• NVIDIA Corporation v. Invensas CorporationAll claims unpatentable
  PTAB · Sep 1, 2021 · IPR2020-01735 · APJ Bryan F Moore · IPR · Final written decision

  Claims 16–22 are unpatentable as obvious over Jaso and Stine1998, and over Jaso, Stine1998, and Pramanik1998.

  RulingsFinal written decision

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

    “Petitioner responds that, because Jaso discloses a damascene process with trenches, Patent Owner’s proposed claim construction is “unnecessary.” Reply 33. We agree that the damascene process of Jaso is the same damascene process to which Patent Owner seeks to limit this claim term. Patent Owner does not argue otherwise in its Sur-reply. See Sur-reply. Thus, we decline to construe the term “trenches in a dielectric layer.”” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “requirement that every claim directed to that invention be limited to encompass all of them.”) (citations omitted). Additionally, notwithstanding the importance of a specification, limitations in the specification must not be read into the claims absent lexicography or disclaimer/disavowal. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention of the ’946 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 20 (citing Ex. 1002 ¶ 35).” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “look at Figure 8 and form any understanding of its structures at all” and thus, Dr. Boning’s opinions should be disregarded in their entirety. Id. at 43 (citing Ex. 2011 ¶¶ 181–189). We find that the explanations by Dr. Boning are a reasonable attempt to explain what one of ordinary skill in the art, with general background knowledge in the art, would glean from Figure 8 of Stine1998 and are supported by additional cited references, such as Maly1991 and the StineThesis. See, e.g., Ex. 1052 ¶¶ 72 (citing Maly Fig. 4), 92 (citing Ex. 2016 (StineThesis), 92 (Ex. 2016, 165), 93. “[A] skilled artisan’s background knowledge is relevant to the reading of the prior art on which the obviousness challenge is based and . . . it is permissible, and sometimes even necessary, to establish such background knowledge by pointing to other prior art. Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017). Despite Patent Owner’s criticism, Dr. Boning’s testimony cited by Patent Owner evidences Dr. Boning’s opinion that a person of ordinary skill in the art was aware of common artifacts and limitations in downscaled layouts. Reply 23 (citing PO Resp. 37–38; Ex. 1052 ¶¶ 65, 98).12 Dr. 12 Dr. Givens testifies that, because there is a discrepancy in Dr. Boning’s testimony regarding the inserts for various regions of Figure 8 of Stine1998 and the lack of any other inserts, one of ordinary skill would not assume the white areas contain no metal lines. Ex. 2011 ¶¶ 185–186. And, based on his magnification experiment, Dr. Givens testifies that Figure 4 of Maly1991 may contain metal lines. Id. We consider the fact that Dr. Givens testimony is largely based on what a person of ordinary skill could discern from Figure the general background knowledge of one of ordinary skill. Ex. 1002 ¶¶ 65 (citing Ex. 1009 (Mead Textbook)), 74 (citing Ex. 1010 (Rabaey Textbook)), 75, 76, 152–157. Thus, we credit Dr. Boning’s testimony and do not disregard his testimony wholesale based on those alleged inconsistencies. Below, we focus on the testimony that is at issue in this IPR.” slip op. at 35

  Patent outcomesUS 6,849,946 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,849,946
• NVIDIA Corporation v. Invensas CorporationAll claims unpatentable
  PTAB · Sep 1, 2021 · IPR2020-00602 · APJ Bryan F Moore · IPR · Final written decision

  Claims 16–22 are unpatentable as obvious over Jaso and Stine1998, and independently over Jaso, Stine1998, and Pramanik1998.

  RulingsFinal written decision

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

    “requirement that every claim directed to that invention be limited to encompass all of them.”) (citations omitted). Additionally, notwithstanding the importance of a specification, limitations in the specification must not be read into the claims absent lexicography or disclaimer/disavowal. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). Petitioner contends that the use of the transitional phrase term “comprising” in the claim means that the claim allows additional intervening structures. Reply 33 (citing Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)). Additionally, Petitioner contends that specifying that the region to which the dummy trenches are added has no conductive structures would add a negative limitation to the claim and require “express disclaimer or independent lexicography in the written description that would justify adding [it].” See id. (citing Omega Engineering, Inc, v. Raytek Corp., 334 F.3d 1314, 1322–23 (Fed. Cir. 2003)) (quotation added here).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’946 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 20 (citing Ex. 1002 ¶ 35). qualifications of a POSA for the purposes of this IPR.” PO Resp. 10. We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’946 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Overall, we have considered all of Patent Owner’s arguments but do not find that they undermine the overall credibility of Dr. Boning. However, we will consider any question regarding his credibility on any specific issue raised by Patent Owner in the obviousness analysis below, where appropriate.” slip op. at 17

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

    “In addition, we are not persuaded by Patent Owner’s argument that Stine1998 is not “salient to the Relevant Problems disclosed in the ’946 patent” because Stine1998 “relates to oxide CMP in a subtractive process,” which, according to Patent Owner, is directed to different problems, and different CMP than the metal CMP in a damascene process. PO Resp. 35. As Petitioner points out, Jaso, Stine1998, and the ’946 patent each address the “erosion of dielectric and dishing of metal” during CMP, which gives rise to “a non-planar surface.” Pet. 6 (citing Ex. 1001, 3:25–44, Fig. 4), 30– 31 (citing Ex. 1004, 2:7–19), 36–37 (citing Ex. 1004, 3:29–64; Ex. 1005, 668). Patent Owner’s assertion that different issues cause dishing and erosion too narrowly confines the problem that the references address. See Unwired Planet v. Google, 841 F.3d 995, 1001 (Fed. Cir. 2016) (“The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.”). Patent Owner also asserts “Jaso’s reference to ‘dishing’ is categorically different from the problems with which the ’946 patent is concerned: dishing of wide interconnect and erosion of oxide between dense narrow interconnect.” PO Resp. 63. We are not persuaded by this conclusory statement.10 Furthermore, to the extent Patent Owner argues the references are non-analogous art, all the references are directed to the creation of metal lines in chip manufacturing, as discussed above, and fall within the same field of endeavor.” slip op. at 31

  Patent outcomesUS 6,849,946 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,849,946
• NVIDIA Corporation v. Invensas CorporationAll claims unpatentable
  PTAB · Sep 1, 2021 · IPR2020-01729 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–8 are unpatentable under §103 over the listed combinations of Jaso, Stine1998, Pramanik1997, and Robinson.

  RulingsFinal written decision

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

    “Petitioner responds that, because Jaso discloses a damascene process with trenches, Patent Owner’s proposed claim construction is “unnecessary.” Reply 32. We agree that the damascene process of Jaso is the same damascene process to which Patent Owner seeks to limit this claim term. Patent Owner does not argue otherwise in its Sur-reply. See Sur-reply. Thus, we decline to construe the term “etching . . . trenches into a dielectric layer.”” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’231 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 22 (citing Ex. 1002 ¶ 35). Patent Owner “does not dispute Petitioner’s description of the qualifications of a POSA for the purposes of this IPR.” PO Resp. 9. We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’231 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Overall, we have considered all of Patent Owner’s arguments but do not find that they undermine the overall credibility of Dr. Boning. However, we will consider any question regarding his credibility on any specific issue raised by Patent Owner in the obviousness analysis below, where appropriate.” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Petitioner argues it would have been obvious to a person of ordinary skill in the art to combine Jaso and Stine1998 “to etch a plurality of dummy trenches in a dielectric layer between a first (wider) trench and a series of second (narrower) trenches.” Id. at 66 (citation omitted). Petitioner argues that a person of ordinary still in the art “would be motivated to combine the teachings in Jaso and Stine1998, as both references are directed to the addition of dummy conductors to equalize pattern density to improve CMP planarity.” Id. at 38–39 (citing Ex. 1004, code (57), 3:29–64; Ex. 1005, 668). In particular, Petitioner states that “Stine1998 enhances and improves upon the disclosure in Jaso by providing general teachings and specific methods that are widely applicable to dummy metal-fill techniques for addressing added capacitance.” Id. at 39 (citing Ex. 1005, 670–672). Petitioner points out that “Stine1998 expressly motivates a [person of ordinary skill in the art] to apply its teachings to a damascene process requiring dummy-fill to enhance planarity” because Stine1998 states its methodology can be extended to “inlaid metal techniques such as copper (emphasis omitted). Analysis of Patent Owner’s Arguments 1) Prior Art Does not “Look for” a Specific Configuration Patent Owner argues “Stine1998 does not tell the POSA to look for a specific configuration of structures, and then insert dummy metal into a particular location within that configuration (as the Relevant Solution does.)” PO Resp. 36–37. Patent Owner also argues that Jaso and Stine1998 “together accordingly tell the POSA to focus on pattern density, and to take steps to ensure that variations in pattern density across the chip are minimized” as opposed to looking for the particular configuration called out by the claims. Id. at 58. There is no requirement in the claims for the prior art to “look for” specific structures, but rather it must disclose those structure required by the claims. For the reasons articulated in the Petition, we agree that the combined teachings of Jaso and Stine1998 teach the structure required by claim 1. Pet. 38–39 (citing Ex. 1004, code (57), 3:29–64; Ex. 1005, 668), 50–52 (citing Ex. 1005, 670). We also credit Dr. Boning’s testimony that these references’ teachings “to locate dummies in sparse regions proximate to wide and narrow lines...would obviously include placing dummies in regions between such lines.” Ex. 1002 ¶ 183 (emphasis added). The fact that Jaso and Stine1998 may not purposefully seek out the configuration relied on by Patent Owner does not undermine Petitioner’s showing that the proper configuration would result from an obvious combination of the references. Thus, we are not persuaded by these arguments.” slip op. at 28

  Patent outcomesUS 6,232,231 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,232,231
• NVIDIA Corporation v. Invensas CorporationAll claims unpatentable
  PTAB · Sep 1, 2021 · IPR2020-00603 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–8 are unpatentable under §103: claims 1–4 and 8 over Jaso and Stine1998, with alternative grounds adding Pramanik1997; claims 5–7 over combinations adding Robinson.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “Patent Owner is correct that “[a] patent’s statement of the described invention’s purpose informs the proper construction of claim terms.” Kaken Pharm. Co. v. Iancu, 952 F.3d 1346, 1352 (Fed. Cir. 2020). Nevertheless, a claim is not required to encompass all of the advantages or purposes of the invention. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed.Cir.2008) (“An invention may that every claim directed to that invention be limited to encompass all of them.”) (citations omitted). Additionally, notwithstanding the importance of a specification, limitations in the specification must not be read into the claims absent lexicography or disclaimer/disavowal. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that one of ordinary skill in the art at the time of the invention of the ’231 patent “would have had a Bachelor of Science degree in physics, chemistry, materials science, electrical engineering, mechanical engineering, or related discipline, in addition to 3–5 years of experience in the fabrication of integrated circuit devices. Additional years of experience could substitute for formal education, and vice versa.” Pet. 22 (citing Ex. 1002 ¶ 35). Patent Owner “does not dispute Petitioner’s description of the qualifications of a POSA for the purposes of this IPR.” PO Resp. 9. We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’231 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “look at Figure 8 and form any understanding of its structures at all” and thus, Dr. Boning’s opinions should be disregarded in their entirety. Id. at 44 (citing Ex. 2011 ¶¶ 191–199). We find that the explanations by Dr. Boning are a reasonable attempt to explain what one of ordinary skill in the art, with general background knowledge in the art, would glean from Figure 8 of Stine 1998 and are supported by additional cited references, such as Maly1991 and the StineThesis. See, e.g., Ex. 1052 ¶¶ 72 (citing Maly Fig. 4), 92 (citing Ex. 2016 (StineThesis), 92 (Ex. 2016, 165), 93. “[A] skilled artisan’s background knowledge is relevant to the reading of the prior art on which the obviousness challenge is based and . . . it is permissible, and sometimes even necessary, to establish such background knowledge by pointing to other prior art.” Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017). Despite Patent Owner’s criticism, Dr. Boning’s testimony cited by Patent Owner evidences Dr. Boning’s opinion that a person of ordinary skill in the art was aware of common artifacts and limitations in downscaled Boning also relies on secondary references to support his testimony about the general background knowledge of one of ordinary skill in the art. Ex. 1002 ¶¶ 65 (citing Ex. 1009 (Mead Textbook)), 74 (citing Ex. 1010 (Rabaey Textbook)), 75, 76, 152–157. Thus, we credit Dr. Boning’s testimony and do not disregard his testimony wholesale based on those alleged inconsistencies. Below, we focus on the testimony that is at issue in this IPR. There are three main reasons why Figure 8 of Stine1998 is at issue. First, Petitioner asserts that the white areas in Figure 8 are open areas between a wide trench and narrow trenches with no metal lines into which dummy conductors would be placed. See Pet. 37–38; Ex. 1002 ¶¶ 112, 152, 157. Patent Owner opposes that contention (PO Resp. 56) but, as explained in association with claim construction, we do not rely on a construction that requires no intervening trenches or other structures between the wide trench and narrow trenches. Additionally, Petitioner relies on the typical layout of chips and the figures of Jaso to support its interpretation of Figure 8. Pet. 45–46, 52–53. 13 Dr. Givens testifies that, because there is a discrepancy in Dr. Boning’s testimony regarding the inserts for various regions of Figure 8 of Stine1998 and the lack of any other inserts one of ordinary skill in the art would not assume the white areas contain no metal lines. Ex. 2011 ¶¶ 195–196. And, based on his magnification experiment, Dr. Givens testifies that Figure 4 of Maly1991 may contain metal lines. Id. We consider the fact that Dr. Givens’s testimony is largely based on what a person of ordinary skill in the art could discern from Figure 8 of Stine1998 and Figure 4 of Maly1991 alone rather than what one or ordinary skill in the art may glean based on their background knowledge in the art—for example whether Figure 8 of Stine1998 is consistent with conventional chip designs as Dr. Boning testified. Thus, we give slightly more weight to Dr. Boning’s testimony.” slip op. at 35

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Analysis of Patent Owner’s Arguments 1) Prior Art Does not “Look for” a Specific Configuration Patent Owner argues “Stine1998 does not tell the POSA to look for a specific configuration of structures, and then insert dummy metal into a particular location within that configuration (as the Relevant Solution does.)” PO Resp. 36–37. Patent Owner also argues that Jaso and Stine1998 “together accordingly tell the POSA to focus on pattern density, and to take steps to ensure that variations in pattern density across the chip are minimized” as opposed to looking for the particular configuration called out by the claims. Id. at 58. There is no requirement in the claims for the prior art to “look for” specific structures, but rather it must disclose those structure required by the claims. For the reasons articulated in the Petition, we agree that the combined teachings of Jaso and Stine1998 teach the structure required by claim 1. Pet. 38–39 (citing Ex. 1004, code (57), 3:29–64; Ex. 1005, 668), 50–52 (citing Ex. 1005, 670). We also credit Dr. Boning’s testimony that these references’ teachings “to locate dummies in sparse regions proximate to wide and narrow lines...would obviously include placing dummies in regions between such lines.” Ex. 1002 ¶ 183 (emphasis added). The fact that Jaso and Stine1998 may not purposefully seek out the configuration relied on by Patent Owner does not undermine Petitioner’s showing that the proper configuration would result from an obvious combination of the references. Thus, we are not persuaded by these arguments. Dummy Trenches We also disagree with Patent Owner’s argument that “Stine1998 does not teach or suggest any ‘trenches in a dielectric layer.’” PO Resp. 47, 55– 56. Patent Owner argues that Stine1998’s “subtractive process used for the manufacture of the disclosed chip does not involve the formation of such trenches.” Id. at 47 (citing Ex. 2011 ¶ 171). That is, Patent Owner asserts Stine1998 deposits a dielectric layer around already-formed metal lines. This argument, however, is not commensurate with the scope of the claims as properly construed. As noted above, to the extent that a damascene process is required, Jaso teaches such a process. Pet. 44. Additionally, assuming arguendo Patent Owner’s argument is correct, it stands to reason that the spaces where dielectric is not deposited are free of dielectric (due to the presence of metal lines) and, therefore, the “trenches” are free of dielectric. Patent Owner also asserts Stine1998 does not disclose dummy trenches because it “states in passing that certain areas of its test chip would be ‘prime candidates’ for ‘metal-fill,’ but does not actually disclose the particular location of any alleged ‘dummy’ conductor.” PO Resp. 56 (citation omitted) (citing Ex. 2011 ¶ 205). Patent Owner’s argument improperly attacks Stine1998 alone when Petitioner argues that the combination of Jaso and Stine1998 teaches “trenches.” See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Petitioner points out that Jaso describes “a damascene method wherein, in general, a via or trench pattern is etched into a planar dielectric layer.” Pet. 44 (emphasis omitted) (citing Ex. 1004, 1:28– 31; 8:5–8; Ex. 1002 ¶¶ 142–144). Petitioner states that Figure 11B of Jaso includes “trenches (15a-d) [which] correspond to trenches for interconnects 45. Patent Owner does not address the trenches taught by Jaso, much less teachings of Jaso in combination with the teachings of Stine1998. See PO Resp. 33–36, 55–61. Accordingly, we are not persuaded that the combination of Jaso and Stine1998 fails to teach “trenches.”” slip op. at 29

  Patent outcomesUS 6,232,231 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,232,231
• Polycom, Inc. v. Directpacket Research, Inc.All claims unpatentable
  PTAB · Jan 11, 2021 · IPR2019-01235 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–23 are unpatentable as obvious under §103 over Krtolica and Rosenberg, with Eisenberg and DSDP added for certain dependent-claim grounds.

  RulingsFinal written decision

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

    “with the claim language itself, we agree with Petitioner that the ordinary meaning of “multimedia communication data” is data related to multimedia communication, and that this may comprise signaling data required for communicating multimedia between two or more locations. We see nothing in the claim language that requires that data must include the underlying media content itself (such as video or voice signals) in order to qualify as “multimedia communication data.” We also are not persuaded by Patent Owner’s argument that Petitioner’s construction of “multimedia” “means no media” (PO Supp. 1 (emphasis omitted)), because Petitioner is not arguing that media content cannot be present, but instead is simply arguing that media content is one type of “multimedia communication data,” with” slip op. at 12

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

    “each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (For an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Further, an assertion of obviousness “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.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (A finding of a motivation to combine “must be supported by a ‘reasoned explanation.’” (citation omitted)). D. Ground 1: Obviousness over Krtolica and Rosenberg — Claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 Petitioner contends that claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 are unpatentable as obvious under 35 U.S.C. § 103(a) over Krtolica and Rosenberg. Pet. 30–70. For the reasons that follow, Petitioner has demonstrated by a preponderance of the evidence that claims 1, 3–5, 9–11, 13, 14, 16, 17, 22, and 23 are unpatentable on this ground. 1. Overview of Krtolica Krtolica is directed to a system that sends information data packets” slip op. at 18

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “H. Objective Indicia of Nonobviousness Patent Owner also presents arguments and evidence of objective indicia or secondary considerations of nonobviousness. PO Resp. 51–57; PO Sur-Reply 19–22. Objective indicia of nonobviousness may include long-felt but unsolved need, failure of others, unexpected results, commercial success, copying, licensing, industry praise, and expert skepticism. Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012). “[O]bjective indicia ‘may often be the most probative and cogent evidence of nonobviousness in the record,’” and “help turn back the clock and place the claims in the context that led to their invention.” Id. at 1378 (quoting Ortho–McNeil Pharm. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008)). Evidence of objective indicia of nonobviousness “must always when present be considered en route to a determination of obviousness.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012); see also Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc). Objective indicia of nonobviousness are “only relevant to the obviousness inquiry ‘if there is a nexus between the claimed invention and the [objective indicia of nonobviousness].’” In re Affinity Labs of Tex., LLC, 856 F.3d 883, 901 (Fed. Cir. 2017) (quoting Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). For objective indicia of nonobviousness to be accorded substantial weight, their proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). As the Federal Circuit has explained, “a patentee is entitled to a rebuttable presumption of nexus between the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). That is, presuming nexus is appropriate “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). On the other hand, the patentee is not entitled to a presumption of nexus if the patented invention is only a component of a commercially successful machine or process. Id. Once “the patentee has presented a prima facie case of nexus, the burden of coming forward with evidence in rebuttal shifts to the challenger . . . to adduce evidence to show that the commercial success was due to extraneous factors other than the patented invention.” Demaco, 851 F.2d at 1392–93. However, “[a] finding that a presumption of nexus is inappropriate” slip op. at 82

  • ExcludeMotion to exclude, grantedGranted

    “highly confidential source for the STNS system, and seeks to seal that identification. Paper 29, 1. The Motion is unopposed. We have reviewed the redacted portion of the document, as well as the explanations of the confidential nature of the materials for which sealing is sought, as discussed in the Motion. We grant the Motion and the associated request to enter the Protective Order.” slip op. at 92

  Patent outcomesUS 8,560,828 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,560,828
• Apple Inc. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Oct 15, 2020 · IPR2019-00918 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 3–6, and 8–10 are unpatentable under § 103 over Charbonnier, RFC793, SMS Specification, and DECT Speakerphone; claims 4 and 9 also over Lee.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person having such skill “would have had a Bachelor’s degree in computer science or a comparable field of study, plus approximately two to three years of professional experience with cellular phone and IP networks, or other relevant industry experience. Additional graduate education could substitute for professional experience and significant experience in the field could substitute for formal education.” Pet. 11 (citing Ex. 1002 ¶ 41). Patent Owner “does not offer a competing definition at this stage of the proceeding.” PO Resp. 4. We determine that Petitioner’s description of the 9 Patent Owner does not put forth evidence it alleges tends to show secondary considerations of non-obviousness in its Patent Owner Response. level of ordinary skill in the art is supported by the record. Therefore, we adopt Petitioner’s proposal.” slip op. at 10

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

    “We do not adopt Petitioner’s construction. First, for reasons discussed below, Petitioner’s construction does not find sufficient support. Second, Petitioner’s construction does not resolve the controversy between the parties. We also do not adopt Patent Owner’s construction, that the “terminal” must be capable of short-range wireless communications, such as Bluetooth communications, that may be employed by computers, for the reasons discussed below.” slip op. at 13

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

    “Petitioner argues it would have been obvious to modify Charbonnier’s DECT base 7 to include a digital speakerphone as taught by DECT Speakerphone. Pet. 67. We find persuasive Petitioner’s rationale for the combination because both Charbonnier and DECT Speakerphone relate to DECT phones, and DECT Speakerphones provides several express motivations to combine by teaching digital speakerphones in DECT base stations. Id. at 66–67 (citing Ex. 1029, 1). Furthermore, DECT Speakerphone provides several reasons to include a digital speakerphone, including: (1) making and receiving calls from the base unit even when the handset is elsewhere, (2) hand free for more convenience, and (3) conference calling where more than one person can listen or speak. Id. (citing Ex. 1029, 1). We are persuaded by Petitioner’s argument that a person of ordinary skill in the art would have had a reasonable expectation of success in adding a speakerphone to Charbonnier’s DECT base station 7 based on, for example, DECT Speakerphone and other documents showing Samsung and other phones with similar DECT speakerphones in the base station. Id. at 67 (citing Ex. 1046, Exhibit A). Furthermore, we find persuasive Petitioner’s argument that DECT” slip op. at 30

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “For the reasons above, we are persuaded that Petitioner has shown by a preponderance of the evidence that Charbonnier, RFC793, SMS Specification, and DECT Speakerphone teach the limitations of claims 1 and 6.” slip op. at 44

  Patent outcomesUS 8,369,298 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,369,298
• Apple Inc. v. Corephotonics Ltd.All claims unpatentable
  PTAB · Apr 6, 2020 · IPR2019-00030 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Ogino and Beich; claims 1–4 are also unpatentable over Ogino alone, but claim 5 is not shown unpatentable on that ground.

  RulingsFinal written decision

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

    “We construe claim terms to the extent necessary. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “supported by the cited evidence. We are persuaded, instead, that “the image plane and the sensor are taught by the ’568 patent to be coincident,” and “[t]hus, there is no ambiguity in the ’568 patent about where the image plane is located or that TTL is measured to the image plane,” as Petitioner argues in its Reply. Reply 13 (Ex. 1026 ¶ 5; Ex. 1003, 33–35). Patent Owner acknowledges as much, noting that “as these terms[, i.e., the image plane and the sensor,] are used in the specification of the ’568 patent, the image plane is the surface of the sensor.” Sur-reply 2. We find that the ’568 patent discloses that the electronic sensor corresponds to or is coincident with the image plane and thus, the TTL could be measured with respect to either the sensor (electronic or film) or the image plane and reach the same result. Based upon the complete trial record, we maintain our construction of TTL from the ’1140IPR and the ’1146IPR3, which encompasses “the length of the optical axis spacing between the object-side surface of the first lens element and one of: an electronic sensor, film, and an image plane corresponding to either the 3 The panel authorized, and the parties filed, supplemental briefing to address this construction before it was adopted in both the related ’1140IPR and ’1146IPR, and that the parties responded to this construction in the hearing in this proceeding (with citations to the transcript). See, e.g., Paper 28 (PO’s demonstratives), 5; ’1140IPR, Paper 31; ’1146IPR, Paper 30; see also Trial Practice Guide Update 13–14 (July 2019), https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-update3.pdf; Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018) (finding that the Board did not violate the Administrative Procedure Act when it adopted its own claim construction in the final decision because the parties had notice and an opportunity to be heard). electronic sensor or a film sensor.” See ’1140IPR, Paper 37, 18; ’1146IPR, Paper 37, 14.” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Even assuming, arguendo, we were to credit Patent Owner’s expert testimony as to the disjointed nature of optical lens assembly design experience and manufacturing experience, we are not persuaded that a person of ordinary skill in the art at the time of the invention having only design experience would be so completely unaware of manufacturing considerations so as to preclude taking into account the very general guidance of Beich. See Reply 24–25. Beich teaches that a lens designer should have a basic understanding of the manufacturing process, which would include the limits for fabricating lens elements in an optical lens assembly. Ex. 1020, 7. We are persuaded that the information conveyed in Beich would have been understood, known, and applied by the ordinarily skilled lens designer (see Reply 4–6 (citing Ex. 2014, 4, 9, 11, Fig. 9.2)), irrespective of whether such person had manufacturing experience. Stated differently, although an ordinarily skilled designer of an optical lens assembly may not have had any real-world manufacturing experience, we are persuaded that such person would still have taken into account manufacturing concerns. Although there are differences between the definitions proposed, our conclusions rendered in this decision do not turn on selecting a particular definition for the level of ordinary skill in the art, for the reasons discussed above. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’568 patent and the asserted prior art. We agree with Patent Owner’s proposal regarding the level of ordinary skill except for Patent Owner’s arguments about manufacturing discussed above. As such, we adopt Patent Owner’s proposal.” slip op. at 18

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

    “As noted by Petitioner, The Handbook of Optics discloses that “[i]n the case of both negative and positive lens elements, it is good policy to avoid element forms wherein the center-to-edge thickness ratio exceeds three for positive elements.” Ex. 1019 § 34.15. Thus, we are persuaded by Petitioner’s fourth reason that the cited disclosure provides evidence that the ordinarily skilled artisan would have selected a particular diameter for the first lens element disclosed in Ogino in conformance with manufacturing considerations known to the ordinarily skilled artisan. We are further persuaded that, from the selection of that particular diameter, a Z1 value for the object-side surface and a Z2 value for image-side surface at the minimum usable edge of the first lens element can be obtained and, in turn, circumferential edge thickness L1e can be obtained. Pet. 35–36 (citing Ex. 1003, 42; Ex. 1005, 15:1–3). We are further persuaded by Petitioner’s supporting reasoning that “a POSITA would understand the manufacturing benefits of maintaining the lowest possible center-to-edge thickness ratio since ‘the preferred shape of a molded element is one that has fairly uniform thickness.’” Id. at 42 (quoting Ex. 1018, 92) (citing Ex. 1003, 48). Based on our review of the complete record, we find that the record supports Petitioner’s contentions concerning claim 1. Petitioner demonstrates by a preponderance of the evidence that claim 1 is unpatentable as obvious over Ogino.” slip op. at 37

  Patent outcomesUS 9,857,568 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,857,568
• Apple Inc. v. Corephotonics Ltd.All claims unpatentable
  PTAB · Dec 3, 2019 · IPR2018-01140 · APJ Marc S Hoff · IPR · Final written decision

  Claims 1 and 13 are unpatentable as anticipated by Ogino; claims 14 and 15 are unpatentable as obvious over Ogino and Chen II.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “claims 1 and 13 of the ’032 Patent are anticipated by Ogino. Petitioner has also demonstrated, by a preponderance of the evidence, that claims 14 and 15 of the ’032 Patent are unpatentable over the combination of Ogino and Chen II. The chart below summarizes our conclusion. References Claims Claims Claims 35. Shown Not shown Challenged U.S.C. Unpatent- Unpatentable able Ogino 1 and 13 1 and 13 § 102 Ogino, Chen 14 and 15 14 and 15 § 103 II 1 and 13-15” slip op. at 40

  • Skill levelSkill level board ownDecided for petitioner

    “that Ogino and Chen II disclose substantially different lens systems. PO Resp. 36. As Petitioner points out, both Ogino and Chen II describe mobile phone camera systems with all lenses being aspheric; a first lens with a meniscus shape with positive refractive power; a second lens with negative refractive power; a third lens with a meniscus shape and with a negative refractive power; a fourth lens with a meniscus shape with positive refractive power; and a fifth lens with a meniscus shape and with a negative refractive power. Pet. Reply 22; Pet. 41–44. We agree with Petitioner that such a skilled artisan, possessing an applicable college degree, approximately three years experience in designing multi-lens optical systems, “experience in analyzing, tolerancing, adjusting, and optimizing multilens systems, and experience with lens design software such as CodeV, Oslo, or Zemax,” would have the appropriate knowledge to perform routine modifications to a lens design. Pet. Reply 24; Pet. 7; PO Resp. 12. Patent Owner’s expert Dr. Moore testified that such a skilled artisan “would be able to use the computer program [i.e. CodeV or Zemax] to optimize lens designs.” Pet. Reply 24; Ex. 1025, 29:25–30:9. Dr. Moore testified that the skilled artisan would “tell the [lens design] program that you want to vary certain parameters of a lens . . . . And then the program, through a fairly complicated algorithm, then actually goes through and varies them and determines how to make a better lens. You determine as a lens designer what you’re trying to improve.” Ex. 1025, 28:13–23.” slip op. at 38

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “We are unpersuaded by Patent Owner’s argument that the skilled artisan would have understood that third, fourth, and fifth lenses also contribute to vignetting in Ogino. PO Resp. 38. We credit Petitioner’s argument that Dr. Moore’s conclusion regarding vignetting in the third, fourth, and fifth lenses is unreliable because it is based on assumptions not specified in Ogino. Pet. Reply 16; Ex. 1026 ¶ 11. For example, Ogino does not provide lens diameters or vignetting apertures for the lens assembly of Example 6 that would vignette the light beams on the third, fourth or fifth lens elements. Pet. Reply 17; Ex. 1026 ¶ 11. Additionally, Dr. Sasián testifies that vignetting is a result of the second lens. Pet. Reply 17–18; Pet. 54; Ex. 1003, 59.” slip op. at 36

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

    “Effective Focal Length (EFL) Petitioner asserts that while the specification of the ’032 Patent does not offer an express definition for the term “effective focal length,” “its meaning is well known in the art, as exemplified in Li (Ex. 1007), which states that “[t]he focal length of a lens assembly [is] also referred to as the effective focal length [(]EFL).” Pet. 9–10 (internal parentheses omitted); Ex. 1007, 2:59–61. Patent Owner, in response, does not dispute Petitioner’s construction of “effective focal length,” stating that the Petition does not turn on the construction of the term. PO Resp. 20. Having reviewed the evidence of record, we agree with Petitioner that Li supports construing the term “effective focal length” as “the focal length of a lens assembly.” We adopt this construction.” slip op. at 10

  Patent outcomesUS 9,402,032 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,402,032
• Zscaler, Inc. v. Symantec CorporationAll claims unpatentable
  PTAB · Nov 13, 2019 · IPR2018-00920 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious over Nortel, Nortel and Stone, Alles and Lin, or Alles, Lin, and Stone.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Jakobsson’s testimony, which is supported by evidence cited above, and determine the Petition and supporting evidence show that a person of ordinary skill in the art would have understood Nortel’s processing rules comprise software instructions to perform specific functions, and that a person of ordinary skill would have considered software instructions to perform specific functions to be applications. We rely on Nortel’s teaching of a processor group configured with processing rules to provide service policies such as security functions, and Dr. Jakobsson’s testimony and his supporting evidence that a person of ordinary skill in the art would have understood that security functions are provided by software applications, to determine that Nortel and the knowledge of a person of ordinary skill in the art teaches “a plurality of application processing hardware modules, each configured with an application for processing data packets” as recited in claim 1 and the corresponding limitation of 13. Ex. 1004, 3:5–9, 23:1–29, Fig. 6A; Ex. 1003 ¶¶ 80–85 (citing Ex. 1004, 3:5–9, 9:12–14, 9:16–19, 14:28–15:2, 15:4–6, 23:3–6, Fig. 6A; Ex. 1012, 4, 6; Ex. 1013, 4).” slip op. at 12

  • BurdenFwd all claims unpatentableUnpatentable

    “For the reasons given above, we determine that the Petition and supporting evidence show, by a preponderance of the evidence, that Nortel in view of the knowledge of a person of ordinary skill in the art would have rendered claims 1 and 13 obvious.” slip op. at 20

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

    “applications includes parallel transmitting of the identified data packets to each of the identified application processor modules.” Claim 14 recites a similar limitation. Petitioner, relying on testimony of Dr. Jakobsson, contends the cited art renders these limitations obvious because it would have been obvious to a person of ordinary skill in the art to apply Stone’s teaching of parallel transmission to Nortel’s ISN, such that the switch fabric transmits data packets in parallel to the packet service cards. Pet. 37–38 (citing Ex. 1004, 21:1–5, 22:31–32, 23:1–29, Figs. 4, 6A; Ex. 1005, 12:58– 13:18, Fig. 4; Ex. 1003 ¶¶ 160–162), 42. Petitioner, relying on testimony of Dr. Jakobsson, contends a person of ordinary skill in the art would have applied Stone’s parallel data transfer to the switch fabric of Nortel for the benefit of increasing the speed of transmitting a subscriber’s data packets to the appropriate service cards. Pet. 43–46 (citing Ex. 1005, 11:59–61; Ex. 1003 ¶¶ 192–199). Dr. Jakobsson testifies that a person of ordinary skill in the art would have been motivated to transfer data packets in parallel between Nortel’s switch fabric and packet service cards in order to increase the operating speed and efficiency of the system. Ex. 1003 ¶¶ 190–192 (citing Ex. 1012, 8; Ex. 1005, 11:59–61). We credit Dr. Jakobsson’s testimony and determine the Petition and supporting evidence articulates a reason with a rational underpinning that a person of ordinary skill in the art would have applied Stone’s teaching of transferring data packets in parallel, to transfer data packets in parallel between Nortel’s switch fabric and packet service cards, for the benefit of increasing speed as taught by Stone. We determine that the Petition and supporting evidence show by a preponderance of the evidence that the combination of Nortel and Stone would have rendered claims 2 and 14 obvious.” slip op. at 24

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

    “For purposes of this decision, we determine no terms need an explicit construction to resolve a controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy). We address claim interpretation to the extent necessary within the unpatentability analysis.” slip op. at 7

  Patent outcomesUS 9,525,696 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,525,696
• Trustid, Inc. v. Next Caller, Inc.All claims unpatentable
  PTAB · Oct 24, 2019 · IPR2018-01066 · APJ Jean R Homere · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious under § 103(a) over Bushnell, Bala, and Pickering.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and citation omitted). In that regard, Petitioner’s Declarant, Leonard J. Forys, Ph.D., testifies that a person with ordinary skill in the art at the time of the invention would have had a B.S. degree in Computer Science, or Electrical Engineering, or similar engineering discipline with an emphasis in communications and at least three years of experience designing and/or developing contact center solutions, including network interconnection, computer-telephony integration, and customer and agent interfaces. Ex. 1032 ¶¶ 56–58. Further, Petitioner contends that the level of ordinary skill could have varied somewhat so as to allow industry experience and education to compensate for each other. Pet. 8. Patent Owner’s response does not address Petitioner’s proposed assessment of the level of the ordinary skill in the art. On this record, we observe that Petitioner’s undisputed assessment of a person of ordinary skill in the art appears to be consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt the Petitioner’s proposed level of ordinary skill in the art.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “a. Centralized Caller profile System Patent Owner argues “Centralized Caller Profile System,” recited in the preamble of independent claims 1 and 11, is limiting and refers to caller profiles in a central location accessible and revisable by multiple parties. PO Resp. 8–9. According to Patent Owner, unlike caller profiles traditionally stored at a single location, the caller profiles are stored at a centralized database accessible and updatable by the user and authorized third parties (e.g., user’s agent, service provider). Id. at 9–10 (citing Ex. 2005 ¶¶ 40–44). Accordingly, Patent Owner submits that, as acknowledged by Petitioner, “Centralized Caller Profile System” encompasses not only caller profiles located at a single location, but also that which is accessible and revisable by multiple parties. Id. at 10–11 (citing Ex. 2005 ¶¶ 38, 44–54, Ex. 2004, 17:2– 18:7, 18:9–13, 21:7–14). Patent Owner therefore argues that Petitioner’s contention that the preamble is not limiting for lack of antecedent basis, and relates merely to a location (e.g. centralized or on the cloud) is not persuasive because it overlooks the ’612 patent’s description that the “Centralized Caller Profile System” permits multiple parties to access the database. Id. at 11–12, Sur-Reply 2–4. In response, Petitioner reasserts that the preamble is not limiting because it does not provide antecedent basis for and does not breathe meaning into the claims. Pet. Reply 3, Pet. 25. According to Petitioner, because the proposed construction of the preamble is already recited in the claim, namely “the Cloud Database is maintained [(meaning ‘accessible and revisable’)]” by each of a service provider, user, and third party, the reading of the preamble into the claim is duplicative and thereby non-limiting. Pet. Reply 3. We agree with Petitioner insofar as it is undisputed by the parties that the claim, as a whole, requires the Centralized Caller Profile System that comprises the Cloud Database including contents, which are maintained (i.e., accessible and revisable) by each of a user, a service provider, and a third party. Consequently, it is immaterial whether the preamble, which recites similar limitation, is limiting or not.” slip op. at 7

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

    “We agree with Patent Owner that, consistent with the cited disclosure of the ’612 patent, a POSITA would have understood that maintaining the “Cloud Database” relates to updating the “Content” thereof. PO Resp. 12– 13. As correctly noted by Patent Owner, the disclosure of the ’612 patent discusses in great detail updating the “Content” of the Cloud Database in connection with maintaining the Database, whereas Petitioner has not provided any references in the ’612 patent to support that maintaining the “Cloud Database” pertains also to updating the software and hardware thereof. Id., Sur-Reply 5–6. Accordingly, we construe “the Cloud Database is maintained” as being limited to updating or revising the “Content” of the caller information (e.g., profile or billing info) in the “Cloud Database”.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “5. Obviousness Analysis Petitioner provides explanations to account for all of the claim limitations required by claims 1–20, and reasons combining the teachings of Bushnell, Pickering, and Bala, citing Dr. Forys’s Declaration for support. Pet. 25–74, Ex. 1032. We begin our analysis with claim 1. We have reviewed the Petition, Patent Owner Response, Petitioner’s Reply, and Patent Owner’s Sur-Reply as well as the relevant evidence discussed in those papers and other record papers. We are persuaded that the record before us establishes Petitioner’s contentions for claims 1–20 by a preponderance of the evidence.” slip op. at 20

  Patent outcomesUS 9,143,612 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,143,612

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.