• NVIDIA Corporation v. Polaris Innovations LimitedSome claims unpatentable
  PTAB · Nov 20, 2018 · IPR2017-01346 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1, 4, 8–12, 16, 18, 43, 45, and 48–51 are unpatentable; claims 2, 19, 20, 22, 26–30, and 44 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Tredennick, testifies that “[a] person of ordinary skill in the art as of the time of the ’344 patent (POSITA) would have had a Bachelor’s degree in Electrical Engineering and at least 2 years of experience working in the field of semiconductor logic design.” Ex. 1003 ¶ 13. Neither Patent Owner, nor its declarant, Dr. Przybylski, offers a different assessment of the level of ordinary skill in the art. See Ex. 2002 ¶ 38 (“I am applying the definition of the level of experience of a person of ordinary skill in the art that has been put forward by Dr. Tredennick in his declaration. I do not necessarily agree with the definition offered there, but I do not presently believe that the exact level of experience of a person of ordinary skill impacts my opinions offered herein.”). Based on the evidence of record, we adopt Dr. Tredennick’s statement of the level of ordinary skill in the art with the exception of the language “at least.” Thus, we determine that the skill level of a person of ordinary skill in the art would have been that of a person with a bachelor’s degree in electrical engineering and two years of experience working in the field of semiconductor logic design.” slip op. at 5

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

    “Thus, “data arrangement alteration” requires the alteration of the arrangement of data, not merely the alteration of data.” slip op. at 11

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

    “Structure: first error coding path 120 and equivalents. See Ex. 1001, 3:27–34, 3:57–4:25, 5:53–64, Figs. 1A, 1E. Function: performing a data Claim 19: means for performing a data arrangement alteration arrangement alteration algorithm algorithm Structure: data arrangement alteration devices 122, 132, and 222 and equivalents. See id. at 3:27–34, 5:65–6:25, 6:42–65, 8:55–57, 10:34–45, Figs. 1–4. Dec. on Inst. 8–9.” slip op. at 14

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

    “Digital Subscriber Line (ADSL) Metallic Interface, and it bears a copyright date of 1999. Ex. 1004. Citing the Declaration of Jessica Coral Sheldon- Hess, Petitioner contends ADSL is prior art under 35 U.S.C. § 102(b). Pet. 2 (citing Ex. 1014, 4–5). Ms. Sheldon-Hess testifies that, based on ADSL’s Machine Readable Cataloging (MARC) record obtained from Illinois State Library, ADSL was available to the public as of 1999. Ex. 1014 ¶¶ 8–10. Patent Owner does not dispute the prior art status of ADSL. Petitioner’s evidence establishes that ADSL was publicly available as a printed publication more than one year before the U.S. filing date for the ’344 patent, which is March 11, 2008. See Ex. 1001, [22]. Based on this evidence, we determine that ADSL qualifies as a prior art printed publication under 35 U.S.C. § 102(b).” slip op. at 17

  Patent outcomesUS 8,161,344 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,161,344
• EMC Corporation / Lenovo (United States) Inc. et al. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Jun 20, 2018 · IPR2017-00439 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1, 3–6, 8, 9, 13, 15–18, 20, and 21 are unpatentable over Carter; claims 5 and 17 are also obvious over Carter and Pitzel.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner

    “We agree with Patent Owner regarding the ordinary meaning of the term “respectively.” Specifically, we understand that the word “respectively” can be an adverb that means “for each separately or in turn, and in the order mentioned.” The use of “respectively” as an adverb in the English language requires parallelism. See Ex. 3002. In other words, there must be a direct one-to-one correspondence and specific referents must be individually identified before there can be a “parallel list” of attribute values applicable to each, in that order. The term “respectively” also can be an attributive adjective that means “concerning or appropriate to each of several individually.” Id. In the present case, the term “respectively” appears to modify “the selected distributed devices.” Because specific referents are not individually identified, we understand the term to act as an attributive adjective modifying each of several selected distributed devices. Although we agree with Patent Owner regarding the use of the term “respectively,” we do not understand its use to require “the selected distributed devices to cause each selected distributed device to separately appear to network-connected user devices as a dedicated NAS device.” We cannot construe individual terms in isolation. Rather, we must consider claims as a whole in view of the specification. Specifically, we must consider the implications of other terms recited in claims 1 and 13 (e.g., “location information”) and how the claims are supported by the disclosed embodiments.” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contests Petitioner’s definition of a person of ordinary skill in the art, specifically arguing that “Petitioners’ proposed requirements especially with regard to work experience, are higher than can be reasonably supported.” PO Resp. 5. Patent Owner notes that Petitioners’ declarant, Dr. Kubiatowicz, testified on cross-examination that “somebody coming directly out of college, likely, would need a couple of extra years to understand this,” and that “a little bit of professional experience might help them -- would help them understand the details involved in this case.” Id. (citing Ex. 2002, 25:13–14; 26:2–5). Patent Owner’s declarant, Dr. Shenoy, testified that, “at the time of the ’827 patent, a person of ordinary skill in the art should have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” Ex. 2003 ¶ 19. According to Dr. Shenoy, “[l]ack of experience can be remedied by additional education or vice versa.” Id. Based on our review of the ’827 patent, the types of problems and solutions described in the ’827 patent and cited prior art, and the testimony of Dr. Kubiatowicz and Dr. Shenoy, we adopt and apply Patent Owner’s definition of a person of ordinary skill in the art, specifically that a person of ordinary skill in the art at the time of the claimed invention would have had “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” See id. We also determine that such a person would have been familiar with computer systems architecture and design, and would have been aware of design trends relating to distributed processing systems.” slip op. at 18

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

    “Despite Patent Owner’s arguments, we find that Carter’s policy element 290 (a software module) is configured to assess unused or under-utilized storage resources in selected distributed devices of the plurality of distributed devices. We understand policy element 290 to satisfy this limitation because Carter specifically discloses that policy element 290 “acts as a controller to determine the availability of resources, such as printer capabilities, hard-disk space, available RAM and other such resources.” Ex. 1140, 36:27–29 (emphases added). We credit the testimony of Dr. Kubiatowicz, who during his deposition stated, “I would say this policy controller certainly can evaluate the hard disk space on the local node, but could also potentially evaluate storage throughout the system by communicating with other nodes.” Ex. 2002, 86:13–16; see id. at 88:5–7; see also id. at 88:12–16 (“What I said was that this policy element is determining the availability of resources. So it’s assessing whether or not hard disk space of various sorts is available. So it’s availability, not just available.”); see id. at 88:18–89:18, 90:5–91:1. We further credit the testimony of Patent Owner’s declarant, Dr. Shenoy, who testified that Carter discloses “determin[ing] the free volume space available for allocation.” See Ex. 1144, 142:19–20 (referencing Ex. 1140, 19:14–17). Reading directly from Carter, Dr. Shenoy further testified that Carter discloses “request[ing] the total available space information and us[ing] this information to quickly determine whether to proceed with the allocation processing.” Id. at 142:14–17, 143:1617. In view of the explicit disclosure of Carter and the testimony of both declarants, we find that Carter’s controller performs an “assessment” in order to “determine the availability of resources.” Additionally, Carter states that policy controller 290 “can employ any of the suitable heuristics to direct the elements, such as the paging controller, disk directory manager, and other elements to dynamically distribute the available resources.” Ex. 1140, 36:29–37:2. Thus, we agree with Petitioner’s argument, as supported by the testimony of Dr. Kubiatowicz, that policy element 290 assesses the unused or underused storage resources when it determines the availability of such resources and uses some heuristics when distributing those resources that were assessed. See Pet 39 (citing Ex. 1102 ¶ 118). Accordingly, based on the entirety of the record before us, we find Petitioner has shown by a preponderance of the evidence that Carter discloses the “assessing” limitations of claims 1 and 13.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner fails to offer sufficient explanation as to why a person of ordinary skill in the art would have combined the teachings of Carter and Condor. Rather, Petitioner appears to argue that, based on the advantages described by Condor (Ex. 1017, 5), and using well-known techniques with unspecified predictable results, a person of ordinary skill in the art would have had sufficient reason to combine these disparate elements taught in the prior art references to render the challenged claims obvious. Pet. 61–66. Yet, other than Petitioner’s cursory assertion of “advantageously incorporat[ing] the central coordinator in Condor to provide a centralized mechanism to manage resource sharing” (Pet. 66), which cites equally cursory and unsupported testimony by Dr. Kubiatowicz (Ex. 1102 ¶ 199), Petitioner fails to identify what particular advantages or efficiencies would have prompted a person of ordinary skill in the art to combine Condor’s scheduler with Carter’s system. Furthermore, Dr. Kubiatowicz’s testimony regarding predictable results and obviousness to try are similarly lacking in elaboration and substantiation. See Ex. 1102 ¶¶ 200–201. Such conclusory statements and unspecific testimony without evidence on the record cannot satisfy the Petitioner’s burden of demonstrating obviousness. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); I/P Engine, Inc. v. AOL Inc., 576 F. App’x 982, 999 (Fed. Cir. 2014) (“The testimony of the Defendants’ expert amounts to a ‘mere conclusory statement’ that may not serve as a basis for finding the asserted claims obvious.”); see also InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (holding that expert’s testimony could not support a finding of obviousness where “testimony primarily consisted of conclusory references to [the expert’s] belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so”); see also 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.”). Although Petitioner has not provided a sufficient rationale to combine in this asserted ground of unpatentability, Petitioner has otherwise demonstrated that claims 4, 6, 16, and 18 are unpatentable under 35 U.S.C. § 102(b) because they are anticipated by Carter. Petitioner, however, has not asserted claims 7 and 19 are unpatentable under any other ground in this proceeding. Therefore, we determine Petitioner has failed to establish by a preponderance of the evidence that claims 7 and 19 of the ’827 patent are unpatentable under 35 U.S.C. § 103(a) in view of Carter and Condor.” slip op. at 59

  Patent outcomesUS 8,275,827 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 8,275,827
• Mobile Tech, Inc. v. Invue Security Products Inc.Some claims unpatentable
  PTAB · Mar 28, 2018 · IPR2016-01915 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–7, 14, and 17–19 are unpatentable under §103; claims 12 and 13 were not shown unpatentable under the Denison, Roatis, and Deguchi ground.

  RulingsFinal written decision

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

    “Petition that the term should be interpreted to mean “a ‘collection of computer components’ that perform the functionality recited in the claims.” Pet. 7–8. Patent Owner responds that Petitioner’s proposed interpretation is too broad because it omits the word “circuit,” pointing out that Petitioner’s declarant, Thaine H. Allison III, acknowledged that the “collection of components would necessarily need to be connected through a circuit.” PO Resp. 4 (quoting Ex. 2002, 20:11–25). During the oral hearing, Patent Owner agreed with an interpretation of “a collection of computer components that are connected through a circuit.” Tr. 23:4–16. Petitioner likewise states that connection through a “circuit” should be part of the interpretation. Reply 2 (citing Ex. 2002, 20:21–25). We agree as well. Claim 1 recites a “logic control circuit . . . including” a collection of four components: a “controller,” “memory,” “wireless communication system,” and “visual display.” Claim 17 recites a “logic control circuit . . . including” a “memory” and “communication system.” The Specification of the ’844 patent similarly describes a collection of components connected through a circuit. Programming station 1 includes “printed circuit board 5, which contains a logic control circuit indicated generally at 7.” Ex. 1001, col. 3, ll. 36–39. Figure 6 of the ’844 patent is reproduced below. Figure 6 depicts logic control circuit 7, which “includes a main controller 29,” “an SDC memory 31,” “a wireless communication circuit 33,” and status display 23, which “preferably consists of three LEDs 23 which are mounted on spacer 9 and electrically connected to circuit board 5 by conductors 24.” Id. at col. 3, l. 59–col. 4, l. 13. Logic control circuit 7 can include other components as well, such as on/off switch 35. Id. at col. 4, ll. 32–38. According to the ’844 patent, “[t]he particular details and construction of the logic control circuit can vary from that shown in the drawings and described . . . without affecting the main concept of the invention.” Id. at col. 4, ll. 27–30. Thus, we are persuaded that the interpretation agreed to by Patent Owner at the hearing—“a collection of computer components that are connected through a circuit”—is consistent with the language of the claims themselves and the Specification of the ’844 patent.” slip op. at 9

  • Skill levelSkill level board ownOther

    “Ex. 1013 ¶¶ 20–21. Patent Owner provides a slightly different skill level, arguing that a person of ordinary skill in the art would have had “the equivalent of a four-year Bachelor of Science degree in electrical engineering, computer engineering, or computer science,” and “approximately two to five years of professional experience [with training] in electronics including microcontrollers, and embedded programming for microcontrollers.” PO Resp. 7. Neither party explains in detail why the respective proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Although there are slight differences between the proposed levels of ordinary skill in the art, Patent Owner and Mr. Allison agree that an ordinarily skilled artisan would have had a four-year technical degree or the equivalent and some amount of professional experience. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that a person of ordinary skill in the art would have had a four-year technical degree or equivalent experience with a minimum of two years of professional technical experience in the field of theft prevention devices or related security devices. We apply this level of ordinary skill in the art for purposes of this Decision.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit the opinion of Mr. Allison (who is the only declarant to provide testimony on issues concerning patentability in this proceeding) that a person of ordinary skill in the art would have been motivated to integrate the cradle into the computer of the combined Denison-Roatis system. See Ex. 1013 ¶¶ 117–120. Mr. Allison’s testimony is consistent with the references themselves. See id. ¶¶ 114–122. He also testified as to the known problems with cradles, which integration with the computer would avoid. See Ex. 2002, 33:18–34:1 (“There’s a lot of trade-offs with cradles. Any accessory adds one more thing to carry around, one more thing to break, where you might place it, those kind of things.”). Further, we have reviewed the portions of Mr. Allison’s cross-examination cited by Patent Owner, and we do not agree with Patent Owner’s arguments as to those statements. With respect to Patent Owner’s first alleged advantage, Mr. Allison merely acknowledged that Roatis’s cradle was movable, not that any advantages from such mobility would have outweighed any advantages of cradle integration. Id. at 43:2–9. As to the ready/wait light, Mr. Allison stated that “the same concerns about having a cradle being separate” still would exist. Id. at 46:11–47:3. As to the functioning of computers without the necessary hardware or retrofitting, Mr. Allison was asked about potential advantages to the use of cradles in general, rather than advantages or disadvantages to such use in the combined Denison-Roatis system specifically (on which his ultimate opinions are based). Id. at 47:25–50:2. Finally, as to encryption features provided by the cradle hardware, Mr. Allison did not state that there would be any outweighing advantages from such functionality, id. at 54:17–56:10, and, in any event, we disagree that such functionality would be eliminated in the asserted combination, for the reasons explained above.” slip op. at 33

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

    “disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). “Instead, the benefits, both lost and gained, should be weighed against one another.” Id. (quoting Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)). Based on the record presented, there appear to be advantages to cradle integration as well as advantages to using a standalone cradle. Assessing all of the evidence presented, though, we are persuaded that a person of ordinary skill in the art would have been motivated to integrate the cradle into the computer of the combined Denison-Roatis system, as Petitioner contends. Most importantly, Deguchi discloses that various devices of the time required a cradle for communication between a portable device and host device and then expressly states that it would have been “desirable” instead to provide for a “direct connection” between a portable device and host device “for data exchange and storage without the need for an intermediary type connection such as a cradle.” Ex. 1004 ¶¶ 4–14. Both Denison and Roatis disclose communication between a host device (computer) and portable device (electronic key) for data exchange and storage. Further, all three references disclose wireless communication with a portable device. See Ex. 1002 ¶¶ 41, 77, 85; Ex. 1003 ¶¶ 69, 129, claim 2; Ex. 1004 ¶¶ 39–42. Thus, a person of ordinary skill in the art, having all three references available, would have understood that it would have been desirable to have a direct connection between the electronic key and computer, rather than using a cradle as an intermediary between the two. We credit the opinion of Mr. Allison (who is the only declarant to provide testimony on issues concerning patentability in this proceeding) that a person of ordinary skill in the art would have been motivated to integrate the cradle into the computer of the combined Denison-Roatis system. See Ex. 1013 ¶¶ 117–120. Mr. Allison’s testimony is consistent with the references themselves. See id. ¶¶ 114–122. He also testified as to the known problems with cradles, which integration with the computer would avoid. See Ex. 2002, 33:18–34:1 (“There’s a lot of trade-offs with cradles. Any accessory adds one more thing to carry around, one more thing to break, where you might place it, those kind of things.”).” slip op. at 32

  Patent outcomesUS 7,737,844 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,737,844
• Telit Wireless Solutions Inc. / Telit Communications PLC et al. v. M2m Solutions LLCSome claims unpatentable
  PTAB · Mar 6, 2017 · IPR2016-00055 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–23 and 29 are unpatentable as obvious; claim 24 was not shown unpatentable because Van Bergen does not disclose the coded number and telephone number in the same transmission.

  RulingsFinal written decision

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

    “authenticates the at least one of the transmissions including the at least one telephone number or IP address and the coded number by determining that the at least one of the transmissions includes the coded number.” Ex. 1101, 12:48–52, 15:2–6, 16:15–19 (emphasis added). Here, the emphasized phrase “the at least one of the transmissions” takes antecedent basis from the first recitation of “at least one of the transmissions,” which is the transmission within which the telephone number (or IP address) is included. Therefore, the processing module performs authentication “by determining that the at least one of the transmissions includes the coded number,” and “the at least one of the transmissions” is defined in the claim as the transmission within which the telephone number (or IP address) is included. As such, the independent claims require processing module authentication of one transmission that includes both the telephone number (or IP address) and the coded number. Certainly, the claim allows for the existence of more than one transmission, but there must be at least one transmission that contains both.” slip op. at 9

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

    “According to the prosecution history, therefore, the applicant added the language “permitted to” because the Examiner did not believe it was “clear” in the claims as written that the language “configured to” meant that the device was also “permitted to” call those numbers. There is no mention of restricting what numbers the device can call. Patent Owner further contends the Specification of the ’717 patent “expressly disclose[s] the concept of restrictive outbound calling lists.” PO Resp. 17 (citing Ex. 1101, 2:20–23, 2:28–32). One of these passages, in the “Background of the Invention” section, states: “Clearly there is a need to provide a means to limit the cost of calling and also to provide a means to prevent the child dialling overseas numbers for extensive periods of time.” Ex. 1101, 2:20–23 (emphasis added). This passage describes a goal of controlling durations of calls to certain numbers, i.e., overseas calls, not completely blocking the sending of outgoing wireless transmissions to such numbers. The other passage cited by Patent Owner similarly states: “An improved child Hotlink communicator, which restricts the usage of the mobile phone and thereby does not generate high charges through uncontrolled calling, is clearly a solution to the family tariffing challenge.” Id. at 2:28–32. This also relates to “control” of calling, not necessarily blocking outgoing transmissions. We do not read these passages as the applicant acting as a lexicographer and defining the “configured to and permitted to” language in the claims.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyNo construction neededDecided for petitioner

    “3. “Processing module for authenticating” Neither Petitioner nor Patent Owner argued that the limitation of independent claims 1, 24, and 29 reciting “a processing module for authenticating one or more wireless transmissions sent from a programming transmitter and received by the programmable communicator device by determining if at least one transmission contains a coded number” should be interpreted as a means-plus-function limitation under 35 U.S.C. § 112, paragraph 6. Based on the full record developed during trial, we determine that this limitation is not governed by 35 U.S.C. § 112, paragraph 6, and does not require further construction. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (“When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” (internal quotations and citation omitted)).” slip op. at 14

  • Skill levelSkill level board ownDecided for petitioner

    “that time, that the skill level of a person of ordinary skill in the art, at the relevant time for the ’717 patent (May 2000), would have been “at least an undergraduate degree in electrical engineering and three years of experience working the development of wireless subscriber terminal systems or components, or an equivalent combination of education and experience in related fields.” Dec. on Inst. 23 n.4 (citing Sierra Wireless Am., Inc. et al. v. M2M Solutions LLC, Case IPR2015-01823, slip op. at 11 n.4 (PTAB Mar. 8, 2016) (Paper 16)). The parties did not propose a different level of ordinary skill in the art during trial. Based on the record developed during trial, we see no reason to deviate from our prior determination of the skill level of a person of ordinary skill in the art. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 15

  Patent outcomesUS 8,648,717 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,648,717
• Samsung Electronics Co., Ltd v. Elbrus International LimitedSome claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01524 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1, 2, 5–7, and 9 are unpatentable as obvious; claim 3 was not shown unpatentable because the record did not establish Watanabe’s required transistor terminal couplings.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “We credit the testimony provided by the declarants for both parties and hold that one of ordinary skill in the art would have possessed an undergraduate degree in electrical engineering or equivalent field and at least two years of experience in the design and/or analysis of data transfer or equivalent circuits. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 5

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

    “We agree with, and adopt, Petitioner’s interpretation of the plain and ordinary meaning of bus, as informed by the 1994 IEEE Standard Glossary of Computer Hardware Terminology. It is well settled that judges may consult dictionary definitions when construing claim terms so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents. Vitronics Corp. v.” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Petitioner argues and Patent Owner acknowledges, the reference upon which Patent Owner relies was published several years after the filing date of the application leading to the ’130 patent. Tr. 35:7–13; see also Reply 3 (Petitioner arguing that Patent Owner’s interpretation of “bus” is flawed because it is from a document dated over 13 years after the alleged invention date of the ’130 patent). Additionally, Dr. Huber elaborates on Patent Owner’s understanding of the term “bus,” stating that a bus, unlike a node, has a span, and acts like a bridge between two points. Ex. 2004 ¶ 59, 62. Dr. Huber, however, offers no underlying facts or data to support this interpretation. Pursuant to 37 C.F.R. § 42.65(a), such testimony is entitled to little or no weight. Also, neither definition from the parties’ technical dictionaries includes a “span” requirement for the term. See Exs. 1010, 2005; Tr. 35:14–17.” slip op. at 7

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

    “interpretation of “bus” in light of the ’130 patent Specification is “one or more conductors that are used for the transmission of signals, data, or power.” Ex. 1010, 13; Reply 2. Sukegawa discloses a “signal transmission circuit,” wherein a signal is transmitted to receiver circuit 4 containing output terminals OUT and OUT_. Ex. 1005, Fig. 1, 9:4–24. We agree with Petitioner that the lines between transistor 34 and inverter 36 are used to transmit signals from input 4a to the output labeled OUT_, and that the lines between transistor 35 and inverter 37 are used to transmit signals from input 4b to the output labeled OUT. Pet. 23–25; Reply 3–5; Ex. 1005, Fig. 1, 9:4– 7, 9:14–24; Ex. 1011, 37:10–38:18. Sukegawa explains that these lines carry a voltage (i.e., an electrical signal). Ex. 1005, 8:59–64, 9:4–7; Pet. 26; Ex. 1002 ¶ 31. Dr. Huber, Patent Owner’s declarant, agreed that “the connections of the various transistors” in Sukegawa Figure 1, including transistors 34 and 35, are conductors. Ex. 1011, 48:25–49:20. We agree with Petitioner that a person of ordinary skill in the art would consider these lines to be conductors. Reply 3. Thus, under our (and Petitioner’s) construction of the term “bus,” the pink lines Petitioner identified in Sukegawa comprise a “bus.”” slip op. at 14

  Patent outcomesUS 6,366,130 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,366,130

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.