• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.Some claims unpatentable
  PTAB · Jan 24, 2023 · IPR2021-01266 · APJ John D Hamann · IPR · Final written decision

  Claims 1, 5, 8, and 12–13 are unpatentable over Reime; claim 11 is unpatentable over Reime and Hinckley. The remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted the following definition for one having ordinary skill in the art at the time of the invention of the ’093 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Dec. on Inst. 22 (quoting Pet. 10 (citing Ex. 1002 ¶ 47)). This definition mirrors what Petitioner proposed, except we excised the phrase “at least” which modified the years of experience as that language is vague and open-ended. Id. Patent Owner proposes a different definition for one of ordinary skill in the art, but does not specifically address any deficiencies in Petitioner’s Petitioner’s obviousness arguments “are not affected [by] differences in the definitions.” Id. (citing Ex. 2056 ¶ 10). Because Petitioner’s definition of the level of skill in the art (excluding “at least”) is consistent with the ’093 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner and conclude that Patent Owner incorrectly attempts to exclude touching from the claims. Patent Owner incorrectly focuses on the term “propinquity” itself and ignores the surrounding claim language. That is, whether propinquity and touching are mutually exclusive, as Patent Owner argues, is inapposite. The claims do not recite having a of propinquity,” without reciting a lower bound. E.g., Ex. 1001, 67:48–51 (emphasis added). The plain meaning thus includes a degree of propinquity, and being closer. The Specification supports this conclusion by disclosing detecting a user’s fingers when they touch, or are located in propinquity to, a surface. See, e.g., id. at 48:48–52 (“[A] position of a user’s fingers is detected by means of a touch responsive input functionality and/or propinquity responsive input functionality.”), 49:49–52 (“When the user’s fingers touch, as in FIG. 20B, or is located in propinquity to, as in FIG. 20A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 50:25–28 (“When the user’s fingers touches, as in FIG. 21B, or is located in propinquity to, as in FIG. 21A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 50:58–61 (“When the user’s fingers touch, or are located in propinquity to, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”). In other words, the Specification discloses that the fingers are sensed when they are within the degree of propinquity, or are closer (e.g., touching). Id.” slip op. at 11

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

    “Patent Owner that Petitioner does not demonstrate by a preponderance of the evidence that one of ordinary skill in the art would have found it obvious to modify Reime’s teachings to distinguish between an object’s directions of motion. In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (holding that we must consider whether a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention). First, we find that Reime’s teachings about tracking the up/down movement of an object (as opposed to left/right movement) relate to two-dimensional movement, rather than three-dimensional movement. Ex. 1010 ¶ 108. Second, we find that Reime’s teaching that “the sensitivity and the optical response of the light receivers . . . may vary from one application to another” does not suggest tracking three-dimensional movement. Id. ¶ 111. Rather, this passage relates to at what distance from a touchpad device Reime’s sensors detect an object (i.e., when is the object adjacent to the surface). Id. ¶¶ 74, 111. Hence, we find that Reime’s teachings do not provide sufficient reasoning to modify Reime in the manner Petitioner does. which in our view, and taken as a whole, uses impermissible hindsight to reconstruct the invention of claim 11. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57– 58; Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” (citation omitted)). In addition, we find that Dr. Bederson’s cited testimony is conclusory, and lacks the underlying factual support to guard against impermissible hindsight. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57–58. In sum, we find that Petitioner does not show that one of ordinary skill in the art would have been motivated to modify Reime in the manner Petitioner does. Hence, we determine that Petitioner does not demonstrate by a preponderance of the evidence that claim 11 would have been obvious to one of ordinary skill in the art over Reime.” slip op. at 43

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “First, we find that Reime’s teachings about tracking the up/down movement of an object (as opposed to left/right movement) relate to two-dimensional movement, rather than three-dimensional movement. Ex. 1010 ¶ 108. Second, we find that Reime’s teaching that “the sensitivity and the optical response of the light receivers . . . may vary from one application to another” does not suggest tracking three-dimensional movement. Id. ¶ 111. Rather, this passage relates to at what distance from a touchpad device Reime’s sensors detect an object (i.e., when is the object adjacent to the surface). Id. ¶¶ 74, 111. Hence, we find that Reime’s teachings do not provide sufficient reasoning to modify Reime in the manner Petitioner does. which in our view, and taken as a whole, uses impermissible hindsight to reconstruct the invention of claim 11. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57– 58; Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” (citation omitted)). In addition, we find that Dr. Bederson’s cited testimony is conclusory, and lacks the underlying factual support to guard against impermissible hindsight. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57–58. In sum, we find that Petitioner does not show that one of ordinary skill in the art would have been motivated to modify Reime in the manner Petitioner does. Hence, we determine that Petitioner does not demonstrate by a preponderance of the evidence that claim 11 would have been obvious to one of ordinary skill in the art over Reime.” slip op. at 43

  Patent outcomesUS 9,569,093 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,569,093
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.Some claims unpatentable
  PTAB · Jan 19, 2023 · IPR2021-01239 · APJ John D Hamann · IPR · Final written decision

  Claims 31 and 41 are unpatentable as obvious over Yamaguchi; claims 15–18, 21, 22, 26, and 30 were not shown unpatentable on the other grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted the following definition for one having ordinary skill in the art at the time of the invention of the ’850 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Dec. on Inst. 20–21 (quoting Pet. 8–9 (citing Ex. 1002 ¶ 44)). This definition mirrors what Petitioner proposed, except we excised the phrase “at least” which modified the years of experience as that language is vague and openended. Id.” slip op. at 8

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

    “We agree with Petitioner and conclude that Patent Owner incorrectly attempts to exclude touching from the claims. Patent Owner incorrectly focuses on the term “propinquity” itself and ignores the surrounding claim language. That is, whether propinquity and touching are mutually exclusive, as Patent Owner argues, is inapposite. The claims do not recite having a particular propinquity. Rather, they recite “ha[ving] at least a predetermined degree of propinquity,” without reciting a lower bound. E.g., Ex. 1001, 67:2–4 (emphasis added). The plain meaning thus includes a degree of propinquity, and being closer. user’s fingers when they touch, or are located in propinquity to, a surface. See, e.g., id. at 47:28–31 (“[A] position of a user’s fingers is detected by means of a touch responsive input functionality and/or propinquity responsive input functionality.”), 48:26–29 (“When the user’s fingers’ touch, as in FIG. 20B, or is located in propinquity to, as in FIG. 20A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 49:1–4 (“When the user’s fingers touches, as in FIG. 21B, or is located in propinquity to, as in FIG. 21A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 49:33–36 (“When the user's fingers touch, or are located in propinquity to, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”). In other words, the Specification discloses that the fingers are sensed when they have at least the degree of propinquity, or are closer (e.g., touching). Id.” slip op. at 11

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

    “Having reviewed the parties’ arguments, we agree with Petitioner and conclude that the claims do not require a detector assembly to be physically separate from (i.e., not interspersed with) a pixel array. See, e.g., Ex. 1001, 66:65–67:11. This is not to say that a detector assembly (e.g., detector elements) and the pixels of a pixel array are not distinct components, because they are in that they are separate components and perform different functions. See, e.g., id. at 4:44–54 (disclosing that detector elements detect electromagnetic radiation), 9:50–55 (disclosing display devices including a pixel array operative to provide a visually sensible output), 36:41–46 (disclosing discrete single-element detector elements that are commercially available). Rather, the gravamen of the parties’ dispute is whether claim 15 covers embodiments of the ’850 patent where detector elements are interspersed (at least along an edge) with pixels in a pixel array. Nothing in the claim language or Specification precludes claim 15 from covering those embodiments. Id. In addition, claim 15 recites the location of a detector assembly as being “arranged at least one edge of a viewing plane defining plate.” Id. at by including being behind, about, or along an edge within its scope. Ex. 1001, 42:61–67. Moreover, the ’850 patent illustrates that detector elements can be located, inter alia, along and behind an edge while being interspersed in a pixel array. See id. at Fig. 18F (showing detector elements 1324 along and behind an edge of plate 1328); cf. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (considering drawings for what they reasonably disclose to one of ordinary skill in the art). We find unavailing Patent Owner’s reliance on Becton. First, unlike in Becton where the same structure was relied upon, detector elements and a pixel array are separate components that perform separate functions. Becton, 616 F.3d at 1255 (accused infringer asserting “that the spring means and the hinged arm can be the same structure”); Ex. 1001, 4:44–54, 9:50–55, 36:41–46. Second, in Becton, the claims required one claim element to be “connected to” another claim element, which would be nonsensical if they were the same structure. See Becton, 616 F.3d at 1255. Here, claim 15 recites a location of a detector assembly (i.e., “arranged at least one edge of a viewing plane defining plate”), which is compatible with the detector assembly being interspersed in a pixel array. See, e.g., Ex. 1001, Fig. 18F.” slip op. at 22

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “In addition, we have reviewed the testimony of the parties’ experts that Patent Owner cites, but we give it little, if any, weight in light of the clear disclosure of the intrinsic evidence. See Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (finding extrinsic evidence “is generally of less significance than the intrinsic record” in matters of claim construction); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). Lastly, our conclusion to not include “and does not include touching”” slip op. at 14

  Patent outcomesUS 8,624,850 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,624,850
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.Some claims unpatentable
  PTAB · Jan 18, 2023 · IPR2021-01220 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, 6, 9–11, and 13 are unpatentable as obvious; claim 12 was not shown unpatentable because Reime does not teach its single-pixel-array limitation.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “402 (“Relevant evidence is admissible”). Courts have characterized the relevance threshold as being “very low.” United States v. White, 692 F.3d 235, 246 (2nd Cir. 2012) (quoting United States v. Al-Moayad, 545 F.3d 139, 176 (2nd Cir. 2008)). Under this standard, we find that Dr. Bederson’s testimony is relevant. Additionally, under the circumstances here, a bench trial, Rule 403 has limited applicability. See, e.g., Schultz v. Butcher III, 24 F.3d 626, 632 (4th Cir. 1994). Patent Owner does not provide explanation as to why there would be prejudice to it and we can weigh the evidence without improper inference. Accordingly, we do not find a basis for exclusion under Federal Rule of Evidence 403.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “better definition for purposes of this proceeding, except we again decline to adopt “at least” because that language is vague and open-ended. With respect to the educational qualifications, Petitioner’s proposed qualifications are that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field. Pet. 8 (citing Ex. 1002 ¶ 40). The claims are directed to an interactive assembly comprising at least one input sensor to provide an output indicative of an impingement of an electromagnetic radiation spot. Individuals with bachelor’s degrees in physics would be knowledgeable in researching, designing, or developing such assemblies and would be able to comprehend and evaluate the teachings of the prior art. Accordingly, Petitioner’s proposed qualifications are overly narrow in not including individuals with bachelor’s degrees in physics. With respect to work experience, a person having two years of experience would be able to comprehend and evaluate the teachings of the prior art, consistent with Petitioner’s proposal.” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “power” would be needed “to emit light sufficient for detecting z-direction distances between 2.7 inches to 10.6 inches” (Ex. 2056 ¶ 52) is conclusory and vague as to what constitutes “significantly more power,” and is not supported by data. See generally id. Accordingly, we afford Dr. Cairns’s testimony little to no weight. 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Additionally, Patent Owner’s arguments and Dr. Cairns’s testimony are based on an overly narrow reading of the prior art without addressing the knowledge of a person having ordinary skill in the art of various types of sensors (Ex. 1025 ¶ 31) such as infrared sensors and optically sensitive light crystal displays (LCDs) for providing enhanced sensing functionality using proximity measurement, for example. Cf. In re Paulsen, 30 F.3d 1475, 1480–81 (Fed. Cir. 1994) (rejecting an argument that” slip op. at 40

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

    “at the institution stage, which is reproduced in this Decision. We also maintain our determination that we have authority to correct inadvertent errors, such as the antecedent basis error in the instant proceeding. Based on the complete record now before us, we determine that “a surface thereof” has a definite meaning. In particular, we determine that “a surface thereof” should be treated as “said surface” because the term derives antecedent basis from the recitation “a surface” in the phrase “an interactive surface element defining a surface” (emphasis added). Accordingly, we correct the” slip op. at 24

  Patent outcomesUS 8,610,675 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,610,675
• Cradlepoint, Inc. / Honeywell International, Inc. et al. v. Sisvel S.P.A.Some claims unpatentable
  PTAB · Sep 12, 2022 · IPR2021-00580 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 2, 6, 7, and 8 are unpatentable as anticipated by and obvious over Sachs; claims 3–5, 9, and 10 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level Of Ordinary Skill In The Art Petitioner contends that: A POSITA at or about the time of the alleged invention (January 5, 2006) would have had a degree in electrical engineering or a similar discipline, with at least three years of relevant industry or research experience, including experience designing or implementing wireless radio systems for data transmission and retransmission. Pet. 35 (citing Ex. 1002 ¶¶ 40–53). Patent Owner contends that a person having ordinary skill at the time of invention—January 5, 2006—in the relevant art would be one a bachelor’s degree in electrical engineering, computer sciences, or telecommunications, along with three to five or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 9 (citing Ex. 2001 ¶ 27). According to Patent Owner, “[a]lthough Patent Owner’s proposed level of skill in the art is similar to Petitioners’ proposal, Patent Owner includes the qualification that a combination of more experience in the field and less education, or more education and less experience in the field would also suffice.” Id. The parties’ contentions as to the level of ordinary skill in the art are similar, and there does not appear to be a dispute that needs to be resolved. We adopt Petitioner’s definition as it appears to be consistent with the specification of the ’396 patent and the cited references. The findings and conclusions rendered in this Decision would not change had we adopted Patent Owner’s definition.” slip op. at 8

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

    “Petitioner proposes “that all claim terms should be accorded their plain and ordinary meaning, as understood by a POSITA and consistent with the specification and file history of the ’396 patent.” Pet. 34–35. Patent Owner “agrees that the claim[] terms should be given their plain and ordinary meaning” and “reserves the right to provide alternate constructions if any of the terms become material to the Board’s decision.” PO Resp. 10. We need not expressly define any claim term in our Decision in order to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). We note that the parties both implicitly construe claim limitation 1[c], “stopping the timer when the at least one data block is received from the transmitter while the timer is running, in order to prevent a triggering of a status report before the timer expires” similarly. See e.g., infra § III.D.2.” slip op. at 9

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “separate ‘reordering procedure,’ to which the timer is tied.” Id. (emphasis added). We agree that the cited evidence in Sachs more closely supports Petitioner’s position that the “timer is stopped when and because the missing PDUs are received,” and not after the occurrence of some additional step in which PDUs in the RLC buffer are shuffled into sequential order. Petitioner persuasively supports its position with, for example, its annotated version of Figure 5, reproduced above, which depicts that the T_reorder timer is stopped when out-of-order PDUs 3 and 4 are received––Sachs does not depict or describe an additional step of reshuffling occurring before the timer is stopped. Pet. 41. Patent Owner’s argument that Sachs teaches “a reordering procedure is performed before any other actions are taken” is unavailing because it is not supported by the cited evidence. In support of this argument, Patent Owner’s Declarant, Mr. Regis J. Bates, Jr., offers similar testimony that “the expiry of the timer in Sachs does not trigger a status report as in the ’396 patent, instead a reordering procedure is performed before any other actions are taken,” but does not explain why the reordering procedure takes place before “any other actions.” Ex. 2001 ¶ 53 (citing Ex. 1003, Figs. 4, 5, Abstract, 8:25–31, 9:11–15) (emphasis added). In his Second Declaration, Mr. Bates adds no further detail or explanation and cites the same portions of Sachs. Ex. 2006 ¶ 29. None of the cited portions of Sachs sufficiently supports a finding that Sachs teaches or suggests that “a reordering procedure is performed before any other actions are taken,” as Patent Owner contends and as Patent Owner’s Declarant testifies. Id.” slip op. at 18

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

    “We clarify that limitations 1[c] and 1[d] cannot both occur in response to the same set of stimuli. Limitation 1[c] can be triggered in response to one set of stimuli and limitation [d] can be triggered in response to a different set of stimuli as is shown in Sachs’s figures. In order for Petitioner to prevail, it need only show one of these mutually-exclusive claim limitations to satisfy the claim, as it contends. Petitioner persuasively shows that, under a first theory, with a first set of stimuli, the timer is stopped before it expires and limitations 1[a], 1[b], and 1[c] are performed as shown in Figure 5 of Sachs. Ex. 1003, Fig. 5. Under a second theory, with a different, second set of stimuli, the timer is allowed to expire and limitations 1[a], 1[b], and 1[d] are performed as shown in Figure 4 of Sachs. Id. at Fig. 4. In Petitioner’s annotated version of Figure 4, PDUs 3 and 4 are not received within the time period set by the T_reorder timer––as such, the T_reorder timer expires and a status report acknowledging PDUs up to 14 and negatively acknowledging PDUs 3 and 4 (i.e., indicating that PDUs 3 and 4 are missing) is sent. Pet. 41. In Petitioner’s annotated version of Figure 5, the T_reorder timer is stopped when out-of-order PDUs 3 and 4 are received within the time period set by the T_reorder timer and as such, the T_reorder timer is stopped before it can expire. Id.” slip op. at 16

  Patent outcomesUS 7,869,396 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,869,396
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsSome claims unpatentable
  PTAB · Jul 15, 2022 · IPR2021-00734 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–4, 6, and 7 are unpatentable over Talukdar and Li; claim 8 was not shown unpatentable over Talukdar and Nystrom. The motion to amend was granted.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “7. Conclusion Patent Owner has shown: (1) the amendment proposes a reasonable number of substitute claims; (2) the proposed substitute claims are supported in the original disclosure; (3) the amendment responds to a ground of unpatentability involved in the trial; and (4) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter. Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 44–47, 49, and 50 are unpatentable. Accordingly, Patent Owner’s Motion to Amend is granted.” slip op. at 82

  • ExcludeMotion to exclude, deniedDenied

    “Owner’s Motion to Exclude because Dr. Roy’s testimony should not be excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable,’” which is a “basic gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding would be considerably lower than in a lay jury trial and the wholesale exclusion of a witness’s declaration is rarely called for in a proceeding before the Board.” slip op. at 16

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

    “testimony (Ex. 1002), we are persuaded that Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Talukdar’s hybrid frame that includes a first section with data configured in 802.16(e) format for 802.16(e) fixed remote units and a second section that includes data configured in 802.16(m) format for faster moving 802.16(m) mobile remote units, because it would have provided the benefit of enabling the hybrid frame to accommodate data for a greater range of remote units within Talukdar’s wireless system. See Pet. 40–42; KSR, 550 U.S. at 421.” slip op. at 43

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

    “considerations before reaching our conclusion on obviousness as to the subject matter of claim 1. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). Patent Owner asserts that there is evidence of commercial success and licensing of the ’096 Patent to industry leaders in the wireless chip industry. See PO Resp. 53–54 (citing Exs. 2007–2010; IPR2020-01576, Ex. 1028 (confidential patent license agreement filed under seal)). Exhibit 2007 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA (W.D. Tex.). Exhibit 2008 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. ASUSTek Computer, Inc., No. 6:20-cv- 00142-ADA (W.D. Tex.). Exhibits 2009 and 2010 are a joint motion to dismiss with prejudice, and an order of dismissal, respectively, entered in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.). A copy of IPR2020-01576, Ex. 1028 has not been entered in the record of” slip op. at 49

  Patent outcomesUS 8,265,096 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,265,096
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsSome claims unpatentable
  PTAB · Jul 15, 2022 · IPR2021-00375 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–4, 6, and 7 are unpatentable over Talukdar and Li; claim 8 was not shown unpatentable over Talukdar and Nystrom.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Owner’s Motion to Exclude because Dr. Roy’s testimony should not be excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable,’” which is a “basic gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding would be considerably lower than in a lay jury trial and the wholesale exclusion of a witness’s declaration is rarely called for in a proceeding before the Board.” slip op. at 16

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

    “testimony (Ex. 1002), we are persuaded that Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Talukdar’s hybrid frame that includes a first section with data configured in 802.16(e) format for 802.16(e) fixed remote units and a second section that includes data configured in 802.16(m) format for faster moving 802.16(m) mobile remote units, because it would have provided the benefit of enabling the hybrid frame to accommodate data for a greater range of remote units within Talukdar’s wireless system. See Pet. 40–42; KSR, 550 U.S. at 421.” slip op. at 43

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

    “considerations before reaching our conclusion on obviousness as to the subject matter of claim 1. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). Patent Owner asserts that there is evidence of commercial success and licensing of the ’096 Patent to industry leaders in the wireless chip industry. See PO Resp. 53–54 (citing Exs. 2007–2010; IPR2020-01576, Ex. 1028 (confidential patent license agreement filed under seal)). Exhibit 2007 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA (W.D. Tex.). Exhibit 2008 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. ASUSTek Computer, Inc., No. 6:20-cv- 00142-ADA (W.D. Tex.). Exhibits 2009 and 2010 are a joint motion to dismiss with prejudice, and an order of dismissal, respectively, entered in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.). A copy of IPR2020-01576, Ex. 1028 has not been entered in the record of” slip op. at 49

  • Strike new argumentNew argument disregardedDecided for patent owner

    “ordinary skill in the art would have been motivated to combine the teachings of Talukdar and Nystrom (i.e., because Talukdar teaches the pilot density for 802.16(e) and 802.16(m) sections of a frame could be different, Nystrom teaches pilot structures for different scenarios, and obvious to try denser pilot symbols) are outside the scope of a proper reply because they were not presented previously in the Petition. Compare Pet. Reply 18–19, with Pet. 60–68. Although Petitioner is permitted in its Reply to address issues discussed in an institution decision, Petitioner may not submit new arguments that it could have presented earlier to make out a prima facie case of unpatentability. See Consolidated Trial Practice Guide18 (“CTPG”) 73. The opportunity to address issues discussed in an institution decision does not mean to proceed in a new direction with a new approach compared to the position taken in the Petition. See id. at 74. Furthermore, a reply that raises a new issue or belatedly presents evidence may not be considered. See id. Accordingly, we decline to consider Petitioner’s belated Reply arguments and evidence asserting new reasons why a person of ordinary skill in the art” slip op. at 60

  Patent outcomesUS 8,265,096 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,265,096
• Cradlepoint, Inc. / Sierra Wireless, Inc. et al. v. Sisvel International S.A.Some claims unpatentable
  PTAB · Jan 18, 2022 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–3 and 9 are unpatentable as obvious over Chen; claims 4–8 and 10 were not shown unpatentable on the instituted grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Response. Paper 10 (“Prelim. Resp.”). We instituted an inter partes review on all challenged claims on all grounds set forth in the Petition. Paper 11 (“Institution Decision” or “Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art.” slip op. at 10

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

    “Petitioner proposes a construction for the term “code rate.” Separately, with regard to means-plus-function limitations recited in claims 5, 9, and 10, Petitioner provides claim construction contentions that identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function, as required by 37 C.F.R. § 42.104(b)(3). Pet. 33–37. Patent Owner does not propose a definition for any claim term nor does it contest any of Petitioner’s proposed constructions. PO Resp. 7–9. In the Institution Decision, we preliminarily construed the means- plus-function claim limitations as set forth in the table below, but determined that it was not necessary for us to construe the claim term “code rate.” Inst. Dec. 11–20 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)).5 Based on the 5 Petitioner notes that “construction may be helpful to establishing the inverse and counterintuitive relationship between code rate and redundancy in which an increased code rate (e.g., 1/2) means that fewer redundant bits are transmitted whereas a decreased code rate (e.g., 1/4) means that more determination that we need not expressly construe “code rate” and our preliminary determinations for the means-plus-functions terms for the reasons set forth in our Institution Decision, which we adopt and do not repeat herein, and which are reflected in the table below. Id. at 11–19. Because Petitioner presents further argument for its construction of “means for detecting” in its Petitioner’s Reply––we address that argument below for completeness.” slip op. at 11

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

    “We recognize, however, “the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005); see also Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950–53 (Fed. Cir. 2007). “The prohibition against using expert testimony in this manner is a direct consequence of the requirement that the specification itself adequately disclose the corresponding structure.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (citing AllVoice Computing PLC v. Nuance Commc'ns., required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The specification must “disclose an algorithm for performing the claimed function.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008); Aristocrat, 521 F.3d at 1333. The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.Cir.2008) (internal citation omitted)). “Simply disclosing software, however, ‘without providing some detail about the means to accomplish the function[,] is not enough.’” Id. (citing Finisar, 523 F.3d at 1340–41 (citation omitted)). In the present proceeding, even assuming, arguendo, that the record sufficiently supports a finding that a POSITA would have known of FEC, CRC, ARQ, and hybrid ARQ protocols, Petitioner has not shown that the specification of the ’561 patent discloses a sufficient algorithm, whether “as a mathematical formula, in prose, or as a flow chart, or any other manner that provides sufficient structure” for the “means for detecting,” including an algorithm for performing any one or more of these protocols. Noah, 675 F.3d at 1312. The ’561 patent discloses “means (224) for detecting a need for retransmission of the received coded data block,” “CCU [Channel Coding Unit] [that] is responsible for channel coding, including forward error coding FEC” as well as detecting the “[t]he need for retransmission . . . by an error errors occurring on the channel with sufficient certainty.” Ex. 1001, code (57), 2:25, 6:64–65, 7:54–59; see id. at Fig. 5, Step 508, 10:41–44. Petitioner has not shown that the ’561 patent presents an algorithm for how the error detection code detects an error, nor explained the circumstances under which the error correcting code cannot correct errors and what constitutes “sufficient certainty.” Id. at 7:54–59. Although the ’561 patent discloses examples of incremental redundancy protocols such as “hybrid FEC/ARQ (Forward Error Correction/Automatic Repeat Request), which uses error correction coding in order to decrease the number of retransmissions,” it does not present an algorithm for implementing the same. Id. at 2:33–37. For the foregoing reasons and based on the entirety of the record developed during trial, we conclude that Petitioner fails to identify sufficient algorithmic structure corresponding to the “means for detecting” recited in independent claims 5 and 10.” slip op. at 15

  Patent outcomesUS 6,529,561 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,529,561
• Polygroup Limited Mco v. Willis Electric Co., Ltd.Some claims unpatentable
  PTAB · Oct 8, 2020 · IPR2016-01612 · APJ Jeremy M Plenzler · IPR · Remand

  On remand, claims 1, 3, 4, 6, 8, and 9 of the ’186 patent were held unpatentable; other remanded challenged claims were not, and substitute claims 29 and 30 were allowed.

  RulingsRemand decision

  • RemandOther

    “On appeal, the U.S. Court of Appeals for the Federal Circuit vacated our Original Decision in part and remanded the cases for further proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934 (Fed. Cir. 2019). After conferring with the parties, we permitted additional briefing to address the issues on remand from the Federal Circuit. Paper 196.” slip op. at 2

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

    “electrical connection in a single step (e.g., “‘when’ the mechanical connection is made, an electrical connection is also made”) as Patent Owner alleges. Rather, claim 1 requires “a first trunk electrical connector” and “a second trunk electrical connector” with “the second tree portion [being] electrically connectable to the first tree portion such that a portion of the first trunk electrical connector of the first trunk portion contacts a portion of the second trunk electrical connector of the second trunk portion.” Although the claim also requires that “the second tree portion is mechanically coupleable to the first tree portion about a central vertical axis,” the claim permits that mechanical connection to be independent of the electrical connection. Giving claim 1 its proper reading, there is no dispute that Miller teaches first and second trunk electrical connectors or that its tree portions are coupleable about a central vertical axis as outlined in the Petition. See Pet. I 45–48.” slip op. at 14

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

    “Petitioner contends that one skilled in the art would have modified Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner reasons, for example, that “[i]t would have been obvious . . . to enhance the mechanical and electrical connections between the electrical contacts sets and wiring assemblies of Miller[] with the detachable electrical connectors of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66 (citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable connectors of Lessner provide a quick-connect engagement allowing the builder to easily and quickly attach the wires to the terminals on the trunk connector during assembly,” which “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts.” Id. at 66. Petitioner’s contentions as to why one skilled in the art would have modified Miller’s teachings are unpersuasive. As discussed above, Petitioner cited Miller’s plug and socket connectors as corresponding to the recited trunk connectors. Petitioner’s proposed modification in the Miller alone challenge adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing greater “ease and speed of assembly and disassembly” as alleged. Petitioner’s additional reasoning that the proposed modification “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts” is equally unpersuasive. The only difference resulting from the modification is that the plug and socket connectors could be removed from their respective wiring assemblies. That is, it provides for removal of one connector by providing yet another connector, which fails to provide a benefit because Miller’s plug and socket connectors are loose, rather than fixed within the trunk portions like Patent Owner’s connectors. For at least these reasons, Petitioner has failed to establish unpatentability of claim 7 of the ’186 patent by a preponderance of the evidence.” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner

    “D. Secondary Considerations As explained in the Original Decision, Patent Owner provides evidence related to non-obviousness of the claims. Original Decision 43–60. Considering that evidence, as explained in the Original Decision, relative to the fact that Miller alone teaches each element of these claims in a single embodiment16, we determine that Patent Owner’s evidence does not outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9. For the reasons set forth above, Petitioner has established by the preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable. Petitioner has failed to establish by the preponderance of the evidence that claim 7 is unpatentable.” slip op. at 21

  Patent outcomesUS 8,454,187 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,454,187
• Polygroup Limited Mco v. Willis Electric Co., Ltd.Some claims unpatentable
  PTAB · Oct 8, 2020 · IPR2016-01610 · APJ Jeremy M Plenzler · IPR · Remand

  On remand, claims 1, 3, 4, 6, 8, and 9 of the ’186 patent were held unpatentable; other remanded challenged claims were not shown unpatentable, and substitute claims 29 and 30 were allowed.

  RulingsRemand decision

  • RemandMixed

    “On appeal, the U.S. Court of Appeals for the Federal Circuit vacated our Original Decision in part and remanded the cases for further proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934 (Fed. Cir. 2019). After conferring with the parties, we permitted additional briefing to address the issues on remand from the Federal Circuit. Paper 196.” slip op. at 2

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

    “and the second wire are detachably connected to the first trunk electrical connector of the first trunk portion.” Petitioner acknowledges that “Miller does not expressly teach that the wiring assembly is ‘modular’ or ‘separably connected.’” Pet. II 65. Petitioner contends that “assemblies for providing a detachable connection between electrical contact sets and wiring harnesses were well-known in the art.” Id. (citing Ex. 1006 ¶¶ 261–67). Petitioner contends that “Lessner teaches a ‘quick-disconnect electrical connector for receiving and releasably retaining a male tab connector’ and a [person of skill in the art (POSA)] would recognize that it may be used to create detachable connections between the electrical contacts of a connector or plug, and the wires of a wiring assembly.” Id. (citing Ex. 1008, 1:10–11; Ex. 1006 ¶¶ 261–67). Petitioner contends that one skilled in the art would have modified Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner reasons, for example, that “[i]t would have been obvious . . . to enhance the mechanical and electrical connections between the electrical contacts sets and wiring assemblies of Miller[] with the detachable electrical connectors of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66 (citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable connectors of Lessner provide a quick-connect engagement allowing the builder to easily and quickly attach the wires to the terminals on the trunk connector during assembly,” which “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts.” Id. at 66. Petitioner’s contentions as to why one skilled in the art would have modified Miller’s teachings are unpersuasive. As discussed above, Petitioner cited Miller’s plug and socket connectors as corresponding to the recited trunk connectors. Petitioner’s proposed modification in the Miller alone challenge adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing greater “ease and speed of assembly and disassembly” as alleged. Petitioner’s additional reasoning that the proposed modification “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts” is equally unpersuasive. The only difference resulting from the modification is that the plug and socket connectors could be removed from their respective wiring assemblies. That is, it provides for removal of one connector by providing yet another connector, which fails to provide a benefit because Miller’s plug and socket connectors are loose, rather than fixed within the trunk portions like Patent Owner’s connectors. For at least these reasons, Petitioner has failed to establish unpatentability of claim 7 of the ’186 patent by a preponderance of the evidence.” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedUnpatentable

    “D. Secondary Considerations As explained in the Original Decision, Patent Owner provides evidence related to non-obviousness of the claims. Original Decision 43–60. Considering that evidence, as explained in the Original Decision, relative to the fact that Miller alone teaches each element of these claims in a single embodiment16, we determine that Patent Owner’s evidence does not outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9. For the reasons set forth above, Petitioner has established by the preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable. Petitioner has failed to establish by the preponderance of the evidence that claim 7 is unpatentable.” slip op. at 21

  • BurdenNot shown unpatentable

    “The figure reproduced above is a portion of Miller’s Figure 2, which is a front, partial section view of its artificial tree, along with Petitioner’s annotations noting Miller’s electrical connections (circled in red). Pet. I 29. As seen above, Petitioner cites Miller’s plug and socket connection as the electrical connection recited in the claims. See Pet. I 33 (“Miller also teaches that wires 22 of trunks 3, 5 are electrically connectable via plug and socket connectors of Fig. 2.”), 42, 57–58 (presenting similar contentions for claims 20 and 28). The problem with Petitioner’s contentions that rely on Miller alone is that the electrical connection in Miller is independent of the mechanical connection of tree portions (i.e., the mechanical connection does not result in the electrical connection in the manner claimed). For at least this reason, Petitioner’s challenges to claims 10, 20, and 28 based on Miller alone fail.” slip op. at 23

  Patent outcomesUS 8,454,186 mixed
  § 103 obviousness
  Patents in suitUS 8,454,186
• Amazon.Com, Inc. / Amazon Digital Services, Inc. et al. v. Uniloc Luxembourg S.A.Some claims unpatentable
  PTAB · Aug 1, 2018 · IPR2017-00948 · APJ David C Mckone · IPR · Final written decision

  Claims 1–8, 18–22, and 25 are unpatentable; claims 9–17, 23, and 24 are not unpatentable; substitute claims 26–28 are denied.

  RulingsFinal written decision

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

    “The “verify” limitation of claim 1 expressly recites a check based “at least in part on a device identity.” The specification describes such a check as occurring at steps 15 and 16, not step 13. Steps 15 and 16 check whether the device identity is on record and, in response to that check, allow a digital product to be used on a device (steps 17, 18) or start a process to authorize the device. Id. at 5:1–9, 5:13–18. Although steps 15 and 16 are not expressly described as a verification of validity, steps 15 and 16, not step 13, logically track and most closely align with the language of claim 1’s “verify” and “in response to” limitations. Thus, the specification supports Petitioner’s view that the “verify” limitation can encompass checking whether unique device information is reflected in a database as authorized for a license.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “claim 1 is limiting, with Patent Owner arguing that it is and Petitioner arguing that it is not. Id. at 12–13. Patent Owner now argues that “[t]he preambles [of claims 1 and 22] expressly state that the claimed system and method are both directed to ‘adjusting’ the license in terms of its allowed copy count, which the preambles expressly define.” PO Resp. 9. We explained in the Institution Decision, however, that even if the preamble is limiting (e.g., by virtue of it providing antecedent basis (“at least one allowed copy count”) for “set the allowed copy count”), the language “[a] system for adjusting a license for a digital product over time” constitutes a 2 The preamble of claim 25 is not similar to that of claims 1 and 22, and Patent Owner does not propose an “adjusting” limitation for the language “in response to the device identity not being on the record, set the allowed copy count to a first upper limit for a first time period after an initial authorization of the digital product,” as recited in claim 25. statement of intended purpose and does not purport to modify any particular claim language, such as “set the allowed copy count.” Dec. 13–14. Patent Owner argues that our preliminary construction would vitiate the purpose of the preamble language and that, instead, “the claim limitations must be understood in light of the ‘adjusting’ context introduced in the preamble.” PO Resp. 9. However, “the mere fact that a structural term in the preamble is part of the claim does not mean that the preamble’s statement of purpose or other description is also part of the claim.” Marrin v. Griffin, 599 F.3d 1290, 1295 (Fed. Cir. 2010). Rather, the Federal Circuit has held that “a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Thus, an intended purpose set forth in a claim preamble and the context that purpose might provide, without more, are not limiting. Moreover, as Petitioner points out, “the claimed invention could be used to adjust an allowed device limit, at least to a higher limit, thereby satisfying the intended purpose of the invention.” Reply 4.” slip op. at 14

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

    “On the complete record, we find that DeMello’s authentication, which checks a Passport ID and machine ID against stored records to authenticate a device, discloses executable code for the processor to “verify that a license data associated with the digital product is valid based at least in part on a device identity generated by sampling physical parameters of the given device,” as recited in claim 1 and similarly recited in claim 22.” slip op. at 29

  • Obviousness (§103) › KSR rationalesUnpatentableNot shown unpatentableMixed

    “The Federal Circuit has cautioned that “references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). That is not the case here. As explained above, both the ’960 patent and DeMello describe precise numbers of days as arbitrary and that their respective inventions contemplate other numbers. We find that it would have been reasonable for the skilled artisan to have selected six days, as recited in claim 6, in light of DeMello’s disclosure.” slip op. at 45

  Patent outcomesUS 8,566,960 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Alice · Bilski · Berkheimer · Graham
  Patents in suitUS 8,566,960

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.