sufficient articulated reasoning with rational underpinning explaining why one with ordinary skill in the art would have modified the teachings of the applied references to address the noted differences. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). We consider Petitioner’s first reason to combine Oe and Etsuo “because they are in the same field of backlighting for liquid crystal display devices.” Pet. 36. The mere fact that both Oe and Etsuo are in the same field of endeavor falls short of an adequate rationale. The same field of endeavor analysis is merely the jumping-off point in reaching the determination of whether a claimed invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). Next, we consider Petitioner’s second reason to combine because “both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.” Pet. 36 (citing Ex. 1004 ¶ 165). Although Petitioner relies on the testimony of Dr. Escuti, he does not proffer any persuasive facts, data, or analysis to support his opinion. See Ex. 1004 ¶ 165 (“Also, both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.”). Merely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument probative value. Dr. Escuti’s opinion lacks sufficient support. For this reason, we do not credit the testimony of Dr. Escuti on this issue. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Petitioner’s second reason is also unavailing because it does not address the entirety of Petitioner’s proposed modification. As discussed above, Petitioner relies on the disclosure in Etsuo for both the position of the plurality of light sources adjacent a single input edge claim element, as well as the output distribution having a greater width component than height component claim element. Petitioner’s reasoning, directed only to the use of light sources at the edge of the light guide, does not explain sufficiently why one of skill in the art would have replaced a single light source positioned adjacent one input edge of Oe, with the plurality of light sources disclosed by Etsuo that have an output distribution defined by a greater width component than height component. We also consider Petitioner’s argument in the Reply that, in addition to Etsuo, Petitioner also relies on Oe’s explicit disclosure of “a plurality of point-like sources of light.” Reply 16–17. Petitioner directs us to the passage of Oe cited in its claim chart (Pet. 40), describing how the light source could be “a plurality of point-like sources of light arranged along the incident surface” (Ex. 1024, 7:30–31). Id. at 16. But Petitioner’s arguments in this regard do not address specifically its proffered reason to combine Oe and Etsuo. Indeed, Petitioner does not explain the relevance of the point-like sources of light to the claim element in question. See 37 C.F.R. § 42.22(a)(2) (requiring a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent). Patent Owner contends that “Petitioner never argues that ‘point-like sources’ are equivalent to LEDs.” PO Resp. 10. We agree. Petitioner’s argument that “Oe discloses a plurality of light sources 4 adjacent to the input edges” (Pet. 35 (citing Ex. 1024, 6:5–13; Ex. 1004 ¶ 161)) makes no mention of the specific passage in Oe concerning the point-like sources of light. Indeed, the cited passage states that:” slip op. at 20
Patent outcomesUS 7,404,660 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,404,660 - Kingston Technology Company, Inc. v. Catr Co. Ltd.Some claims unpatentablePTAB · May 10, 2016 · IPR2015-00559 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 9, 14, 17, 19, and 21–23 are unpatentable as obvious over Matsumiya and Deng and over Wu and Hoogesteger; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“1. Level of Ordinary Skill in the Art In our Final Written Decision in IPR 149, we found “that one of ordinary skill in the art would have had a degree in mechanical engineering or industrial design, but also a general understanding of the use of electrical components, which may be incorporated in mechanical designs.” IPR 149 Decision 23. The parties present the same arguments here, with respect to their views of the level of ordinary skill in the art, as they did in IPR 149. Accordingly, for the reasons discussed in our Final Written Decision in IPR 149 we adopt the same level of skill here. Id. at 22–23.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Second, Dr. Wolfe testified that Matsumiya discloses “a shaft” that protrudes from each side of the case. Ex. 1016 ¶ 97. On cross-examination, however, Dr. Wolfe admitted that while Matsumiya could disclose a “split axle,” “normally, you’d presume that it’s a through axle.” Ex. 2012, 85:9– 18. Dr. Wolfe did not explain in his direct testimony how either an axle or split axle would be integrated with or attached to at least one side of the case. Third, Petitioner relied on the express disclosure of Matsumiya, not a modification of Matsumiya, as teaching this element of the claims. See Pet. 16 (relying only on Matsumiya’s disclosure). In its Reply, Petitioner asserts, for the first time, that Matsumiya “could also use a snap hinge,” pointing to Professor Visser’s cross-examination testimony. Reply 13 (citing Ex. 1050, 127:9–11). Professor Visser’s testimony, however, does not support Petitioner’s argument. Professor Visser testified that Matsumiya does not show a snap-on hinge, and that a snap-on hinge would not have the same functionality as an axle. Ex. 1050, 127:18–21. He also testified that the two concentric rings on the arms of Matsumiya are inconsistent with a snap-on hinge. Id. at 128:17–20. Thus, the issue before us is not whether it would have been obvious to modify Matsumiya to include a snap-on hinge or hinge protuberance on the side of the case because that was not the basis set forth in the Petition and upon which we instituted review; rather, the issue is whether Petitioner has shown that Matsumiya discloses a hinge element or hinge protuberance integrated with or attached to at least one side of the case. In light of the record before us, and as detailed in the discussion above, we conclude that Petitioner has not shown that Matsumiya discloses a hinge element or a hinge protuberance “formed on at least one side of the case.” We find that Petitioner has failed to present sufficient evidence to show that Matsumiya discloses this element of the claims, and we find Patent Owner’s evidence in the form of Dr. Wolfe’s cross-examination testimony and Professor Visser’s testimony more persuasive.” slip op. at 22
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“Id. at 1:14–23. Accordingly, we find that Kindig’s field of endeavor is hinged enclosures to house appliances that make noise when operated. The ’544 patent states that “[t]he present invention relates to a flash memory apparatus, and more particularly to a flash memory apparatus, wherein a cover is not completely separated from the main body upon being in use so that lost [sic] of the cover is prevented.” Ex. 1001, 1:8–11. The ’544 patent is largely directed to a cover that rotates with respect to a case (as is evident from the parties’, and consequently our, extensive discussion of the hinged connection (i.e., hinge protuberances and hinge holes)), but is not readily disconnected. In fact, the ’544 patent discloses the recited “hooking groove” and “hooking threshold” specifically to prevent the hinge hole from being easily detached from the hinge protuberance. Id. at 3:36–43 (“Furthermore, a hooking groove 34 is preferably formed on the lower periphery of the hinge protuberance 33. A hooking threshold 45 is hooked on the hooking groove 34 and is preferably formed on a rim confining the hinge hole 41 in order to prevent the hinge hole 41 from being easily detached from the hinge protuberance 33 after joining of the hinge hole 41 and the hinge protuberance 33.”). Thus, we find that the ’544 patent’s field of endeavor is hinge assemblies for a flash memory apparatus.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Second, Petitioner asserts that Kindig’s hinge connection “would advantageously help to retain connection between the cover of Matsumiya and the memory card,” id. at 25, but Petitioner has not shown that Matsumiya fails to retain the connection between case and cover or has difficulty doing so. Rather, from our review the record supports that Matsumiya’s cover is securely attached to the case. Additionally, we are unaware of any teaching in Matsumiya of disconnecting the cover from the case. Similarly, the ’544 patent aims to avoid disconnecting the cover from the case, as discussed above. Kindig, however, is directed to an easily detachable cover. Accordingly, Petitioner’s reason—as to why one of ordinary skill in the art would have been prompted to modify Matsumiya by adding the elements of claim 13 from Kindig—lacks a rational underpinning. 3. Conclusion of Obviousness For the foregoing reasons, after consideration of the entire record, we” slip op. at 35
Patent outcomesUS 6,926,544 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,926,544 - Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCNo claims unpatentablePTAB · Nov 30, 2015 · IPR2014-00552 · APJ Thomas L Giannetti · IPR · Final written decision
Petitioner failed to prove claims 1–23 unpatentable because Webster was disqualified as prior art under § 103(c).
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“In an inter partes review, the burden of proof is on the Petitioner to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). This burden never shifts to the Patent Owner. Id. However, the burden of production, a separate burden, does shift once the Petitioner comes forward with evidence establishing prior art. Id. at 1379–80. Thus, to prevail on this dispositive issue, Patent Owner must overcome Webster by establishing that § 103(c) applies to the fact of this case.” slip op. at 7
- ExcludeMotion to exclude, deniedMixed
“We agree with Patent Owner and are persuaded that the W–2 form and pay stub should not be excluded. Petitioner’s argument based on alleged inconsistencies goes to the weight, not the admissibility, of the evidence. As to the hearsay objections, we agree with the reasoning of Snow, supra, that the EIN and other information are not assertions subject to the hearsay rule. To the same effect are United States v. Koch, 625 F.3d 470, 480 (8th Cir. 2010) (computer flash drive with manufacturer’s label “China” not inadmissible hearsay to prove place of manufacture); United States v. Bowling, 32 F.3d 326, 328 (8th Cir. 1994) (manufacturer’s name stamped on firearm not hearsay). We are persuaded that the EIN and other identifying information on the W-2 and pay stub, like the examples in those cases, are circumstantial evidence of Seals’employment and not assertions by Intersil. We agree that the pay stub is not hearsay and should be admitted.14 Although Petitioner challenges this evidence as untrustworthy, we are mindful of the fact that Petitioner had a chance to cross-examine Mr. Seals on its content.” slip op. at 22
Patent outcomesUS 6,754,195 not shown unpatentable§ 103 obviousnessPatents in suitUS 6,754,195 - Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Nov 30, 2015 · IPR2014-00548 · APJ James A Tartal · IPR · Final written decision
Claims 1, 4–6, 10, and 13–20 are unpatentable as obvious; claims 2 and 11 were not shown unpatentable because the petition did not establish their variable-length header adjustment limitations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Fischer teaches that the comparators in coherent demodulator 114 convert a “‘spread spectrum modulated’ analog signal into a digital signal,” as opposed to “other analog signals.” See PO Resp. 13. To the contrary, Fischer states that “[t]he communicators preferably transmit and receive messages over a wireless physical layer provided by a direct-sequence, spread spectrum (DSSS) radio data link.” Ex. 1004, 14:24–27. Fischer further explains that “[s]ince many of the signals in the coherent demodulator 114 are analog signals, the coherent demodulator 114 includes comparators to establish digital waveforms.” Ex. 1004, 16:58–60. As shown in Figure 5 of Fischer, the coherent demodulator 114 is followed by spread spectrum correlator and decoder 130, which “handles the demodulator 114 output to regenerate the unspread data.” Ex. 1004, 17:58– 60. Thus, we agree with Petitioner, as supported by Prof. Ding, that a person of ordinary skill in the art “would have understood Fischer to describe that the demodulator 114 converts the analog DSSS modulated messages received by antennas 100/102 to digital signals and outputs these digital DSSS modulated messages in I and Q format to spread spectrum correlator and decoder 130.” Reply 3–4; Ex. 1013 ¶ 5.” slip op. at 18
- Skill levelOther
“3. Claims 1, 10, and 17 Petitioner argues that each of independent claims 1, 10, and 17 is unpatentable as obvious over Fischer and Nakamura. Pet. 15–26. Notwithstanding the fact that claim 1 recites “means” for performing identified functions, whereas claims 10 and 17 do not recite “means” limitations, the three claims recite similar subject matter, and Petitioner advances the same reasoning in its analysis of all three claims. Id. Patent Owner’s Response also generally addresses claims 1, 10, and 17 collectively in a similar manner. PO Resp. 10–31. Although our analysis below primarily focuses on claim 1, our determinations with respect to claim 1 apply for the same reasons to the identified similar limitations of claims 10 and 17.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“The Petition makes no mention of Nakamura in its discussion of the additional limitations of claims 2 and 11. Yet in reply, Petitioner argues that “[i]n view of Fischer’s variable length preambles, a [person of ordinary skill in the art] would have found it obvious to utilize Nakamura’s timer function and its repetitive duration function.” Reply 15. Petitioner may not rely on a new argument asserting that Nakamura teaches the additional limitations for claims 2 and 11 presented for the first time in its Reply. Moreover, Petitioner fails to address how either Fischer or Nakamura teaches means for adjusting means for timing when Fischer contains no timer, and when the timer of Nakamura is described as being based on a predetermined period of time. See Ex. 1005, 6:31–36 (“timer 34 permits the switch 14 to transfer from terminal A to terminal B after the lapse of predetermined time”); see also Ex. 2006, ¶¶ 83–84. Petitioner’s contention that “Nakamura’s timer is also flexible” is insufficiently supported by any reference to either Nakamura or the declaration of Prof. Ding. See Reply 16–17; see also Ex. 1013 (no discussion of claims 2 or 11). Petitioner has not demonstrated that the features of claims 2 or 11 are disclosed by the combination of Fischer and Nakamura. 5. Claims 4, 5, 6, 13, 14, 16, and 18–20 Petitioner has persuasively shown that each of the additional limitations of dependent claims 4, 5, 6, 13, 14, 16, and 18–20 are taught by the combination of Fischer and Nakamura. For example, claims 4, 14, and 19 all require a “single monolithic device.” Petitioner has shown that Fischer RF modem 96 is a single monolithic device, and that Fischer communicator 60 is a circuit contained on a single monolithic device that includes RF modem 60. See Pet. 27–28; Ex. 1003 ¶¶ 41–42. Petitioner has also shown that RF modem 96 includes coherent demodulator 114 that provides in-phase and quadrature data outputs that are responsive to an analog signal that has in-phase and quadrature components, corresponding to the requirements of an analog signal “in the form of in-phase and quadrature components” as recited in claims 5 and 16. See Pet. 28–29; Ex. 1003 ¶ 38. With respect to the limitations of claims 6, 16, and 20 requiring PN modulation and phase shift keyed modulation, Petitioner has shown that Fischer discloses RF modem 96 supports BPSK or QPSK, and that it would have been obvious to implement direct sequence spread modulation by using PN modulation. See Pet. 29; Ex. 1003 ¶¶ 34, 37. We are also persuaded that Fischer discloses the “antenna selection circuitry” as recited in claim 13 and the “serial data stream” as recited in claim 18. See Pet. 30–31; Ex. 1003 ¶ 40. Patent Owner does not substantively dispute Petitioner’s assertion that Fischer teaches each of these limitations.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner contends that “[i]f reliability alone is the concern,” then “the most reliable method is to use BPSK for the entire packet (as taught by Fischer).” PO Resp. 38. We are not, however, persuaded that “reliability alone is the concern.” Nakamura and Fischer clearly teach a benefit to using both BPSK and QPSK consisting of improved reliability for BPSK with enhanced speed from QPSK. Thus, we find Patent Owner’s contention that those of skill “would not look beyond the teachings of Fischer” unpersuasive. See id. Likewise, Patent Owner’s contention that Fischer already teaches improved reliability by using longer preambles has no bearing on whether one of ordinary skill in the art would have also looked to Nakamura for other means of improving reliability. See id. at 39. We find that Petitioner articulates sufficient reasoning with rational underpinnings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).” slip op. at 28
Patent outcomesUS 5,712,870 mixed§ 103 obviousnesscites KSRPatents in suitUS 5,712,870 - Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Nov 30, 2015 · IPR2014-00553 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–3, 5–10, 13, 18, and 23 are unpatentable under § 103; claims 4, 11–12, 14–17, and 19–22 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPrinted publication establishedDecided for petitioner
“A reference is established to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” In” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system” because “Wu itself references the 802.11a standard as a multi-carrier OFDM scheme that is able to achieve data rates that are faster than the 802.11b transmission rates used in the Wu system.” Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68; Ex. 1108, 411). Petitioner contends that [w]ith this motivation in mind a [person of ordinary skill in the art] would have recognized that adding the multi-carrier 802.11a modulation scheme to the modulation schemes already available in the Wu system would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme[,] and supports that contention with testimony by Dr. Almeroth. Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68). Petitioner identifies such a technique as disclosed by Böhnke. Id. at 49. Böhnke “relates to the mapping of data and pilot symbols in an OFDM-system.” Ex. 1113, col. 1, ll. 4–5. Figure 2 of Böhnke is reproduced below. Figure 2 illustrates a sequence that includes a first OFDM modulated signal S1, a midamble MA that can be OFDM modulated or single-carrier modulated, and a second OFDM symbol S2. Id. at col. 4, ll. 36–41. The midamble can be used for the transmission of pilot symbols, which “are necessary for a channel estimation such as to effect coherent detection of e.g. OFDM-modulated signals,” and such pilot symbols can be created by a single carrier modulation with a known training sequence. Id. col. 1, ll. 7–9, col. 5, ll. 45–49, col. 5, ll. 61–63. Böhnke, thus, uses the channel estimation obtained from the single-carrier training sequence to detect multi-carrier OFDM symbols by matching bandwidth and performing synchronization. Id. at col. 2, ll. 43–45, col. 2, ll. 61–62. Petitioner reasons that the Böhnke channel-estimation techniques “provide a way to combine a high-rate, multicarrier OFDM data transmission scheme with a single carrier training sequence” and that [w]ith this background, a [person of ordinary skill in the art] investigating options for including the multi-carrier 802.11a standard in the Wu system would have appreciated that Bohnke’s channel estimation techniques could be applied to Wu’s single-carrier 802.11b preamble and used for acquisition of data modulated according to multi-carrier 802.11a.” slip op. at 12
- BurdenMixed
“We agree with Patent Owner that Petitioner’s analysis of claim 22, which recites separate single-carrier and multi-carrier receivers, as well as a switch coupled to such receivers, is deficient. Petitioner’s assertion that claim 22 is unpatentable for “reasons similar to those explained in regards to claims 1-3 and 5” insufficiently addresses these limitations, which do not appear in claims 1–3 or 5. Pet. 58.” slip op. at 23
Patent outcomesUS 6,754,195 mixed§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,754,195 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00561 · APJ Barbara A Parvis · IPR · Final written decision
Claims 46 and 54 were held unpatentable; claims 55, 56, and 60 were not shown unpatentable; claims 16, 24–26, and 30 were terminated because their means-plus-function limitation lacked sufficient disclosed structure.
RulingsFinal written decision- BurdenMixed
“Microsoft has shown by a preponderance of the evidence that claims 46 and 54 of the ’775 patent are unpatentable. Microsoft has not shown that claims 55, 56, and 60 of the ’775 patent are unpatentable. For the reasons discussed below, we are unable to reach a determination on the alleged grounds of unpatentability over prior art for claims 16, 24–26 and 30. Accordingly, we terminate this proceeding with respect to claims 16, 24–26 and 30 under 37 C.F.R. § 42.72.” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. & Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’775 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the portions of the ’775 patent specification that Enfish identifies.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We determine that Enfish’s proposed construction of OID introduces requirements beyond what is needed for an OID to identify data and retrieve data from memory. Enfish, for example, contends that “an OID is unique among all rows and columns of the logical table.” PO Resp. 29. Additionally, claims 46 and 54 recite that an OID is included “to identify” each attribute set and each record, but do not specifically recite using an OID to retrieve data from memory.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“80, PG 453, 471, 481, 482, 484, Ex. 1219 ¶¶ 67–93, 119–131). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 54. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1204, LR 558. The table object comprises “records (rows) and fields (columns).” Id. As an additional example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses each record and each attribute set including an OID, as recited in claim 54. In the cited portions above, Visual Basic describes assigning a primary key and that “[a] table’s primary key is the determining factor when testing to see if the record is unique within the table.” Ex. 1204, PF 39. According to Visual Basic “[Visual Basic] creates an index on the primary key of the table and uses it to find records and to create joins between tables.” Id. Regarding each column including an OID, according to Visual Basic, “[e]ach Field in the Fields collection of a TableDef has a unique value in the OrdinalPosition property.” Id. at LR 425. Furthermore, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses indexing data stored in the table and a cell including a pointer to an index record, as recited in claim 54. In the cited portions above, Visual Basic discloses an index object used for creating indexes to “speed up the process of finding records.” Ex. 1204, LR 276; see also id. at PF 37, 38, PG 482. Visual Basic also discloses a cell pointing to an index object. Id. at LR 280, PG 484.” slip op. at 17
Patent outcomesUS 6,163,775 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,163,775 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00560 · APJ Barbara A Parvis · IPR · Final written decision
Claims 47–48 are unpatentable as anticipated by Visual Basic, and claims 49–50 as obvious over Visual Basic and Jensen; claims 51–53 were not shown unpatentable, and claims 17–23 were terminated.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“Enfish contends that our construction for “object identification number” is incomplete. PO Resp. 15. We evaluate Enfish’s contention below. Enfish also provides a proposed construction for “anchor,” recited in claims 21 and 51. PO Resp. 22. Because we determine that Microsoft has not met its burden with respect to these claims for other reasons, no construction of this term for the purposes of this Decision is necessary. We discern no reason, based on the complete record now before us, to change our constructions in the Decision to Institute of “logical table,” “object identification number,” and “attribute set.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“evidence, and the detailed claim analysis, which reads persuasively all elements of claim 47 onto the disclosure of Visual Basic. Pet. 33–46 (citing Ex. 1104, LR 162, 185, 280, 425, 484, 532, 558, PF 1, 3, 18, 37–39, 40, 47, 76, 80, PG 453, 471, 481, 482 ; Ex. 1119 ¶¶ 67–98). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 47. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1104, LR 558. The table object comprises “records (rows) and fields (columns).” Id.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“2007 ¶ 231. In contrast to Dr. Jagadish’s statement, however, Jensen teaches an object-oriented application for managing information retrieved from a structured database, such as a relational database. Ex. 1106, Abstract. Enfish further contends that Microsoft does not explain why one of ordinary skill in the art would have been motivated to apply the pointers of Jensen to the indexing structure in Visual Basic. PO Resp. 35. We, however, are persuaded that Microsoft has shown a sufficiently articulated reason with rational underpinning to support obviousness (Pet. 48–49 (citing Ex. 1119 ¶¶ 387–404)). Microsoft, for example, states “[i]t was well known in the art at the time that indexes such as the index disclosed in [Visual Basic], maintain object identification numbers of the cell for locating data.” Pet. 49 (emphasis added). Microsoft continues, “Jensen discloses containing the address in a pointer, e.g., a physical memory address (i.e., OIDs).” Id. (citing Ex. 1106, 7:29–35). Dr. Hosking testifies “[i]t was well known in the art at the time that Index Objects locate data by maintaining object identification numbers in the internal pointers as disclosed in Jensen.” Ex. 1119 ¶ 403 (emphasis added). Dr. Hosking further testifies “[a] person of ordinary skill in the art would be motivated to combine Jensen’s teaching of maintaining the OIDs in a pointer with [Visual Basic’s] disclosure of identifying the logical columns / rows with the OIDs.” Ex. 1119 ¶ 404. The predictable use of familiar prior art elements according to their established functions renders the recited invention obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention.”). Enfish contends that the claimed invention received industry accolades, including praise from Microsoft, satisfied a long-felt need, resulted in success where others had failed, as well as commercial success. PO Resp. 42–47. Enfish points to features of claim 17, which Enfish contends are the features of the claimed invention that resulted in the objective indicia of success to which Enfish refers. Id. at 43–44. Claim 17 of the ’775 patent, however, is challenged on the basis that it is anticipated by Visual Basic. Secondary considerations do not weigh into determinations regarding anticipation. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Because we conclude that Microsoft has not shown that claims 51–53 of the ’775 patent are unpatentable for other reasons, the only claims that we need to evaluate are dependent claims 49 and 50 of the ’775 patent. Microsoft asserts that claims 49 and 50 are obvious over the combination of Visual Basic with a reference that teaches referencing objects through two-way pointers. Pet. 49 (citing Ex. 1106, 7:29–35). Enfish has not shown a nexus between any of the accolades or successes it says occurred and the use of two-way pointers.” slip op. at 24
Patent outcomesUS 6,163,775 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,163,775 - Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCRehearing grantedPTAB · Feb 20, 2015 · IPR2014-00553 · APJ Patrick M Boucher · IPR · Rehearing
Rehearing was granted in part; review was instituted on four §103 grounds for claims 1–23, while the Boer-based challenge did not meet the institution threshold.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“patent in IPR2014-00553 (“this proceeding”). Paper 17 (“Dec.”). We observed that the grounds advanced in this proceeding “rely on teachings from Boer[1] and Wu[2] that Petitioner already identifies as disclosed by Webster” and that “Petitioner [had] not shown, and we [were] not convinced, that any of the additional grounds add substantively to the grounds on which we institute[d] inter partes review [in the related proceeding].” Dec. 16, 18. On January 2, 2015, Petitioner filed a Request for Rehearing (Paper 18, “Req. Reh’g”) that notes Patent Owner now raises an issue under 35 U.S.C. § 103(c) with respect to Webster in the related proceeding that it had not raised in its Preliminary Response. Req. Reh’g 1. Specifically, Patent Owner contends that Webster is not prior art to the ʼ195 patent because Webster and the ʼ195 patent “were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.” 35 U.S.C. § 103(c)(1). In view of Patent Owner’s new contention, which was not advanced until after institution, Petitioner requests rehearing of our denial of institution in this proceeding. See Req. Reh’g 4–5. We agree that, under these circumstances, rehearing is appropriate and we therefore reconsider our decision not to proceed on Petitioner’s challenges based on Boer and Wu.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedMixed
“We agree with Patent Owner that Boer lacks sufficient detail, even in combination with the other cited art, to support Petitioner’s challenge. See Prelim. Resp. 20. Consequently, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its challenge of claims 1–23 as obvious over Boer and other art.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Although each of the modulation schemes in this structure is a single- carrier modulation scheme, Petitioner contends that a person of ordinary skill in the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system,” observing that Wu references the 802.11a standard as a multi-carrier OFDM scheme able to achieve data rates faster than the 802.11b transmission rates. Pet. 48. Petitioner supports this contention with testimony by Dr. Almeroth, which we credit. See Ex. 1103 ¶ 66. Petitioner further reasons that the addition of the multi-carrier 802.11a modulation scheme “would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme.” Pet. 48 (citing Ex. 1103 ¶¶ 43–47, 65–68). Petitioner cites Böhnke for such a technique. Pet. 49. We are persuaded by Petitioner’s analysis on the present record.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“carrier modulation scheme, Petitioner contends that a person of ordinary skill in the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system,” observing that Wu references the 802.11a standard as a multi-carrier OFDM scheme able to achieve data rates faster than the 802.11b transmission rates. Pet. 48. Petitioner supports this contention with testimony by Dr. Almeroth, which we credit. See Ex. 1103 ¶ 66. Petitioner further reasons that the addition of the multi-carrier 802.11a modulation scheme “would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme.” Pet. 48 (citing Ex. 1103 ¶¶ 43–47, 65–68). Petitioner cites Böhnke for such a technique. Pet. 49. We are persuaded by Petitioner’s analysis on the present record.” slip op. at 5
§ 103 obviousnessPatents in suitUS 6,754,195 - K-40 Electronics, LLC v. Escort, Inc.Some claims unpatentablePTAB · Sep 29, 2014 · IPR2013-00240 · APJ Trenton A Ward · IPR · Final written decision
Claims 1–6, 11–12, 15–18, 22–33, 41–72, and 74–85 are unpatentable; claims 36–38 were not shown unpatentable, because the prior art did not establish their continuous-signal location tracking limitation.
RulingsFinal written decision- BurdenDecided for petitioner
“In order to establish an actual reduction to practice, [a party] must establish three things: ‘(1) construct[ion of] an embodiment or perform[ance of] a process that met all the [claim] limitations [ ]; [ ](2) . . . determin[ation] that the invention would work for its intended purpose,’” and “(3) the existence of sufficient evidence to corroborate inventor testimony regarding these events.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (quoting Cooper v. Goldfarb, 154 F.3d 1321, 1327, 1330 (Fed. Cir. 1998)). “A ‘rule of reason’ analysis is applied to determine whether the inventor’s prior conception testimony has been corroborated.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Here, the only evidence of the successful reduction to practice of the claimed invention for its intended purpose prior to January 27, 1998 is the testimony of the inventor, Mr. Orr. “It has long been the case that an inventor’s allegations of earlier invention alone are insufficient—an alleged date of invention must be corroborated.” In re NTP, Inc., 654 F.3d at 1291 (citing Medichem, 437 F.3d at 1170; Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998)). We conclude that the record is lacking sufficient evidence corroborating Mr. Orr’s testimony, which alone is insufficient. In view of the foregoing, we determine that Patent Owner has failed to prove by a preponderance of the evidence its claim of reduction to practice of the claims 1–6, 15–16, 22–29, 33, 41–52, 54–66, 68–72, 75, 77–83, and 85 of the ’905 patent prior to January 27, 1998. Therefore, Hoffberg and Fleming, III are prior art to the ’905 patent.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“forth in the challenged claims of related U.S. Patent No. 7,999,721 at issue in IPR2013–00203. For the same reasons set forth in the ’203 Decision at pages 6–8, we are not persuaded by Patent Owner’s argument that “correlates to a police signal” should be construed to mean an undefined determination made by comparing a received signal to the attributes of actual police signals. Accordingly, we construe “provide an alert if a received electromagnetic signal correlates to a police signal” as “provide an alert if a received electromagnetic signal correlates to one or more characteristics of a police signal.” 2. “position determining circuit” Claim 1 recites “a position determining circuit generating a location signal.” Ex. 1001, col. 25, l. 50 (emphasis added). Independent claims 43 and 68 provide similar recitations regarding a “position determining circuit.” Patent Owner proposes that “position determining circuit” should be construed to mean “a device for receiving information related to geographic locations.” PO Resp. 22. Patent Owner made similar arguments with respect to the “position determining circuit” set forth in the challenged claims of related U.S. Patent No. 7,999,721 at issue in IPR2013–00203. For the same reasons set forth in the ’203 Decision at pages 6–8, we determine that the “position determining circuit” must be involved in determining the position of the device, rather than merely receiving information related to geographic locations of the device, as proposed by Patent Owner. Accordingly, we construe “position determining circuit” as “a circuit for determining a position of a device.”” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We are not persuaded by Patent Owner’s arguments because they are not commensurate with the scope of the claims. As discussed above, we construe the phrase “provide an alert if a received electromagnetic signal correlates to a police signal” as “provide an alert if a received electromagnetic signal correlates to one or more characteristics of a police signal.” The ’905 patent Specification describes that this correlation may be implemented based on “any of the techniques” described in the many patents incorporated by reference in the Specification. Ex. 1001, col. 8, ll. 50–56. Therefore, the correlate limitation recited in the independent claims can involve many prior art techniques, such as those disclosed in Hoffberg. For example, Petitioner argues that Hoffberg discloses the use of a “commercially available radar detector.” Pet. Reply 15 (citing Ex. 1002, col. 33, ll. 9–15). More particularly, Hoffberg discloses “an event sensor is provided, such as a police radar and laser speed detection system (e.g., “radar detector”)” to detect signals and determine whether they correlate to a law enforcement signal. Ex. 1002, col. 33, ll. 9–15. We determine, therefore, that Hoffberg discloses the claimed correlating limitation. Based on the evidence presented, we conclude that Petitioner has established by a preponderance of evidence that Hoffberg discloses all limitations of independent claims 1, 43, 54, 68, and 81. Patent Owner does not address dependent claims 2–4, 15, 17–18, 22–24, 28–29, 31–33, 41–42, 44–48, 53, 55–57, 59–60, 64–65, 67, 69–72, 76–80, and 82–84 with separate, specific arguments against the anticipation challenge based on Hoffberg. See PO Resp. 28–38. As to dependent claims 2–4, 15, 17–18, 22–24, 28–29, 31–33, 41–42, 44–48, 53, 55–57, 59–60, 64–65, 67, 69–72, 76–80, and 82–84, Petitioner provides sufficient evidence to show that Hoffberg discloses the additional recited limitations in those claims. Pet. 20–26, 28–32, 34–48. For example, Petitioner argues that the claim 15 limitation that the information associated with geographic locations includes information identifying rejectable signals at a geographic location is met by Hoffberg’s disclosure that “further information is also stored, such as a time of the event, its character or nature, and other quantitative or qualitative aspects.” Pet. 21 (quoting Ex. 1002, col. 18, l. 64–col. 19, l. 4 (emphasis omitted)). In a further example, Petitioner argues that the claim 28 requirement that the police warning receiver include “storage for vehicle history information identifying vehicle activities including geographic locations” is met by Hoffberg’s disclosure that the “memory stores information describing the event as well as the location of the event.” Pet. 29 (quoting Ex. 1002, col. 22, ll. 18–29 (emphasis omitted)).” slip op. at 20
Patent outcomesUS 6,670,905 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,670,905
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.