- Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Staton Techiya, LLCSome claims unpatentablePTAB · Jul 10, 2023 · IPR2022-00324 · APJ Russell E Cass · IPR · Final written decision
Claims 1, 2, 4–7, 9, and 11–16 are unpatentable as obvious; claim 3 was not shown unpatentable over the asserted combinations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“reasonable expectation of success in achieving the proposed Le-Kvaløy combination. Our conclusion is supported by Dr. Atlas’s testimony that one of ordinary skill “would have been able to adapt Le’s computer unit 15 to wirelessly communicate with Kvaløy’s ear terminal, as Le itself suggests.” Ex. 1002 ¶ 110. We also credit Dr. Atlas’s testimony that one of ordinary skill would have been able to “pass the signal from the outer microphone [of Kvaløy] (which replaces Le’s environmental microphone in the combination) continually to Le’s computer unit through the digital interface.” Id. ¶ 112; see also id. ¶¶ 113–114. We further agree with and find credible Dr. Atlas’s testimony that one of ordinary skill would have been aware of the potential for feedback, echo, and ringing, and would have been able to implement solutions to address this issue. Ex. 1041 ¶¶ 19–40.” slip op. at 35
- Skill levelOther
“C. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of digital audio systems and associated signal processing such as voice or speech processing and/or acoustic pattern recognition.” Pet. 15 (citing Ex. 1002 ¶¶ 18–20). Petitioner further states that a person of 2 Patent Owner has not presented objective evidence of non-obviousness. ordinary skill in the art “could have also obtained similar knowledge and experience through other means.” Id. Patent Owner “applies the level of ordinary skill in the art that Petitioners propose.” PO Resp. 17. We are persuaded by Petitioner’s undisputed assessment of the level of ordinary skill in the art, which is supported by the ’591 patent and the asserted prior art. D. Ground 13: Asserted Obviousness of Claims 1, 2, 6, 7, and 9 Based on Le in view of Kvaløy Petitioner contends that claims 1, 2, 6, 7, and 9 would have been” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“3. Motivation to Combine Le and Kvaløy a) The Parties’ Arguments Relying on the testimony of Dr. Atlas, Petitioner argues that one of ordinary skill “would have been motivated to combine the teachings of Le and Kvaløy, and would have had a reasonable expectation of success in doing so.” Pet. 18 (citing Ex. 1002 ¶ 93). According to Petitioner, Le emphasizes the desire for the system to be unobtrusive and blend in with the user’s appearance, and discloses that computer unit 15 can be implemented as a cellular telephone with wireless connections for microphones 36 and 38. Id. (citing Ex. 1005 ¶¶ 5, 9, 31, 33, 42). Petitioner also contends that Le is “concerned with properly recognizing voice commands that initiate recording in noisy environments.” Id. (citing Ex. 1005 ¶¶ 23–24). In view of these disclosures, Petitioner argues, one of ordinary skill would have been motivated to look for ways to implement Le’s system with a wireless connection to the microphones 36 and 38 and an ability to input audio commands in noisy environments, while making the system more unobtrusive. Id. at 18–19 (citing Ex. 1002 ¶ 99). Petitioner argues that this motivation would have led one of ordinary skill to Kvaløy. Pet. 19 (citing Ex. 1002 ¶ 99). According to Petitioner, one of ordinary skill “would have recognized that Kvaløy’s ear terminal was compatible with and even advanced Le’s disclosed objectives and be as good or superior to Le’s earpiece 30” for the following reasons: 1. Kvaløy’s ear terminal is analogous to Le’s earpiece 30 because both are configured to exchange audio signals with other devices. Id. at 20 (citing Ex. 1002 ¶ 103). 2. Kvaløy’s ear terminal would be less obtrusive and better blend in with the user’s natural appearance than Le’s wired earpiece 30. Id. (citing Ex. 1002 ¶ 104). 3. Kvaløy’s inner microphone M2 would provide an equivalent or superior voice signal to Le’s personal microphone 36 for Le’s natural voice commands to computer unit 15 because it is less susceptible to noise. Id. (citing Ex. 1002 ¶ 105). 4. Kvaløy’s outer microphone M1 for picking up ambient sound so that the user can speak with other people would be as effective as Le’s belt-worn environmental microphone 38 without the obtrusiveness of having to carry around a separate microphone or wear it on a belt. Id. at 20–21 (citing Ex. 1002 ¶ 106). 5. Le’s recording of ambient sound for later recall would have been an obvious use for Kvaløy’s ear terminal microphones. Id. at 21 (citing Ex. 1002 ¶ 107). Accordingly, in Petitioner’s combined Le-Kvaløy system, “Kvaløy’s ear terminal would replace Le’s earpiece and Le’s environmental microphone such that Kvaløy’s outer microphone would replace Le’s environmental microphone, and Kvaløy’s inner microphone would be used to pick up the user’s speech instead of the personal microphone.” Pet. 21–22 (citing Ex. 1002 ¶ 109). Petitioner asserts that “wireless headsets for mobile devices were common in the 2007 timeframe,” and one of ordinary skill “would have been able to adapt Le’s computer unit 15 to wirelessly communicate with Kvaløy’s ear terminal, as Le itself suggests.” Id. at 22 (citing Ex. 1002 ¶¶ 110–111).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“h) Summary for Claim 1 For the foregoing reasons, and based on the full trial record, Petitioner” slip op. at 54
Patent outcomesUS 8,254,591 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,254,591 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Staton Techiya, LLCSome claims unpatentablePTAB · Jul 7, 2023 · IPR2022-00302 · APJ Russell E Cass · IPR · Final written decision
Claims 1–11 are unpatentable as obvious; claims 12–20 were not shown unpatentable, principally because the Allen–Victorian and Ryan-based combinations failed on disputed limitations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“reciting “a processor operatively coupled to evaluate a seal quality of the earpiece based on seal quality measurements made while driving or exciting a signal into the speaker located in the earpiece.” To construe this phrase, we start with the claim language itself. The claim language requires that the “processor” is operatively coupled “to evaluate a seal quality of the earpiece,” indicating that the processor evaluates seal quality. The claim also states that this evaluation is performed “based on seal quality measurements made while driving or exciting a signal into the speaker located in the earpiece,” indicating that the processor uses seal quality measurements to evaluate seal quality. The phrase “while driving or exciting a signal into the speaker located in the earpiece” modifies “seal quality measurements made,” indicating the timing of when the seal quality measurements are made, namely while (at the same time as) a signal is driven or excited into the speaker. This “while driving or exciting . . .” clause does not specify what component performs the “driving or exciting a signal into the speaker located into the earpiece.” Significantly, although the claim language states that the processor “evaluate[s] seal quality,” it does not state that the processor drives or excites the signal into the speaker. Had the applicant wanted to limit the claim in that manner, it could have drafted it to specify that the seal quality measurements are made “while the processor is driving or exciting a signal into the speaker.” The applicant, however, did not do so. Indeed, elsewhere in the claim, the language clearly specifies that certain functions are carried out by the processor, for example: • “a processor operatively coupled to evaluate a seal quality of the earpiece” (claim [1b]); • “the processor is configured to generate a visual or audio message identifying whether the at least one earpiece is properly sealed” (claim [1c]); • “the processor by way of the speaker and microphone adjusts the audio” (claim 3); • “the processor measures differences in a further sound pressure level between an ambient microphone and the [earpiece] microphone, and determines a sealing profile of the ear canal” (claim 4); • “the processor determines whether the earpiece is properly inserted . . . and generates the visual or audio message identifying compliance” (claim 5); • “the processor by way of the speaker and microphone in the earpiece performs in-situ measurement of a user’s ear anatomy” (claim 6); and • “the processor monitors changes in the ECTF to determine a sealing level of the earpiece” (claim 7). Ex. 1001, 13:25–67. Claim 1, however, does not include any comparable language specifying that the processor performs the “driving or exciting a signal into the speaker located in the earpiece.” Therefore, we find that the plain and ordinary meaning of claim 1’s language does not require that the processor itself must drive or excite a signal into the speaker.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer science, audio engineering or a similar field and two years of experience in hearing instruments such as earphones, hearing aids and/or hearing protectors.” Pet. 9 (citing Ex. 1002 ¶ 22). Petitioner further states that the person of ordinary skill “could have also obtained similar knowledge and experience through other means.” Id. Patent Owner “applies the level of ordinary skill in the art that is proposed by Petitioners.” PO Resp. 13. We adopt Petitioner’s assessment of the level of ordinary skill in the art, which is supported by the ’424 patent and the asserted prior art.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We do not agree with Dr. Struck’s testimony that “[a] person of ordinary skill in the art would understand that the processor performs the ‘driving or exciting’ of the signal to the speaker” and “would not even consider any other component mentioned in claim 1 as a candidate to perform the driving or exciting.” See Ex. 2006 ¶ 46. Dr. Struck does not discuss the grammar and structure of the claim language, including the fact that the phrase “while driving or exciting a signal into the speaker” modifies “seal quality measurements” and indicates the timing of when the seal quality measurements are made (while (at the same time as) a signal is driven or excited into the speaker). See id. Dr. Struck also does not discuss the fact that claim 1 recites that the processor “evaluate[s] a seal quality of the earpiece” but does not say that the same processor “driv[es] or excit[es] a signal into the speaker located into the earpiece, instead leaving the subject of what component performs the “driving or exciting” unspecified. See id. Indeed, Dr. Struck acknowledged at his deposition that his declaration lacks an “analysis of the grammar used in the limitation of [c]laim 1” at issue here. Ex. 1027, 20:4–15. Additionally, Dr. Struck appears to assume that the “driving or exciting” must be performed by some “other component mentioned in claim 1,” but there is no requirement that the claim must specify a particular component for carrying out this function. See Ex. 2006 ¶ 46.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We also agree with Patent Owner that, in Petitioner’s proposed combination, the above rule that gates off the ear canal microphone would frustrate Allen’s purpose of comparing the signals from the inner and outer microphones to determine a reverse transfer function and perform a seal fit analysis. See PO Resp. 53–54; PO Sur-reply 13. In reaching this conclusion, we credit the testimony of Mr. Struck that “[w]hen this rule is in force, the Allen-Victorian combination would not be able to measure a reverse transfer function” and, accordingly, “would be incapable of performing the automatic adjustments that the Allen hearing aid can perform based on the reverse transfer function.” Ex. 2006 ¶ 114. Dr. Kyriakakis also confirmed at his deposition that, when this rule is in effect, Allen would not be able to use the reflectance method, which relies on signals from the inner and outer microphones: Q: So while the rule at Column 10, lines 19 through 22, of Victorian is being employed, Allen is not able to solve any of the problems that it solves by the reflectance method; is that correct? A: If Allen doesn’t have access to the signals, that is correct, to the two microphone signals. Ex. 2007, 63:16–23. We are not persuaded by Petitioner’s argument that Victorian’s VOX circuit would not interfere with Allen’s seal fit analysis, because Victorian states that gating off may cause microphone signals to be “blanked or substantially attenuated,” and “[s]ubstantial attenuation refers to an attenuation after which the attenuated sound does not cause any echo or tinging7 having an intolerable intensity.” See Pet. Reply 14–15 (citing Ex. 1013 ¶ 32; Ex. 1027, 120:1–8, 121:3–9). As noted above, the Petition relies on the embodiment of Victorian’s VOX that “prevents the remote sound from being detected by ear canal microphone 440,” rather than an embodiment that simply attenuates that sound. See Pet. 46; Ex. 1002 ¶ 152; Ex. 2007, 61:2–16. Petitioner’s shift to relying on a different embodiment of Victorian that “substantially attenuat[es]” the sound rather than blocking it is a new argument that is presented for the first time in Petitioner’s Reply, and we therefore need not consider it. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), at 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”). 8 Moreover, 7 The quoted portion of Victorian refers to “tinging,” but this appears to be intended to refer to “ringing.” For example, the previous sentence states that “[b]lanking refers to a substantially complete blockage of a sound, or in other words, that a detected sound is practically ignored by processor 460 such that it does not cause any echo or ringing which is audible by an ear.” See Ex. 1013 ¶ 32 (emphasis added). 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 52
Patent outcomesUS 9,609,424 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,609,424 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Staton Techiya, LLCSome claims unpatentablePTAB · Jun 16, 2023 · IPR2022-00242 · APJ Russell E Cass · IPR · Final written decision
Claims 1, 5, 7, 11–12, 14–17, and 21–23 are unpatentable as obvious; claims 6 and 8–10 were not shown unpatentable.
RulingsFinal written decision- Skill levelOther
“C. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of digital audio systems and associated signal processing such as voice or speech processing and/or acoustic pattern recognition.” Pet. 12– 13 (citing Ex. 1002 ¶ 19). Petitioner further states that “[m]ore education can supplement practical experience and vice versa.” Id. at 13. Patent Owner “applies the level of ordinary skill in the art that Petitioners propose.” PO Resp. 9. We are persuaded by Petitioner’s undisputed assessment of the level of ordinary skill in the art, which is supported by the ’839 patent and the asserted prior art. D. Ground 1A: Asserted Obviousness of Claims 1, 6, 22, and 23 Based on Le in view of Victorian Petitioner contends that claims 1, 6, 22, and 23 would have been obvious over Le in view of Victorian. Pet. 20–38. Patent Owner disagrees, arguing that Petitioner has failed to establish that the claims would have been obvious based on the proposed combination. PO Resp. 12–39.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“using its earpiece.” Id. at 3–4 (citing Ex. 1007, code (57), ¶¶ 2, 6, 16). “Accordingly,” Petitioner contends, “a user of the Le-Victorian combination could still hear the surrounding environment, including the conversation, in his/her other ear even when the ear canal speaker is off.” Id. at 4. “Furthermore,” according to Petitioner, “as long as the ear canal speaker is off, there is no feedback loop between Victorian’s ear canal microphone and ear canal speaker, and thus no risk of the echo, ringing, or feedback that [Patent Owner] complains about.” Id. Petitioner also argues that, in the proposed combination, it would have been obvious to modify Victorian’s ear-level device 110 to pass the signal from the external microphone to both the ear canal speaker and continually to Le’s computer unit, so that the external microphone signal is transmitted to the remote device independent of whether the external microphone signal was also transmitted to the ear canal speaker. Pet. Reply 4–5 (citing Pet. 18; Ex. 1002 ¶¶ 114–115). In this configuration, Petitioner asserts, Victorian’s ear-level device would “transmit the external microphone signal to Le’s computer unit to record conversations independent of whether the signal was also transmitted to the ear canal speaker.” Id. at 5. Thus, according to Petitioner, “there would be no need to ‘completely redesign Victorian’s VOX circuit 430’ or to ‘chang[e] all its existing rules.” Id. (citing PO Resp. 28). Petitioner further contends that Victorian discloses a rule in which “ambient sound gating module 421 is off, occluded sound gating module 441 is on, and remote sound gating module 451 is off” which, when combined with Petitioner’s proposed modification to provide an independent path from the external microphone to the computer unit, would allow the combined system to record conversations. Id. Petitioner also disagrees with Patent Owner’s argument that, due to technical challenges, one of ordinary skill would not have had a reasonable expectation of success in making the proposed Le-Victorian combination. Pet. Reply 7–8. Petitioner argues that Patent Owner does not argue that Petitioner’s proposed independent path modification would have been beyond the level of ordinary skill, and that the features Patent Owner points to, such as incorporating components into a “small earpiece” that operates within a “power budget,” are “unclaimed.” Id. at 7. Additionally, Petitioner asserts that Victorian itself refutes Patent Owner’s arguments about purported technical limitations “because Victorian discloses an earpiece with an in-ear canal form factor including the components that [Patent Owner] alleges would be ‘difficult to miniaturize,’” and Victorian is presumed to be enabling. Id. (citing Ex. 1007 ¶¶ 13, 29, Figs. 3, 4). Petitioner also contends that Patent Owner’s argument about “the alleged absence of commercialized consumer electronics” is “irrelevant.” Id. at 8. Moreover, Petitioner argues, “the ’839 patent itself admits the absence of these purported technical challenges,” because “despite having the same microphone and speaker placement as Victorian and the ability to record conversations with a ‘user-defined verbal activation message,’ the ’839 patent does not even mention feedback, echo, or ringing as a problem to solve.” Id. Furthermore, Petitioner argues, even if the Le-Victorian combination did not allow recording of conversations, that would not render the combination “inoperable.” Pet. Reply 10. According to Patent Owner, Le discloses uses for its system that do not require simultaneous recording of the user and another speaker, including situations “when the user is alone” and an embodiment “in which the audio information received ‘between’ two commands is stored (such as ‘start recording’ and ‘stop recording’).” Id. (citing Ex. 1006 ¶¶ 36, 37). “Thus,” Petitioner contends, “only some features Le describes would be less effective, which does not show inoperability.” Id.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Based on the full trial record, we find that Petitioner has proven by a preponderance of the evidence that claim 21 would have been obvious over the combination of Le, Victorian, and Stuckman.” slip op. at 84
Patent outcomesUS 8,111,839 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,111,839 - Google LLC / Ecobee Technologies Ulc v. Ecofactor, Inc.Some claims unpatentablePTAB · Feb 6, 2023 · IPR2022-00686 · APJ Scott B Howard · IPR · Final written decision
Claims 1–3, 7, and 15–20 are unpatentable: claims 15, 19, and 20 as obvious over Hildebrand and Van Ostrand; claims 1–3, 7, 16, and 17 over those references and Rosen; and claim 18 over those …
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“the art would have combined the relevant teachings of Hildebrand and Van Ostrand with a reasonable expectation of success. As discussed above, Hildebrand is directed to a system for monitoring the efficiency of an HVAC system to determine when there is a fault. See Section II.E.1, supra; Ex. 1002 ¶ 60. Using much of the same data as Hildebrand, Van Ostrand teaches a method to determine which stage in a multiple stage HVAC system failed. See Section II.E.2; Ex. 1002 ¶¶ 60–61. Van Ostrand further teaches that the “[typical] HVAC system include[s] multiple stages of heating and/or cooling capacity.” Ex. 1007 ¶ 4. Because Hildebrand is silent as to which stage of the typical system—which has multiple stages— has failed, a person having ordinary skill in the art would have turned to Van Ostrand for that determination. Ex. 1002 ¶¶ 61–62. This modification would allow the Hildebrand system to detect which specific stage has failed. See Ex. 1007 ¶¶ 29–33. And because Van Ostrand represents a known method of detecting fault, it would have been obvious to use it to improve Hildebrand in a predictable way with a reasonable expectation of success. Ex. 1002 ¶ 63; see also KSR, 550 U.S. 398, 416–21. Petitioner has also sufficiently shown that a person having ordinary skill in the art would have added Rosen’s use of internet weather to the Hildebrand-Van Ostrand combination. See Ex. 1002 ¶ 115 (“Hildebrand and Van Ostrand are applied as I describe above with respect to Ground 1, with outside temperature over the Internet from a weather data provider. In my opinion, it would have been obvious to obtain outside temperature measurements from the Internet, thus replacing Hildebrand’s use of outside temperature sensors.”). Specifically, a person having ordinary skill in the art would have seen an advantage in avoiding the expense of obtaining, wiring and servicing an extra outside temperature sensor by obtaining weather information from the Internet as taught by Rosen. Ex. 1002 ¶ 120; see also Section II.F.1 (describing Rosen). Because it is undisputed that Rosen teaches using computer programming and network communications that were well-known and established at the relevant time period, there was a reasonable expectation of success. See Ex. 1002 ¶¶ 120–121.” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“There is also no dispute that ym is the output from a computer model. See Pet. 69; PO Resp. 32. Again, that is consistent with Spalink, which defines item 310—which generates ym—as a reference model. Ex. 1008 Fig. 3; ¶ 75 (describing ym as the output of the refence model). Thus, there is no meaningful dispute that the comparison shown in Figure 3—which the Petition relies on—is a comparison between a first HVAC system and a model, not a second HVAC system as recited in claim 8. Accordingly, that comparison does not teach or suggest “compar[ing] the relative efficiency of the first HVAC system and the second HVAC system” as recited in claim 8. Petitioner’s arguments that the data in the reference model comes from other buildings is inapposite. Although Petitioner accurately describes how reference model 310 is based on “data 367 collected from different buildings” (Ex. 1008 ¶ 77), Petitioner has not shown that a computer model is a second HVAC system. Therefore, comparing the output of a building to a model based on buildings does not teach or suggest the necessary comparison between the first HVAC system and the second HVAC system recited in claim 8.” slip op. at 57
- BurdenNot shown unpatentable
“claims 5 and 6. See Pet. 7 (listing of grounds), 45 (Ground 2 heading). However, the “Claim Mapping” section only discusses claims 1–3, 7, 15–17, and 20. Pet. 49–50. We noted this lack of mapping in the Institution Decision. Inst. Dec. 20. In its Reply, Petitioner argues as follows: The Institution Decision states “that the Petition omits any particular mapping for claim 5, 6, and 19” in the context of this Ground. (See Institution Decision, 20). Petitioner respectfully submits that the Petition makes clear that the claim mapping for these dependent claims is the same as in Ground 1, “with the exception that the outside temperature measurements, first recited in claim elements [1c] and [15c], come from an Internet weather data source.” (See Pet., 49). Pet. Reply 21–22 n.3. However, the Petition does not support that argument. Instead, page 49 of the Petition—which is all Petitioner cites to—does not mention claims 5 and 6. Instead, the page Petitioner cites shows that Petitioner misleadingly cropped the quotation. The full quotation below shows that page 49 of the Petition does not list claims 5 and 6: CLAIMS 1, 7, 15 AND 20 Independent claims 1 and 15, and their respective dependent claims 7 and 20, are obvious in the same manner discussed in Ground 1, with the exception that the outside temperature measurements, first recited in claim elements [1c] and [15c], come from an Internet weather data source. Pet. 49 (bold in original) (italics added to emphasize cropped language). Our rules require that “[t]he petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Petitioner did not do that with respect to” slip op. at 39
- Expert testimonyPetitioner expert discountedDecided for patent owner
“b) Our Analysis We agree with Patent Owner that Petitioner has not sufficiently shown that Hildebrand teaches or suggests limitation [1c]. The gravamen of Petitioner’s argument is that Hildebrand’s HVAC system is limited to HVAC system 12—the heating system, cooling system, and fan. See Pet. 12 (“The HVAC system is ‘HVAC system 12’ . . . .”); Ex. 1004, 4:1–10 (describing HVAC system 12). Although nominally supported by Mr. Shah’s testimony, that testimony is conclusory, parrots the Petition, and provides no corroborating evidence to show that a person having ordinary skill in the art would have understood that an HVAC system was limited to the heating and cooling systems. We give Mr. Shah’s testimony on that point no weight. See 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.”); Verlander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness); 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, Petitioner’s argument is inconsistent with Mr. Shahs’ direct testimony that clearly states that the HVAC system is broader then just the heating and cooling system and fan and includes other elements, such as thermostats and HVAC control systems. See Ex. 1002 ¶ 65 (“HVAC communications, and software, were widely known and understood.”). Applying Mr. Shah’s definition, the HVAC system as recited in claim 1 includes more than Hildebrand’s heating and cooling systems. Indeed, when discussing dependent claim 5, Petitioner argues that Hildebrand’s HVAC system also includes a thermostat. See Pet. 39. We do not find the Administrative Law Judge’s (“ALJ”) finding in an ITC proceeding involving a different record (and different patent) to be persuasive. Although the ALJ considered Hildebrand, there is nothing in the excerpt of the opinion to conclude that he considered Mr. Shah’s definition of an HVAC system. See Ex. 1010, 475–76. Nor is it clear from the record that the ALJ considered contrary testimony from Patent Owner’s expert. Id. Hildebrand Figure 1 shows an HVAC system including heating and” slip op. at 18
Patent outcomesUS 8,019,567 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,019,567 - Google LLC / Ecobee Technologies Ulc v. Ecofactor, Inc.Some claims unpatentablePTAB · Feb 6, 2023 · IPR2021-01218 · APJ Scott B Howard · IPR · Final written decision
Claims 1–3, 7, and 15–20 are unpatentable on specified §103 grounds; claims 4–6 and 8–14 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The ’567 patent is directed to a using a thermostat to detect faults in the HVAC system. See Ex. 1001, code (57). That aligns more closely with and HVAC control systems—than the one proposed by Petitioner—which focuses on energy controls. Compare Ex. 2002 ¶ 27, with Ex. 1002 ¶¶ 31– 33. Accordingly, we adopt Patent Owner’s propose definition. However, we consider the parties’ positions to be substantially similar, and note that neither party argues that the level of skill is determinative to the outcome of the case. Accordingly, we would have reached the same factual findings and conclusions of law had we adopted Petitioner’s proposed definition.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We decline to find Dr. Palmer less credible based solely on his experience. In judging the credibility of experts, we focus on whether the witness offers corroboration for his opinions, provides opinions that are consistent with the prior art, and the witness’ cross-examination testimony. Moreover, we note that Mr. Shah and Dr. Palmer substantially parrot the Petition and Patent Owner Response, respectively. Such testimony is generally unhelpful. Testimony which goes into more detail and expands on the points made in the papers (but not going beyond the points made in the papers) is more helpful and, as a general matter, given more weight so long as it is consistent with, and supported by, the other evidence in the record.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because no express construction is needed for our decision, we do not construe any of the claim limitations. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- BurdenNot shown unpatentable
“that Hildebrand teaches or suggests limitation [1c]. The gravamen of Petitioner’s argument is that Hildebrand’s HVAC system is limited to HVAC system 12—the heating system, cooling system, and fan. See Pet. 12 (“The HVAC system is ‘HVAC system 12’ . . . .”); Ex. 1004, 4:1–10 (describing HVAC system 12). Although nominally supported by Mr. Shah’s testimony, that testimony is conclusory, parrots the Petition, and provides no corroborating evidence to show that a person having ordinary skill in the art would have understood that an HVAC system was limited to the heating and cooling systems. We give Mr. Shah’s testimony on that point no weight. See 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.”); Verlander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness); 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.”).” slip op. at 18
Patent outcomesUS 8,019,567 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,019,567 - Netflix, Inc. v. Divx, LLCSome claims unpatentablePTAB · Feb 3, 2023 · IPR2020-00052 · APJ Iftikhar Ahmed · IPR · Remand
On remand, claims 1 and 17–19 are unpatentable as obvious over Vehviläinen; the Board did not reach anticipation.
RulingsRemand decision- RemandOther
“Federal Circuit. Netflix, 2022 WL 2298983 at *1. The Federal Circuit vacated our Decision as to claims 1 and 17–19 and remanded for further consideration of whether claims 1 and 17–19 are unpatentable in light of the court’s construction of a disputed limitation recited in claim 1. Id. at *7. The Federal Circuit affirmed our Decision as to claims 2 and 4, and thus, those claims are not before us on remand. Id. The parties proposed filing a joint brief, with six pages per side, limited to identifying the issues that remain on remand and identifying relevant portions of the existing record, without submitting any new evidence or arguments, and we authorized the joint brief. Paper 87; Ex. 1028. Accordingly, the parties filed a joint brief. Paper 88 (“Joint Brief”). For the reasons discussed below, we conclude, in view of the Federal Circuit’s claim construction and the complete record before us, that Petitioner has shown, by a preponderance of the evidence, that claims 1 and 17–19 are unpatentable.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither of those exceptions apply here, and for the reasons below, we disagree with Patent Owner that the plain and ordinary meaning of “selecting a filter to apply” excludes determining whether or not to apply a given filter. We begin with the claim language at issue. TQ Delta, LLC v. DISH Network LLC, 929 F.3d 1350, 1357 (Fed. Cir. 2019). When considering the language of the claim overall, the usage of “selecting a filter” in the claims does not in any way indicate whether the filter has to be selected from among multiple filters. Claim 1 recites “selecting a filter to apply to determined level of detail.” Ex. 1001, 13:20–22 (emphasis added). Patent Owner argues that “the claim language confirms that ‘selecting a filter’ means choosing from a number of alternative filters, not merely deciding whether or not to apply a filter,” (PO Resp. 34), but we see nothing in the claim language that suggests such a requirement. Patent Owner also points us to claim 19, arguing that selecting is not merely deciding whether to apply a filter, “since that determination is already made in [c]laim 19 by virtue of the initial sub-step of ‘exceed[ing] the threshold.’” Id. Again, we see nothing in claim 19 that suggests the determination of the threshold being exceeded requires a specific manner of filter selection. Instead, similar to claim 1, claim 19 recites: “when the level of detail exceeds the threshold, selecting a filter to apply to predetermined pixels.” Ex. 1001, 16:8–9. Thus, we are not persuaded that the claim language necessarily requires selecting a filter from among multiple filters. slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“because Vehviläinen performs additional analysis before selecting a moderate or high activity filter, it does not teach selecting from among multiple filters. As discussed above, we do not agree with Patent Owner’s claim interpretation, and even if we did, we are persuaded that a person of ordinary skill in the art would have easily modified Vehviläinen’s filter selection to use a single area, e.g., the smooth area of Figure 5A, and a decision branch based on the level of detail for that single area. Vehviläinen discloses that “increasing the amount of selection branches makes the system more adaptive to the nature of the blocking effect but also increases control logic.” Ex. 1004, 8:15–27. Vehviläinen states that “[a] good embodiment,” but of course, “the invention can be utilized with less than three branches.” Id. at 8:18–21. Dr. Bove testifies that a person of ordinary skill in the art “would have been motivated to reduce complexity and the required control logic by using fewer branches, as taught by Vehviläinen, including for example just one branch, particularly for applications running on performance-constrained platforms such as low-end computer processors or mobile platforms, which often had constraints on thermal dissipation, power consumption, and cost.” Ex. 1003 ¶ 120 (citing Ex. 1004, 11:7–22). He further testifies that a person of ordinary skill in the art “would have been motivated to determine the level of detail for just the ‘smooth’ area and then select the smooth filter, if the area is smooth, or the high-activity filter otherwise.” Id. Dr. Bove illustrates that modification with the following pseudocode: if ( IsSmooth (Figure_5A) == TRUE) { Select (SmoothFilter); } else { Select (HighActivityFilter); } Id. He further testifies that such a modification would have been obvious and well within [a person of ordinary skill in the art’s] level of skill, and [such a person] would have had a reasonable expectation of success given that [the] modification involves a simple reordering of elements taught by Vehviläinen, the fact that Vehviläinen expressly teaches the have had with these basic filtering and thresholding techniques. Id. On this aspect, we credit Dr. Bove’s testimony because it is based on the express teachings of Vehviläinen and addresses a straightforward modification in view of those teachings.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“a) Patent Owner Has Not Established that It is Entitled to a Presumption of Nexus We determine that Patent Owner has not demonstrated a nexus between the evidence presented and claims 1 and 17–19. Patent Owner’s arguments and evidence are directed broadly to the DivX6 codec’s deblocking scheme and not specifically to the deblocking aspects covered by the challenged claims. We agree with Petitioner that the claimed features constitute only a small part of the commercial product and the two are far from being coextensive. See Pet. Reply 31 (citing Ex. 1017, 133:10–24; Ex. 1018, 34:4–35:1). As Dr. Bajaj explained, the “DivX [codec] included a lot of things” other than deblocking, and the DivX documentation details “only a fraction of the things that were there in the codec.” Ex. 1017, 133:10–24.” slip op. at 48
Patent outcomesUS 8,139,651 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,139,651 - Google LLC v. Ecofactor Inc.Some claims unpatentablePTAB · Nov 17, 2022 · IPR2021-00982 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 1–7 and 10–19 are unpatentable: claims 1–7 and 11–19 as obvious over Wedekind and Ehlers, and claim 10 as obvious over Wedekind, Ehlers, and Jenkins; claims 20–30 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the parties agree on the educational background of a person of ordinary skill in the art. And although the parties offer different levels of experience for a person of ordinary skill in the art, there is some overlap, as both parties require experience with HVAC systems. Pet. 15 (requiring experience with “building energy management”); PO Resp. 5–6 (requiring experience with HVAC controls, and acknowledging that “building energy management” includes controlling HVAC systems). Accordingly, we do not consider the difference between the parties’ proposals to be material. Moreover, neither party asserts that its positions or the outcome depends on which definition we apply in this proceeding.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In an inter partes review, we construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 11
- Strike new argumentNew argument consideredDecided for petitioner
“Reply ignore the express statement in the Petition characterizing sensors 36 in Wedekind as “a source external to the building.” Sur-reply 2 (quoting Pet. 28), 3. Patent Owner also argues this is a new argument that we should disregard. Sur-Reply 2. We disagree. Although Patent Owner is correct that Petitioner contends Wedekind’s outside air temperature sensors 36 are a source external to the building, that is not the only argument Petitioner presents. In the Petition, Petitioner contends more generally that Wedekind’s outside air temperature sensors 36 “measure the outside air temperature.” Pet. 28. Petitioner also argues that Ehlers provides weather data including outside temperatures, and that the source of the data is a weather service provider that is external to the building. Pet. 32 (citing Ex. 1008, 9:53–54, 35:13–17). Petitioner further argues that it would have been obvious “to replace Wedekind’s outside temperature sensors 36 with receiving outside temperature data from a network connection,” as Ehlers teaches. Pet. 32. In view of this, we agree with, and are persuaded by, Petitioner’s argument that it does not rely only on Wedekind to meet the limitation that “the second data from the network connection is collected from a source external to the building.” Reply 10. Additionally, the presence of these arguments in the Petition undermines Patent Owner’s assertion that Petitioner is attempting to present new arguments in the Reply. Similarly, Petitioner acknowledges in the Petition that Wedekind does not expressly teach the second data is received from a network connection, and, therefore, relies on Ehlers’ disclosure of receiving data from a network connection. Pet. 30; Reply 11. Patent Owner does not dispute that Ehlers discloses receiving weather data from a network connection. See PO Resp. 15–28; Sur-reply 3–8. In view of the foregoing, Petitioner has demonstrated persuasively that the combined disclosures of Wedekind and Ehlers teach or suggest “the one or more processors further configured to receive a second data from a network connection, wherein the second data from the network connection is collected from a source external to the building” claim 1 requires.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s arguments to be persuasive. Petitioner presents undisputed evidence, based on the disclosure of Wedekind and Ehlers, that obtaining outside temperatures either from local sensors or over a network was known in the art. Pet. 28–32; Ex. 1006, 4:45–47; Ex. 1008, 9:50–63. Petitioner also directs us to evidence, including in Ehlers itself, supporting Petitioner’s reasoning that replacing Wedekind’s outside air temperature sensors with a network-based weather data service would have saved the cost and effort of installing multiple sensors. Pet. 32; Ex. 1002 ¶ 103; Ex. 1008, 39:54–57; Reply 13. As Petitioner points out, Patent Owner does not directly challenge Petitioner’s argument and evidence that a person of ordinary skill in the art would have had reason to modify Wedekind in view of Ehlers to avoid the cost and effort of installing multiple sensors. Reply 13.5 Indeed, Patent Owner acknowledges that Wedekind “expressly indicates that there must be multiple sensors of outdoor temperature for sufficient accuracy in Wedekind’s complex computational model.” PO Resp. 26; Ex. 1006, 3:62–67. The need for multiple sensors in Wedekind 5 We recognize Patent Owner argues that a person of ordinary skill in the art would not have been motivated to connect Wedekind’s outside air temperature sensors 36 to a network because it would “increase costs.” PO Resp. 23–24. Patent Owner, however, presents this argument before it addresses Petitioner’s proposed combination of Wedekind and Ehlers. See PO Resp. 23–24 (referring to cost increases first, and addressing the proposed combination of Wedekind and Ehlers in the next paragraph). Thus, Patent Owner’s cost argument does not appear to address Petitioner’s assertion regarding cost savings in view of the proposed combination. Nor does Patent Owner present evidence regarding, or explain adequately, what costs it is referring to, or how those costs would increase. PO Resp. 23–24; Ex. 2005 ¶ 61. By way of contrast, Petitioner’s arguments regarding cost savings are supported by the disclosure of Ehlers itself. Ex. 1008, 39:54–57. strengthens Petitioner’s argument that a person of ordinary skill in the art, in view of Ehlers’ teaching regarding avoiding the cost and effort of installing multiple sensors, would have had reason to modify Wedekind in view of Ehlers. Additionally, Patent Owner’s own declarant characterized Ehlers’ discussion of “lowering the cost of installation and ongoing maintenance” as “teach[ing] away from external sensors.” Ex. 1023, 58:7–18. These arguments and evidence undermine Patent Owner’s assertion that Petitioner failed to provide any analysis as to why a person of ordinary skill in the art would have modified Wedekind in view of Ehlers. Sur-reply 3–4; PO Resp. 25–28. Petitioner also argues, and provides evidence in the form of testimony from Dr. Shah demonstrating, that a person of ordinary skill in the art would have been able to modify Wedekind’s system by connecting Wedekind’s processing means to a network connection such as Ehlers’ phone input or communications link, and would have obtained predictable results. Pet. 33; Ex. 1002 ¶ 104. Patent Owner does not dispute this evidence. To the contrary, Patent Owner appears to concede that the proposed combination would work, although not as reliably as Wedekind’s hardwired system. PO Resp. 25–26. As a result, and in the absence of any evidence or argument suggesting otherwise, we credit Dr. Shah’s testimony. Furthermore, Ehlers teaches, in connection with providing data obtained from a weather service provider over a network, that “[t]he data may be provided at regular intervals and be sufficiently localized for acceptable accuracy.” Ex. 1008, 9:58–60. This statement from Ehlers itself undermines Patent Owner’s arguments regarding alleged problems with transmitting data over networks and insufficient accuracy, including Patent Owner’s argument that Wedekind teaches away from the approach used by Ehlers. PO Resp. 25–28. Nevertheless, even if we were to give Patent Owner the full credit of its arguments regarding unreliable transmission of data over networks and data obtained from weather service providers being less useful than data obtained from sensors at a specific structure, obviousness “does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). As discussed above, Petitioner’s evidence and arguments demonstrate that using Ehlers’ network to transmit temperature data was at least a suitable option. For all of the foregoing reasons, we determine Petitioner has demonstrated persuasively that a person of ordinary skill in the art would have had reason to modify Wedekind in view of Ehlers, and would have had a reasonable expectation of success in doing so. iii.” slip op. at 25
Patent outcomesUS 10,612,983 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,612,983 - Ingenico Inc. v. Ioengine, LLCSome claims unpatentablePTAB · Sep 21, 2020 · IPR2019-00879 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1, 2, 4–8, 13–16, 19–21, 24, 25, and 27–29 are unpatentable as anticipated by Iida; claims 3, 10–12, and 26 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In the Decision on Institution, we determined that Petitioner’s proposed description of the qualifications of a person of ordinary skill in the art aligned with the technology and claims of the ’969 patent. Inst. Dec. 24. Patent Owner does not challenge this determination and states that it has applied the Board’s adopted definition of one of ordinary skill in the art. PO Resp. 2. Dr. Butler testifies that the adopted level of art in the art would not have any effect on the opinions presented in his declaration, even though Dr. 6 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf. Butler had previously presented a different proposed qualifications. Ex. 2011 ¶ 13. Accordingly, for the reasons given in the Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill, which is that a person of ordinary skill in the art should have:” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “interactive user interface” In the Decision on Institution, we construed the term “interactive user interface” (“IUI”) as “a display with which a user may interact to result in the portable device taking action responsively.” Inst. Dec. 19. The parties have presented additional arguments in additional briefing on the term’s construction, which we have further considered, and, as discussed below, we modify the interpretation of the term. See PO Resp. 7–16; Pet. Reply 1–3. a. Petitioner’s Assertions In the Petition, Petitioner asserts that the term “interactive user interface” should be interpreted as “a display with which a user may interact to result in the computer taking action responsively.” Pet. 14. Petitioner argues that this proposed interpretation is consistent with the plain and ordinary meaning of the term. Id. at 13. Petitioner also contends that although the term “interactive user interface” is not used in the ’969 patent specification, the specification consistently describes the terminal output component as a “display mechanism,” and the interactive user interface is presented on the terminal output component in the claims. Id. (citing Ex. 1001, 4:40). Petitioner contends that a number of displays in the ’969 patent respond to text inputs from an input component to elicit a responsive action, and refers to an example of the input of registration information in screen 515 in Figure 5, where, if the input is successful, follow-up screen 517 is produced, but otherwise there is an error message. Id. at 13–14 (citing Ex. 1001, 9:52–54, 7:53–56). In its Reply, Petitioner asserts that the ordinary meaning of the term “interactive user interface” is “a presentation (display) with which a user may interact to result in the computer (portable device) taking action responsively.” Pet. Reply 1. This is similar to the construction that Petitioner previously proposed in the Petition, however, Petitioner now proposes that the “computer” can be considered to be a “portable device,” and a “display” can also be considered to be a “presentation. See Pet.14. According to Petitioner, the claims require that the interactive user interface be presented on the terminal output component. Pet. Reply 1. Petitioner argues that the specification describes that it is a portable device that responds to user interaction with the IUI, such as the interaction with a login screen text box. Id. at 2 (citing Ex. 1046, 52:11–55:13; Ex. 1001, 7:55–56). Petitioner asserts that the claims require that it is the portable device that responds to user interaction, with the “fourth program code” executing in response to user interaction with the interactive user interface. Id. Petitioner compares the claim of the parent ’047 patent, which was narrowed to refer to “the interactive user interface is configured to enable the user to cause the portable device processor to execute program code stored on the portable device memory,” to the claims here. Id. Petitioner also asserts that “‘[p]resentation’ is used and described in the ’969 patent as corresponding to a ‘display.’” Id. at 1.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“2. Analysis A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference” slip op. at 32
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“obviousness, we need not determine whether Patent Owner’s evidence of objective indicia of nonobviousness weighs even further against a conclusion of obviousness. See Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1343 (Fed. Cir. 2018) (holding, in affirming Board decision determining that petitioner had not shown unpatentability, that “objective indicia of nonobviousness” “need not [be] addressed” because the court “affirmed the Board’s findings regarding the failure of the prior art to teach or suggest all [claim] limitations”); Palo Alto Networks, Inc. v. Finjan, Inc., 748 F. App’x 317, 324 (Fed. Cir. 2018) (non-precedential) (affirming Board decision holding that petitioner failed to establish unpatentability due to a lack of disclosure of a claim limitation, without reaching secondary considerations, and holding that “it was not necessary for the Board to consider” expert testimony “limited to the issue of secondary considerations”).” slip op. at 78
Patent outcomesUS 9,059,969 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,059,969 - Ingenico Inc. v. Ioengine, LLCSome claims unpatentablePTAB · Sep 21, 2020 · IPR2019-00929 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 55, 57–63, 67–72, 74, 77, 78, 81–87, 89, 92–98, 100, 103, 104, 106–112, 116–121, 123, and 126–129 are unpatentable; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the Board’s adopted definition of a POSITA. PO Resp. 3; Ex. 2139 ¶¶ 12, 13. Both parties’ experts state, however, that their opinions would not change based upon which party’s definition of a POSITA is adopted. Ex. 2139 ¶ 13; Ex. 2110, 240:24–241:6.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“For these reasons, we find that Petitioner has shown by a” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“meet claims 74, 89, 100, and 123 because Davis “does not have two different devices on the client side.” PO Resp. 63–64. Patent Owner’s argument does not persuasively rebut Petitioner’s obviousness case, which relies on Iida, not Davis, to teach two devices on the client side—Iida’s digital camera 12 (a portable device) and terminal 14. Pet. 13–16, 60; Ex. 1003 ¶ 57, Figs. 1A, 1B. Furthermore, in Petitioner’s combination, a digital certificate is substituted for Iida’s user ID and password. Pet. 61. Patent Owner does not dispute Petitioner’s contention that Iida discloses transmitting a user ID and password stored in memory 48 of camera 12 to image server 18 through terminal 14. Id. at 43–44 (addressing claim 71; citing Ex. 1003 ¶¶ 110, 113). Accordingly, Petitioner persuades us that the combination of Iida and Davis discloses the limitations of claims 74, 89, 100, and 123 (and claims 71, 86, 97, and 120 from which they depend).” slip op. at 89
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“First, Patent Owner has not argued that the licensed products are coextensive with the claims of the ’703 Patent, accordingly, there is no presumption of a nexus. See Lectrosonics, Paper 33 at 33.” slip op. at 94
Patent outcomesUS 9,774,703 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,774,703 - Intel Corporation v. Qualcomm, Inc.Some claims unpatentablePTAB · Feb 20, 2020 · IPR2018-01154 · APJ Trevor M Jefferson · IPR · Final written decision
Claim 16 is unpatentable as obvious over Kwak; claims 15, 17–18, and 20 were not shown anticipated by Kwak, and claim 19 was not shown obvious over Kwak and Choi 2010.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Our Institution Decision adopted Petitioner’s proposed level of skill. Dec. on Inst. 11. Patent Owner does not dispute this issue. PO Resp. 11. We are persuaded by Petitioner’s definition of the level of ordinary skill in the art and we find the work experience is commensurate with the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, the ’558 patent requires a degree of knowledge that is specific to mobile device architecture as well as transmission and power circuitry for radio frequency devices. See Pet. 36–37; Ex. 1201, Abstract, 1:7–9, 30–31.” slip op. at 7
- Prior constructionTerm construed petitioner constructionPrior construction adoptedDecided for petitioner
“1. “current sense amplifier” (claim 15) Petitioner offers a claim construction for “current sense amplifier” (claim 15) to mean an “amplifier that produces a voltage from a current,” which is based on the ALJ’s construction in the parallel ITC proceeding. Pet. 35–36 (citing Ex. 1223, 11–12). Petitioner argues that the ITC construction is consistent with the ’558 patent specification and the knowledge of a person of ordinary skill in the art. Pet. 35–36 (Ex. 1201, 4:64–66, 5:7–10, 5:18–20). Patent Owner argues that this term does not require construction, but does not contest Petitioner’s contention or our adoption of this construction in the Institution Decision. PO Resp. 10. Based on the full record and for the reasons given by the ALJ in the ITC proceeding (Ex. 1223, 11–12), we adopt the construction of “current sense amplifier” to mean an “amplifier that produces a voltage from a current.”” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“As we discussed in IPR2018-01152 and IPR2018-01153, and incorporate herein (1152 Final Dec. 12–21), the broadest reasonable interpretation is what would be understood by one of ordinary skill in the art in the context of the entire disclosure. See Translogic, 504 F.3d at 1257. The ’558 specification and the context of claims 6, 8, and 13 and the related language of claim 19 support that the amplifier must be able to receive both the boosted supply voltage and the first supply voltage (a selective boost) as recited in the claims. PO Resp. 35–38; Ex. 1201, 1:42–50, 5:31–49, 8:55– 62, 8:62–9:17, 9:21–36, 10:19–29, Figs. 3 and 5. In light of these findings, we do not agree with Petitioner’s arguments that the plain language of the claim 19 identifies two alternatives that need not both be present. Pet. Reply 3–4. We credit and find persuasive Patent Owner’s evidence that the ’558 specification, which provides context for the interpretation of an ordinarily skilled artisan, refers to the capability of receiving or operating on both voltages at the source (envelope amplifier). See PO Resp. 35–38.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“On the full record, Petitioner has not provided sufficient or persuasive argument and evidence that Figure 6 is merely a more detailed implementation of Figure 5 such that a person of ordinary skill in the art would envision them as a single disclosure. Figure 6 specifically discusses a summing circuit operating on input current and offset current that differs from the voltage circuit signals shown in Figure 5. PO Sur-reply 13–14. We also note that feedforward node in Figure 6 differs from that shown in Figure 5. Indeed, Kwak expressly notes the differences and advantages between Figures 4 and 5 (showing summation of voltage signals) and Figure 6, which shows voltage signals converted into current signals before summation, stating that: In CMOS design, although three voltage signals can be added and then integrated as shown in Figs. 4 and 5, the simultaneous summation and integration of the signals at the node Vc, after the conversion of the three voltage signals into current ones, is advantageous, that is, the sensed output current of the linear amplifier, the feedforward current, and the high-frequency current through the ripple filter are added together and integrated at the node with the inverted polarity of the last one Ex. 1211, 2669. Kwak’s disclosure notes differences between the voltage signals of Figures 4 and 5 and the current conversion feedforward teachings shown in Figure 6. See id. On the full record, Petitioner has failed to persuasively establish that “a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination of elements” of claim 15 based on Kwak’s disclosures. See Microsoft Corp., 878 F.3d at 1068. Petitioner’s parallel citations to Figures 5 and 6 and joint discussion of the current summing and integration of Figure 6 and the voltage summing of Figures 5 (see Pet. 42–49), do not establish that Kwak shows the elements of the claim in an embodiment as arranged in the claims. Microsoft Corp., 878 F.3d at 1068–1069. Petitioner’s arguments and testimony evidence (Ex. 1203 ¶ 96; Pet. 44–45 (citing Ex. 1203 ¶¶ 94–96)) fail to address sufficiently the differences between Kwak’s Figures 5 and 6. For the reasons discussed above, Petitioner has not demonstrated by a preponderance of the evidence that Kwak anticipates independent claim 15 or dependent claims 17, 18, and 20.” slip op. at 19
Patent outcomesUS 8,698,558 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,698,558
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.