- ROKU, Inc. v. Flexiworld Technologies, Inc.Some claims unpatentablePTAB · Oct 21, 2022 · IPR2021-00714 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–10, 12, and 14 are unpatentable; claims 15–20 were not shown unpatentable, principally because the prior art did not teach required claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree in computer science, computer engineering, or a similar field and two years of experience developing software. The POSA would be familiar with well-known networking technologies. . . . This description is approximate and additional experience could make up for less education and vice versa. Pet. 10–11 (citing Ex. 1002 ¶ 10). Patent Owner does not address the level of ordinary skill. See generally PO Resp. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’064 patent and prior art of record. purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition states that no terms require express construction. Pet. 10. Patent Owner does not provide any express constructions or argue that any terms require construction. PO Resp. 10. Petitioner and Patent Owner also note that there were claim construction disputes in the District Court (Pet. 10, PO Resp. 10) and that the District Court has now issued a claim construction order (Prelim. Resp. 7; Ex. 2010). We agree that no claim term needs to be construed. See 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.” (internal quotation omitted)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableDecided for patent owner
“The mere listing of features that are present in Ortiz is not a reason why a person of skill in the art would have combined Ortiz with Ikonen. An obviousness determination must include “some articulated reasoning with some rational underpinning to support the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)). Thus, for this additional reason Petitioner has not shown how the combination of Ikonen, Beck, and Ortiz, or the combination of Ikonen, Beck, Ortiz, and Garfunkel, teaches all of the limitations of these claims.” slip op. at 16
- Expert testimonyPetitioner expert creditedOther
“Petitioner’s declarant testimony that one of ordinary skill in the art “would consider the document data received by the interface box [in Yamaguchi] to be an ‘output data stream’ as claimed.” Ex. 1002 ¶ 216; see also Pet. 53. Petitioner’s declarant explains that this is based on the ’064 patent’s teaching of “using conventional wireless technologies such as Bluetooth and 802.11” for uploading the output data stream. Id. Further, the claim requires that the “output data stream correspond[] to at least part of digital content that includes . . . document content” and Patent Owner’s declarant admits that Yamaguchi teaches uploading a document. Thus, it is not clear that anything further is required by the claim. After our review of Petitioner’s assertions with respect to this claim limitation, we determine that Petitioner’s position is supported by a preponderance of the evidence.” slip op. at 28
Patent outcomesUS 8,989,064 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,989,064 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Unification Technologies LLCAll claims unpatentablePTAB · Jul 8, 2022 · IPR2021-00343 · APJ Justin T Arbes · IPR · Final written decision
Claims 15–21 and 26 were held unpatentable as obvious over Suda and, for claims 21 and 26, Suda with SwSTE’05; the Board could not reach the merits for claims 27–30.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner states that it assumes an effective filing date of December 6, 2006, for the challenged claims of the ’406 patent, and argues that a person of ordinary skill in the art at that time would have had “a Bachelor of Science degree in computer science or electrical engineering and at least two years of experience in the design, development, implementation, or management of solid-state memory devices.” Pet. 4–5 (citing Ex. 1004 ¶ 55). According to Petitioner, an ordinarily skilled artisan also art would have rendered the invention obvious to a skilled artisan necessarily depends on such artisan’s knowledge.”); Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“[T]he knowledge of [an ordinarily skilled] artisan is part of the store of public knowledge that must be consulted when considering whether a claimed invention would have been obvious.”); Dow Jones & Co. v. Ablaise Ltd., 606 F.3d 1338, 1349 (Fed. Cir. 2010) (“[The obviousness] analysis requires an assessment of the . . . ‘background knowledge possessed by a person having ordinary skill in the art.’” (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007))). memory erases data, how flash memory programs or writes data, how memory is used in a cache hierarchy, relative speeds of flash memory compared to other memory, how garbage collection is used with flash memory, how to use wear leveling to combat endurance limits of flash memory, how the [Flash Translation Layer (“FTL”)] works, and industry standards affecting flash memory including the [Advance Technology Attachment (“ATA”)] standard. Id. (citing Ex. 1004 ¶¶ 55–56). Patent Owner applies the same definition of the level of ordinary skill in the art. PO Resp. 17 (citing Ex. 2010 ¶¶ 47–52). Based on the full record developed during trial, including our review of the ’406 patent and the types of problems and solutions described in the ’406 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision. See, e.g., Ex. 1001, col. 1, ll. 25–59 (describing in the “Background of the Invention” section of the ’406 patent various write, read, and erase procedures for solid-state storage devices).” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“After the Petition was filed, the district court issued a Claim Construction Order construing various terms of the ’406 patent: Claim Term Construction An identifier that can be associated with a physical address on a storage “logical identifier” device for identifying data stored at the physical address “logical identifier [that/in Indefinite the index] is empty” Not indefinite; not subject to §112(f); “marking module” plain and ordinary meaning Not indefinite; not subject to §112(f); “storage module” plain and ordinary meaning Not indefinite; not subject to §112(f); “index module” plain and ordinary meaning Ex. 2006, 2–3. We address three claim interpretation issues. First, in the Decision on Institution, based on the record at the time, we agreed with and adopted the district court’s construction of “logical identifier.” Dec. on Inst. 11–12. The parties agree with that construction. See PO Resp. 18; Reply 4. Based on the district court.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“Second, claim 27 recites “a request receiver module configured to receive an indication comprising a logical identifier that is empty,” and claim 30 similarly recites “a request receiver module configured to receive an indication that a specified logical identifier is empty” and “a read request response module configured to return an indication that the logical identifier is empty” (emphasis added). The district court’s Claim Construction Order lists “[i]ndefinite” as the final construction for the phrase “logical identifier [that/in the index] is empty.” Ex. 2006, 2 (alteration in original). Petitioner asserted in the Petition that we should instead adopt Patent Owner’s original proposed construction from the district court case of “data identified by the [logical identifier] that does not need to be preserved,” but Petitioner did not provide any explanation for why such an interpretation is justified. Pet. 6–7 (alteration in original). In the Decision on Institution, based on the record at the time, we explained why we were “unable to interpret the ‘empty’ phrases in claims 27 and 30, and c[ould ]not ascertain the scope of the claims with reasonable certainty for purposes of assessing patentability.” Dec. on Inst. 12–14. For example, we noted that, given the interpretation of “logical identifier” above, a logical identifier is simply “information identifying something else” and “either exists or does not exist”; it cannot be considered “empty.” Id. at 13. We encouraged the parties, to the extent they disagreed with that determination, to “provide an explanation and cite evidence in support of the proposed interpretation in their papers during trial.” Id. at 14. Patent Owner argues that, based on our earlier determination, Petitioner has failed to prove that claims 27–30 are unpatentable. PO Resp. 22, 49, 53–54. Petitioner does not address claims 27–30 in its Reply. the Decision on Institution or the district court’s conclusion that the claim phrases are indefinite. Based on the full trial record, we maintain our earlier determination and incorporate the previous analysis herein. See Dec. on Inst. 12–14.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Third, with respect to the “module” terms listed above, neither party argues that the terms are means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph, and the district court construed them not to be means-plus-function limitations. See PO Resp. 18; Reply 4; Ex. 2006, 2–3. We presume that the terms are not means-plus-function limitations because they do not use the word “means” and find no basis on the record before us to conclude otherwise. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (“Because invoking § 112 ¶ 6 is typically a choice left to the claim drafter, we presume at the first step of the analysis that a claim limitation is subject to § 112 ¶ 6 when the claim language includes the term ‘means.’ . . . The inverse is also true—we presume that a claim limitation is not drafted in means-plus-function format in the absence of the term ‘means.’ . . . [T]his presumption is rebuttable [and] can be overcome if a challenger demonstrates that the claim term ‘fails to recite sufficiently definite structure.’”) (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015)).” slip op. at 12
Patent outcomesUS 8,533,406 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,533,406 - Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationSome claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01494 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–8, 10–12, 21–24, and 26 are unpatentable as obvious over Li and Tiedemann, with or without ETSI1997; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“In its Response, InterDigital does not contest Dr. Acampora’s articulation of the level of ordinary skill, except that “InterDigital applies Petitioners’ alleged baseline level of ordinary skill without the phrase ‘at least.’” PO Resp. 3. We agree with InterDigital that the term at least arguably “creates unnecessary ambiguity.” Id. (citing Inst. Dec. 9–10). But we find that Petitioner’s articulation, after deleting the phrase at least, is reasonable in light of the subject matter involved in the ’449 patent, and we adopt it for our decision.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“To the extent that text was copied and pasted in either direction between the Petition and Dr. Acampora’s declaration, we disagree that this mere fact indicates that we should give Dr. Acampora’s testimony less weight. Patent Owner does not argue that Dr. Acampora was uninvolved with the preparation of his declaration, which he signed, under penalty of perjury, and presented as reflecting his own opinions. That typographical errors may, for example, have been propagated from his declaration to the Petition is by itself of little consequence. The cited Wowza decision does not suggest otherwise. In that case, the Board assigned little weight to the expert declaration, not because of its similarity to the petition, but because the declaration did not disclose the underlying facts or data on which its opinion testimony was based. See IPR2013-00054, Paper 16 at 4–5. As Petitioner correctly argues in its Reply, InterDigital does not “identif[y] where Dr. Acampora fails to provide sufficient facts underlying his opinions.” Pet. Reply 1 n.1.” slip op. at 20
- Prior constructionPrior construction adoptedDecided for petitioner
“1. “channel quality” InterDigital states that the court in the parallel district court litigation adopted the parties’ agreed construction of “channel quality” as meaning “a value/values quantifying how efficiently downlink resources of a channel can communicate information.” PO Resp. 3–4 (citing Ex. 2008, 1; Ex. 2009, 18). InterDigital contends that the ’449 patent suggests this construction, and that both sides’ experts agree with it. Id. at 4 (citing Ex. 1001, 1:36–61; Ex. 2001 ¶¶ 33–35; Ex. 2002, 21:14–22; Ex. 2007, 26:12–17). Because the meaning of this term is uncontested, and it is consistent with the evidence of record, we adopt the parties’ agreed construction. See 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 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“For the above reasons, we determine that Petitioner has persuasively shown that a channel quality of the plurality of downlink resources and the related term a first channel quality indication for the plurality of downlink resources mean “a channel quality value related to the ‘plurality of downlink resources’ as a whole.” Pet. 11–13. We also determine that Petitioner has persuasively shown that both alternatives 8 and 9 reflect embodiments of this term, which is consistent with the district court’s construction that provides “a mean or reference value related to the plurality” as examples of a channel quality value related to the plurality of downlink resources as a whole, explicitly referencing alternative 9 in its analysis. See Ex. 2009, 12– 13.” slip op. at 18
Patent outcomesUS 9,456,449 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,456,449 - Intel Corporation v. Pact XPP Schweiz AGSome claims unpatentablePTAB · Sep 8, 2021 · IPR2020-00539 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1, 5, 6, 8, 12, 14–24, 28, 30, and 33 are unpatentable under the Nicol and Nicol–Bhatia obviousness grounds; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“2. Reason to combine Nicol and Bhatia Intel argues that a person of ordinary skill in the art “would have been motivated to combine the complementary teachings of Nicol and Bhatia” for the following four reasons: (1) both references “are directed to interrelated thermal and power management aspects that are critical and ubiquitous in processor-based systems,” Pet. 52–53 (citing Ex. 1008, code (54); Ex. 1009, 1:6–8; Ex. 1001 ¶¶ 231–233); (2) the references “both describe a flexible multiprocessor architecture in which software residing in a controller is programmed to selectively control the power supply of each processor, notably by dynamically adjusting the processor’s clock frequency during operation,” Pet. 53–54 (citing Ex. 1008, 2:18–27, 3:13–18; Ex. 1009, 1:57– 59, 2:28–31, 3:23–28, 3:33–38, 12:26–37; Ex. 1001 ¶¶ 231–233); (3) since Nicol “does not discuss over-temperature protection,” which is “critical for high-performance systems such as Nicol’s multiprocessor system,” a person of ordinary skill in the art “would have been motivated to consult Bhatia, which discusses well-known techniques of providing over-temperature protection,” Pet. 54–55 (citing Ex. 1008, 3:9–20, 4:11–13; Ex. 1009, 2:18– 22, 3:33–46; Ex. 1001 ¶¶ 231–233); and (4) a person of ordinary skill in the art “would have been motivated to consult Bhatia [to implement] low activity states in Nicol’s system as . . . means to further minimize power consumption,” Pet. 55 (citing Ex. 1009, 12:58–64; Ex. 1001 ¶¶ 231–233). In its Response, PACT argues that Intel’s four arguments “amount to little more than a suggestion that Nicol and Bhatia manage aspects of a computer system and it would be beneficial to combine these aspects,” which, “without any showing of actual motivation is plainly insufficient,” and “evidences application of impermissible hindsight bias.” PO Resp. 43– 44 (citing Ex. 2027 ¶ 110; Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018)). PACT also argues that Intel “makes no attempt to explain how a system combining Nicol and Bhatia would function, likely due to the fact that managing a plurality of metrics to create an efficient processing system is extremely difficult.” PO Resp. 44 (citing Ex. 2027 ¶ 111). Citing Dr. Mangione-Smith’s testimony, Patent Owner contends that a person of ordinary skill in the art “might spend their entire career developing intricate systems for managing processor temperature and clock frequency among a plurality of processors, and [Intel] dismisses it as a mere triviality.” Id. at 44–45 (citing Ex. 2027 ¶ 111).” slip op. at 58
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). For a combination of known elements that are not explicitly found together in the prior art, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). A successful petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 418); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4) (2020).” slip op. at 16
Patent outcomesUS 9,552,047 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,552,047
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.