- ROKU, Inc. v. Universal Electronics, Inc.Some claims unpatentablePTAB · Nov 28, 2023 · IPR2022-00943 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–7, 9–13, 15, and 16 are unpatentable as obvious; claims 8 and 14 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that: On or before 7/12/2017, [one of ordinary skill in the art] would have had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately three years of experience or equivalent study in voice-controlled devices in smart home systems. Additional graduate education could 2 Neither party presents arguments or evidence relating to such objective evidence of nonobviousness. in the field could substitute for formal education. Pet. 18. We adopted this definition for the purposes of the Decision on Institution. Dec. on Inst. 8–9. Patent Owner adopts Petitioner’s definition. PO Resp. 4. We again adopt Petitioner’s definition, which is consistent with the level of skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Absent a recitation of order, or an order mandated by grammar or logic, the steps of a method claim are not construed to require a particular order. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). Patent Owner argues that the steps of claim 1, a method claim, must be performed in sequential order. PO Resp. 13–16. Without commenting on or conceding Patent Owner’s proposal, Petitioner contends that “the trial grounds meet this proposed construction.” Pet. Reply 24–25; Tr. 8:25–11:16. Our record does not reflect any indication that Patent Owner’s proposed construction requiring the sequential ordering of the method steps is not at least encompassed by the correct construction of claim 1. Because of this, and because Petitioner agrees that the arguments in the Petition meet this construction, we accept Patent Owner’s construction as correct for the purposes of this Decision.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We do not agree with Patent Owner that Petitioner’s showing uses the same sound data to teach the “first sound data” of limitation 1.a and the “second sound data” of limitation 1.c. Patent Owner is correct that Rosenberg’s claim 5 describes the determination of a volume threshold based on the volume of the ambient audio signal in which characteristic form(s) (e.g., the name of the user of the media player) are present. Ex. 1006, 13:66–21, 14:28–30. However, the Petition describes using Fu’s “predetermined threshold” in combination with Hart-787’s device, which attenuates audio output of a device upon detecting a user’s utterance intended to gain the attention of the device, in order to “include adjusting the audio output volume of a wirelessly-linked audio-producing device when the voice-controlled device determines that the ambient noise level at the time a Ex. 1004, 2:22–37, 5:61–6:10, 9:18–25; Ex. 1005 ¶¶ 24, 32, 54; Ex. 1003 ¶¶ 88–89). Petitioner further proposes including a threshold that is advantageously based on the environment in which the device is operating as described in Fu, for example to respond to differing levels of noise at different times of day. Id. at 26, 29–30, 40 (citing Ex. 1006, 10:42–67, 14:28–30; Ex. 1003 ¶¶ 48–53, 55, 58, 87, 91, 107–109). We agree with Petitioner that Patent Owner’s arguments address the references individually instead of addressing the combination of the teachings proposed in the Petition. See Pet. Reply 8, 13–14; see also Dec. on Inst. 21–22, 23–24, 25–26. The Petition relies upon a combination of elements of Hart-787 with the predetermined threshold as taught in Fu and with establishing such a threshold based on the operating environment of a device as in Rosenberg. Pet. 26–31, 34–41. Patent Owner is correct that Rosenberg’s threshold is set at the time of the utterance in Rosenberg’s claim 5 and cites Petitioner’s declarant as “conceding” issues regarding how “Rosenberg’s volume threshold is determined.” PO Resp. 20–21. But this argument and the ostensible concession do not squarely address the proposed combination, which combines Fu’s teaching of an adjustment unit that “compares the volume of the ambient noise received . . . to a predetermined threshold” with Rosenberg’s teaching that such “a threshold may be ‘determined based on the volume of [an] ambient audio signal.’” Pet. 39, 40 (emphasis omitted) (quoting Ex. 1006, 14:28–30). While Patent Owner argues that “Petitioner has not proposed using a predetermined/pre-set threshold or a previously established threshold based on environmental noise in the combination of Hart-787 with F[u] and Rosenberg” (PO Resp. 46), we find, on the contrary, that the Petition describes a combination based predetermined threshold” and on a threshold “determined according to an environmental noise level.” Pet. 29–30. Thus, we find Petitioner’s unpatentability grounds do not suffer from the issues Patent Owner argues are a consequence of the purported use of the same sound data for the “first sound data” of claim limitation 1.a and for the “second sound data” of claim limitation 1.c. We do not agree with Patent Owner’s arguments regarding Fu’s teachings with respect to limitation 1.e’s “transition from a first state having a first volume level to a second state having a second volume level that is less than the first volume level” because these arguments similarly do not address the proposed combination. See PO Resp. 26–30. The Petition cites Hart-787 for attenuating the volume of an audio-producing device when a wake word is issued. Pet. 32–34, 43–44. The Petition cites Fu for adjusting volume of an audio-producing device if the level of ambient noise exceeds a predetermined threshold. Id. at 36–39, 44–45. Thus, even if Fu teaches only increasing the volume of an audio-producing device if the predetermined threshold is exceeded, the Petition relies on the combination of teachings of Hart-787 and Fu, and Patent Owner’s argument that neither reference teaches “decreasing a controllable appliance’s volume output when a previously established volume threshold is exceeded” (PO Resp. 30) does not address the combination proposed. Patent Owner’s argument that “Petitioner has not proposed modifying Fu to decrease a controllable appliance’s volume output when a volume threshold is exceeded” (PO Resp. 30) similarly does not address the combination proposed in the Petition. We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references. transmitted volume down control signals as the means for attenuating audio output, Petitioner contends that Hart-787 “broadly teaches” that a device transmits control command signals to the audio-producing device, relying on the testimony of its declarant. See Pet. 23 (citing Ex. 1004, 5:47–51; Ex. 1003 ¶ 82), 43–44 (citing Ex. 1004, 1:67–2:7, 2:26–27, 5:47–51; Ex. 1003 ¶ 118). In addition, Petitioner shows that these control signals were well-known in the art and would have been known to one of ordinary skill in the art at the time of the invention, supporting its showing with additional testimony from its declarant. Id. at 44 (citing Ex. 10183, 2:39–47, 5:35–38; Ex. 10194 ¶¶ 3, 13; Ex. 1003 ¶¶ 44–45, 118). We conclude Petitioner’s evidence regarding the showing in Hart-787 is sufficient with respect to this point. Hart-787 describes altering a signal sent to the speaker to attenuate the audio from that speaker. Ex. 1004, 1:67– 2:1. Petitioner’s declarant testifies that using transmitted control signals to do this would have been known to one of ordinary skill. Ex. 1003 ¶¶ 44–45, 82, 118. We consider Petitioner’s evidence regarding what one of ordinary skill in the art would have understood from Hart-787’s disclosure to be sufficient for the showing regarding the “causing one or more commands to be automatically issued to the controllable appliance to thereby cause” that appliance to transition to a lower volume level, as required in limitation 1.e. While Patent Owner argues that Petitioner’s declarant “concede[s] that Hart- 787 does not disclose or teach how its voice-controlled device decreases the audio output of the controllable appliance,” the cited portion of the” slip op. at 25
Patent outcomesUS 10,930,276 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,930,276 - Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.Some claims unpatentablePTAB · May 5, 2023 · IPR2022-00098 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 3, and 4 are unpatentable as obvious over the stated combinations; claim 2 was not shown unpatentable because the driver was not shown configured to receive the rectifier’s forward voltages.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that a person of ordinary skill in the art would have had experience in LED devices. For this reason, we apply Patent Owner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’149 patent and the prior art of record. However, if we were to apply Petitioner’s proposed level of skill, our Decision would not be affected.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Upon review of the entire record, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“Dr. Ducharme’s testimony that “the spacing of the chips in Zhang would not likely be so close as to create overheating issues” (Ex. 2002 ¶ 111) is unsupported by any disclosure of the actual spacing of Zhang’s chips. Consequently, his testimony that there would be no overheating concerns in Zhang due to the spacing of the chips is entitled to little, if any, weight. Dr. Ducharme further testifies that the components of Zhang’s driver “could easily increase the temperature of the LED 19 chips on the circuit board, which can cause LEDs to generate less illumination, burn out and otherwise adversely affect their performance.” Ex. 2002 ¶ 126. Dr. Ducharme further testifies that “[i]t is well-known that excessive operational temperatures can reduce the illumination provided by the LEDs, can decrease the operational lifetime of the LEDs, and if the temperature is sufficiently high, it can cause LED junction failure and a burnt-out LED.” Id. We agree with this testimony, which as discussed below, is consistent with Salam. Dr. Ducharme’s testimony concerning overheating issues caused by the driver components contradicts Patent Owner’s ’s contention that there would not be “an overheating issue with Zhang’s LED exit sign circuit in Figure 2.1.” PO Resp. 30. Regardless of whether Zhang’s LEDs in Figure 2.1 have a heat problem or not, Salam teaches the advantages of using a heat sink. Salam teaches that a heat sink will result in a higher efficiency of the LEDs and improved life. Ex. 1006, 16:38–43. The Federal Circuit, in DyStar Textilfarben GmBH & Co v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), stated that “the desire to enhance commercial opportunities by improving a product or process is universal–and even common-sensical . . . the proper question is whether the ordinary artisan possesses the knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368. Dr. Ducharme testified that a person of ordinary skill in the art “would have an understanding of the generation of heat and using a heat sink to remove unwanted heat from electronics and LED lighting devices.” Ex. 1102, 23:18–24:3. Dr. Ducharme’s testimony is consistent with Petitioner’s contention that the combination of Zhang and Salam “would have been a straightforward combination of known components and technologies, according to known methods, to produce the predictable result of reducing/ mitigating heat effects in a circuit.” Pet. 17 (citing Ex. 1002 ¶ 106). Patent Owner next contends it would be extremely burdensome and costly to modify Zhang to add a heat sink layer because “each of the multiple chips mounted and epoxied to Zhang’s circuit board in the exit sign would have to be modified.” PO Resp. 30 (citing Ex. 2002 ¶ 112). Dr. Ducharme’s testimony repeats the Patent Owner Response verbatim and is entitled to little, if any, weight. Ex. 2002 ¶ 112. Nonetheless, this contention is unavailing because it is based on Patent Owner’s bodily incorporation of Zhang and Salam. Patent Owner next contends that a person of ordinary skill in the art” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Regardless of whether Zhang’s LEDs in Figure 2.1 have a heat problem or not, Salam teaches the advantages of using a heat sink. Salam teaches that a heat sink will result in a higher efficiency of the LEDs and improved life. Ex. 1006, 16:38–43. The Federal Circuit, in DyStar Textilfarben GmBH & Co v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), stated that “the desire to enhance commercial opportunities by improving a product or process is universal–and even common-sensical . . . the proper question is whether the ordinary artisan possesses the knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368. Dr. Ducharme testified that a person of ordinary skill in the art “would have an understanding of the generation of heat and using a heat sink to remove unwanted heat from electronics and LED lighting devices.” Ex. 1102, 23:18–24:3. Dr. Ducharme’s testimony is consistent with Petitioner’s contention that the combination of Zhang and Salam “would have been a straightforward combination of known components and technologies, according to known methods, to produce the predictable result of reducing/ mitigating heat effects in a circuit.” Pet. 17 (citing Ex. 1002 ¶ 106).” slip op. at 27
Patent outcomesUS 10,517,149 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,517,149 - Home Depot USA, Inc. v. Lynk Labs, Inc.Some claims unpatentablePTAB · May 5, 2023 · IPR2022-00023 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1 and 4 are unpatentable over the stated § 103 combinations; Petitioner did not show claim 2 unpatentable because it did not explain how the LED array’s forward voltage is received by the driver.
RulingsFinal written decision- Skill levelSkill level board ownOther
“degree in electrical engineering, or similar technical field, with two years of experience in the field of design and/or development of light-emitting diodes (LEDs) and circuits in the context of lighting control systems.” Pet. 11–12 (citing Ex. 1002 ¶ 34). Petitioner further contends that “[a]n increase in experience could compensate for less education.” Id. at 12. Patent Owner proposes the same level of skill in the art. See PO Resp. 6. We apply the parties’ undisputed level of ordinary skill in the art because it comports with the level of skill reflected in the ’149 patent and the prior art of record.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We credit Dr. Lebby’s testimony over Dr. Ducharme for the following reasons. First, in Deese, power cable 28 is inserted into an opening in rubber housing 21. Ex. 1008, Fig. 2A. [R]ubber housing 21 forms a water-tight seal around the power cable 28.” Id. at 4:63–65. Dr. Ducharme does not explain why Hochstein’s protruding heat sink shell could not similarly be inserted through rubber housing 21 with a water-tight seal. Further, Dr. Lebby relies on the similarity between the structures of Deese and Hochstein. Hochstein uses gasket 45 and weather seal 48 to seal housing 10 with electrical lead 49 and heat sink shell 38 extending therethrough. Ex. 1010, 5: 39–40, 5:63:65, Fig. 8.” slip op. at 47
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Our analysis starts with the claim language. Claim 1 recites “a driver, wherein the driver includes at least one transistor and at least one capacitor” and “the driver is configured to receive an AC voltage from a mains power source and provide a voltage and current to the at least one LED circuit.” Ex. 1001, 23:16–17, 26:22–24. Dr. Ducharme testifies that power is determined by multiplying voltage and current. Ex. 2008 ¶ 63. The language of claim 1, thus, supports Patent Owner’s construction which is also consistent with the dictionary definition offered by Petitioner which also defines “driver” as [a] program, circuit or device used to power or control other programs, circuits or devices.” Ex. 1007, 4 (emphasis added). The Specification provides “the driver providing an AC voltage and current to one or more LED circuits.” Ex. 1001, 3:65–67. Thus, the Specification also provides support for Patent Owner’s construction. For the foregoing reasons, we apply Patent Owner’s proposed construction of “driver” because it is consistent with the language of claim 1 and the description of driver in the Specification. We note that the adjective “LED” prior to circuits or devices in Patent Owner’s construction is not necessary because that it essentially repeats limitation 1.e.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“We begin with the claim language itself which is “the package is a heat sinking reflective material.” Ex. 1001, 23:18–19 (emphasis added). In its analysis, Patent Owner parses “heat sinking reflective material” out of context by omitting the italicized language “the package is” preceding “heat sinking reflective material.” PO Resp. 29. The deposition testimony of Dr. Lebby and Dr. Ducharme’s declaration testimony cited by Patent Owner are also out of context. The Specification of the ’149 patent defines “package” as an integrated unit that “in certain applications may preferably include a heat sink, a reflective material, a lens for directing light, phosphor nano-crystals or light changing or enhancing substances.” Ex. 1001, 5:30–33. Because heat sink and reflective material are listed separately in the Specification, this disclosure suggests that, at least in certain embodiments, a package with a heat sink separate from a reflective material would fall within the scope of limitation 1.c. This is further confirmed by comparing the packages illustrated in Figures 25 and 26 of the ’149 patent which are reproduced above. Figure 25 is described as illustrating “heat sinking material 198 . . . integrated into the package 30.” Id. at 17:34–35. Figure 26 is described as illustrating reflector 202 “integrated into the package 30 for optimized light dispersion.” Id. at 17:47–49. As can be seen from a visual comparison of Figures 25 and 26, reflector 202 is separate from heat sinking material 198. Given the disclosure in the ’149 patent of a package with a heat sink” slip op. at 15
Patent outcomesUS 10,517,149 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,517,149 - Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.Some claims unpatentablePTAB · Apr 19, 2023 · IPR2021-01576 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–12 are unpatentable as obvious; claims 13–18 are not shown unpatentable because the asserted combinations fail to teach or suggest multiple LED packages connected in series.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“PO Resp. 8 (citing Ex. 2001 ¶¶ 41–42). Patent Owner argues that its definition is superior because Petitioner’s “and/or” qualifier “might be read as considering a person who has ‘related circuit design’ experience but no experience with ‘LED devices’ to be a POSITA.” Id. at 9. Patent Owner further views Petitioner’s “or a related field” phrasing as potentially including a person who has no experience with LED devices. Id. We agree with Patent Owner on both points. We agree with Patent Owner that Patent Owner’s proposal is more consistent with the problems and solutions in the ’979 patent and prior art of record. We adopt Patent Owner’s definition of the level of skill but note that had we adopted Petitioner’s level of skill, we would not have reached a different outcome here.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“specification support its construction of “formed or mounted to” as encompassing indirect attachment to the substrate. Neither the plain claim language nor the specification requires the phosphor coating to be directly attached to the substrate. Limitation 1(c) recites, wherein the LED chips comprise a phosphor coating to produce a change in a color or a quality of light emitted from the LED chips, wherein the LED chips, the power connection leads, and the phosphor coating are formed or mounted to a flexible substrate that is sufficiently flexible to be formed into a cylindrical shape[.] Ex. 1001, 22:7–12 (emphasis added). The claim is inartfully written, as it requires the LEDs to comprise a phosphor coating but then separately recites that the LED chips and the phosphor coating are formed or mounted to the substrate. But Petitioner correctly explains that the plain meaning requires that “the LED chips comprise a phosphor coating” and that “the [same] phosphor coating” (included in the LED chips) is “formed or mounted to a flexible substrate.” Reply 2. In other words, the use of the term “the” before “phosphor coating” indicates reliance on the antecedent basis of “LED chips comprise a phosphor coating,” and thus the same coating of the LED chips is formed or mounted to the substrate. Logically, by including a phosphor coating with the LED chips, which are formed or mounted to the substrate, the coating of these chips is also indirectly formed or mounted to the substrate. Conversely, it would be illogical to conclude that the claim recites two phosphor coatings, one attached to the LED chips and another attached directly to the substrate, because the structure of the claim refers to a single phosphor coating of the LED chips. Even Patent Owner concedes that the claim encompasses the phosphor coating indirectly being mounted or attached to the substrate (in addition to being directly attached). PO Resp. 11 (“The ordinary English reading of the claim language does not encompass the phosphor coating only being indirectly attached to the substrate, instead, the language indicates that the coating is directly applied to the substrate.” (emphasis changed)), 13 (“the phosphor coating . . . is not merely attached to the substrate indirectly”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“After considering Patent Owner’s arguments, which we address below, we agree with Petitioner that the combination of Wojnarowski and Martin discloses this limitation and that a person of ordinary skill in the art would have been motivated to combine the references’ teachings in the manner asserted by Petitioner. Briefly, we summarize our findings, and then we address the parties’ arguments in more detail. First, we agree with Petitioner, and Patent Owner does not dispute, that Wojnarowski’s AC input voltage would have been converted to DC voltage in light of the bridge rectifier and capacitor disclosed by Wojnarowski. Pet. 25; Ex. 1002 ¶¶ 119– 20 (citing, e.g., Ex. 1005, 7:59–62, Fig. 24); PO Resp. 35–36 (acknowledging Wojnarowski discloses converting an AC input to a DC voltage). Second, we further agree with Petitioner, and Patent Owner does not dispute, that excessive current due to too few LEDs would have harmed Wojnarowski’s LEDs, and too small a current due to too many LEDs would be insufficient to power Wojnarowski’s LEDs. Pet. 26; Ex. 1002 ¶ 134; PO Resp. 48 (discussing, but not disputing, these assertions).13 Third, we agree that a POSITA would have recognized in view of Martin’s teachings and the knowledge of a skilled artisan that when configuring Wojnarowski’s device, the total forward voltage drop of the series-connected LEDs should approximately match the DC voltage output 13 Petitioner explains the relationship between voltage and current for the LEDs as follows: “the total voltage drop of the circuit would dictate the current drawn by the LED circuitry, which would have been known to be inversely proportional to the voltage.” Pet. 26 (citing Ex. 1002 ¶ 134). of Wojnarowski’s circuit. Pet. 26–27 (citing Ex. 1002 ¶¶ 132–38; Ex. 1008, Abstract (LED voltage “must be matched to the input source voltage”), ¶ 60 (“For AC or any other regularly varying input voltage, there is an additional requirement to direct drive voltage matching”)). For example, Martin teaches that “[t]he number of LEDs in the monolithic array may be selected to achieve a particular voltage drop across each device.” Ex. 1006 ¶ 22. Martin further explains, “[t]he voltage across each of the individual LEDs in the array is the line voltage divided by the number of LEDs in series,” and “[t]he number of LEDs is chosen such that the maximum voltage across each individual LED during the peak in the alternating current cycle is low enough so as not to damage the LEDs.” Id. The forward voltage drop across Martin’s 38 LEDs is about 171 V, which matches Martin’s AC input voltage peak of about 169.71 V. See id. (“At 120 RMS volts, the peak voltage will be about 180V [correction: 169.71 V],” and if the LEDs “can tolerate a maximum forward voltage of 4.5V, at least 38 LEDs connected in series are required.” (38 LEDs x 4.5 V = 171 V)); PO Resp. 41–42 (“While Martin references ‘about 180V,’ both parties agree that the correct value of the peak voltage Vp is 169.71 V.” (citing Ex. 1002 ¶ 127)). Although Martin’s LED forward voltage drop (171 V) differs slightly from the peak input voltage (169.71 V), Patent Owner conceded at the hearing that the claimed “matches” does not require an exact equivalence. Tr. 38:9–11 (“Patent Owner agrees . . . that matching has a meaning that goes beyond exact equivalence.”).14” slip op. at 22
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“35 U.S.C. § 311(b). PO Resp. 22–25. This statute provides that “[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” § 311(b) (emphasis added). Patent Owner contends that Martin is not available as prior art under 35 U.S.C. § 311(b) because it is not a patent or printed publication and is only prior art under 35 U.S.C. § 102(e). PO Resp. 22. Patent Owner argues that documents are “printed publications” as of the date they become available to the public, and Martin became public on its publication date of October 21, 2004, after the February 25, 2004 priority date of the ’979 patent. Id. at 23. Patent Owner raises a similar argument for the Soules-II reference in Ground 6. Id. at 25– 26. Petitioner responds that the AIA framework permits the use of § 102(e) prior art in IPR proceedings, unlike formerly available covered business method review (CBM) proceedings, which restricted challenges to § 102(a) prior art. Reply 29. We agree. The statute governing the formerlyavailable CBM proceeding explicitly limits challenges based on “prior art that is described by section 102(a).” AIA § 18(a)(1)(C). In contrast, § 311(b) more broadly permits challenges “on the basis of prior art consisting of patents or printed publications.” The broader language in § 311(b) implies that unlike CBMs, IPRs are not limited to challenges solely under § 102(a) prior art. The parties cite to no Federal Circuit decisions that squarely address this issue. However, the Federal Circuit has applied § 102(e) patent application publication prior art in appeals from IPR proceedings. See, e.g., Purdue Pharma L.P. v. Iancu, 767 Fed. App’x 918, 920–21, 926 (Fed. Cir. 2019) (nonprecedential) (determining that a § 102(e) patent application publication was available as prior art in an IPR). The Board has also long permitted challenges based on patent application publications under § 102(e). See, e.g., Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 14 at 27 (PTAB Jan. 31, 2013) (instituting trial over § 102(e) ground based on a patent application publication). We therefore find Patent Owner’s § 311(b) argument unpersuasive.” slip op. at 34
Patent outcomesUS 10,652,979 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,652,979 - Alcon Inc. / Alcon Vision, LLC et al. v. Amo Development, LLCSome claims unpatentablePTAB · Dec 6, 2022 · IPR2021-00856 · APJ Ryan H Flax · IPR · Final written decision
Claims 1–15 are unpatentable over the asserted §103 grounds; claims 17–23 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“persuasive and credit Dr. Kang’s testimony that Freedman’s ablating laser is incompatible with laser surgery on the lens or lens capsule during cataract surgery. Ex. 2087 ¶¶ 49–51, 79–82. This is because the ablating laser cannot pass through the cornea to reach the lens without destroying the cornea in the process. Id. ¶¶ 79, 82. In contrast, lasers used to cut internal tissues of the eye use laser photodisruption. Id. ¶ 80. Accordingly, we find that one of ordinary skill in the art would not have used Freedman’s system to perform surgery on the lens or lens capsule, as asserted by Petitioner.” slip op. at 76
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“exhibit provides no context or rationale for the award and, as discussed above, the Catalys product is composed of many components and systems not specifically covered by the challenged claims. Ex. 2043, 3. Patent Owner points also to a report dated June 28, 2012, as evidencing that this award was for the specific features of the Catalys product claimed, but this evidence lacks any identification of the author and the portion identifying features of the product appears to merely be listing features thereof rather identifying than any reason for the award. Ex. 2040. Additionally, the evidence of praise cited by Patent Owner is not specific to the subject matter of claim 1 (and its dependent claims) of the ’724 patent, but general praise for the FLACS system and laser-guided femtosecond laser procedures. See Ex. 2035; Ex. 2037; Ex. 2044; Ex. 2051. For these reasons, we are not persuaded by Patent Owner’s arguments or evidence on industry praise.” slip op. at 51
Patent outcomesUS 8,500,724 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,500,724 - Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsSome claims unpatentablePTAB · Jul 15, 2022 · IPR2021-00734 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–4, 6, and 7 are unpatentable over Talukdar and Li; claim 8 was not shown unpatentable over Talukdar and Nystrom. The motion to amend was granted.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“7. Conclusion Patent Owner has shown: (1) the amendment proposes a reasonable number of substitute claims; (2) the proposed substitute claims are supported in the original disclosure; (3) the amendment responds to a ground of unpatentability involved in the trial; and (4) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter. Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 44–47, 49, and 50 are unpatentable. Accordingly, Patent Owner’s Motion to Amend is granted.” slip op. at 82
- ExcludeMotion to exclude, deniedDenied
“Owner’s Motion to Exclude because Dr. Roy’s testimony should not be excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable,’” which is a “basic gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding would be considerably lower than in a lay jury trial and the wholesale exclusion of a witness’s declaration is rarely called for in a proceeding before the Board.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“testimony (Ex. 1002), we are persuaded that Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Talukdar’s hybrid frame that includes a first section with data configured in 802.16(e) format for 802.16(e) fixed remote units and a second section that includes data configured in 802.16(m) format for faster moving 802.16(m) mobile remote units, because it would have provided the benefit of enabling the hybrid frame to accommodate data for a greater range of remote units within Talukdar’s wireless system. See Pet. 40–42; KSR, 550 U.S. at 421.” slip op. at 43
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“considerations before reaching our conclusion on obviousness as to the subject matter of claim 1. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). Patent Owner asserts that there is evidence of commercial success and licensing of the ’096 Patent to industry leaders in the wireless chip industry. See PO Resp. 53–54 (citing Exs. 2007–2010; IPR2020-01576, Ex. 1028 (confidential patent license agreement filed under seal)). Exhibit 2007 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA (W.D. Tex.). Exhibit 2008 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. ASUSTek Computer, Inc., No. 6:20-cv- 00142-ADA (W.D. Tex.). Exhibits 2009 and 2010 are a joint motion to dismiss with prejudice, and an order of dismissal, respectively, entered in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.). A copy of IPR2020-01576, Ex. 1028 has not been entered in the record of” slip op. at 49
Patent outcomesUS 8,265,096 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,265,096 - Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsSome claims unpatentablePTAB · Jul 15, 2022 · IPR2021-00375 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–4, 6, and 7 are unpatentable over Talukdar and Li; claim 8 was not shown unpatentable over Talukdar and Nystrom.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Owner’s Motion to Exclude because Dr. Roy’s testimony should not be excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable,’” which is a “basic gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding would be considerably lower than in a lay jury trial and the wholesale exclusion of a witness’s declaration is rarely called for in a proceeding before the Board.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony (Ex. 1002), we are persuaded that Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Talukdar’s hybrid frame that includes a first section with data configured in 802.16(e) format for 802.16(e) fixed remote units and a second section that includes data configured in 802.16(m) format for faster moving 802.16(m) mobile remote units, because it would have provided the benefit of enabling the hybrid frame to accommodate data for a greater range of remote units within Talukdar’s wireless system. See Pet. 40–42; KSR, 550 U.S. at 421.” slip op. at 43
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“considerations before reaching our conclusion on obviousness as to the subject matter of claim 1. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). Patent Owner asserts that there is evidence of commercial success and licensing of the ’096 Patent to industry leaders in the wireless chip industry. See PO Resp. 53–54 (citing Exs. 2007–2010; IPR2020-01576, Ex. 1028 (confidential patent license agreement filed under seal)). Exhibit 2007 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA (W.D. Tex.). Exhibit 2008 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. ASUSTek Computer, Inc., No. 6:20-cv- 00142-ADA (W.D. Tex.). Exhibits 2009 and 2010 are a joint motion to dismiss with prejudice, and an order of dismissal, respectively, entered in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.). A copy of IPR2020-01576, Ex. 1028 has not been entered in the record of” slip op. at 49
- Strike new argumentNew argument disregardedDecided for patent owner
“ordinary skill in the art would have been motivated to combine the teachings of Talukdar and Nystrom (i.e., because Talukdar teaches the pilot density for 802.16(e) and 802.16(m) sections of a frame could be different, Nystrom teaches pilot structures for different scenarios, and obvious to try denser pilot symbols) are outside the scope of a proper reply because they were not presented previously in the Petition. Compare Pet. Reply 18–19, with Pet. 60–68. Although Petitioner is permitted in its Reply to address issues discussed in an institution decision, Petitioner may not submit new arguments that it could have presented earlier to make out a prima facie case of unpatentability. See Consolidated Trial Practice Guide18 (“CTPG”) 73. The opportunity to address issues discussed in an institution decision does not mean to proceed in a new direction with a new approach compared to the position taken in the Petition. See id. at 74. Furthermore, a reply that raises a new issue or belatedly presents evidence may not be considered. See id. Accordingly, we decline to consider Petitioner’s belated Reply arguments and evidence asserting new reasons why a person of ordinary skill in the art” slip op. at 60
Patent outcomesUS 8,265,096 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,265,096 - Verizon Business Network Services Inc. v. Huawei Technologies Co. Ltd.Some claims unpatentablePTAB · Jan 12, 2022 · IPR2020-01080 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1, 8, 15, and 16 are unpatentable as obvious over Saleh and Chu; claims 5, 12, 17, 19, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Both proposals appear reasonable on the record before us. Neither party articulates whether material differences exist between their respective proposals, nor whether the proposals alter the obviousness analysis. Furthermore, we discern no material difference in the application of the parties’ proposals. Accordingly, we apply the proposal articulated by Patent Owner, but would have reached the same conclusion under either party’s proposed level of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We are not persuaded by Petitioner’s constructions limiting the “to- be-played signals” received at either the primary player or the mobile (separate player) at the site to only be one type of distinct signal. Petitioner’s evidence and argument in support of the narrowed construction for the “to-be-played signals” in claims 1, 5, 8, and 12 address the resulting content displayed at each of the primary playing device or mobile device of each claim. See Pet. 30–32. However, Petitioner has not presented persuasive evidence that the Applicant’s arguments during prosecution or the ’366 patent specification limits the received and played signals at each device to only the specific type of signal received. Thus, we determine that no claim construction is necessary.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner further argues that an ordinarily skilled artisan would not have combined Chu’s wireless technique with Saleh to pursue reducing bandwidth and that a similar result could be obtained by using Saleh’s pre-installed pop-up personal displays. PO Resp. 35–36; Ex. 2015 ¶¶ 82–83. To the contrary, Patent Owner asserts, combining Chu and Saleh would be bandwidth inefficient and add costly networking equipment. Id. Patent Owner’s arguments are unavailing. We note, that “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). In other words, “obviousness ‘does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’” Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1328 (Fed. Cir. 2017). In this regard, we credit Petitioner’s evidence that Saleh depicts and discusses the use of personal laptops showing video content, regardless of the existing pop-up displays. Ex. 1004, 3:10–13, Fig. 4B; Reply 11; Ex. 1023 ¶ 29. In addition, we are persuaded by Petitioner’s testimony that the use of Chu’s features to connect to portable devices via the Saleh VCT would be an efficient content delivery system and would allow for increased collaboration by portable device users with the presentation. Pet. 47–48; Ex. 1003 ¶¶ 92–93. We also do not find availing Patent Owner’s argument that because Saleh already allows collaborative editing using pop-up displays, Petitioner’s motivation to combine Chu and Saleh to allow editing collaboration through laptops fails. PO Resp. 37–38; Ex. 1004, 8:36–465; Ex. 2015 ¶¶ 85–86. We do not find that the existing editing feature of Saleh diminishes or discourages adding a similar feature through the addition of Chu’s portable device connection. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (stating that “[t]he fact that [a] motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another”). Here, we credit Petitioner’s argument that Chu’s features allow the use of laptops along with fixed pop-up displays to enable enhanced collaboration. Pet. 48; Ex. 1003 ¶ 93; Reply 12–13; Ex. 1023 ¶¶ 31–34. We find that Petitioner provides sufficient argument and evidence that a person of ordinary skill in the art would have been motivated to combine Chu’s teachings regarding the video terminal distributing connection channel with the distance learning system of Saleh. Pet. 47; Ex. 1003 ¶ 91. In light of the level of skill in the art and knowledge of an ordinarily skilled artisan, Petitioner has provided persuasive evidence regarding the addition of Chu’s connection and distribution features to Saleh’s remote learning system resulting in local video conferencing equipment with connections to mobile devices. Pet. 47–48.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We do not agree with Patent Owner. The claims recite a first type and a second type signal in to-be–played signals. See, e.g., Ex. 1001, 29:19–20. Our construction above rejected the narrowed interpretation that the “to-beplayed signals” of claims 1, 5, 8 and 12 were limited to distinct types of signals. Patent Owner’s arguments directed to the type of signal within the “to-be-played signals” (PO Resp. 17–20; Ex. 2015 ¶¶ 27–32, 39) fails to persuasively demonstrate that the sending of the first and second type of signal limitations of claims 1 and 8 are limited to distinct and different signals and only those distinct signals. We are not persuaded by Patent Owner’s argument and evidence that the “’366 [p]atent is about sending two different signal types to two different types of devices separately.” Sur-reply 4 (citing Ex. 2015 ¶¶ 18, 28–32). Regardless of the signals sent, we credit Petitioner’s argument and evidence that Saleh teaches receiving and displaying different types of content sent for display on mobile devices that differs from the signal sent for display on other presentation devices. See Reply 6–7; Pet. 49–52; Ex. 1023 ¶¶ 15–17; Ex. 1003 ¶¶ 99, 138–141. We agree with Petitioner that Saleh discloses: “[t]he remote classroom can include a display screen for displaying received images of local participants, and an instructor display screen for displaying received images of the local instructor.” EX1004, Cols. 2:38–41 (emphasis added), 4:8- 12, 5:19-21, Figures 3, 4A–4B, 6–7. Saleh also discloses that display screens in the local classroom can display images of participants in the remote classroom. Id., Cols. 4:8–12, 5:18–19, 8:62–66. Pet. 52. Patent Owner rejects Petitioner’s assertion that displaying different content teaches sending different signals, arguing that “[i]t is entirely plausible that exactly the same type of signal is sent to both the [primary display] screen and laptops, and then simply displayed differently at each type of device.” PO Resp. 24 (citing Ex. 2015 ¶ 61 (asserting that identical multiplexed signals could provide that feature)); Sur-reply 8. We are not persuaded by Patent Owner’s speculation regarding the plausibility of the same signal being sent to both mobile and primary display devices. Id. On the full record, we credit Petitioner’s argument and evidence that Saleh discloses a remote classroom that mirrors the local classroom, including a VCT that receives images of a local instructor and/or local participants, which are displayed on a primary playing device, where different signals are displayed on the mobile devices. See Pet. 52; see also Pet. 49–52; Ex. 1003 ¶¶ 99, 138–141; Ex. 1004, 2:38–41, 3:7–13, 4:8–12, 5:19–21, 8:3–45, 9:24– 28, 10:1-4, Figs. 3, 4A–4B, 6–7. We also find unavailing Patent Owner’s argument that Saleh never” slip op. at 31
Patent outcomesUS 9,521,366 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,521,366 - Target Corporation v. Proxicom Wireless, LLCSome claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00933 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 19–23 are unpatentable as obvious over Perttila and Insolia; claims 25, 26, 28, and 29 were not shown unpatentable over Perttila and Davis.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have had “a Bachelor’s degree in Electrical Engineering, or a related field, and approximately 3-5 years of professional experience in the field of wireless communications.” Pet. 14. Petitioner acknowledges that “graduate education could substitute for professional experience” and “significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 36–38). Patent Owner concedes that the level of skill as defined by Petitioner “is sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 9.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Notwithstanding the arguments in its briefing, Petitioner’s counsel acknowledged during the hearing that the claims require the entity or object to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . . that physical presence is connoted by the word ‘proximity’ and by ‘located.’”). There is, accordingly, no controversy regarding whether “an entity or object located in proximity to the second device” requires the entity or object to have a physical presence. Moreover, as explained below our decision does not depend on an express construction of this term. We conclude, therefore, that there is no need for us to construe this term.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“terminal 12, interaction terminal 14, and loyalty server 24. Ex. 1008, 5:47–64, Fig. 1. The personal terminal is transported by user 16. Id. at 5:65–66. The interaction terminal can be associated with product 18, such as a beverage, equipment 20, such as a vending machine, or promotional object 22, such as a poster. Id. at 5:51–53, 6:9–37. The personal terminal and the interaction terminal communicate when the personal terminal is brought within proximity of the interaction terminal. Id. at 9:12–18. A benefit, such as a loyalty point, can be awarded to the user for interacting with the interaction terminal. Id. at 9:58–64. Petitioner’s declarant testifies that incorporating Insolia’s reward of loyalty points into Perttila’s system would provide incentives for a customer to engage with the merchant-media arrangement. Ex. 1003 ¶ 120. We credit this testimony of Petitioner’s declarant, which Patent Owner does not rebut. Accordingly, for the foregoing reasons, Perttila and Insolia support Petitioner’s contentions. We further determine that Petitioner has set forth reasoning with rational underpinning for modifying Perttila to include a loyalty reward system as taught by Insolia.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“terminal 12, interaction terminal 14, and loyalty server 24. Ex. 1008, 5:47–64, Fig. 1. The personal terminal is transported by user 16. Id. at 5:65–66. The interaction terminal can be associated with product 18, such as a beverage, equipment 20, such as a vending machine, or promotional object 22, such as a poster. Id. at 5:51–53, 6:9–37. The personal terminal and the interaction terminal communicate when the personal terminal is brought within proximity of the interaction terminal. Id. at 9:12–18. A benefit, such as a loyalty point, can be awarded to the user for interacting with the interaction terminal. Id. at 9:58–64. Petitioner’s declarant testifies that incorporating Insolia’s reward of loyalty points into Perttila’s system would provide incentives for a customer to engage with the merchant-media arrangement. Ex. 1003 ¶ 120. We credit this testimony of Petitioner’s declarant, which Patent Owner does not rebut. Accordingly, for the foregoing reasons, Perttila and Insolia support Petitioner’s contentions. We further determine that Petitioner has set forth reasoning with rational underpinning for modifying Perttila to include a loyalty reward system as taught by Insolia.” slip op. at 25
Patent outcomesUS 8,374,592 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,374,592 - Target Corporation v. Proxicom Wireless, LLCSome claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00931 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–5, 14–18, 27, 31, 36, 42, 48, 49, and 52–55 are unpatentable over Perttila alone or Perttila and Insolia; claims 37 and 43 were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted trial based on all asserted claims and grounds of unpatentability as follows: Claims Challenged 35 U.S.C. § Reference(s) 1–5, 14–18, 27, 31, 36, 37, 42, 43, 102(b)3 Perttila 48, 52, 55 1–5, 14–18, 27, 31, 36, 37, 42, 43, 103(a) Perttila 48, 49, 52, 55 27, 31, 53, 54” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner concedes that the level of skill as defined by Petitioner “is generally sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 9. However, Patent Owner also notes that “Petitioner’s proposed level of skill in the art does not include any reference to electronic commerce” and contends that “a POSITA should also have 1-2 years of experience designing or implementing systems for electronic commerce including the use of wireless communications.”5 Id. at 10 (citing Ex. 2010 ¶¶ 6–9, 22–24). The level of ordinary skill in the art may be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision. We note that we would reach the same conclusions herein using Patent Owner’s alternate definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Notwithstanding the arguments in its briefing, Petitioner’s counsel acknowledged during the hearing that the claims require the entity or object to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . . that physical presence is connoted by the word ‘proximity’ and by ‘located.’”). There is, accordingly, no controversy regarding whether “an entity or object located in proximity to the second device” requires the entity or object to have a physical presence. Moreover, as explained below our decision does not depend on an express construction of this term. We conclude, therefore, that there is no need for us to construe this term. 2. “wireless device” Patent Owner argues that, as recited in the challenged claims, “wireless device” “refer[s] to wireless communication capabilities, not that a wireless device would be precluded from having any external wires whatsoever.” PO Resp. 19. However, Patent Owner concedes that construction of “wireless device” is “not necessary to resolve the dispute here.” Id. Petitioner argues that “‘wireless device’ should be construed to require a device without external wires,” noting that the claims of the ’359 patent recite a “wireless device” rather than a “wireless communication device.” Pet. Reply 5–6. However, Petitioner also concedes that “no construction of this term is necessary.” Id. at 5. No construction of this term is necessary. The parties both agree that no construction is needed, and as explained below our decision does not depend on a construction of this term.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“As noted above, Petitioner maps Perttila’s disclosure of “electronic coupon information including various offerings” to the recited “list of goods” and notes that the merchant-media device can be located in a store where the advertised goods are sold. Pet. 51–52 (citing Ex. 1006 ¶¶ 26, 39); see also Ex. 1003 ¶ 177. However, neither Petitioner nor its declarant identifies adequately any “list of goods” that Perttila’s remote server delivers to the first wireless device. At best, Petitioner and its declarant describe an iterative process whereby a user interacts with a plurality of tags or beacons in a store to receive multiple electronic coupons. Pet. Reply 17–18; Ex. 1003 ¶ 177. However, Petitioner fails to explain adequately how delivering coupons one at a time in an iterative process constitutes delivering a list of goods as part of an electronic commerce transaction. Petitioner also refers to Perttila’s disclosure of delivering a restaurant menu. Pet. 52–53 (citing Ex. 1006 ¶¶ 26); see also Ex. 1003 ¶ 177. However, Petitioner and its declarant again fail to explain adequately how sending a restaurant menu constitutes delivering a list of goods as a step in a process for an electronic commerce transaction. Perttila discloses that, in embodiments, the billboard may promote a food product and the user’s interaction with the billboard results in the server sending “a restaurant menu or a recipe involving that particular food or food type.” Ex. 1006 ¶ 26. However, neither Petitioner nor its declarant explain adequately how this constitutes a step in a process for an electronic commerce transaction. Notably, Petitioner and its declarant fail to identify any discussion or suggestion in Perttila of the user interacting with the menu after it has been delivered. Nor do we see any such disclosure in Perttila. Rather, Perttila merely discloses sending a restaurant menu as part of “electronic coupon information”: “In another application, the billboard may be promoting a food product, and the request to the remote server corresponds to a request for receiving electronic coupon information including, for example, a restaurant menu or a recipe involving that particular food or food type.” Id. Moreover, we note that Petitioner does not propose to modify Perttila’s system in some manner such that a user could interact with the delivered menu as part of an electronic commerce transaction. Petitioner also refers to Perttila’s disclosure of delivering a movie ticket. Pet. 52–53 (citing Ex. 1006 ¶¶ 44–50); see also Ex. 1003 ¶ 177. However, Petitioner and its declarant again fail to explain adequately how sending an electronic movie ticket constitutes delivering a list of goods as a step in a process for an electronic commerce transaction. Perttila discloses that its system may be used to purchase a movie ticket that is redeemed “at a time much later than the time when the electronic coupon is received.” Ex. 1006 ¶ 44. Perttila discloses purchasing the movie ticket and later using a menu displayed on the user’s mobile phone to activate and validate the ticket at the theater. E.g., id. ¶¶ 46–50. Petitioner fails to explain persuasively how delivering an electronic movie ticket in the manner disclosed by Perttila constitutes delivering a list of goods as a step in a process for an electronic commerce transaction.” slip op. at 38
Patent outcomesUS 8,090,359 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,090,359
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.