• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonNo claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01628 · APJ Stacy B Margolies · IPR · Final written decision

  Petitioners did not show claim 11 unpatentable under either § 103 ground because they did not establish a persuasive motivation to combine Usui and Gong.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Malek’s testimony regarding the level of skill in the art. See generally PO Resp. However, Dr. Muftic, Patent Owner’s declarant, opines that a person of ordinary skill in the art “would probably have had a Bachelor’s degree in computer science, with at least two years’ experience in the field of software security.” Ex. 2010 ¶ 22. Dr. Muftic’s proposed level of ordinary skill differs slightly from Dr. Malek’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Dr. Muftic quarrel with the definition proposed by Petitioner and Dr. Malek. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Malek’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Dr. Muftic’s definition.” slip op. at 14

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

    “Petitioners propose constructions for a number of terms, and asserts that “interface component,” “interception module,” “decision entity,” “security access manager,” and “access controller” are means-plus-function limitations. Pet. 16–20; Pet. Br. 5–15. Patent Owner disagrees that the foregoing terms are means-plus-function limitations and asserts that only “software services component” be explicitly construed. PO Br. 6–16; PO Resp. 8–9. As explained below, the dispositive issue in this case is whether Petitioners provide a persuasive articulated reason with rational underpinning to support their contention that a person of ordinary skill would have been motivated to combine Usui and Gong. In reaching this issue, we determine that no claim terms require express construction.” slip op. at 15

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

    “Indeed, Patent Owner cites uncontroverted evidence that in designing the J2ME platform for mobile phones, Sun Microsystems did not use the full security of the Java 2 Standard Edition and its fine-grained protection domains like that described in Gong. See Ex. 2010 ¶¶ 210, 211, 223, 224. For example, the specification for the CLDC of J2ME, which defines a “standard, minimum-footprint Java platform for small, resource-constrained, connected devices,” states that “the J2SE security model is too memory-consuming to be included in a CLDC device that allows only a few hundred kilobytes of total memory budget.” Ex. 2014, 14, 25; see also PO Resp. 21– 26. In addition, a 2000 JavaOne presentation from a Sun Microsystems employee explains that the “J2SE platform security model is much larger than the entire CLDC implementation” and that the “full J2SE™ platform security model” cannot be supported in CLDC target devices. Ex. 2015, 48. In view of this context, Petitioners lack of explanation regarding purported design incentives that would have prompted a skilled artisan to make the proposed combination is significant. See, e.g., Ex. 1010, 5 (disclosing that the Usui team designed the user interface (UI) “so that the Java part was as small as possible” to “achieve good performance of the UI capability in the mobile phone” and noting that “[r]eleasing resources that are no longer used by Java applications is very important for resource-limited systems such as mobile phones”); Ex. 1001, 1:55–61 (disclosing that “drastically increased functionality” in cellular telecommunications systems “has placed substantial demands on the developers of mobile terminals” and this demand “is exacerbated by the fact that a mobile terminal is a ‘resource scarce’ environment that is limited in size, memory, and power”).” slip op. at 30

  Patent outcomesUS 7,149,510 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,149,510
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonNo claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01622 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–5 and 7–10 were not shown unpatentable because Petitioners did not establish a persuasive motivation to combine Usui and Oaks, including for claim 4’s ground adding Spencer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Malek’s testimony regarding the level of skill in the art. See generally PO Resp. However, Dr. Muftic, Patent Owner’s declarant, opines that a person of ordinary skill in the art “would probably have had a Bachelor’s degree in computer science, with at least two years’ experience in the field of software security.” Ex. 2009 ¶ 22. Dr. Muftic’s proposed level of ordinary skill differs slightly from Dr. Malek’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Dr. Muftic quarrel with the definition proposed by Petitioner and Dr. Malek. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Malek’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Dr. Muftic’s definition.” slip op. at 14

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

    “Petitioners propose constructions for a number of terms, and asserts that “interface component,” “interception module,” “decision entity,” “security access manager,” and “access controller” are means-plus-function limitations. Pet. 16–22; Pet. Br. 5–15. Patent Owner disagrees that the foregoing terms are means-plus-function limitations and asserts that only “software services component” and “identification of requesting application domain software” be explicitly construed. PO Br. 6–17; PO Resp. 7–11. As explained below, the dispositive issue in this case is whether Petitioners provide a persuasive articulated reason with rational underpinning to support their contention that a person of ordinary skill would have been motivated to combine Usui and Oaks. In reaching this issue, we determine that no claim terms require express construction.” slip op. at 15

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

    “explanation for why, simply because the two references are in the same field of endeavor, a skilled artisan would have had reason to make the proposed combination. See Ex. 1301 ¶ 173. Nor do Petitioners or Dr. Malek elucidate what design incentives would have prompted a skilled artisan to use the finegrained security control of Oaks with the mobile phone platform of Usui, given the design constraints of less memory and resources of a mobile phone. See, e.g., Ex. 1010, 5; Ex. 2014, 14, 25; Ex. 2015, 8. Indeed, Patent Owner cites uncontroverted evidence that in designing the J2ME platform for mobile phones, Sun Microsystems did not use the full security of the Java 2 Standard Edition like that described in Oaks. See Ex. 2009 ¶¶ 90 (security manager does not exist in J2ME), 185. For example, the specification for the CLDC of J2ME, which defines a “standard, minimum-footprint Java platform for small, resource-constrained, connected devices,” states that “the J2SE security model is too memory-consuming to be included in a CLDC device that allows only a few hundred kilobytes of total memory budget.” Ex. 2014, 14, 25; see also PO Resp. 17. In addition, a 2000 JavaOne presentation from a Sun Microsystems employee explains that the “J2SE platform security model is much larger than the entire CLDC implementation” and that the “full J2SE™ platform security model” cannot be supported in CLDC target devices. Ex. 2015, 48. In view of this context, Petitioners lack of explanation regarding purported design incentives that would have prompted a skilled artisan to make the proposed combination is significant. See, e.g., Ex. 1010, 5 (disclosing that the Usui team designed the user interface (UI) “so that the Java part was as small as possible” to “achieve good performance of the UI capability in the mobile phone” and noting that “[r]eleasing resources that are no longer used by Java applications is very important for resource-limited systems such as mobile phones”); Ex. 1001, 1:55–61 (disclosing that “drastically increased functionality” in cellular telecommunications systems “has placed substantial demands on the developers of mobile terminals” and this demand “is exacerbated by the fact that a mobile terminal is a ‘resource scarce’ environment that is limited in size, memory, and power”).” slip op. at 27

  Patent outcomesUS 7,149,510 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,149,510
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonNo claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01605 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–5 and 7–10 were not shown unpatentable because Petitioners failed to establish a persuasive motivation to combine Usui and Gong, including for claim 4’s ground with Spencer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Malek’s testimony regarding the level of skill in the art. See generally PO Resp. However, Dr. Muftic, Patent Owner’s declarant, opines that a person of ordinary skill in the art “would probably have had a Bachelor’s degree in computer science, with at least two years’ experience in the field of software security.” Ex. 2003 ¶ 22. Dr. Muftic’s proposed level of ordinary skill differs slightly from Dr. Malek’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Dr. Muftic quarrel with the definition proposed by Petitioner and Dr. Malek. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Malek’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Dr. Muftic’s definition.” slip op. at 14

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

    “Petitioners propose constructions for a number of terms, and asserts that “interface component,” “interception module,” “decision entity,” “security access manager,” and “access controller” are means-plus-function limitations. Pet. 16–22; Pet. Br. 5–15. Patent Owner disagrees that the foregoing terms are means-plus-function limitations and asserts that only “software services component” and “identification of requesting application domain software” be explicitly construed. PO Br. 6–17; PO Resp. 7–11. As explained below, the dispositive issue in this case is whether Petitioners provide a persuasive articulated reason with rational underpinning to support their contention that a person of ordinary skill would have been motivated to combine Usui and Gong. In reaching this issue, we determine that no claim terms require express construction.” slip op. at 15

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

    “general field of endeavor and, as recognized by the Supreme Court, known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.” Pet. 29–30 (citing Ex. 1201 ¶ 175) (emphasis omitted). Petitioners’ declarant, Dr. Malek, repeats this statement from the Petition but fails to provide any additional explanation for why, simply because the two references are in the same field of endeavor, a skilled artisan would have had reason to make the proposed combination. See Ex. 1201 ¶ 175. Nor do Petitioners or Dr. Malek elucidate what design incentives would have prompted a skilled artisan to use the fine-grained security control of Gong with the mobile phone platform of Usui, given the design constraints of less memory and resources of a mobile phone. See, e.g., Ex. 1010, 5; Ex. 2014, 14, 25; Ex. 2015, 8. Indeed, Patent Owner cites uncontroverted evidence that in designing the J2ME platform for mobile phones, Sun Microsystems did not use the full security of the Java 2 Standard Edition and its fine-grained protection domains like that described in Gong. See Ex. 2003 ¶¶ 187, 188, 200, 201. For example, the specification for the CLDC of J2ME, which defines a “standard, minimum-footprint Java platform for small, resource-constrained, connected devices,” states that “the J2SE security model is too memory-consuming to be included in a CLDC device that allows only a few hundred kilobytes of total memory budget.” Ex. 2014, 14, 25; see also PO Resp. 17– 18. In addition, a 2000 JavaOne presentation from a Sun Microsystems employee explains that the “J2SE platform security model is much larger than the entire CLDC implementation” and that the “full J2SE™ platform security model” cannot be supported in CLDC target devices. Ex. 2015, 48. In view of this context, Petitioners lack of explanation regarding purported design incentives that would have prompted a skilled artisan to make the proposed combination is significant. See, e.g., Ex. 1010, 5 (disclosing that the Usui team designed the user interface (UI) “so that the Java part was as small as possible” to “achieve good performance of the UI capability in the mobile phone” and noting that “[r]eleasing resources that are no longer used by Java applications is very important for resource-limited systems such as mobile phones”); Ex. 1001, 1:55–61 (disclosing that “drastically increased functionality” in cellular telecommunications systems “has placed substantial demands on the developers of mobile terminals” and this demand” slip op. at 29

  Patent outcomesUS 7,149,510 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,149,510
• Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01359 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–3 and 5–7 were not shown unpatentable because Petitioner failed to establish that Hiroi taught the claimed voice delay for synchronizing voice and text.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “address the qualifications of one of ordinary skill in the art, but instead assert only that the relevant field of endeavor for the ’426 patent is “telephone communications.” PO Resp. 2; Ex. 2098 ¶ 25. This contention appears to relate to Patent Owner’s argument that Hiroi is not analogous art rather than to the level of ordinary skill in the art for assessing obviousness. See PO Resp. 36–49; Ex. 2098 ¶¶ 123–41. Thus, Patent Owner and its expert do not expressly dispute the level of skill in the art proffered by Petitioner and Mr. Occhiogrosso. In addition, although he does not offer his own opinion regarding the qualifications of a person having ordinary skill in the art, Mr. Zatkovich acknowledges Mr. Occhiogrosso’s definition and states that unless otherwise noted, the opinions expressed in his declaration testimony would not change under Mr. Occhiogrosso’s definition. Ex. 2098 ¶ 25 (citing Ex. 1012 ¶ 29). Based on our review of the record, including the experts’ testimony, the ’426 patent, and the prior art involved in this proceeding, we find that Petitioner’s proposal, as set forth by Mr. Occhiogrosso, accurately describes the qualifications of a person having ordinary skill in the art. Accordingly, we adopt Mr. Occhiogrosso’s characterization of the level of ordinary skill in the art.” slip op. at 8

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

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may provide a meaning for a term that is different from its ordinary meaning by defining the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the Institution Decision, we adopted Petitioner’s proposed construction of “assisted user,” recited in claims 1 and 5, as “a user who may be deaf or hard of hearing, but who also may be a normally hearing person who simply wants text assistance for some reason.” Dec. 5–6. Patent Owner does not challenge that construction. After considering the complete record, we maintain this construction of “assisted user” for this Final Written Decision. No other claim terms require express construction.” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We agree with and adopt Petitioner’s contentions as to how the combination of Engelke ’482 and Engelke ’405 teaches the identified limitations of claim 1. See Pet. 21–30. We also determine that a person of ordinary skill in the art at the time of the invention would have combined Engelke ’482 and Engelke ’405 in the manner asserted. In particular, we agree with Petitioner that combining the disclosure in Engelke ’405 of sending both voice and text to an assisted user who is hard of hearing with the re-voicing relay of Engelke ’482, which only provides text to an assisted user, would have been the application of a known technique to improve similar devices in the same way, and a combination of prior art elements according to known methods to yield predictable results. See Pet. 37–42, 44–45 (citing KSR, 550 U.S. at 416; Ex. 1012 ¶¶ 62–69).” slip op. at 13

  Patent outcomesUS 6,493,426 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,493,426
• Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01357 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claim 1 was not shown unpatentable because the asserted combination did not establish that Hiroi taught or motivated the claimed voice delay.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “address the qualifications of one of ordinary skill in the art, but instead assert only that the relevant field of endeavor for the ’366 patent is “telephone communications.” PO Resp. 2; Ex. 2098 ¶ 25. This contention appears to relate to Patent Owner’s argument that Hiroi is not analogous art rather than to the level of ordinary skill in the art for assessing obviousness. See PO Resp. 35–48; Ex. 2098 ¶¶ 122–40. Thus, Patent Owner and its expert do not expressly dispute the level of skill in the art proffered by Petitioner and Mr. Occhiogrosso. In addition, although he does not offer his own opinion regarding the qualifications of a person having ordinary skill in the art, Mr. Zatkovich acknowledges Mr. Occhiogrosso’s definition and states that unless otherwise noted, the opinions expressed in his declaration testimony would not change under Mr. Occhiogrosso’s definition. Ex. 2098 ¶ 25 (citing Ex. 1012 ¶ 29). Based on our review of the record, including the experts’ testimony, the ’366 patent, and the prior art involved in this proceeding, we find that Petitioner’s proposal, as set forth by Mr. Occhiogrosso, accurately describes the qualifications of a person having ordinary skill in the art. Accordingly, we adopt Mr. Occhiogrosso’s characterization of the level of ordinary skill in the art.” slip op. at 8

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

    “In the Institution Decision, we adopted Petitioner’s proposed construction of “assisted user” as “a user who may be deaf or hard of hearing, but who also may be a normally hearing person who simply wants text assistance for some reason.” Dec. 5–6. Patent Owner does not challenge that construction. After considering the complete record, we maintain this construction of “assisted user” for this Final Written Decision. No other claim terms require express construction.” slip op. at 6

  • ExcludeNot reached

    “Under the circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude. As discussed above, even without excluding Mr. Occhiogrosso’s testimony, we have determined that Petitioner has not demonstrated by a preponderance of the evidence that the challenged claims are unpatentable. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

  Patent outcomesUS 6,934,366 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,934,366
• Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentable
  PTAB · Dec 9, 2016 · IPR2015-01358 · APJ William V Saindon · IPR · Final written decision

  Claim 1 was not shown unpatentable because Petitioner did not establish a sufficient rationale to combine Engelke ’482 and Engelke ’405.

  RulingsFinal written decision

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

    “reasonable interpretation in light of the specification of the patent. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Under the broadest reasonable interpretation standard, claim terms are presumed to have their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire” slip op. at 5

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

    “We understand Patent Owner’s argument to be that a person of ordinary skill in the art would not have considered it obvious to follow the teachings of Engelke ’405 in this particular situation, because one of the main benefits taught by Engelke ’405 is to provide voice in addition to text so that non-deaf users can benefit more from voice-to-text services. Here, however, an assisted user does not need the hearing user’s voice to be provided because the assisted user already can hear the hearing user, as they are in close physical proximity (in order to use the personal interpreter). Thus, although a person of ordinary skill in the art might consider Engelke ’405 because it teaches to improve devices for the deaf such as Engelke ’482, we are not persuaded that a person of ordinary skill in the art would have considered it obvious to apply it in this situation. The reason is that the hearing user’s voice would already be present, such that providing that voice again, i.e., when applying the teaching of Engelke ’405, appears to be unnecessary and, as Patent Owner’s declarant suggests, potentially disruptive. Ex. 2098 ¶ 58. Engelke ’405 would not provide the solution to the problem it was intended to solve—the voice is there already. Petitioner offers insufficient reason or evidence explaining why a person of ordinary skill in the art would have considered it obvious to proceed to combine the references nonetheless, in view of this situation.” slip op. at 10

  • Obviousness (§103) › KSR rationalesMotivation not foundNot shown unpatentable

    “design need or market pressure that indicates it would have been obvious to try to modify the personal interpreter of Engelke ’482 to have simultaneous voice and text as shown in Engelke ’405. An obvious to try rationale generally requires some identification of “a design need or market pressure to solve a problem” before looking at the “finite number of identified, predictable solutions.” See KSR, 550 U.S. at 421. A key of the obvious to try rationale is that the design need or market pressure is what drives a person of ordinary skill in the art to consider the identified, predictable solutions. In other words, the need is addressed by the solutions. Here, the need identified by Petitioner is to upgrade devices previously intended for the deaf to be used for the hard of hearing. See Pet. 38. We agree that this is an identified need in the art. The solutions identified by Petitioner, however, are text alone, VCO, and text-enhanced telephony. Id. at 38–39. Notably, only one of these solutions, text-enhanced telephony, actually addresses the identified need of upgrading devices to include features specifically for hard of hearing users. Text only and VCO are for deaf users. Ex. 1003, 1:25–40 (describing text-only devices for the deaf); Ex. 1012 ¶ 64 (Mr. Occhiogrosso testifying that VCO “allowed a deaf but speaking person to . . . respond directly to the hearing user in voice”). The problem with Petitioner’s rationale is that it is based upon the identification of a finite set of identified, predictable solutions to a need where, in fact, two out of the three so-called solutions in the set are not actually solutions at all, because they do not address the need. In this way, Petitioner’s articulated rationale, as a whole, is internally inconsistent and, for that reason, unpersuasive.” slip op. at 13

  Patent outcomesUS 7,006,604 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,006,604
• EMC Corporation v. Acqis LLCNo claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01462 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 54 and 56–61 were not shown unpatentable because the evidence did not establish that the cited references rendered the claimed PCI transaction communication obvious.

  RulingsFinal written decision

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

    “construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 43, ll. 48–49, col. 44, l. 6; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 5, ll. 31–33 (“The present invention . . . interface[s] two PCI or PCI-like buses”), with id. at col. 10, ll. 53–55 (“Additionally, the peripheral controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “obvious over Horst and LVDS Owner’s Manual; claims 56 and 59 would have been obvious over Horst, LVDS Owner’s Manual, and Pocrass; and claim 58 would have been obvious over Horst, LVDS Owner’s Manual, and Deters. Pet. 58–59. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has not shown by a preponderance of the evidence that claims 54 and 56–61 would have been obvious over the cited references.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “Owner argues that paragraphs 10–24 and 31–37 of Exhibit 1031 should be excluded as irrelevant and prejudicial because Petitioner relies on those paragraphs to support improper arguments in the Reply. PO Mot. 8. Petitioner argues in the Reply that the TNet transaction in Horst includes PCI address bits, and that claim 54 only requires communicating two bits of a PCI bus transaction. PO Mot. 1. Patent Owner contends that both arguments exceed the scope of a proper reply, as set forth in 37 C.F.R. § 42.23(b), and that the portions of Exhibit 1031 that Petitioner relies upon to support those arguments should be excluded as irrelevant and prejudicial. PO Mot. 2–4, 6, 7. Patent Owner’s argument is not persuasive. Patent Owner argues in the Response that the TNet transaction in Horst does not include PCI address bits. PO Resp. 27–29. As such, Petitioner’s argument in the Reply that the TNet transaction includes PCI address bits is responsive to an argument raised in the Response. See 37 C.F.R. § 42.23(b) (generally permitting a reply to respond to arguments raised in a response). Patent Owner also argues in the Response that claim 54 requires communicating a 32-bit PCI address. PO Resp. 8–11. As such, Petitioner’s argument in the Reply that claim 54 only requires communicating two bits of a PCI bus transaction is responsive to an argument raised in the Response. Because we are not persuaded that the identified arguments in the Reply are improper, the premise of Patent Owner’s Motion to Exclude Exhibit 1031 fails. Therefore, Patent Owner’s Motion to Exclude paragraphs 10–24 and 31–37 of Exhibit 1031 is denied.” slip op. at 16

  Patent outcomesUS 8,041,873 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,041,873
• EMC Corporation v. Acqis LLCNo claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01469 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 24 and 31–33 were not shown unpatentable because Petitioner failed to prove obviousness over either asserted reference combination, including failure to establish Bogaerts as prior art.

  RulingsFinal written decision

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

    “Interconnect (PCI) bus transaction” to mean “a data signal communication with an interconnected peripheral component.” Pet. 13. Patent Owner agrees with the construction in the Decision on Institution that the claim term “Peripheral Component Interconnect (PCI) bus transaction” means “Peripheral Component Interconnect (PCI) industry standard bus transaction.” PO Resp. 21–22. We see no reason now to deviate from the construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 27, ll. 24–25, col. 28, ll. 35–36; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 19, ll. 31–33 (“the present invention may interface two PCI or PCI-like buses”), with id. at col. 7, ll. 4–6 (“Additionally, the host controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added). Petitioner and Petitioner’s declarant, Mr. Bruce Young, acknowledge that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. Ex. 1003 ¶ 58; Ex. 2006, 1, 3; Ex. 2031, 16:8–12. The evidence Petitioner identifies in support of its proposed construction is the claim construction order issued in ACQIS LLC v. Appro International, Inc., No. 6:09-cv-00148 (E.D. Tex. Feb. 3, 2011). Pet. 12–13 (citing Ex. 1013). In that case, though, the parties did not appear to dispute that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. See Ex. 1013, 7 (“The parties’ primary dispute is whether the term is limited to the conventional, parallel PCI Local Bus, and, therefore excludes PCI Express bus architecture and bus transaction protocol.”). Moreover, the district court subsequently reconsidered its construction and clarified that the term “PCI bus transaction” refers to a PCI industry standard bus transaction. Ex. 1030, 8–10. Therefore, we construe the claim term “Peripheral Component Interconnect (PCI) bus transaction” to mean “Peripheral Component Interconnect (PCI) industry standard bus transaction,” and we construe the claim term “PCI bus transaction” to mean “PCI industry standard bus transaction.”” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Horst outputs address and data bits of a PCI bus transaction in serial form over the TNet links. Pet. 31–34. Petitioner’s argument is not persuasive. The TNet processor interface in Horst translates a CPU transaction into a TNet transaction. Ex. 1009, 5 (“The interface to the destination CPU or I/O device provides mapping and validation hardware translating this virtual TNet address to the appropriate physical memory address.”), Figs. 5, 7; Ex. 2021 ¶ 94 (“The TNet Processor Interface generates TNet transactions from CPU front-side bus transactions.”). The TNet processor interface then encodes the TNet transaction using an 8B/9B encoder so that it can be output over the 9-bit serial TNet links. Ex. 1003 ¶¶ 48, 146; Ex. 1009, 3, Figs. 3, 4 (showing “8B/9B encoder”), Table 1; Ex. 2021 ¶ 105. Petitioner does not identify persuasive evidence indicating that either the CPU transaction or the TNet transaction is a PCI industry standard bus transaction. Pet. 31–34 (citing Ex. 1009, 3–8, Figs. 2, 3, 5, 7–9, Table 1; Ex. 1003 ¶¶ 159[24C(i)], 159[24C(iv)], 159[24C(v)], 159[31B(i)], 159[31B(iii)]); Ex. 2021 ¶ 129. Thus, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form. Petitioner points out that, after a TNet transaction is communicated over the TNet links, a TNet bus interface in the console may use information in the TNet transaction to create a PCI industry standard bus transaction if a particular I/O device is connected to a PCI bus. Pet. 31–32 (citing Ex. 1009, 7, Fig. 8). But claims 24 and 31 require more than just communicating information over serial channels that subsequently might be used in the console to create a PCI industry standard bus transaction. Claims 24 and 31, when read in light of the specification, require that the information actually communicated over the serial channels includes address and data bits of a PCI industry standard bus transaction in serial form. Ex. 1001, col. 20, ll. 60–65, col. 21, ll. 15–21, col. 27, ll. 34–38, col. 28, ll. 34–39; Ex. 2022, 15:12–16:2, 22:11–16. As discussed above, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “The evidence identified by Patent Owner indicates that the date “2 October 1996” on Bogaerts is when it was submitted to the CERN/LHCC committee. Ex. 2021 ¶¶ 170, 171, 173; Ex. 2026, 12. Although it is possible that Bogaerts was available in the CERN Library at or around the same time, Petitioner has not shown that by a preponderance of the evidence. For example, Petitioner does not cite persuasive evidence indicating that the “Submitted by 2 Oct 1996” entry in the CERN Document Server record means that Bogaerts was available in the CERN Library on that date. Tr. 23:1–12, 25:5–25; Pet. Reply 21–25. In addition, Petitioner acknowledges that the CERN Document Server record itself was not created until December 18, 2014. Tr. 25:5–25; Ex. 2011, 439. Therefore, Petitioner has not shown sufficiently that Bogaerts is a prior art printed publication based on its availability in the CERN Library.” slip op. at 17

  • ExcludeMotion to exclude, deniedDenied

    “should be excluded for lack of authentication under Fed. R. Evid. 901. PO Mot. 2–6. Federal Rule of Evidence 901 requires that the proponent produce evidence sufficient to support a finding that an item is what the proponent claims it is. Here, Patent Owner does not dispute that Exhibit 1011 is what Petitioner claims it is, namely a reference entitled “RD24 Status Report: Application of the Scalable Coherent Interface to Data Acquisition at LHC.” Id. What Patent Owner disputes is whether Petitioner has shown by a preponderance of the evidence that Bogaerts is prior art with respect to the ’814 patent. Id. Patent Owner attempts to characterize this dispute as a question of authentication, arguing that Petitioner has not produced “evidence that [Exhibit 1011] is a true and correct copy of a publication that was publicly available as of the date asserted by Petitioner.” Id. at 3. But this is a question of sufficiency of proof, not admissibility. Therefore, Patent Owner’s Motion to Exclude Exhibit 1011 is denied.” slip op. at 20

  Patent outcomesUS RE42,814 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
• Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLCNo claims unpatentable
  PTAB · Nov 2, 2015 · IPR2014-01002 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claim 10 was not shown unpatentable under § 103 over Balmuth1, the Starke Reference, or ’662 Balmuth combined with ’910 Pickens.

  RulingsFinal written decision

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

    “Claim Interpretation We interpret claims of an unexpired patent using the “broadest reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b). Under this standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of our Decision to Institute, we determined that the terms in the challenged claims did not need to be construed expressly, and we see no reason to modify that determination in light of the record developed at trial. B.” slip op. at 4

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

    “Given the complexities involved in developing a thick plate composition from a thin sheet, and the breadth of potential applications within the aerospace industry, we determine that Mr. Balmuth and Dr. Starke fail to provide sufficient reasoning as to why one of ordinary skill in the art would have attempted to manufacture thick plates having the claimed properties from the thin sheets described in the prior art. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (holding expert testimony to be impermissible hindsight for failing to explain what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place the prior art together). In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 15

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

    “In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”). Petitioner’s contentions that it would have been obvious to try to manufacture thick plates having the claimed properties and that “one of ordinary skill in the art had a ‘good reason to pursue the known options within his . . . technical grasp’” to do so similarly are insufficient. See Pet. 22; id. at 21–24. The Federal Circuit has held that “a finite number of identified, predictable solutions” may support an inference of obviousness, but “[t]o the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these ‘identified, predictable solutions’ may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008) (citing KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue known options within this or her technical grasp.”)). As set forth above, we credit Dr. Pickens’s testimony that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable. Accordingly, Petitioner has not shown sufficiently that a person having ordinary skill in the art would have considered it obvious to try to manufacture a thick plate composition with the properties recited in claim 10 of the ’509 patent.” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “to be persuasive. In order to rely on inherency to establish the existence of a missing claim limitation in an obviousness analysis, “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” PAR Pharma., Inc. v. TWI Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). Neither Mr. Balmuth’s nor Dr. Starke’s statements regarding the inherent properties of a thick plate with the same chemistry as a thin sheet are supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate. Mr. Balmuth and Dr. Starke simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case. See Ex. 1006 ¶ 13; Ex. 1008 ¶ 32. Mr. Balmuth, for example, states that “it is generally understood that the strength and fracture toughness properties of a plate are less than those of a sheet having similar chemistry,” but that “one of ordinary skill in the art would predict improved properties for a plate upon a showing of improved properties in a sheet having similar chemistry,” and does not expound upon the reasons why a person skilled in the art would understand that to mean that the thick plate would display the same mechanical properties as the thin sheet. See Ex. 1006 ¶ 14. Based upon the evidence presented, we find that the opinions of Mr. Balmuth and Dr. Starke are not persuasive as they are not supported by the evidence of record. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”). Patent Owner, in contrast, provides reasoning as to why a person having ordinary skill in the art would not have understood that a thick plate would have similar properties to a thin sheet having the same chemistry. PO Resp. 13–14, 34–35, 37–40, 42–44. For example, Patent Owner notes that since according to Mr. Balmuth you ‘don’t have the ability’ or ‘any interest’ in measuring toughness in the S-T direction in sheet, Petitioner has not established that the strength and toughness properties in sheet would necessarily be predictive of the strength and toughness properties of plate, such as described in Claim 10. Id. at 14. Dr. Pickens also testified to the complexities involved in developing thick plate aluminum-lithium alloys: For example, quench sensitivity, stress-corrosion cracking resistance, in plane anisotropy, through thickness heterogeneity, and lower short transverse fracture toughness are a few factors that make developing thick plate aluminum-lithium alloys very complicated. Furthermore, lithium lowers the thermal conductivity of aluminum which is problematic in several areas. Heat is more difficult to extract during direct-chill casting thereby exacerbating metallurgical segregation problems. Hot rolling can break down segregation, such as heterogeneous segregations at grain boundaries, so that it may be less harmful, although there is a practical limit on how thick aluminum alloy rolling ingot can be cast. The reduction ratio, i.e. scalped ingot thickness to final product gauge, is an important real-world processing variable when developing a thick plate aluminum lithium alloy. Ex. 2043 ¶ 11; see also PO Resp. 16–17 (discussing the “recognition in the art of complex differences between sheet and thick plate”). Patent Owner further notes that Dr. Pickens testified “that he would not have been motivated to add Mn in the claimed amount to an Al-Cu-Li-Mg-Ag alloy with a thickness of at least about 3 inches, or scale up a sheet alloy to the” slip op. at 11

  Patent outcomesUS 7,229,509 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,229,509
• Global Tel*link Corporation v. Securus Technologies, Inc.No claims unpatentable
  PTAB · Oct 7, 2015 · IPR2014-00785 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–10 were not shown unpatentable under § 103 over Karacki and Gainsboro ’843 because the petitioner did not establish a reason to combine them to reduce telephone rates based on inmate behavior.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Leonard Forys, opines that a person of ordinary skill in the art relevant to the ’591 patent “would have an associate degree in a technical field such as Electrical Engineering, Computer Science, or equivalent experience and a year or two experience in telecommunications technologies in order to be able to understand the nomenclature and architectures of the invention and the prior art.” Ex. 1010 ¶ 29. Patent Owner does not disagree with Petitioner’s assertions regarding the level of skill in the art, nor does Patent Owner offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’591 patent. PO Resp. 12–13. Based on our review of the ’591 patent, the types of problems and solutions described in the ’591 patent and cited prior art, and the testimony of Petitioner’s declarant, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least a an associate degree in Electrical Engineering, Computer Science, or a similar discipline, and at least one year of work experience in the design and/or development of telecommunications technologies. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “regard, for an obviousness analysis it can be important to identify a reason that would have prompted one of skill in the art to combine prior art elements in the way the claimed invention does. Id. On the record developed at trial, we are not persuaded that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have had a reason to combine the references to arrive at the challenged claims. Karacki does not disclose reducing the rate of telephone calls as reward to an inmate for good behavior, neither does Gainsboro ’843. Petitioner has not explained persuasively why a person of ordinary skill in the art would have applied the behavior modification program in Karacki to the automated calling system in Gainsboro ’843 so as to change the telephone call rate based on behavior, which is required by the claim limitation “reducing the telephone call charge rate for inmates that meet the measurement of conduct during incarceration for a predetermined period of time,” recited in each independent claim. Additionally, we are not persuaded that one of ordinary skill in the art would have viewed the creation of a 100% discount for the call as a reward to teach or suggest a change or reduction in the rate for telephone calls.” slip op. at 16

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

    “regard, for an obviousness analysis it can be important to identify a reason that would have prompted one of skill in the art to combine prior art elements in the way the claimed invention does. Id. On the record developed at trial, we are not persuaded that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have had a reason to combine the references to arrive at the challenged claims. Karacki does not disclose reducing the rate of telephone calls as reward to an inmate for good behavior, neither does Gainsboro ’843. Petitioner has not explained persuasively why a person of ordinary skill in the art would have applied the behavior modification program in Karacki to the automated calling system in Gainsboro ’843 so as to change the telephone call rate based on behavior, which is required by the claim limitation “reducing the telephone call charge rate for inmates that meet the measurement of conduct during incarceration for a predetermined period of time,” recited in each independent claim. Additionally, we are not persuaded that one of ordinary skill in the art would have viewed the creation of a 100% discount for the call as a reward to teach or suggest a change or reduction in the rate for telephone calls.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot reached

  Patent outcomesUS 6,636,591 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,636,591

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.