- HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentablePTAB · Dec 29, 2015 · IPR2014-01156 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 2, 14, 20, and 43–47 are unpatentable as obvious over either Nathan ’259 and Nathan ’255, or Sound Blaster, Lucente, Ozawa, and Hawkins.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1008 ¶ 148 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio management capabilities of Sound Blaster.”); id. at ¶ 150 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1008 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior 30 art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa and the on/off control of Hawkins. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, Ozawa, and Hawkins and would have had a reasonable expectation of success in doing so.” slip op. at 30
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were cheaper than defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed.Cir.1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record,” otherwise the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added). HTC notes that each of the licenses listed by Mr. Keller includes at least two patents that explicitly claim a compact disc recorder, an element not present in the claims of the ’502 patent. Pet. Reply 23–24. HTC also contends that AAD fails to demonstrate any link between the invention of the ’502 patent and the taking of the license; for example, AAD provides no apportionment of revenues to show the amount attributable to the ’502 patent, as opposed to the other members of the licensed family. Id. at 23. 19 We agree with HTC that the evidence provided by AAD does not establish a sufficient link between the merits of the invention claimed in the ’502 patent and the taking of the licenses. Although Mr. Keller notes that some of the provided licenses were taken in situations where there was no pending litigation against the licensee (Ex. 2004 ¶ 9), he does not address whether litigation had been threatened against those parties. We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’502 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, AAD’s evidence of licensing fails to establish commercial success.” slip op. at 19
- ExcludeMotion to exclude, deniedDenied
“Blaster is not offered for a hearsay purpose. As a prior art reference, Sound Blaster is offered to show what information it would have conveyed to a person of ordinary skill in the art; the truth of the contents of Sound Blaster is not relevant to this inquiry. See EMC Corp. v. Personal Web Techs., LLC, Case IPR2013-00085, slip op. at 66 (PTAB May 15, 2014) (Paper 73) (“a prior art document submitted as a ‘printed publication’ under 35 U.S.C. § 102(b) is offered simply as evidence of what it described, not for proving the truth of the matters addressed in the document.”); see Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C. 1990), aff’d, 959 F.2d 226 (Fed. Cir. 1992)). Finally, AAD seeks to exclude Sound Blaster as not authenticated, as there is no evidence to authenticate the reference “except the inadmissible Miller Declaration.” Mot. Exclude 8. We have not found the Miller Declaration to be inadmissible, however. To authenticate an item of evidence, a party must “produce evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). The Miller Declaration provides sufficient evidence to support the finding that Sound Blaster is what HTC contends it to be: a document distributed to the public with the commercially available version of the Sound Blaster 16 Audio Card. For these reasons, even if AAD’s Motion to Exclude were procedurally proper, we would not exclude Exhibit 1004, including the Sound Blaster reference, from the record.” slip op. at 27
Patent outcomesUS 7,817,502 unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 7,817,502 - Ipr2015-01434Institution deniedPTAB · Dec 28, 2015 · IPR2015-01434 · IPR · Institution
The supplied document unit is blank, so the institution outcome and basis cannot be verified.
NonePatents in suitUS 7,908,343 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01486 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed outside § 315(b)’s one-year time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Business Network Services Inc., Verizon Services Corp., Time Warner Cable Inc., iControl Networks Inc., CoxCom, LLC, Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC, Verizon Communications Inc., and Time Warner Cable Inc. were served with a complaint on June 23, 2014. Exs. 2003, 2005. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). slip op. at 14
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Business Network Services Inc., Verizon Services Corp., Time Warner Cable Inc., iControl Networks Inc., CoxCom, LLC, Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC, Verizon Communications Inc., and Time Warner Cable Inc. were served with a complaint on June 23, 2014. Exs. 2003, 2005. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). CoxCom, LLC, is precluded additionally from filing the Petition for other reasons. In PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00041 (PTAB June 3, 2014) (Paper No. 19), the Board addressed a Motion of Adverse Judgement against PNC. In PNC Bank, PNC, one of three petitioners, violated 35 U.S.C. § 325(a)(1) by filing the petition for covered business method review (“CBM”) after it had filed a district court suit challenging the validity of the patent challenged in the CBM. In an attempt to eliminate the statutory bar against PNC, PNC moved for entry of adverse judgment against it in the CBM proceeding and 14 contended that other petitioners could proceed with the petition without further involvement by PNC. The Board denied institution on the CBM petition and dismissed the motion because PNC already had exerted substantial control over the case, and granting PNC’s request for adverse judgment would not obviate the control that PNC already had exerted. Id., slip op. at 4. Similarly, Terremark North America LLC and the named Verizon entities in this case already have exerted substantial control over the case by participating in filing the Petition, appointing counsel, etc. The presence of CoxCom, LLC, therefore, does not remove the statutory bar. slip op. at 14
Discretionary denialPatents in suitUS 6,549,130 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01482 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed outside the one-year time bar under 35 U.S.C. § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Communications Inc., Verizon Services Corp., Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC and Verizon Communications Inc. were 14 served with a complaint on June 23, 2014. Ex. 2003. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). slip op. at 14
- BurdenDecided for patent owner
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Petitioner acknowledges that Terremark North America LLC, Verizon Communications Inc., Verizon Services Corp., Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC and Verizon Communications Inc. were 14 served with a complaint on June 23, 2014. Ex. 2003. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). CoxCom, LLC, is precluded additionally from filing the Petition for other reasons. In PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00041 (PTAB June 3, 2014) (Paper No. 19), the Board addressed a Motion of Adverse Judgement against PNC. In PNC Bank, PNC, one of three petitioners, violated 35 U.S.C. § 325(a)(1) by filing the petition for covered business method review (“CBM”) after it had filed a district court suit challenging the validity of the patent challenged in the CBM. In an attempt to eliminate the statutory bar against PNC, PNC moved for entry of adverse judgment against it in the CBM proceeding and contended that other petitioners could proceed with the petition without further involvement by PNC. The Board denied institution on the CBM petition and dismissed the motion because PNC already had exerted substantial control over the case, and granting PNC’s request for adverse judgment would not obviate the control that PNC already had exerted. Id., slip op. at 4. Similarly, Terremark North America LLC and the named Verizon entities in this case already have exerted substantial control over the case by participating in filing the Petition, appointing counsel, etc. The presence of CoxCom, LLC, therefore, does not remove the statutory bar.” slip op. at 14
Discretionary denialPatents in suitUS 7,397,363 - PTAB · Dec 28, 2015 · IPR2015-01479 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that “[t]he use of the term ‘backlight’ rather than simply ‘light’ indicates that something is being illuminated from behind.” Id. at 28. Petitioner’s proposed constructions (Pet. 13–16) are unreasonably broad insofar as they do not account for the use of the term “backlight.” We also agree with Patent Owner (see id.) that it is clear in the context of the ’833 patent that the recited backlights are in a liquid crystal display apparatus. See Toro Co. v. White Consol. Indus. Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (words used in a claim are not construed in a “lexicographic vacuum, but in the context of the specification and drawings”); In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (“[C]laims are not to be read in a vacuum, and limitations therein are to be interpreted in light of the specification in giving them their ‘broadest reasonable interpretation.’” (emphasis omitted) (quoting In re Okuzawa, 537 F.2d 545, 548 (CCPA 1976)). Petitioner, and its expert Dr. Silzars, recognize in their statements regarding the level of ordinary skill in the art that the relevant art here is “display technologies.” See Pet. 12; Ex. 1002 ¶ 13. Notably, however, despite Petitioner’s assertions and Dr. Silzars’ opinions that “[t]he alleged invention boils down to a method for minimizing the electrical noise generated when simultaneously driving multiple lights,” that the “‘liquid crystal display’ modifier” in the preambles of the challenged claims “merely states a purpose or intended use of the invention” (Pet. 20–22; Ex. 1002 ¶¶ 58–59), and that “there is no structure that is specific to LCDs recited in the body of any of the claims,” neither Petitioner nor Dr. Silzars identifies any context in which backlights would be employed by those of ordinary skill in the art of display technologies, other than in an LCD. Accordingly, on this record and for purposes of this Decision, we determine that the broadest reasonable interpretation of the term “backlight” is “a lamp or set of lamps that illuminates a liquid crystal display from behind.” Because the claims already explicitly define the relationship between the “first backlight” and the “second backlight”—for example, claim 1 recites, in relevant part, that the second backlight is “driven simultaneously with said first backlight” and “ha[s] an oscillation wave whose phase is inverted with respect to an oscillation wave of the first backlight”—we discern no need to provide separate interpretations of “first backlight” and “second backlight.” We also decline to adopt Patent Owner’s proposal to limit the “second backlight” to include “all remaining lamps of the . . . apparatus that are not in the first backlight.” Because independent claims 1 and 16 use the open-ended transitional phrase “comprising,” those claims do not exclude additional, unrecited elements and method steps, respectively. See Manual of Patent Examining Procedure § 2111.03 (9th ed., Rev. 07.2015 Nov. 2015). 2. Other Claim Terms For purposes of this Decision, no other claim terms require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“B. Anticipation and Obviousness “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed[,] and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); accord In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)
“A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter[,] as a whole[,] would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze the asserted grounds with the principles identified above in mind.” slip op. at 13
- PTAB / AIA Trials › Real party in interest / privityNot reached
“D. Remaining Contentions The above determination makes it unnecessary to resolve any other disputes, including Patent Owner’s assertion that Petitioner failed to list all of the real parties in interest. See Prelim. Resp. 4–14; Petitioners’ Reply to Patent Owner’s Preliminary Response, Paper 9; Patent Owner’s Sur-Reply to Petitioners’ Reply, Paper 10.” slip op. at 33
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,417,833 - Terremark North America LLC / Verizon Communications Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01485 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed after the one-year time bar in § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityInstitution denied time barDecided for patent owner
“the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b).” slip op. at 13
Discretionary denialPatents in suitUS 7,397,363 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01484 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed, served, and paid one day after the § 315(b) one-year time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once: (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2. It is undisputed that at least two of the petitioning parties were served with a complaint alleging infringement of the ’010 patent on June 23, 2014. Ex. 2001 ¶¶ 1–4; Exs. 2002–2005. On June 23, 2015, Petitioner failed to comply with the statutory requirements of 35 U.S.C. § 312(a) by not paying the required fee and failing to meet the requirements of 37 C.F.R. § 42.106(a) by not filing and serving the Petition and its supporting evidence. Motion 2–6 (citing Ex. 1008 ¶¶ 1–13; Ex. 1009 ¶¶ 1–12). On June 24, 2015, one day after the one year statutory deadline, Petitioner completed filing of the Petitions at issue. Id. at 5–6 (citing Ex. 1008 ¶¶ 1– 13; Ex. 1009 ¶¶ 1–12).” slip op. at 5
Discretionary denialPatents in suitUS 7,277,010 - American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · CBM2015-00153 · APJ Michael P Tierney · CBM · Institution
The Board denied institution for claims 1–16 because those originally issued claims had been cancelled or amended during reexamination; it did not reach the merits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are persuaded that the particular facts of this proceeding counsel against institution. Our decision whether to institute a covered business method patent review must be based on the claims of the ’402 patent as it exists today. See 35 U.S.C. § 324(a). Petitioner challenged original claims 1–16, which Patent Owner has either cancelled or amended during ex parte reexamination. See Ex. 3001. Original claims 1–16, as challenged by Petitioner, no longer exist, and any decision as to the patentability of original claims 1–16 we might reach in this proceeding would be moot and purely advisory. We do not see how the efficient administration of the Office, or the just, speedy, and inexpensive resolution of every proceeding, would be secured by instituting a covered business method patent review in this proceeding. 37 C.F.R. § 42.1(b). In denying institution, we do not reach the merits of the unpatentability arguments in the Petition, and express no opinion on those arguments at this time. Furthermore, based on the current record, we agree with Patent Owner that Petitioner is not prejudiced as they may elect to file a new Petition directed to the amended claims.3” slip op. at 8
Discretionary denialPatents in suitUS 8,423,402 - Microsoft Corporation v. Bradium Technologies LLCInstitution deniedPTAB · Dec 23, 2015 · IPR2015-01434 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute an inter partes review of claims 1–20 (the “challenged claims”) of U.S. Patent No. 7,908,343 B2 (“the ’343 Patent”). 35 U.S.C. § 311. Bradium Technologies LLC (“Patent Owner”) timely filed a Preliminary Response, Paper 12 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- BurdenOther
“map each claim element to a particular teaching of an asserted reference. In particular, Patent Owner notes that, rather than state the claim language in the Petition, Petitioner provides Exhibit 1013, which breaks the claims into specific phrases and assigns each phrase a designation, e.g., 1.A, 1.B. Prelim. Resp. 32. Patent Owner argues that Petitioner’s approach improperly incorporates the claims by reference and that no relief can be granted unless the arguments in the Petition itself, of which the claims are an essential part, support granting the relief. Id. at 33. We agree that Petitioner’s use of an Exhibit to specify the claim elements and its failure to include the claim language anywhere in the Petition is an improper incorporation by reference. Nevertheless, although the claim language is not repeated in the Petition, the Petition contains a paragraph for most, if not all the claim element designations. Therefore, we do not dismiss the Petition on this basis alone.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“specification, neither “data parcel” nor “update data parcel” is defined explicitly in the ’343 Patent. The ’343 Patent refers to “source image data” being processed to obtain a series of K1-N derivative images of progressively lower image resolution. Ex. 1001, col. 6, ll. 6–6. The ’343 Patent also discloses the source image data corresponding to the series image K0 being subdivided into a regular array such that each resulting “image parcel” of the array has, for example, 64 by 64 pixel resolution, where the “image data” has a color or bit per pixel depth of 16 bits, which represents a “data parcel” size of 8 K bytes. Ex. 1001, col. 6, ll. 6–11. Thus, an image parcel is an element of a source image array that defines a source image and a data parcel is data that corresponds to an image parcel. In view of this disclosure, we construe “data parcel” to mean data that corresponds to an element of a source image array. We agree that no other specific claim construction is required and we accord the claim terms their ordinary meaning as used in the ’343 Patent specification.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artReference not prior artMixed
“REFERENCES ARGUED AS NOT APPLICABLE PRIOR ART Patent Owner contends that Petitioner has failed to demonstrate that Potmesil (Ex. 1002) and Lindstrom (Ex. 1004) constitute applicable prior art references. Prelim. Resp. 3–12. We addressed the same arguments as those advanced by Patent Owner in this proceeding in our Decision to Institute in related proceeding Microsoft Corp. v. Bradium Technologies LLC, Case IPP2015-01432, slip op. at 10–14 (PTAB Dec. 23, 2015)(Decision to Institute)3 and Microsoft corp. v. Bradium Technologies LLC, Case IPR2015-01435, slip op. at 8–16 (PTAB Dec. XX, 2015)4. We arrive at the same result in this proceeding and find that, although Petitioner has established that Potmesil is applicable as prior art, Petitioner has not established Lindstrom is prior art that may be applied in Petitioner’s challenge.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,908,343 - Microsoft Corporation v. Bradium Technologies LLCInstitution deniedPTAB · Dec 23, 2015 · IPR2015-01435 · APJ Minn Chung · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving any claim unpatentable on the asserted grounds.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Whether a reference qualifies as a “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). A reference is considered “publicly accessible” upon a satisfactory showing that the document has been “disseminated or otherwise 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. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (citation and internal quotation marks omitted). Often, the determination of public accessibility turns on whether a reference is indexed and catalogued in a meaningful way. For example, an uncatalogued and unshelved thesis in a university library, notwithstanding its accessibility to a graduate committee, was not sufficiently accessible to the public to constitute a printed publication within the meaning of 35 U.S.C. § 102(b) because the “thesis could have been located in the university library only by one having been informed of its existence by the faculty committee, and not by means of the customary research aids available in the library.” In re Bayer, 568 F.2d 1357, 1361–62 (CCPA 1978). In contrast, a dissertation shelved in the stacks and indexed in the catalog at a university library was found to be a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). However, indexing and cataloging must be prepared in a “meaningful” way, e.g., in relationship to the subject matter of the references, to allow an interested researcher exercising reasonable diligence to locate the prior art. See Cronyn, 890 F.2d at 1161.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1001, col. 12, ll. 47–52; col. 13, ll. 55–60; col. 14, ll. 57–62. For claim 1, Petitioner identifies this limitation as elements 1.H, 1.I, and 1.J.8 Ex. 1012, 1. Petitioner treats these elements separately as if they are three distinct limitations, each describing or capturing a discrete feature or concept. See Pet. 44–45. As discussed below, Petitioner’s analysis is fundamentally flawed because the common limitation set forth above must be considered as a whole. The reason is that the limitation captures a single concept described in the Specification—a concept that can be understood only when the limitation is considered as a whole. Petitioner’s omission of the actual claim language in its analysis and using the labels (e.g., claim elements 1.H, 1.I, or 1.J) in place of the claim language obscures the problem underlying Petitioner’s approach and reinforces the erroneous impression that the Petitioner-identified elements are separate and distinct limitations.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner does not explain adequately the reasons to combine the references to teach elements 1.H, 1.I, and 1.J. An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner must also show that there was a reason to combine those elements to achieve the claimed invention with a reasonable expectation of success. See PAR Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). First, we note that not all combinations elements 1.H and 1.I satisfy element 1.J, “such that each image parcel being of a fixed byte size.” For example, if the resolution increased by a factor of two while the array subdivision decreased by a factor of two from one image to the next in the series of images, the byte size of the image parcels would increase by a factor of four. In another example, reducing the resolution by a factor of four while reducing the array subdivision by a factor of eight would increase the byte size of the image parcels by a factor of two. In both examples, elements 1.H and 1.I would be satisfied but not element 1.J because each image parcel of the two successive images would not be of a fixed size as required by the claim. Hence, in order to show that the combination of Rutledge, Ligtenberg, and Cooper teaches the claimed feature of elements 1.H, 1.I, and 1.J, Petitioner must show how a person of ordinary skill would be motivated to combine the references to teach varying the resolution and array subdivision in a specific way, e.g., both decreasing by a factor of four, “such that each image parcel [is] of a fixed byte size.”” slip op. at 23
- Expert testimonyPetitioner expert discountedDecided for patent owner
“testifies that “[s]ince each tile in a layer has the same size (‘fTileSize’) . . . it would be obvious that each image parcel could have the same fixed byte size.” Ex. 1009 ¶ 218. However, the cited portion in column 13 of Ligtenberg appears to be a listing of C language source code, which shows that “fTileSize” is a variable for storing 16-bit integer values. See Ex. 1005, col. 13, ll. 30–37 (“UInt16 fTileSize;”). Dr. Michalson does not cite any disclosure in Ligtenberg that requires this value to remain constant for all layers of resolution. Instead, Dr. Michalson asserts that “it would be obvious that each image parcel could have the same fixed byte size” because “using a fixed size . . . could improve predictability of the system” by making “the caching process more straightforward.” Ex. 1009 ¶ 218 (emphases added). However, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. Nov. 5, 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Dr. Michalson justifies his “could have” reasoning by making an analogy to stacking cubic boxes of the same size in a room. Ex. 1009 ¶ 218. We are not persuaded by Dr. Michalson’s testimony because it is conclusory and provides insufficient explanation why a person of ordinary skill would have modified Ligtenberg to teach the claimed feature, i.e., each image parcel having the same byte size for any resolution layer or across all resolution layers. The lack of adequate reasoning in Dr. Michalson’s testimony indicates that Dr. Michalson relies on impermissible hindsight. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted)); ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (“[T]he expert’s testimony on obviousness was essentially a conclusory statement that a person of ordinary skill in the art would have known, based on the ‘modular’ nature of the claimed components, how to combine any of a number of references to achieve the claimed inventions. This is not sufficient and is fraught with hindsight bias.”). Therefore, we are not persuaded that Petitioner has demonstrated Ligtenberg teaches element 1.J, “such that each image parcel being of a fixed byte size,” as recited in claim 1.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,924,506
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.