• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 15, 2016 · IPR2015-01222 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–11 and 13–15 are unpatentable as obvious over Strubbe and Rae; claims 12 and 16–20 were not shown unpatentable because the petition did not tie the connection-fee limitation to those references.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between American Securities and Petitioner 9 were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9. Third, we found ambiguous and unreliable statements made by a non- lawyer CEO during settlement negotiations covering “ongoing intellectual property disputes” (see Discovery Motion 1) failed to demonstrate that American Securities funded and controlled the instant proceeding. Discovery Order 9; see Exs. 2006, 2011.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “Similarly to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly recount statements made by Petitioner’s CEO during settlement discussions between Patent Owner and GTL. Mot. Exc. 2nd, 1–2.” slip op. at 12

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

    “We agree with Petitioner. One portion of the Specification cited by Patent Owner details: “[t]he list of items displayed for the inmate may be selected based upon data stored in the inmate's profile on JAMS database 115.” Ex. 1001, 3:61–63 (emphasis added). The conditional nature of the selection need not be incorporated into claim 8. In addition, the instant claim language would also read on a display of all items, with indications of 18 availability with each item for the inmate, such that all items would be displayed instead of Patent Owner’s truncated listing. As such, we conclude that Patent Owner’s proposed construction of the language of claim 8 is overly narrow and is not adopted in the analysis that follows.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Leonard J. Forys, testifies that one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 2–3 years of academic or industry experience in a call center technology particularly computer telephony integration and in telephone networks in general.” Ex. 1003 ¶ 30; see Pet. 10 (citing Ex. 1003 ¶¶ 29–30). Patent Owner’s declarant, Mr. Ivan Zatkovich, proposes that Petitioner’s definition be adopted. Ex. 2012 ¶ 31. As such, we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 21

  Patent outcomesUS 8,750,486 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,750,486
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01220 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–5 and 12–17 are unpatentable as obvious; claims 7, 9–11, and 18–26 were not shown unpatentable on the asserted combinations.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Thus, Patent Owner has not introduced evidence reasonably bringing into question Petitioner’s identification of the real party-in-interest in this proceeding. Accordingly, the evidence of record does not support a determination that American Securities had a role in funding or controlling this proceeding, or could have exercised control over this proceeding. 11 For these reasons, we determine that a preponderance of the evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. As such, we determine that Petitioner’s real party-in-interest identification at the time of filing the Petition remains valid.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “For these additional reasons, we determine that, even without excluding Exhibits 2006 and 2011, the preponderance of evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. Accordingly, Petitioner’s Second Motion to Exclude Exhibits 2006 and 2011 is dismissed as moot.” slip op. at 15

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

    “construed also undermine Petitioner’s position. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). On the other hand, a preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. The only limitations in the body of independent claim 22—the two biometric sensors—are not structurally complete in themselves. Rather, the telephone handset is required to describe a structurally complete invention that includes two biometric sensors. Without the telephone handset as an element, the claim merely recites two unconnected biometric sensors without any structure—a structurally incomplete invention. Furthermore, the telephone handset recited in the preamble does not duplicate the biosensor limitations in the body of the claim. Thus, we conclude that the telephone handset is essential structure and is necessary to give life, meaning, and vitality to the claim. This weighs toward a determination that independent claim 22 requires a telephone handset. See Catalina Mktg. Int’l, 389 F.3d at 808–09.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner, however, does not acknowledge that both Dr. Beigi and Dr. Caloyannides include electrical engineering as a field of study in the respective level of ordinary skill. Thus, we do not agree with Patent Owner’s statement that Dr. Beigi’s proposed “academic requirements do not provide this background. See Ex. 1003 ¶ 34 (Dr. Beigi opining that “one of ordinary skill in the art (a “POSA”) would have a Bachelor of Science (B.S.) degree in electrical engineering, computer science, or an equivalent or related field”). Because both experts specify electrical engineering as an academic field of study but only Dr. Beigi specifies computer science, we understand the disagreement of the parties to be whether computer science is a relevant academic field of study. We do not agree with Patent Owner’s contention that “bachelor’s level degree in electrical engineering or physics is necessary to understand both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric systems.” See PO Resp. 7. Contrary to Patent Owner’s contention, the invention as claimed recites elements and functions using a high-level of abstraction with little, if any, technical detail regarding “the data/network communication aspects of the claimed invention.” For example, independent claims 1 and 12 recite methods that include broad functional steps of authorizing, continuously monitoring, verifying, and monitoring a biometric training with 30 little, if any, technical detail. Similarly, the call processing system recited in independent claim 13 and the biometric telephone handset recited in independent claim 22 recite elements that perform broad functions with little, if any, technical detail. Thus, the plain language of the claims undermines Patent Owner’s contention that an understanding of “both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric system” necessitate an electrical engineering or physics academic degree.” slip op. at 30

  Patent outcomesUS 7,494,061 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,494,061
• Institut Straumann AG / Dental Wings Inc. v. Sirona Dental Systems GmbHSome claims unpatentable
  PTAB · Nov 15, 2016 · IPR2015-01190 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–8 were held unpatentable as obvious over Bannuscher and Truppe; claims 9–10 were not shown unpatentable; the motion to amend was denied.

  RulingsFinal written decision

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

    “interpretation of the language used in claim 1 and the additional limitations of dependent claims 9 and 10. Patent Owner’s proposed construction also impermissibly reads limitations from the preferred embodiment of Figure 5 into claim 1. Patent Owner would limit the pilot hole location exclusively to a position directly over the implant position and require the drill bit to pass through the pilot hole while drilling a bore hole into the patient’s jaw. The language recited in claim 1, in the context of the ’006 specification, does not so-limit the “determinating a pilot hole” step. First, Patent Owner fails to consider the present participle form “determinating”5 at the beginning of the recited method step at issue. As a result, Patent Owner conflates the recited device production step with a specific process for drilling a bore hole into a patient’s jaw during tooth implant surgery. PO Resp. 14–15. For example, Patent Owner relies on Dr. Erickson’s Declaration testimony (and Dr. Benjamin’s deposition testimony) for the proposition that “pilot hole” is a term of art referring to “an initial hole through which a pilot drill passes during an operation.” Ex. 2002 ¶ 37 (cited at PO Resp. 16–17); see also PO Resp. 16–17 (citing Ex. 2023, 24:3– 22, 25:18–27:2, 52:2–9). The ’006 patent does not describe or reference any such “pilot drill” or “initial hole” being made during a tooth implant operation. Regardless, the claim limitation at issue is a step in a method of producing a drill template. It recites defining a pilot hole in a drill template with reference to the surfaces of neighboring teeth, nothing more. The function of actually passing a drill through a pilot hole in a drill template” slip op. at 11

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

    “Petitioner argues that the term “pseudo-x-ray picture” is not a term that has a commonly understood meaning to a POSA. Pet. 19 (citing Ex. 1002 ¶ 45 [47]). Patent Owner does not comment on the construction of “pseudo-x-ray picture.” PO Resp. 15–19. Having reviewed the complete record, we adopt Petitioner’s argument and evidence in support of Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture.” Therefore, we adopt Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture” as “any representation of measured data records of the three-dimensional optical measuring that can be superimposed on an x-ray image.” Pet. 19 (citing Ex. 1002 ¶ 49).” slip op. at 17

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

    “stylus is used to penetrate the surface of the gum repeatedly to measure the structure of the jaw bone displayed in Figure 25. PO Resp. 30–31 (citing Ex. 1007, 24:53–65 (“[S]tylus member 52 is provided with a sharp stylus 574 (FIG. 1) having a length sufficient[ly] long to penetrate gum tissue and contact the bone surface. . . . [P]ractitioner repeats the procedure of piercing the gum tissue in a region about the desired implantation site and taking point data until enough data has been collected . . . to map . . . the entire surface of bone 558 [Fig. 25] about the implantation site.”)). We agree with Patent Owner and find that the use of a sharp stylus to pierce the gum and take multiple data points via contact digitization of the jaw bone beneath the skin surface is not a 3-D optical measuring of the visible surfaces of a patient’s jaw.” slip op. at 21

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

    “would have been motivated to combine their teachings with respect to correlating X-ray imaging data of the jaw and 3-D surface data of the jaw and teeth. Reply 22–23 (citing Ex. 1002 ¶¶ 89, 92; Ex. 1008, 1:10–11 (“precise planning of the surgical operation is necessary”); Ex. 1010, 5:19– 25 (“it is possible to carry out the entire implantological, treatment and operation planning on a scientific basis . . . to implement holistic planning results in a precisely clinical manner”)). More particularly, Bannuscher discloses the desire to obtain “all the necessary [clinical] parameters” relevant to pre-surgical implant planning, which can be “combined together” (“correlated” in the language of claim 1) using planning simulation software, for transfer to a drill template. Ex. 1010, 5:44–6:13, 6:24–40, 7:38–8:4. As Dr. Erickson testified, it would have been desirable for a POSA to have as much diagnostic information as possible when planning for dental implant surgery. Ex. 1029, 31:12–21. Truppe discloses the advantage of correlating three-dimensional X-ray imaging data of the jaw and optical imaging data of the jaw and teeth, using simulation software, to obtain a “vivid” representation. Ex. 1008, 2:7–16, 3:19–28, 3:56–58; 4:1–5. Truppe, therefore, discloses a similar process to that disclosed in Bannuscher with respect to correlating 3-D X-ray imaging data and 3-D optical data representing the surfaces of the jaw and teeth, to generate the best possible representation of the patient’s jaw and teeth. Ex. 1002 ¶¶ 89–92. A POSA would have been motivated to use Truppe’s optical measurement system to generate 3-D surface data of the jaw and teeth for use in Bannuscher’s planning simulation software, in order to produce an enhanced image for determining the optimal bore hole and pilot hole in the drill template. Id.; Ex. 2023, 186:8–187:13 (“the optical imaging [of Truppe] would basically just enhance the diagnostic data [of Bannuscher]”). For example, a POSA would have optically measured the plaster model of the jaw and teeth referenced in Bannuscher and the patient’s actual jaw and teeth, as in Truppe, to produce a “vivid” image for correlation with the X-ray imaging data. Ex. 1002 ¶¶ 89, 92.20 Bannuscher’s determination of the optimized bore hole and corresponding pilot hole in the drill template would be based on the enhanced imagery generated from the correlated 3-D data sets. In short, we are persuaded that a POSA would have had reason to incorporate the teaching of Truppe’s enhanced 3-D optical measurement technique into Bannuscher’s method for correlating 3–D X-ray image and model geometry data sets, to determine an optimal bore hole and corresponding pilot hole in the drill template. For the reasons given above, we are persuaded that Petitioner has established a sufficient motivation for a POSA to combine the relevant teachings of Bannuscher and Truppe, with a reasonable expectation of success, by a preponderance of the evidence.” slip op. at 40

  Patent outcomesUS 6,319,006 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,319,006
• Google, Inc. v. Personal Audio LLCSome claims unpatentable
  PTAB · Sep 9, 2016 · IPR2015-00846 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–4, 9, and 13 are unpatentable as obvious over Chase and Loeb; claims 5–8, 14–17, 28, and 29 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification, and absent any special definition, we give claim terms their ordinary and customary meaning. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.” (internal quotation marks omitted)). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Institution Decision, we preliminarily interpreted the “processor for . . .” elements of claims 1 and 4 Dec. 7–8. After our Institution Decision, neither party identified any issues relating to our preliminary interpretation of the “processor for . . .,” and we discern no other reason to modify our interpretation. Accordingly, we maintain our interpretation of the “processor for . . .” for the purposes of this Final Written Decision. Our interpretation is consistent with the findings of the District Court in the Apple Litigation, which interpreted the “processor for . . .” elements as recited in claims 1, 4, 5, 6, and 14 under 35 U.S.C. § 112, ¶ 6. Because the parties raise issues regarding the scope of terms introduced in claims 5, 6, and 14, we also adopt the District Court’s interpretation of those terms and the reasoning supporting those interpretations. The claim interpretations upon which we rely in resolving disputed issues are summarized in the table below.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In our Institution Decision, we preliminarily interpreted the “processor for . . .” elements of claims 1 and 4 Dec. 7–8. After our Institution Decision, neither party identified any issues relating to our preliminary interpretation of the “processor for . . .,” and we discern no other reason to modify our interpretation. Accordingly, we maintain our interpretation of the “processor for . . .” for the purposes of this Final Written Decision. Our interpretation is consistent with the findings of the District Court in the Apple Litigation, which interpreted the “processor for . . .” elements as recited in claims 1, 4, 5, 6, and 14 under 35 U.S.C. § 112, ¶ 6. Because the parties raise issues regarding the scope of terms introduced in claims 5, 6, and 14, we also adopt the District Court’s interpretation of those terms and the reasoning supporting those interpretations. The claim interpretations upon which we rely in resolving disputed issues are summarized in the table below.” slip op. at 8

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

    “As stated by the Federal Circuit, “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “Rather, the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. Petitioner does not seek to combine the devices of Chase and Loeb physically. Rather, Petitioner argues that Loeb describes an example of a conventional interface used for controlling a device that plays music and contends that features of that interface would have been recognized as advantageous for Chase’s affiliate terminal. We are persuaded that a skilled artisan would have sought out examples of admittedly conventional interfaces to improve the functionality of Chase’s affiliate terminal. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We are not persuaded that Chase teaches away from discontinuing a currently playing song to advance to a next segment. According to Chase, “[t]he jock box is a physical representation of a DAC cart located in a studio. It provides 8 pushbuttons each with an LED and a small LCD display. Conceptually the jock box is a CD player with an automated changer.” Ex. 1007 ¶ 219. As explained above, and shown in Chase’s Figure 4, DAC 52 is a component separate from remote control terminal 54. The jock box is a “physical representation of a DAC cart.” Id. We read this to be a typographical error and view the jock box as a physical representation of a DAC card, e.g., DAC card 52. If “cart” is not a typographical error, it could refer to a “cart machine,” id. ¶ 36, which also is a component separate from remote control terminal 54 (Figure 4 shows line 56 communicating with a cart, not shown). In either case, Chase’s description of a jock box does not refer to the behavior of remote control terminal 54, which is described elsewhere as follows: The DJ may also request, through the remote control terminal, that the DAC 52 start play of the next segment queued in the DAC 52, stop play of the current segment, fast forward/rewind through the current segment or to a next/previous segment. The DJ may use up/down arrows on the remote control terminal to scroll through a play list displayed to the DJ and select, out of turn, a segment from the play list. Id. ¶ 186. This description is consistent with a device that can discontinue play of a current segment and skip to the next. Thus, Chase does not teach away from a player with that behavior.” slip op. at 24

  Patent outcomesUS 7,509,178 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,509,178
• Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00636 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–29 are unpatentable as obvious over the identified reference combinations; the contingent motion to amend substitute claims 30–43 is denied.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Accordingly, we accord Mr. Zatkovich’s testimony little weight. 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.”); Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (indicating the Board is entitled to weigh declaration testimony).” slip op. at 62

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “E. Level of Ordinary Skill In determining whether an invention would have been obvious at the” slip op. at 23

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

    “1. Terms Construed in Prior Proceedings Petitioner suggests that the terms “assisted user” and “hearing user,”” slip op. at 21

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

    “Engelke ’405, and Mukherji would have conveyed to one of ordinary skill in the art the limitations in claims 1–7 and 10–29, our inquiry continues because “[a] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “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.” Id. In other words, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 44

  Patent outcomesUS 8,917,822 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,917,822
• Par Pharmaceutical, Inc. / Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.All claims unpatentable
  PTAB · Jul 27, 2016 · IPR2015-01818 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–11 of the ’730 patent and claims 1–15 of the ’988 patent are unpatentable as obvious over the Advisory Committee Art, with claims 2 and 10 of the ’988 patent also obvious over that …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In view of the claims at issue here, we are not persuaded that the level of ordinary skill in the art is limited to the level of skill or interest of a pharmacist that dispenses FDA-approved drugs, such as one that “sits behind the counter at Walgreens.” Id. at 31:1–5. We adopt the level of ordinary skill in the art as described by Petitioner and its witness, Dr. Valuck, because it is consistent with the subject matter before us, the ’730 patent, and with prior art of record, such as Talk About Sleep (Ex.1033), Honigfeld (Ex. 1034), Elsayed (Ex. 1035), and Lilly (Ex. 1036). See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 12

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

    “Upon considering all of the evidence before us, we are not persuaded that the plain and ordinary meaning of “periodic” in the context of the ’730 patent limits “periodic reports” to those generated only at regular intervals, as Patent Owner contends. PO Resp. 28. Rather, the term includes reports generated at regular intervals and reports generated “now and again” or “intermittently,” without any particular regularity in time between events. Thus, we construe “periodic reports” as recited in the challenged claims to refer to reports that are generated at regular intervals or intermittently, i.e., now and again, including those not generated at regular intervals.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “For the reasons given above, we find Petitioner’s evidence sufficient to prove by a preponderance that Exhibits 1004–1006 were publicly accessible on the FDA’s website not later than July 1, 2001.” slip op. at 35

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

    “of the ’730 patent (and claims 1, 4–9, and 12–15 of the ’988 patent) would have been obvious over the ACA (Exhibits 1003–1006), because the ACA is a public disclosure of the proposed risk management system for Xyrem—the same system covered by the ’730 and ’988 patents. Pet. 18–38; Reply 1. Petitioner relies on the Declaration testimony of Dr. Valuck in support of its argument that a POSA would have had “ample” reason to combine the ACA documents because the documents were prepared for the Advisory Committee Meeting and “relate to the same restricted distribution program, which the meeting was convened to discuss.” Pet. 19 (citing Ex. 1007 ¶ 51). Petitioner asserts, in particular, the Preliminary Clinical Safety Review (Ex. 1004), Briefing Booklet (Ex. 1005), and Xyrem Video and Transcript (Ex. 1006) were “all distributed together for a single meeting before the FDA seeking approval for prescription Xyrem®,” and the FDA Advisory Committee Transcript and Slides (Ex. 1003) was “a public transcript of and presentation given at the meeting itself.” Id. at 19 (citing Ex. 1007 ¶ 51) (emphasis added). In addition, according to Petitioner, all four ACA documents “clearly relate to the same restricted distribution program, which the meeting was convened to discuss,” and are “all linked from a single [web] page.” Id. Patent Owner does not address directly the cited evidence in the context of motivation to combine the ACA. Patent Owner challenges the motivation of a POSA to confirm that a patient has read the Xyrem educational material prior to shipping the drug product to the patient (step 1.4), an issue we address below. PO Resp. 37, 49–59. We agree with Petitioner’s analysis and determine that a POSA would have had ample motivation to combine the ACA documents, which were prepared at the same time, relate to the same drug product and the same restricted drug distribution system, were discussed together at the same Xyrem Advisory Committee Meeting, and were made available via file links from a single FDA web page.” slip op. at 39

  Patent outcomesUS 7,668,730 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,668,730
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00825 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 are unpatentable as obvious; the petition did not prove claims 2, 5, 8, 9, 11, 12, and 14–18 unpatentable.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “Applying these principles to the instant case, in an inter partes review, the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See Dynamic Drinkware, 800 F.3d at 1379. (explaining petitioner “had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 13–36.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “Even if we were to find that Petitioner’s citation to two pages of its declarant’s testimony, without explanation, does not amount to improper incorporation by reference, the testimony of Petitioner’s declarant, Leonard J. Forys, Ph.D., is insufficient to show one of ordinary skill in the art was in possession of the subject matter of the claims at issue. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). First, the testimony of Petitioner’s declarant, Dr. Forys, is conclusory, merely quoting some portions of the ’357 patent without adequately explaining how the quoted portions relate to the subject matter recited by the claims. 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.”). Moreover, during cross-examination Dr. Forys explained his analysis, “I just went through the ’167 patent and just picked a few things out that seem to indicate that they are already there. . . . So it was illustrative. It’s not a detailed analysis. It is just suggestive.” Ex. 2006, 48:1–7.” slip op. at 20

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

    “The ’357 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system of Claim 1 would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is 25 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8 (emphasis omitted). Therefore, in light of the plain language of the claim, the Specification of the ’357 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 25

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony14 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least three years of academic or industry experience in telephony systems.” slip op. at 29

  Patent outcomesUS 7,529,357 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,529,357
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 2, 2015 · IPR2014-00810 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–3 and 5–7 are unpatentable as anticipated by Silberschatz; Petitioner did not show claims 4 and 8 unpatentable because Silberschatz does not disclose allocating or de-allocating a specific telecommunications resource.

  RulingsFinal written decision

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

    “In this case, the ’637 patent discloses multiple embodiments of telephony and telecommunication resources being allocated and de-allocated, but during prosecution, the applicant removed the modifying limitation of “telecommunication”3 leaving only the term “resource” in the issued claims. Compare Ex. 1004, 60–69 (Application No. 09/072,436) with Ex. 1002, 44–47. The claims, thus, recite “resource” and do not recite “telecommunications resource” nor do they recite “computer resource.” The lack of a limiting term modifying “resource” indicates a scope broader than the scope encompassed by a “resource” that is limited to only a “telecommunications resource” or “computer resource.” Moreover, the Examiner characterized the claims of the application that issued as the ’637 patent as “broader in scope than the claims [in] the parent patent.” Ex. 1002, 95. The Applicant did not dispute the Examiner’s characterization of the claims. Id. at 107. Although the ’637 patent discloses embodiments using “resources,” the ’637 patent does not define explicitly the term “resource.” Therefore, we look to the ordinary meaning of the term as would be understood by one of 3 The term “telecommunication” was recited in the proposed claims of earlier-filed parent Application No. 09/072,436. The ’637 patent claims priority to patent Application No. 09/072,436. See Ex. 1002, 1. ordinary skill in the art. A technical dictionary, IEEE Dictionary4, defines “resource” as “[a]ny capability that must be scheduled, assigned, or controlled by the underlying implementation to assure non[-]conflicting usage by processes.” Id. at 976. As shown by the dictionary definition, one of ordinary skill in the art would understand “resource” is not limited to a telecommunications resource or a computer resource.5 Thus, the ordinary meaning of “resource” is consistent with the term’s use in the ’637 patent, which readily interchanges the term “resources” with “components” and “capability” in the context of computer telephony resources. Ex. 1001, 1:27–29. For example, in one embodiment in the ’637 patent, the telecommunication “resource” is a telephony line card that is coupled to a telephone. Id. at 9:12–15. In other embodiments, the telecommunication “resources” are components or ports coupled via a data bus to a central processing unit system, a data port system, a video system, a network system, a storage controller, and a high speed communication system. Id. at 8:1–27, 10:64–11:10, 11:14–22. In every embodiment in the ’637 patent, 4 IEEE 100: The Authoritative Dictionary of IEEE Standards Terms: Seventh Edition (Standards Information Network, IEEE Press ©2000) (Ex. 3001) (hereinafter “IEEE Dictionary”). 5 Petitioner’s Declarant, Dr. Forys, testified on cross-examination that a person of ordinary skill in the art would have telecommunications experience because all of the embodiments in the ’637 patent are directed to telecommunications. Ex. 2002, 47:2–14. Based on this testimony, Patent Owner argues that the ’637 patent would be understood by a person of ordinary skill in the art in the context of a telecommunications systems. PO Resp. 8–9. We agree the ’637 patent may have been understood in the context of a telecommunications system, however, that does not indicate that a skilled artisan would have understood “resource” to have been limited to only a telecommunications resource. resources are a component or capability of a system that is managed (i.e., identified, allocated, de-allocated) by some module in the service kernel. Id. at 9:27–39, 10:10–14, 10:64–11:10, 11:14–22. Accordingly, we do not agree with Patent Owner’s position, because” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s Declarant, Dr. Forys, opines that a person of ordinary skill in the art relevant to the ’637 patent “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field and one year to two years of industry experience in telecommunications.” Ex. 1003 ¶ 32. Patent Owner does not disagree with Petitioner’s assertions regarding the level of skill in the art, nor does Patent Owner’s Declarant, Dr. Akl, offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’637 patent. PO Resp. 9–10; Ex. 2003 ¶ 42. Based on our review of the ’637 patent, the types of problems and solutions described in the ’637 patent and cited prior art, and the testimony of Petitioner’s Declarant, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least a Bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, and at least one year of work experience in telecommunications technologies. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We do agree with Patent Owner’s argument, however, with regards to dependent claims 4 and 8, which require the return of “the allocated telecommunications resources to control of the management module.” Ex. 1001, 21:52–22:6, 22:44–52; see supra, Section II.A.3. Petitioner has not indicated a disclosure in Silberschatz that demonstrates the allocation or de-allocation of a specific telecommunications resource. Therefore, we determine that Petitioner has failed to meet its burden to show Silberschatz anticipates dependent claims 4 and 8.” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not agree with Patent Owner’s position, because Petitioner identifies CPU time as a specific resource that is requested (Pet. 23–24), allocated (id. at 25), used (id. at 25), and de-allocated (id. at 26). We credit the testimony of Dr. Forys, who explains how and where Silberschatz discloses each element of the challenged claims. See Ex. 1003 ¶¶ 64–80. Specifically, Dr. Forys testifies regarding the request, allocation, use, and de-allocation of a single type of resource (e.g., CPU time), thereby meeting the limitations of the challenged claims. Id. ¶¶ 74–80. Although Patent Owner correctly points out that Petitioner discusses multiple types of resources, we do not agree that Petitioner discusses or applies the disclosure of Silberschatz inconsistently, because Petitioner at least consistently identifies CPU time as a resource requested, allocated, used, and de-allocated.” slip op. at 21

  Patent outcomesUS 7,324,637 mixed
  Claim construction§ 102 anticipationcites Graham
  Patents in suitUS 7,324,637
• Stats LLC v. Hockeyline, Inc.All claims unpatentable
  PTAB · Sep 15, 2015 · IPR2014-00510 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1, 2, 8, 10–12, and 30 were held unpatentable as anticipated by Hameen-Anttila and STATS Football, and obvious over STATS Football combined with Reilly.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “1. Means-plus-function Claiming Independent claim 1 of the ’107 patent includes a series of means-plus- function limitations. 35 U.S.C. § 112 ¶ 6.5 A means-plus-function limitation “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id. The claim limitations in the ’107 patent are drafted using the accepted “means for” construct followed by a specified function, without further recitation of structure to achieve the recited function. Triton Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014); see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). “In exchange for using this form of claiming, the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function.” Triton Tech, 753 F.3d at 1378 (citation omitted). We construe the following claim limitations for purposes of this decision, in accordance with the principles stated above. 2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

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

    “2. “display means coupled to said processor for facilitating the entry of such data by a user” The ’107 patent specification links a touch display screen, computer screen, or other electronic screen with the claimed function of “facilitating the entry of 5 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’107 patent has a filing date before September 16, 2012, the effective date of section 4(c) of the AIA, we refer to the pre-AIA version of § 112, ¶ 6. such data by a user.” Ex. 1001, 2:62–67 (“In the case of a touch display screen, the screen may function both as a display means and an input means. In the case of a keyboard or mouse, the operation thereof would normally be carried out in conjunction with display means 108, and/or a computer screen or other electronic screen.”); Pet. 11. During a game, the electronic screen display prompts the device user (game scorer) to enter sports game event data related to the progress of the game. Id. at 3:7–12. The data being entered, “such data” in the claim language under consideration, has antecedent basis in the “input means . . . for inputting data related to events of said sports game in real time.” Accordingly, we conclude that the broadest reasonable interpretation of the limitation “display means coupled to said processor for facilitating the entry of such data by a user,” consistent with the ’107 patent specification, is “a touch screen, computer screen, or other electronic screen coupled to the processor for facilitating the entry of data related to events of a sports game by a user in real time, and equivalents thereof.”” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “c. Claim 1 – “customized by the user to reflect desired data” We are further persuaded that Hameen-Anttila discloses hierarchical menu- based screen displays that may be “customized by the user to reflect desired data,” in accordance with our claim construction. We agree with Petitioner, that the setup menu in Hameen-Anttila (Fig. 4a) allows a user to select desired display menus (e.g., for golf) that will cause other menus not to be displayed (e.g., for hockey, bowling, and baseball) during a user’s input of golf-specific data in real time. Pet. Reply 7–8 (citing Ex. 1002, 5:21–24; Ex. 1014 (Dahbura Dec.) ¶¶ 20–21). As Dr. Dahbura notes, Patent Owner’s expert, Dr. Locke, agrees that choosing not to display a menu screen is a form of user customization. Ex. 1014 ¶ 21 (citing Ex. 1017, 72:19–73:3). We further agree with Petitioner that Patent Owner’s proffered distinction between Hameen-Anttila’s “mere usage” of hierarchical menu-based screen displays and “customizing” such displays is illusory and not consistent with the description of user customization in the ’107 patent. Pet. Reply 8 (citing Ex. 1014 ¶ 22). The individual drop-down arrows in Figure 4b further suggest the ability of a user to change the menu-based screen displays to permit the user to input desired data for the illustrated golf game. Therefore, we determine Hameen- Anttila discloses an action by the user to configure the hierarchical menu-based screen displays to permit desired data to be gathered for one or more sports games. d. Claim 1 – “transferring statistical information based on such inputted data” Patent Owner’s argument asserting Hameen-Anttila does not disclose the transfer of “statistical information based on such inputted data” also is off the mark. As noted above, Hameen-Anttila discloses that sports game event data is input into an electronic scorekeeping device and transmitted via a communications network to a server while the sports game is ongoing. Ex. 1002, 2:40-51, 2:57– 3:13. We are not persuaded by Patent Owner’s argument that the transfer of statistical information “based on” inputted data requires some form of calculation that necessarily excludes inputted data as part of the transferred “statistical information.” PO Resp. 17–19. Patent Owner does not offer a claim construction or request construction of quoted claim phrase at issue, even though Patent Owner’s argument presumes a specific definition of the phrase without explaining why it is consistent with the broadest reasonable interpretation standard. Pet. Reply 2. The language in claim 1 of the ’107 patent recites “a processor,” but it does not recite a calculation function performed by the processor on inputted data. Pet. Reply 11. The claim language also does not exclude inputted data from “statistical information” or limit “statistical information based on such inputted data” only to statistics calculated from the inputted data. Id. The preamble of claim 1, recites “gathering, processing and distributing statistical information.” Ex. 1001, 8:11–12 (emphasis added); see also PO Resp. 19 (citing Ex. 1001, 1:56–60 (“The present invention advantageously provides an electronic scorekeeping device for gathering, calculating and distributing statistical information.”)). Gathering statistical information, when read in light of the ’107 patent specification, refers to inputting sports game event data into the scorekeeping device for transmission to a central database as part of the statistical information transfer. Pet. Reply 11 (citing Ex. 1001, Abstract (“This [inputted] data is transferred in real-time in a system according to the invention via a communications means to a central database.”); Ex. 1014 ¶¶ 25–28). The ’107 patent does not define “statistical information” or “statistical information based on such inputted data.” The ’107 patent also does not exclude inputted data from the description of statistical information. Pet. Reply 12 (citing Ex. 1014 ¶ 27). To the contrary, and consistent with the understanding in the art, the ’107 patent uses the words “data,” “statistics,” “statistical data,” and “statistical information” interchangeably and with significant areas of overlap. Id.; see also id. at 4 (citing Ex. 2002 ¶ 30 (“The terms ‘statistics,’ ‘data,’ and ‘statistical information,’ are widely used in computer systems, but they are often used in very general ways with broad meanings in which their meanings have significant areas of overlap.”)). We further credit Dr. Dahbura’s testimony, that a person of ordinary skill in” slip op. at 18

  Patent outcomesUS 6,725,107 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,725,107
• Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentable
  PTAB · Sep 11, 2015 · IPR2014-00749 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–14 are unpatentable: claims 1–3 and 8–11 as obvious over Spadaro, and claims 4–7 and 11–14 as obvious over Spadaro and Hodge.

  RulingsFinal written decision

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

    “Therefore, in light of the plain language of the claim, the Specification of the’003 patent, and according Patent Owner’s evidence and the testimony of Patent Owner’s declarant appropriate weight, we construe “call application management system” to mean a system that is located as required by claim 1—“connected via the LAN to the networking device” and to which a validation system is connected via the LAN—and performs at 17 least the functions recited by claim 1—processing the outgoing VoIP data packets for transmission to a telephone carrier network and processing signals from the telephone carrier network into the incoming VoIP data packets. A “call application management system” is not required to perform call processing as defined by the Patent Owner—“control a call from origination, maintenance of that call, and subsequent release of that call [and] does not include call authorization functionality” (PO Resp. 15).” slip op. at 17

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. We consider the level of ordinary skill in the art to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The prior art references, like the ’003 patent, relate to telephone communication systems. See Ex. 1001, 1:41–42 (indicating the technical field relates to call processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field of the invention relates to telephone communication systems). In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony9 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate are of academic or industry experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems.” slip op. at 20

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “processing—meaning controlling a call from origination, maintenance of that call, and subsequent release of that call, but which does not include call authorization functionality (PO Resp. 15 (citing Ex. 2001 ¶ 162)) against evidence of the written description of the term in the Specification and language of claim 1, we do not agree that call application management system necessarily must control a call from origination, maintenance of that call, and subsequent release of that call. It is within our discretion to assign the appropriate weight to the testimony offered by Dr. Oliver. See, e.g., 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) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). First, as discussed above, the Specification and earlier application provide examples of call processing functionality that contradict Dr. Oliver’s position and which are not addressed directly by Dr. Olivier. Second, the inconsistency of Dr. Olivier’s own testimony regarding the definition of call processing undercuts his position. In his declaration, Dr. Olivier identified additional functions as part of call processing—including call authorization which Dr. Olivier testifies is not included in call processing. See Ex. 2001 ¶¶ 67 (showing Dr. Olivier’s annotation of Figure 2 of the ’003 patent to identify call processing), 69, 70, 73. Third, we are unpersuaded by 16 Dr. Olivier’s reliance on a vague statement of the Specification that the call application management system “forms the heart of call processing functionality provided by call processing platform 101” (PO Resp. 16 (citing Ex. 2001 ¶ 165)). Dr. Olivier testifies that the context of “forms the heart” would be understood by one of ordinary skill in the art as meaning “that call connection control and switching control is performed at a centralized location,” because the Specification describes the call application management system as controlling completing a call between parties (Ex. 2001 ¶ 165). We are mindful that, according to the Specification, the call application management system “control[s] completing a call between” two parties. Ex. 1001, 8:16–22 (emphasis added). Even so, “controlling completing a call” on its face seems more limited than Patent Owner’s position that call application management system is a system performing call processing—“control a call from origination, maintenance of that call, and subsequent release of that call.” We also are mindful that Petitioner’s declarant, Dr. Forys, does not agree with Dr. Olivier’s position regarding call processing. Ex. 1018 ¶¶ 7–12.” slip op. at 16

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

    “7. Conclusion of Obviousness over Spadaro We have resolved the question of obviousness based on factual determinations of (1) the scope and content of Spadaro; (2) differences between the subject matter of claims 1–4 and 8–11 and the teachings of Spadaro; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham, 383 U.S. at 17–18. Patent Owner has not put forth any evidence of secondary considerations for us to consider. For the foregoing reasons, we determine that Petitioner has established, by a preponderance of evidence, that the subject matter recited in each of claims 1–3 and 8–11 as a whole would have been obvious to one of ordinary skill in the art in view of Spadaro. See 35 U.S.C. § 103(a). We determine, however, Petitioner has not established, by a preponderance of evidence, that the subject matter in claim 4 as a whole would have been obvious to one of ordinary skill in the art in view of Spadaro.” slip op. at 58

  Patent outcomesUS 8,577,003 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,577,003

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.