• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Final written decision

  Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, and 85–91 are unpatentable over Begemann, Krames, and Allen; claim 41 was not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

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

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

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

    “The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the facts. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the 13 We note that Dr. Lebby does not directly state when the Proceedings were widely available. See Sur-Reply 14. evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 25. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 13–14. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 25

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision

  Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

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

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

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

    “It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961
• Nanya Technology Corporation / Nanya Technology Corporation, U.S.A. et al. v. Monterey Research, LLCSome claims unpatentable
  PTAB · Jun 2, 2022 · IPR2021-00170 · APJ Brian D Range · IPR · Final written decision

  Claim 1 is unpatentable as obvious over McClure in view of Merritt, Issa, or Kawasumi; Petitioner did not prove claims 2 and 3 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Person of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have been a technical person having “a Bachelor’s degree in electrical engineering, computer engineering, applied physics, or a related field, and approximately two years of experience working in the design, development, and/or testing of memory circuits, related hardware design, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 11. For purposes of this inter partes review, Patent Owner adopts Petitioner’s definition. Resp. 13. Based on the totality of the record including the ’429 patent specification, cited references, and expert testimony, we find that Petitioner’s definition for a person of skill in the art is appropriate.” slip op. at 8

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

    “amplifiers “by the strobe reset generator instead [of] by the strobe global word line (gwlstrobe) 52”). The Figure 1 apparatus, at the location of the purple oval, merely conveys a strobe signal (gwlstrbuf 20) on a line without substantially changing that signal. Id. Fig. 1. The Figure 2 apparatus, however, illustrates main amp strobe 60 generating output signal 88 by delaying the gwlstrbuf signal output by buffer 58. Id. at 4:6–9, Fig. 2. Given the context of the ’429 patent specification, we decline to construe “main amplifier strobe” in a manner that would fail to distinguish Figure 2’s main amplifier strobe from Figure 1’s unlabeled strobe-carrying line (identified with a purple oval above). See id. (identifying main amp strobe 60 as a “main amplifier strobe circuit 60”). If Figure 2’s identification of a “main amplifier strobe 60” is to be distinguishable from Figure 1’s lack of any identified main amplifier strobe 60, the main amplifier strobe has to be more than just a mere strobe signal or line that carries a strobe signal. The ’429 patent specification explains that “first main amplifier strobe circuit 60 delays the rising edge of the output of the buffer 58” to “ensure[] that the local amplifiers 82, 84, 86 stay on until the main amplifier 108 is on.” Id. at 4:6–9. While we decline to import this exact functionality from the specification into claim 1’s “main amplifier strobe,” based on the discussion above, the main amplifier strobe must affect the transmitted signal and it must affect the signal consistent with the word “strobe.” See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner argues that a person having ordinary skill in the art would have modified McClure’s memory core “such that each sense amplifier 602 is coupled to a pair of global read data lines as taught by Winograd, Merritt, Issa, and Kawasumi.” Pet. 66. The preponderance of the evidence supports this position at least as to Merritt, Issa, and Kawasumi. Petitioner’s declarant, Dr. Chmelar, states that a person of skill in the art would have modified McClure to “reduce power consumption, circuit areas, and/or readaccess time because the plurality of global data bus drivers 606 . . . could be eliminated.” Ex. 1003 ¶ 215. Dr. Chmelar’s testimony on this point is credible and well-supported by the evidence. As explained above, Merritt, Issa, and Kawasumi all teach local amplifiers coupled to global read data lines, and a person of skill in the art would have recognized the advantages of the global read data line configuration by studying those references. Petitioner’s position is further supported by the ’429 patent which admits that a structure of local amplifiers connected to global read data lines was known prior art. In particular, Figure 1 of the ’429 patent illustrates “conventional solution” prior art having local amplifiers 22, 24, and 26 connected to global read data lines 38 and 40. Ex. 1001, Fig. 1, 1:26–48 (“The local amplifiers 22, 24, 26 then drive the gdrd (global read data) lines 38, 40.”); see also Pet 8–9 (mapping claim elements to Figure 1). Patent Owner argues that Petitioner does not establish reason to combine the references’ teachings. Resp. 60–62. We disagree for the reasons explained above. The record as a whole, even if the ’429 patent’s disclosure were not considered, supports by a preponderance of the evidence that connecting local amplifiers to global read data lines was a well-known configuration. See supra 27–32. Connecting McClure’s local amplifiers to global read data lines is no more than use of a known method to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Patent Owner also argues that Kawasumi criticizes its Figure 1 prior art “for its arrangement of having multiple amplifiers connected to global data lines.” Resp. 61–63; see also Ex. 2001 ¶ 176 (Patent Owner’s declarant Dr. Hassoum stating that Kawasumi says the Figure 1 arrangement is problematic). Patent Owner does not, however, persuasively dispute that use of main amplifiers with global read data lines was a known configuration or that implementation of such a configuration would have been within the abilities of a person of ordinary skill in the art. Reply 28–29. Instead, Kawasumi, for example, teaches that its arrangement of local sense amplifiers 1 providing data to the data bus 2 is a workable configuration. Ex. 1010, 1:49–63. Although Kawasumi teaches that this configuration may” slip op. at 32

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

    “Petitioner argues that a person having ordinary skill in the art would have modified McClure’s memory core “such that each sense amplifier 602 is coupled to a pair of global read data lines as taught by Winograd, Merritt, Issa, and Kawasumi.” Pet. 66. The preponderance of the evidence supports this position at least as to Merritt, Issa, and Kawasumi. Petitioner’s declarant, Dr. Chmelar, states that a person of skill in the art would have modified McClure to “reduce power consumption, circuit areas, and/or readaccess time because the plurality of global data bus drivers 606 . . . could be eliminated.” Ex. 1003 ¶ 215. Dr. Chmelar’s testimony on this point is credible and well-supported by the evidence. As explained above, Merritt, Issa, and Kawasumi all teach local amplifiers coupled to global read data lines, and a person of skill in the art would have recognized the advantages of the global read data line configuration by studying those references. Petitioner’s position is further supported by the ’429 patent which admits that a structure of local amplifiers connected to global read data lines was known prior art. In particular, Figure 1 of the ’429 patent illustrates “conventional solution” prior art having local amplifiers 22, 24, and 26 connected to global read data lines 38 and 40. Ex. 1001, Fig. 1, 1:26–48 (“The local amplifiers 22, 24, 26 then drive the gdrd (global read data) lines 38, 40.”); see also Pet 8–9 (mapping claim elements to Figure 1). Patent Owner argues that Petitioner does not establish reason to combine the references’ teachings. Resp. 60–62. We disagree for the reasons explained above. The record as a whole, even if the ’429 patent’s disclosure were not considered, supports by a preponderance of the evidence that connecting local amplifiers to global read data lines was a well-known configuration. See supra 27–32. Connecting McClure’s local amplifiers to global read data lines is no more than use of a known method to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007).” slip op. at 32

  Patent outcomesUS 7,158,429 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,158,429
• Scentair Technologies, LLC v. Prolitec, Inc.Some claims unpatentable
  PTAB · Apr 22, 2022 · IPR2021-00014 · APJ Brian D Range · IPR · Final written decision

  Claims 1–6, 8–14, 21, 24, and 25 are unpatentable as obvious; claims 7, 15–20, 22, and 23 were not shown unpatentable.

  RulingsFinal written decision

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

    “We determine that “toward” in the context of these claims means “in the direction of.” This definition is consistent with the ordinary dictionary definition that Patent Owner advances. Resp. 10; Ex. 2003, 3 (ordinary dictionary defining toward as “in the direction of” or, alternatively, as “along a course leading to”). Patent Owner argues that the ’976 patent describes embodiments supporting Patent Owner’s construction of “toward,” but directs us to no disclosure that requires “aiming.” To the contrary, the ’976 patent suggests that liquid moves “toward” something such as an end point so long as it advances along a path leading to the end point. Reply 1–4 (Petitioner collecting examples). For example, ’976 patent Figures 5 and 6 illustrate fluid taking a spiral flow pattern to outlet zone 174. The specification explains that the liquid takes a “curvilinear path . . . as it moves from the inlet 172 toward the outlet zone 174.” Ex. 1001, 10:50–55; see also Ex. 1015 ¶¶ 8–16 (Dr. Morse providing testimony regarding this and other ’976 patent embodiments). Thus, contrary to Patent Owner’s position, the specification uses the word “toward” to describe liquid that moves in the direction of the outlet––without reference to aiming––and even where the liquid’s movement encounters obstacles or otherwise fails to travel in a straight line to the outlet. We agree with Petitioner that “‘aimed’ is found nowhere in the intrinsic evidence and is contrary to the specification” of the ’976 patent. Reply 1. Further, Patent Owner’s own extrinsic evidence does not include the word “aimed” in the definition of “toward.” Ex. 2003, 3. Against that backdrop, for reasons stated above, we determine that “toward” in the context of the challenged claims means “in the direction of.”” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “least three years of experience working with, designing, or studying liquid diffusion devices or similar devices.” Pet. 14; Ex. 1003 ¶ 13. Patent Owner does not dispute that definition or advance an alternative definition. The prior art asserted in the Petition appears, on this record, as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). To the extent a more specific definition is required, we adopt Petitioner’s unopposed definition (Pet. 16) because it is consistent with the disclosures of the ’976 patent and the prior art references that form the basis for Petitioner’s challenges. See, e.g., Ex. 1001, 1:7–43 (abstract and overview of technical field of invention of the ’976 patent); Ex. 1004, code (57), ¶ 3 (abstract and background of Rosener’s invention); Ex. 1005, code (57), 1:1–13:12 (abstract and background of Rubin’s invention).” slip op. at 9

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

    “Based on the record before us, the preponderance of the evidence supports Petitioner’s position. King is concerned with delivering small particles to a patient: King states, for example, that an object of its invention is to “deliver to the patient essentially the same particle size distribution of the aerosol mist that originates from the nebulizer itself.” Ex. 1006 2:19–22; see also id. at [57] (stating that its apparatus delivers medication “in essentially the same particle size distribution of the aerosol mist”); 1:7–10 (stating that invention “delivers a mist of properly sized aerosol particles”); 1:60–65 (stating that invention “functions in a manner to assure that the medicament particles delivered to the patient will be of optimum size”). King states that in “this latest form of the invention this important baffle means comprises a generally spiral-shaped wall 100 (Fig. 20).” Id. at 6:20– 22. A person of ordinary skill in the art would have understood that design of the passage, through which aerosolized particles pass, will affect the size of output particles. Ex. 1003 ¶ 60; Ex. 1004 ¶ 27 (teaching that, for example, “tight bends” may be use to separate small airborne particles from big particles). We find that a person of ordinary skill in the art would have recognized that the spiral structure of King’s passage is an example of a “tight bend” (as referenced by Rosener) that can help control what size of particle progresses through the entire passage. Ex. 1006 6:16–22 (explaining that “this important baffle means comprises a generally spiral-shaped wall 100” and serves to “provid[e] a circuitous fluid flow path through the first chamber”)8; Ex. 1003 ¶¶ 56–61. A person of ordinary skill in the art’s use of a spiral structure, as taught by King, to further control particle size via tight bends, as taught by Rosener, would have been obvious because it would have been a “predictable use of a prior art elements according to their established function.” KSR Int’l, Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Rather than a spiral disrupting Rosener’s separation as Patent Owner argues, the combined teachings of Rosener and King suggest that King’s spiral would assist in achieving separation and particle size control (as Rosener and King teach). Dr. Morse’s testimony is credible in this regard and supports our findings and conclusion along with the references themselves. Ex. 1003 ¶¶ 54–56. Thus, for the reasons explained above, Petitioner has established by a preponderance of the evidence that the subject matter of claims 2 and 11 of the ’976 patent would have been obvious over Rosener in view of King.” slip op. at 24

  • BurdenNot shown unpatentable

    “Ultimately, to determine whether Rosener’s suggested tortuous passage is a structure capable performing the functionality of claims 7 and 16, we would need to determine that, because of Rosener’s tortuous passage, liquid would take more time to leak when the device is upended than if the tortuous passage was not present. The record before us, however, does not adequately support such a finding. Here again, the paucity of information provided by Petitioner, who bears the burden of showing unpatentability, tips against a conclusion that these claims are proven unpatentable. Although tight bends and corners might make the flow take longer to leak from the cartridge (as Petitioner urges at Reply 4–6), Petitioner does not establish that this is the case and, moreover, does not establish that it is not the case that the tight bends and corners might make the liquid take less time to leak from the cartridge. As Patent Owner argues, where a channel narrows in a direction of flow, a fluid’s speed may increase in accordance with Bernoulli’s principle. Sur-Reply 7–8.10 This principle is evidenced by the Svoboda reference, which explains that gas will travel faster through the “necked down portion 29” of its venturi tube. Ex. 1008, 4:4–8, Fig. 1, 2 (illustrating necked down portion 29). Accordingly, the record is unclear as to whether the tight bends and corners would speed up or slow down the flow of liquid from the cartridge. Additionally, Rosener does not refer to its tortuous passage as preventing leaking, and if the tortuous passage were capable of doing so, it is unclear why the valve would be necessary. See 10 The record also lacks evidence regarding to what extent other factors such as fluid viscosity, pressure differentials, and friction losses could potentially also affect flow speed. This lack of evidence, again, underscores Petitioner’s failure to meet its burden to show unpatentability of these claims. generally Ex. 1004; see also Ex. 2005 ¶ 68 (Dr. Mello’s written testimony on point). In any event, for reasons explained by Patent Owner, Petitioner’s analysis regarding the path and speed of liquid flow when Rosener’s device is upended is insufficient to support the unpatentability of claims 7 and 16 (Sur-Reply 1–18), at least because Petitioner fails to take account of leakage through orifice 401 or because of Rosener’s express need for a valve to provide for a device that “may be inverted without causing the fragrance oil to pour out” (id. at 12). See Ex. 1004 Fig. 2D (illustrating position of orifice 401), ¶ 33 (describing Rosener’s valve); see also Resp. 11–17 (Patent Owner’s arguments); Pet. 29–30, 33; Reply 4–6 (Petitioner’s analysis).” slip op. at 37

  Patent outcomesUS 9,745,976 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,745,976
• Scentair Technologies, LLC v. Prolitec, Inc.Some claims unpatentable
  PTAB · Apr 22, 2022 · IPR2021-00012 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 5, 6, 8–10, 13–16, 18, and 22 are unpatentable as obvious; the Board did not find claims 1–4, 7, 11, 12, 17, 19–21, 23, and 24 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Petitioner asserts that a person of ordinary skill in the art “would typically have a bachelor’s degree in mechanical or chemical engineering as well as at least three years of experience working with, designing, or studying liquid diffusion devices or similar devices.” Pet. 16; Ex. 1003 ¶ 13. Patent Owner does not dispute that definition or advance an alternative definition. See Resp. 79 (repeating Petitioner’s definition). The prior art asserted in the Petition, on this record, is representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). To the extent a more specific definition is required, we adopt Petitioner’s unopposed definition (Pet. 16) because it is consistent with the disclosures of the ’004 patent and the prior art references that form the basis for Petitioner’s challenges. See, e.g., Ex. 1001, 1:7–43 (abstract and overview of technical field of invention of the ’004 patent); Ex. 1004, code (57), ¶ 3 (abstract and background of Rosener’s invention); Ex. 1005, code (57), 1:1–13:12 (abstract and background of Rubin’s invention).” slip op. at 8

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

    “We determine that “toward” in the context of these claims means “in the direction of.” Ex. 2003, 3. That definition is consistent with the dictionary definition advanced by Patent Owner. Resp. 7–11; Ex. 2003, 3 (ordinary dictionary defining toward as “in the direction of” or, alternatively, as “along a course leading to”). Patent Owner argues that the ’004 patent describes embodiments supporting Patent Owner’s construction of “toward,” but directs us to no disclosure that requires “aiming.” Id. To the contrary, the ’004 patent suggests that liquid moves “toward” something, such as an end point, so long as it advances along a path leading to the end point. Reply 1–4 (Petitioner collecting examples). For example, in the ’004 patent, Figures 5 and 6 illustrate fluid taking a spiral flow pattern to outlet zone 174. The specification explains that the liquid takes a “curvilinear path . . . as it moves from the inlet 172 toward the outlet zone 174.” Ex. 1001, 10:34–36; see Ex. 1015 ¶¶ 8–16 (Dr. Morse providing testimony regarding this and other ’004 patent embodiments). Thus, contrary to Patent Owner’s position, the specification uses the word “toward” to describe liquid that moves in the direction of the outlet––without reference to aiming––and even where the liquid’s movement encounters obstacles or otherwise fails to travel in a straight line to the outlet. We agree with Petitioner that “‘aimed’ is found nowhere in the intrinsic evidence and is contrary to the specification” of the ’004 patent. Reply 1. Further, Patent Owner’s own extrinsic evidence does not include the word “aimed” in the definition of “toward.” Ex. 2003, 3. Against that backdrop, for reasons stated above, we determine that “toward” in the context of the challenged claims means “in the direction of.”” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We recognize, in that regard, that a witness “must at minimum possess ordinary skill in the art” in order to opine about the level of skill in the art. Kyocera Secco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1377 (Fed. Cir. 2022). Dr. Morse has at least the qualifications of an ordinarily skilled artisan and is qualified to provide opinions as to what an ordinarily skilled artisan would have understood as of April 22, 2014. Based on Dr. Morse’s statement of qualifications and curriculum vitae, as well as his stated familiarity with the state of the prior art at the time of the invention, we find Petitioner has shown by a preponderance of the evidence that Dr. Morse is qualified to provide opinions keyed to the level of ordinary skill in the art at the time of the invention. Ex. 1003 ¶¶ 2–5, 9, 11, App’x pp. 69–73. In any event, to the extent we agree that Petitioner establishes unpatentability as explained above, the prior art references themselves are adequate for Petitioner’s showing of unpatentability even if we were to provide little or no weight to Dr. Morse’s testimony.” slip op. at 61

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

    “It is not clear, on this record, that guiding surfaces 10 are formed as spirals, as opposed to flat surfaces arranged to “project” and “extend[]” into the atomizing space in a helical pattern. Id.; see Resp. 37–38. Nor is it clear, on this record, how guiding surfaces 10 relate, if at all, to the formation of the transient airflow path defined by the “spiral vortex” described in Knoch, which forms only during normal operation of the device. Id. Knoch indicates that the spiral vortex is formed as a result of the placement and orientation of openings 2 and 3, and that “homogenization” of the aerosolized particles occurs, not via impaction with guiding surfaces 10, but rather, as a result of particles traveling a transient airflow path defined by the spiral vortex. Ex. 1006, Figs. 1, 2, 2:48–61, 3:10–4:25, 5:14–38, 5:56–63; see Pet. 31–32 (relying on “homogenization” that occurs when “vaporized liquid” traverses a transient airflow path defined by the “spiral vortex” in Knoch’s device) (quoting Ex. 1006, 3:26–29 5:28–32); see supra 44 n.13. To be clear, Knoch’s spiral vortex is a transient path of airflow that forms only during normal operation of the device, and Petitioner directs us to no persuasive information that Rosener employs any comparable approach “to perform the same functions within the same general structure.” Pet. 24. The lack of analysis provided in the Petition on that key point undermines this challenge. Id. at 23–25, 31–32; Reply 9–10 (totality of Petitioner’s information on that point); see supra 44 n.13. Even if we set aside that problem, however, we find, in the alternative, that Petitioner fails to explain adequately how or why Knoch would have suggested a tortuous passage (as opposed to a transient airflow path) that spirals between the inlet and outlet zone of Rosener’s insert. Without adequate analysis, Petitioner merely refers us to Figure 2E of Rosener, which shows a tortuous passage extending from inlet 401 to outlet zone 240, then directs us to guiding surfaces 10 illustrated in Knoch’s Figure 1. Pet. 31–32. The paucity of analysis provided in the Petition, particularly on the question of where, how, and why an ordinarily skilled artisan would have included a spiraling impaction surface extending from Rosener’s inlet 401 to outlet zone 240 in view of Knoch, persuades us that the proposed modification is driven, not by any suggestion in the prior art, but rather, by an impermissible hindsight reconstruction of the claimed invention. Id.; see Resp. 27–39 (Patent Owner’s arguments on that point). Petitioner does not establish that Knoch teaches a spiraling” slip op. at 45

  Patent outcomesUS 9,162,004 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,162,004
• Advanced Micro Devices, Inc. v. LG Electronics Inc.Some claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01409 · APJ Garth D Baer · IPR · Final written decision

  Claims 4, 8, and 9 are unpatentable under § 103; claim 30 was not shown unpatentable because the prior art did not teach shutdown based on total processor use below a threshold.

  RulingsFinal written decision

  • BurdenOther

    “III. ANALYSIS A. PRINCIPLES OF LAW Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).” slip op. at 7

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

    “Public accessibility” is the touchstone in determining whether a reference is a “printed publication.” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference is publicly accessible upon a satisfactory showing that such document has been made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)). slip op. at 13

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

    “construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “We decline to disregard all of Mr. Gafford’s testimony. In light of Mr. Gafford’s education and experience (a Bachelor of Science Degree in Electrical Engineering and over 43 years working for corporations in the design, manufacturing, and support for computer systems and microprocessors, see Ex. 1011 ¶¶ 14–20), we see no reason why Mr. Gafford’s frequent participation in other cases—even to ultimately mixed results—makes his testimony here unhelpful in understanding the evidence in this case. See Fed. R. Evid. 702(a). In assessing the merits of this case, we have considered the proffered testimony from Mr. Gafford, as well as Patent Owner’s Declarant Dr. Friedman, and accorded weight based on the testimony’s substantive persuasiveness.” slip op. at 29

  Patent outcomesUS 7,636,863 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,636,863
• Fiserv, Inc. v. Datatreasury CorporationSome claims unpatentable
  PTAB · Sep 1, 2015 · CBM2014-00088 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 22, 25, 26, 29, 36, 38–43, 50, 51, 55, 62, and 63 are unpatentable as anticipated by Campbell; the remaining instituted claims were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDecided for petitioner

    “B. Patent Owner’s Motion to Exclude Patent Owner moves to exclude Exhibits 1062–1065, filed by Petitioner on April 7, 2015, over two months after Petitioner filed its Reply and 22 days before oral hearing. PO Mot. Excl. 2–3. Petitioner characterizes its submission as “supplemental information” and “apologizes for its oversight” of the “minor procedural defect” of not seeking authorization to file a motion for supplemental information. Pet. Opp. Mot. Excl. 2. We dismiss as moot Patent Owner’s Motion to Exclude because we hereby order the expungement of Exhibits 1062–1065 for being filed without prior authorization.” slip op. at 8

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

    “before (Jack Henry CBM, Paper 17, 9–10).6 PO Resp. 21–22. Patent Owner notes that, if we do not adopt that construction, it will “abide by the Board’s decision.” Id. at 21. We decline to adopt the district court construction, a construction previously considered and not adopted, in the absence of arguments explaining why we should adopt that construction, and in the presence of a statement that Patent Owner will abide by our construction should we not choose to adopt that construction. Upon consideration of the record before us, we maintain that the broadest reasonable interpretation of “subsystem identification information” is “information that identifies a subsystem.”” slip op. at 11

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

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1019, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image to refer to different collections of data. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information [that] accompan[ies] those images.” Id. at 5:25–26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed in a prior claim construction of this term, we are persuaded that information identifying the sending institution is a SSID. See Jack Henry CBM, Paper 37, 8–11. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1003 ¶¶ 64–65, 78–84, 91 (Petitioner’s Declarant, Dr. Knox, testifying that the encrypted information in Campbell identifies the receiving institution). Patent Owner argues that Campbell discloses that the controller may be configured to handle encrypted information, which means that it “does not necessarily encrypt subsystem information” and that encryption is not “necessarily always . . . accomplished.” PO Resp. 32–34.14 Patent Owner does not provide an explanation as to how this, even if true, would preclude anticipation: Campbell would still disclose encrypted SSIDs if it disclosed the encryption as a capability but not a necessity of the system. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983) (“The law of anticipation does not require that the reference ‘teach’ what the subject patent teaches. . . . . [I]t is only necessary that the claims under attack, as construed by the court, ‘read on’ something disclosed in the reference, i.e., all limitations of the claim are found in the reference, or ‘fully met’ by it”); see also Pet. Reply 5–6 (arguing that there is no requirement that the prior 14 Later in its Response, Patent Owner argues that, although Campbell may “encrypt the name of th[e] bank,” Campbell does not “encrypt[] identification information that identifies a particular subsystem of the . . . Bank.” PO Resp. 48–49. Thus, Patent Owner appears to recognize that in fact Campbell discloses encrypting the name of the bank (while disputing that the name is sufficient to be a SSID). art mandate the use of a disclosed feature). Notwithstanding, we disagree that Campbell only occasionally encrypts SSIDs, for the reasons explained in the prior paragraph. Reviewing the record before us, we are persuaded that Campbell discloses transmitting an encrypted SSID.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “relay network over a telecommunications company network. Ex. 1002, 12:50–61. Patent Owner’s Declarant, Mr. Ginsberg, acknowledges that Campbell describes transmission of signals over a public switched telephone network, but states that “the ‘central offices’ are not described as being remote from the receiving bank.” Ex. 2004 ¶ 22. Mr. Ginsberg appears to be discussing the portion of Campbell where it describes the signals 16 “Wide Area Network (WAN)[:] A data communications network that covers geographically separated areas, typically containing cities. Thus a WAN is usually composed of Local Area Networks (LAN) interconnected by other communications links hired from a PTT or other common carrier.” Focal Dictionary of Telecommunications (1999) available at http://search.credoreference.com/content/entry/bhfidt/wide_area_network_w an/0 (Ex. 3002). produced by the sending bank being transmitted on network access lines 22 to reach telephone network 10 and, more specifically, that “[t]he signals received by the network on line 22 may be transmitted through the network 10 via . . . one or more central offices to the check image processing node 12.” Ex. 1019, 3:17–43. Mr. Ginsberg does not explain how this passage supports his conclusion. Whether the “central offices” (not relied on by Petitioner for this claim) are remote to the sending bank has no bearing, which we can see, on whether Campbell describes a WAN. Campbell describes transmission of information between the sending bank and the node over a public switched telephone network; it is that communication that Petitioner asserts occurs over a WAN. See Pet. Reply 11–12; Pet. 30–31. A public switched telephone network covers geographically distinct locations. One of ordinary skill in the art would understand that transmitting information over such a network generally involves the sender and receiver being in different locations; likewise, the system of Campbell makes little sense if the banks and the node are all in the same location.17 Accordingly, Mr. Ginsberg’s testimony on this point is unpersuasive. On the other hand, Petitioner’s Declarant, Dr. Knox, explains how the Campbell system uses a public switched telephone network and a frame relay network, which Dr. Knox testifies is a type of WAN. Ex. 1003 ¶ 158. This testimony is persuasive, under its own reasoning and because, as” slip op. at 21

  Patent outcomesUS 6,032,137 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,032,137
• Fiserv, Inc. v. Datatreasury CorporationSome claims unpatentable
  PTAB · Sep 1, 2015 · CBM2014-00087 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 22, 26, 29, 36, 38–42, 46–49, 58–60, 66–69, 73, 74, 80, 82–84, 88–91, 102, 106–110, and 114–123 are unpatentable as anticipated by Campbell; the remaining challenged claims were not shown …

  RulingsFinal written decision

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

    “In our Decision to Institute this trial, we determined the broadest reasonable interpretation of “subsystem identification information” is “information that identifies a subsystem.” Dec. Inst. 8. There, as here, we relied on our prior interpretation of this term in the Jack Henry CBM. See Jack Henry CBM, Paper 17, 9–10; id., Paper 37, 9–12. Notably, we determined, as an ancillary matter to construing the term, that “nothing in the claims, as would be understood by a person of ordinary skill in the art in view of the specification, requires any form of ownership or other type of corporate relationship between the various subsystems; only that they function in the manner set forth in the claims.” Id., Paper 37, 12.5” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “B. Patent Owner’s Motion to Exclude Patent Owner moves to exclude Exhibits 1062–1065. PO Mot. Excl. 2–3. Petitioner filed the disputed exhibits on April 7, 2015, which was more than two months after Petitioner filed its Reply and 22 days before oral hearing. Id. Petitioner characterizes its submission as “supplemental information” and “apologizes for its oversight” of the “minor procedural defect” of not seeking authorization to file a motion for supplemental information. Pet. Opp. Mot. Excl. 2. We dismiss as moot Patent Owner’s Motion to Exclude because we hereby order the expungement of Exhibits 1062–1065 for being filed without prior authorization.” slip op. at 9

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

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1019, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image to refer to different collections of data. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information [that] accompan[ies] those images.” Id. at 5:25–26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed in a prior claim construction of this term, we are persuaded that information identifying the sending institution is a SSID. See Jack Henry CBM, Paper 37, 9–12. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1003 ¶¶ 64–65, 78–84, 91 (Petitioner’s Declarant, Dr. Knox, testifying that the encrypted information in Campbell identifies the receiving institution).” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “bank and the node over a public switched telephone network; it is that communication that Petitioner asserts occurs over a WAN. See Pet. Reply 10; Pet. 21–22. A public switched telephone network covers geographically distinct locations. One of ordinary skill in the art would understand that transmitting information over such a network generally involves the sender and receiver being in different locations; likewise, the system of Campbell makes little sense if the banks and the node are all in the same location. Accordingly, Mr. Ginsberg’s testimony on this point is unpersuasive. On the other hand, Petitioner’s Declarant, Dr. Knox, explains how the Campbell system uses a public switched telephone network and a frame relay network, which Dr. Knox testifies is a type of WAN. Ex. 1003 ¶ 158. This testimony is persuasive, under its own reasoning and because, as we mentioned above, the WAN in the ’988 patent involves a frame relay network over a telecommunications company’s network.” slip op. at 22

  Patent outcomesUS 5,910,988 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 5,910,988
• Apple Inc. v. Virnetx Inc.Some claims unpatentable
  PTAB · Aug 24, 2015 · IPR2014-00482 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1, 4, 6, 10, 13–15, 17, 20, 22, 26, 29–31, 33, 35, and 37 are unpatentable; claims 12 and 28 were not shown unpatentable.

  RulingsFinal written decision

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

    “We previously determined that, under a broad but reasonable construction, one of skill in the art would have understood the term “virtual private network communication link,” in light of the Specification, to include “a transmission path between two devices that restricts access to data, addresses, or other information on the path, generally using obfuscation methods to hide information on the path, including, but not limited to, one or more of authentication, encryption, or address hopping.” Dec. on Inst. 6–7. 1 Patent Owner disputes this interpretation and argues that the term “virtual private network communication link” must be “a communication path between computers in a virtual private network” (PO Resp. 8), “requir[es] computers within a VPN to communicate directly” (PO Resp. 10), and requires a “network of computers,” which, according to Patent Owner must be “more than a ‘path between two devices.’” PO Resp. 14. We decline to modify our previous construction of this term in the manner suggested by Patent Owner because such a modification is immaterial in this proceeding for reasons set forth below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed to the extent necessary to resolve the case).” slip op. at 3

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

    “understood that a “secure computer network address” must be “associated with a computer capable of virtual private network communications” because a claim recites “sending an access request message to the secure computer network address using a virtual private network communication link.” PO Resp. 16. We agree with Patent Owner that claim 1, for example, recites “sending an access request message to the secure computer network address using a virtual private network communication link.” However, Patent Owner does not explain sufficiently why an explicitly recited claim limitation must be incorporated into the construction of an associated claim term. Indeed, if one of ordinary skill in the art would have understood that all secure computer network addresses must be associated with a computer capable of VPN communications and that any computer network address that is associated with computers that are incapable of VPN communications would be understood by one of ordinary skill in the art not to be a “secure computer network address” (even if authorization for access is required), then any such recited claim limitation would be superfluous. Patent Owner also argues that “VirnetX’s proposed construction has been agreed to by its litigation adversaries and has been adopted by a district court.” PO Resp. 17. Even if Patent Owner’s proposed construction “has been agreed to by” parties in litigation and the district court, Patent Owner does not assert or demonstrate persuasively that one of ordinary skill in the art would have broadly but reasonably construed the term “secure computer network address” in light of the Specification to require association with a computer capable of virtual private network communications. In any event, Patent Owner does not appear to contend that the cited references fail to disclose a secure computer network address that is associated with a computer capable of VPN communications and, therefore, does not demonstrate sufficiently that the construction of “secure computer network address” will bear on the outcome of the issues in this inter partes review. We decline to modify our construction of this term.” slip op. at 5

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

    “computer network address” of “the server-side proxy” (and not the “host”). PO Resp. 32 (emphasis omitted). In other words, Patent Owner argues that, in contrast to claim 1, which requires sending a query message requesting an address and receiving a response message containing the address requested in the query message, Kiuchi discloses sending a query message requesting an address of “the host” but receiving a response message containing an address of “the server-side proxy,” rather than “the host.” Based on this presumption that “the host” of Kiuchi differs from the “server-side proxy” of Kiuchi, Patent Owner argues that Kiuchi fails to disclose the claimed invention and also that “the Board has exceeded its statutory authority by instituting in part on rationales that were not before it.” PO Resp. 30. However, Patent Owner does not explain sufficiently a difference between “the host” and the “server-side proxy” of Kiuchi. Kiuchi discloses that a client-side proxy “asks the C-HTTP name server whether it can communicate with the host” and that, in response, the C-HTTP name server examines “the requested server-side proxy” and responds by sending the IP address of the server-side proxy. Ex. 1004, 65 (emphasis added). In other words, Kiuchi discloses that “the host” that is requested is the requested “server-side proxy.”” slip op. at 13

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

    “of ordinary skill in the art would have combined Kiuchi with the other references.” PO Resp. 3. Petitioner provides reasons with supporting factual underpinnings to support the conclusion that the combination of Kiuchi and Bhatti (and/or Tavs) would have been obvious to one of ordinary skill in the art. Pet. 34–35, 38–39. For example, Petitioner states that one of ordinary skill in the art would implement Kiuchi’s user agent such that the user agent sends an access request for content stored on the origin server, in the same manner that Bhatti describes sending an access request from a user terminal for content stored [on] a content server. Pet. 38. Petitioner also states that “[i]t would have been obvious to one of ordinary skill at the time of the ’180 patent to modify the client-side proxy and server-side proxy described by Kiuchi to support the service-level categorization and differentiation described by Tavs in order to give priority to business-relevant traffic during peak network congestion.” Pet. 34. Patent Owner does not dispute the reasons provided by Petitioner as to why it would have been obvious to one of ordinary skill in the art to have combined teachings of Kiuchi and Bhatti (and/or Tavs) but argues that this obviousness ground “is critically flawed because the Petition relies solely on missing expert testimony for its rationale for combining” the references. PO Resp. 54, 56. However, Patent Owner does not explain why Petitioner is required to provide expert testimony in support of a proposed ground of unpatentability. Nor does Patent Owner explain the supposed flaws in the rationale provided by Petitioner.” slip op. at 21

  Patent outcomesUS 7,188,180 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,188,180
• Jack Henry And Associates, Inc. v. Datatreasury Corp.Some claims unpatentable
  PTAB · Jul 8, 2015 · CBM2014-00057 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 26, 27, 42, and 46 are unpatentable: Campbell anticipates five claims, and Campbell with Blackwell renders five claims obvious.

  RulingsFinal written decision

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

    “stamp . . . , an identification number to identify the merchant originating the scan and any additional useful information.” Ex. 1001, 8:14–17 (emphasis added). The DAT_TERMINAL_ID, which is part of the unencrypted tag, “uniquely identifies the DAT 200 which is used by the customer.” Id. at 10:27–33. The DAT 200, also known as the remote data access terminal (id. at 4:62–63) is shown in Figure 2 and is a collection of components found at the merchant (e.g., bank). Id. at 5:20–38. Thus, in this particular example, the SSID (which is not encrypted) identifies the remote data access terminal, for example, the subsystem that scans and sends images at a bank. Nothing about the term “subsystem identification information,” as set forth in the claims or specification, indicates that only the remote data access subsystems can have an SSID; this is merely an example. Accordingly, we construed SSID in a manner that encompassed a preferred embodiment but, because the specification provided no indication that the term should be read more narrowly, we did not limit SSID to the particular embodiment identified by Patent Owner. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “Regarding Petitioner’s improper use of sub-exhibits within an exhibit, we note that, although parties are not permitted to file combined documents as Petitioner has done in Exhibit 1026, see 37 C.F.R. § 42.6(a)(3), exclusion would be too extreme a remedy in this instance, where there is insufficient prejudice to Patent Owner. A more reasonable remedy would be to have Petitioner re-file the documents, but at this late stage of the proceeding, where briefing has closed, there is no compelling reason to have Petitioner re-file the documents.” slip op. at 13

  • BurdenMixed

    “We agree with Petitioner that Campbell discloses a plurality of sending and receiving banks. Ex. 1018, 6:9–14 (describing subscribing and non-subscribing banks using the system). Petitioner, however, relied on the node in Campbell to show the central location limitation of independent claim 26, not the remote bank. Pet. 31. Petitioner does not explain how Campbell describes a plurality of nodes (or, conversely, how the receiving bank describes each feature of the central location). Accordingly, Patent Owner’s observation that Petitioner has failed to address the claim limitations is persuasive. We determine that Petitioner has failed to show by a preponderance of the evidence that Campbell anticipates the subject matter of claim 29.” slip op. at 20

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

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1018, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image for different things. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information that accompan[ies] those images.” Id. at 5:25– 26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed above in our claim construction section, we are persuaded that information that identifies the sending institution is an SSID. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1026, 14 (Petitioner’s expert, Dr. Michalson, testifying that the encrypted information in Campbell identifies the receiving institution). Reviewing the record before us, we are persuaded that Campbell discloses transmitting an encrypted SSID.” slip op. at 17

  Patent outcomesUS 5,910,988 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,910,988

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.