• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01267 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  The Board held claims 1–13 and 15–20 not shown unpatentable over Law and Sasaki because the evidence did not establish the claimed surface properties.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 17–18 (citing Ex. 1003 ¶ 65). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art. B.” slip op. at 8

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

    “reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only 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)). For the purposes of the Institution Decision, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The evidence, however, does not establish that a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0 necessarily results from reducing the size and prevalence of the protrusions on the backside surface of Law’s magnetic tape. As Petitioner agrees, Law and Sasaki do not discuss skew and kurtosis values. See Pet. 29 (stating that Law does not expressly disclose skew or kurtosis values); Reply 23 (recognizing that neither Law nor Sasaki contain express disclosures of skew and kurtosis); Tr. 18:22–23 (Petitioner’s counsel noting that there are no reported skew and kurtosis values in Law or Sasaki). Thus, Petitioner relies on Mr. Isobe’s testimony to establish that reducing the protrusions on Law’s backside surface would result in a skew less than about 0.5 and a kurtosis less than about 4.0. See Pet. 45–49; Ex. 1003 ¶¶ 79–81, 170–174. In that regard, Mr. Isobe testified as follows:” slip op. at 17

  • Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable

    “At best, the evidence establishes that reducing protrusions in Law’s backside coating may result in the surface approaching a Gaussian distribution (namely, a skew of 0 and a kurtosis of 3). See Ex. 1003 ¶ 171 (“By reducing the number of peaks the overall surface may become closer to a Gaussian distribution, which by definition has a skew of zero.” (emphasis added)), ¶ 174 (“As the frequency of large protrusions is reduced, the skew of the backcoat surface approaches 0 and the kurtosis becomes closer to 3.” (emphases added)). There is no evidence of record, however, that establishes the skew and kurtosis values of Law’s backside coating before reducing the protrusions as Petitioner proposes. While it is possible that reducing Law’s protrusions could result in skew and kurtosis values within the claimed range, it is also possible that reducing the protrusions could result in a surface that approaches a Gaussian distribution but still has a skew above 0.5 and a kurtosis above 4.0. See Ex. 2026 ¶¶ 36–60, 77–83, 90; see also PAR Pharm., 773 F.3d at 1195 (Inherency “may not be established by probabilities or possibilities.”). Thus, even if reducing the protrusions on Law’s backside coating caused the surface to approach a Gaussian distribution, that is not sufficient to establish that it necessarily results in a skew less than about 0.5 and a kurtosis less than about 4.0 as claimed. The skew and kurtosis values recited in claims 1 and 20 are not simply properties possessed by any backside coating that otherwise satisfies the structural limitations. Instead, they are recited as limitations on which magnetic recording media fall within the scope of the claims. The evidence of record does not establish that reducing the protrusions in Law’s backside coating, as taught by Sasaki, “would have naturally led to a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0” as Petitioner contends. Pet. 45. Accordingly, on the record before us, we find that Petitioner has not established that claims 1 and 20 would have been obvious over the combined teachings of Law and Sasaki.” slip op. at 21

  Patent outcomesUS 7,029,774 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Sumitomo Electric Industries, Ltd. v. United Technologies CorporationNo claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-00966 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–4, 8–13, 16, and 17 were not shown unpatentable under either § 103 ground because SEI did not establish a sufficient reason to combine the references.

  RulingsFinal written decision

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

    “We disagree. As the Federal Circuit has observed, “[a] preamble is not a claim limitation if the claim body ‘defines a structurally complete invention . . . and uses the preamble only to state a purpose or intended use for the invention.’” Georgetown Rail, 867 F.3d at 1236 (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The fact that the claims were amended to include storage tanks and recirculation loops actually cuts against UTC’s position, as the claim as amended describes a structurally complete invention and reliance on the preamble for this structure is unnecessary. UTC also points to the fact that the Examiner amended the preamble during prosecution, from merely reciting a “flow battery” to a “redox flow battery.” PO Resp. 15. While “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art” (Catalina Mktg., 289 F.3d at 809) may be a reason to view the preamble as limiting, UTC directs us to no evidence here that the Examiner intended the amendment to distinguish the claims from the prior art. Indeed, as UTC acknowledges in its Response, a person of ordinary skill in the art would have understood the ’243 patent to use “‘redox flow battery’ and ‘flow battery’ to mean the same thing.” PO Resp. 13 (emphasis added). If, as UTC concedes, the Examiner’s amendment merely substituted one synonym for another, the amendment could not have changed the scope of the claim or distinguished over the prior art. For these reasons, we conclude that the preamble of the claims is not limiting, and, therefore, we need not construe the term redox flow battery.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “SEI contends that the person of ordinary skill should not be limited to only a degree in chemistry or chemical engineering, because the claimed features of the flow batteries are not directed to chemistry. Pet. Reply 7. We agree, and adopt SEI’s definition of the relevant educational background. While the parties differ as to the number of years of experience in working with flow batteries, we do not consider the difference (one versus two years) to be significant. We find that a person of ordinary skill in the art at the time of invention would be a person with a degree in chemistry, physics, chemical engineering, electrical engineering, or mechanical engineering, who has at least one year of experience designing or testing flow batteries so as to obtain functional knowledge of their structure and operation. We have reviewed the level of skill reflected in the prior art and consider it consistent with this definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “evidence. Our Rule 42.64 provides that a motion to exclude is necessary to preserve any objection, and refers to those objections as “objections to the admissibility” of evidence. See 37 C.F.R. § 42.64(a), (c). The Board’s Trial Practice Guide further explains that a motion to exclude “must explain why the evidence is not admissible.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767. In other words, objections to the timing of late-arising evidence or procedural infirmities are not proper for a motion to exclude. For this reason, the objections raised in UTC’s motion to exclude are improper. First, UTC argues that Exhibit 1066 is untimely under 37 C.F.R. § 42.63(b), which requires a translation of a foreign-language document to be filed with the document. Mot. 5. By UTC’s reasoning, because the Supplemental Declaration revisits Mr. Yagaeshi’s prior translation, but was not submitted with the foreign-language document, it violates the Board’s rules. Id. As this is clearly a procedural objection to the timing of the evidence, as opposed to its admissibility, we deny the motion to exclude on this basis. In any event, even if it were procedurally proper, we would not exclude the Supplemental Declaration on this basis. The Board’s Rule requires only that the original foreign-language document be accompanied by a translation, and there is no dispute that is what happened here. We see nothing in Rule 42.63(b) that prohibits a party to revisit, or even modify, its translation at a later date, given sufficient notice and opportunity to respond by the opposing party. Here, we granted UTC the opportunity to submit its own responsive declaration and address the translation issue at the oral hearing, and UTC did so.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “character as a minus sign, which is consistent with Mr. Yagaeshi’s original translation, makes more grammatical sense in the context of the sentence. We take note of the fact that SEI only changed its position on the translation—and asked Mr. Yagaeshi to correct his prior translation—once UTC made arguments based on the original translation that might be detrimental to SEI’s case. While it is conceivable that SEI only became aware of the alleged error once UTC called attention to it in the Response, we consider it fair to hold SEI to its original interpretation, especially given that that original interpretation is in agreement with Mr. Baldwin’s translation, which has remained consistent since at least 2016. For these reasons, we will interpret the disputed passage of JP228 to read “the potential was negative 0.4V.”” slip op. at 19

  Patent outcomesUS 9,166,243 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,166,243
• Securus Technologies, Inc. v. Global Tel*link CorporationNo claims unpatentable
  PTAB · Nov 16, 2017 · IPR2016-01123 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–11 were not shown unpatentable under either § 103 ground because Petitioner failed to explain adequately why or how a skilled artisan would combine the references.

  RulingsFinal written decision

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

    “Petitioner proposes constructions for the claim terms “continuous noise detection algorithm” and “power distribution filter algorithm.” Pet. 24–28. Patent Owner disputes Petitioner’s proposed constructions for these terms. Prelim. Resp. 8–11. After analyzing the claims and supporting specification of the ’726 patent, we determine that we need not provide express constructions for the disputed claim terms in order to reach our decision.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Dr. Williams’ testimony. See generally Prelim. Resp. Patent Owner’s Declarant, Dr. Leonard J. Forys (“Dr. Forys”), however, proffers his own assessment regarding a person of ordinary skill in the art relevant to the ’726 patent. According to Dr. Forys, one of ordinary skill in the art would have had “a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in communications systems, or comparable industry experience.” Ex. 2002 ¶ 29. Dr. Forys does not address Dr. Williams’ testimony in this regard or otherwise indicate whether his analysis would change if Dr. Williams’ proffered level of ordinary were adopted. Id. We have reviewed the ’726 patent, the types of problems and solutions described in the ’726 patent and cited prior art, and the testimony of Dr. Williams and Dr. Forys (who mostly agree as to the level of skill of an ordinarily skill artisan). Based on our review, we adopt and apply Dr. Williams’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. In addition, our analysis would not change if Dr. Forys’ proffered level of ordinary skill were adopted.” slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “time of the ’726 patent would likely understand the relationship between power and energy. We also agree that there is a relationship between power and energy, and that it is possible to derive information about one from the other. See Ex. 1012, 18:14–25:8; Ex. 2001, 25:10–27:14; Ex. 2005, 238. Based on the evidence of record, we do not agree, however, that power and energy “are essentially equivalent and can be used interchangeably” as asserted in the Petition. See id.; see Pet. 36 (citing Ex. 1009 ¶¶ 174–177). Nor do we agree one of ordinary skill in the art would have understood that the Gupta energy threshold is the same as the power level threshold disclosed in Li. See Ex. 1012, 18:14–25; Ex. 2001, 25:10–27:14; Ex. 2005, 238. Petitioner’s reliance on Dr. Williams’s testimony regarding Gupta’s disclosure that “[a] minimum energy threshold may be programmed to [the cadence tone’s] required power level for a valid signal on a line” is equally unpersuasive. Ex. 1009 ¶ 181 (citing Ex. 1004, 6:41–44). We are unpersuaded because neither Petitioner nor Dr. Williams explains sufficiently how Gupta’s minimum energy threshold relates to a required power level or how it relates to Li’s power estimator and the purpose of Li’s power estimators. Given the lack of equivalence between power and energy, we find Petitioner fails to present sufficient evidence explaining why a person of ordinary skill in the art would have switched from detecting a power threshold, such as that described in Li and required by the challenged claims, to detecting an energy threshold as disclosed in McNitt and Gupta. Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“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”). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention” (quoting KSR, 550 U.S. at 420–21)).” slip op. at 30

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

    “Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“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”). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention” (quoting KSR, 550 U.S. at 420–21)). We agree with Petitioner that the cited references do not need to be physically combinable to render claim 1 obvious. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”); see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Obviousness, however, “may not be established using hindsight or in view of the teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)). Additionally, it is impermissible for Petitioner to “use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Accordingly, Petitioner must set forth clearly in the Petition which references it is relying on for each specific limitation and how those combined teachings would render the challenged claims obvious. See 35 U.S.C. § 312(a)(3).” slip op. at 31

  Patent outcomesUS 8,630,726 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,630,726
• Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Elm 3ds Innovations, LLCNo claims unpatentable
  PTAB · Aug 22, 2017 · IPR2016-00770 · APJ Glenn J Perry · IPR · Final written decision

  Claims 12, 13, 24, 36, 37, 38, 83, 86, 87, and 132 were not shown unpatentable over the asserted combinations because the evidence did not establish substantial flexibility or motivation for the proposed dielectric substitutions.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, with support of its declarant Paul D. Franzon, Ph.D., contends that one of ordinary skill in the art at the time of the inventions of the challenge patents “would have had at least a B.S. degree in electrical engineering, material science, or equivalent thereof, and at least 3–5 years of experience in the relevant field, e.g., semiconductor processing.” Pet. 7 (citing Ex. 1002 ¶¶ 52–53). Dr. Franzon’s testimony as to the level of 12 ordinary skill is based on “the type of problems encountered in the art, prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.” Ex. 1002 ¶ 53. Patent Owner did not propose expressly a particular level of ordinary skill. See generally PO Resp. At the oral hearing, Petitioner indicatedthat there did not seem to be any dispute as to the correct level of ordinary skill. Tr. 112:11–14 (“I don’t think there was any dispute about whether [Dr. Franzon’s proposed level of ordinary skill] was the correct level of skill, although Patent Owner can correct me.”). Having reviewed the prior art asserted in these proceedings (see, e.g., Exs. 1004–07, 1009, 2160), we determine that the level of ordinary skill proposed by Petitioner’s declarant is consistent with the challenged patent and the referenced prior art, and we adopt Petitioner’s proposed definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 12

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

    “In the context of the Elm 3DS family, we find that the broadest reasonable interpretation of “substantially flexible” is the same as our construction under the Philips standard, which was the standard applied in IPR2016-00386. Under the broadest reasonable construction standard, we presume a claim term carries its ordinary and customary meaning, which “is the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). As discussed in detail in the Final Written Decisions in IPR2016-00386, IPR2016-00387, and IPR2016- 00388, the ordinary and customary meaning of “substantially flexible” is “largely able to bend without breaking.” Also as discussed extensively in” slip op. at 14

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

    “same as set forth in IPR2016-00708. Each of the challenged claims in this review require the use of a dielectric having a stress of less than 5 x 108 dynes/cm2 tensile. The evidentiary record in this case with regard to dielectric substitution adds nothing further to the evidentiary record established in IPR2016-00708. For the same reasons set forth in our Final Written Decision in IPR2016-00708, we determine that Petitioner has not met its burden to demonstrate by a preponderance of the evidence that a person of ordinary skill in the art would have made the proposed dielectric substitution.” slip op. at 21

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

    “As noted in our claim construction section, above and as referenced in our Final Written Decision in IPR2016-00386, a preponderance of the evidence establishes that, in the context of semiconductor substrates, mere thinning is not the same as flexibility—being able to bend without breaking. 20 Although Petitioner presents arguments attempting to demonstrate thinning, there are no arguments that this thinning necessarily results in flexibility. Thus, we determine that Petitioner has not met its burden to demonstrate that the required “substantial flexibility.” This reason alone sufficiently supports our conclusion. However, we also conclude, as set forth below that for a second, independent reason, Petitioner has not established that the challenged claims are unpatentable. Petitioner has not sufficiently established that one of ordinary skill would have substituted the dielectric material of Leedy ’695 for the various layers proposed for substitution in Hsu. Therefore we do not credit Leedy ’695 as providing any potential “substantial flexibility” to Hsu.” slip op. at 20

  Patent outcomesUS 8,907,499 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,907,499
• Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Elm 3ds Innovations, LLCNo claims unpatentable
  PTAB · Aug 8, 2017 · IPR2016-00708 · APJ Glenn J Perry · IPR · Final written decision

  Claim 1 was not shown unpatentable because the evidence did not establish substantial flexibility or a reason and reasonable expectation of success for the proposed dielectric substitutions.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, with support of its declarant Paul D. Franzon, Ph.D., contends that one of ordinary skill in the art at the time of the inventions of the challenge patents “would have had at least a B.S. degree in electrical engineering, material science, or equivalent thereof, and at least 3–5 years of experience in the relevant field, e.g., semiconductor processing.” Pet. 5 (citing Ex. 1002 ¶¶ 52–53). According to Dr. Franzon, his testimony as to the level of ordinary skill is based on considering “the type of problems encountered in the art, prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.” Ex. 1002 ¶ 59. Patent Owner did not propose expressly a particular level of ordinary skill. See, e.g., generally PO Resp. At the oral hearing, however, Petitioner indicated” slip op. at 11

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

    “In the context of the Elm 3DS family, we find that the broadest reasonable interpretation of “substantially flexible” is the same as our construction under the Philips standard. Under the broadest reasonable construction standard, we presume a claim term carries its ordinary and customary meaning, which “is the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). As discussed in detail in the Final Written Decisions in IPR2016–00386, IPR2016-00387, and IPR2016–00388, the ordinary and customary meaning of “substantially flexible” is “largely able to bend without breaking.” Also as discussed extensively in those Final Written Decisions, the inventor did not give the term “substantially flexible” a particular meaning in the specification with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The claim at issue here uses the term “substantially flexible” as a modifier of “structure” in the preamble of the claim and as a modifier of “monocrystalline semiconductor layer” in the body of the claim. Thus, a 13 “substantially flexible” structure is a structure that is able to bend without breaking; and a “substantially flexible monocrystalline semiconductor layer” requires a monocrystalline semiconductor layer that is able to bend without breaking.” slip op. at 13

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “Similarly, in view of the complex technology involved in integrated circuit fabrication and, particularly and the agreement of both experts that dielectrics have different properties and different methods of forming dielectrics in integrated circuit fabrication result in dielectrics having different properties (as discussed previously), we determine that Petitioner’s contentions and Dr. Franzon’s broad conclusions (Pet. 45–47; Ex. 1002 ¶¶ 111, 113–14) that one of ordinary skill in the art would have reasonable expectation of success to be insufficient to meet its burden, which requires a preponderance of evidence. For example, as discussed previously, we find Petitioner’s contention that Leedy ’695 thus discloses that its dielectrics can be easily used in place of other dielectrics to be insufficiently supported by the evidence of record. 27 Accordingly, having considered the Petition, Patent Owner’s Response, and Petitioner’s Reply, as well as the relevant evidence discussed in those papers, we determine that Petitioner has not met its burden to demonstrate by a preponderance of the evidence that a person of ordinary skill in the art would have reason to combine the asserted references to arrive at the claimed invention or that a person of ordinary skill would have had a reasonable expectation of success in making the combination proposed by Petitioner.” slip op. at 27

  Patent outcomesUS 8,907,499 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,907,499
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonNo claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01628 · APJ Stacy B Margolies · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

  Patent outcomesUS 7,149,510 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,149,510
• World Bottling Cap, LLC v. Crown Packaging Technology, Inc.No claims unpatentable
  PTAB · Jan 19, 2017 · IPR2015-01651 · APJ William V Saindon · IPR · Final written decision

  Petitioner did not prove claims 1–20 unpatentable: secondary considerations outweighed the obviousness evidence, and the Frishman ground also failed to show the claimed liner beads in claims 11 and 16.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “requires the stretching of one of its grooves, and asserts a person of ordinary skill in the art would avoid using Wagner’s cap with a harder steel because it would be more difficult to stretch the grooves because of the harder steel. PO Resp. 49 (citing Ex. 2004 ¶ 41). We credit the testimony of Patent Owner’s declarant, Dr. Kontsos, on this point, as evidence tending to suggest that a person of ordinary skill in the art, who is familiar with materials science and metal packaging (Pet. 17; PO Resp. 56), would understand that using “harder steel would interfere with the flattening operation” of Wagner. Petitioner argues that we should not credit Dr. Kontsos’s testimony (Pet. Reply 9–11), but we find he is sufficiently “qualified in the pertinent art” to testify as to this point because he has an education in materials science and experience in understanding the yielding and plastic deformation of materials. Ex. 2004 ¶¶ 3–5; Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding admission of the testimony of an expert who admittedly lacked expertise in the design of the patented invention, but had experience with materials selected for use in the invention); Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x. 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art).” slip op. at 15

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

    “We do not consider the evidence to teach away or render the proposed combination inoperable, however, because we do not have sufficient evidence that the effect would be so great as to preclude a person of ordinary skill in the art from considering or making the combination. In other words, we have evidence of a deleterious effect, but Patent Owner has not provided evidence as to the magnitude of that deleterious effect. The mere presence of a contraindicating factor does not preclude a combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”); Winner Intern. Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Given the particular facts at hand, without further evidence as to the magnitude of the effect, or evidence explaining how the level of ordinary skill in the art is not high enough to overcome it, we do not consider the proposed combination to be taught away from or inoperable. Accordingly, we more simply consider this evidence as suggesting that a person of ordinary skill in the art would understand that the use of harder steel for crown caps would come with certain disadvantages. This is not dispositive of the obviousness inquiry, because notwithstanding the evidence tending to suggest that a person of ordinary skill in the art would understand that tinplate steel harder than 62 might interfere with the flattening of Wagner’s cap, Petitioner has provided roughly equal or better evidence tending to suggest that a person of ordinary skill in the art would have selected steel having an average hardness of at least 62.5, because Industrial Heating directly suggests doing so, and several other references suggest similarly. We now turn to the evidence of secondary considerations to determine if or how they contribute to the balancing of evidence.” slip op. at 16

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “(1) Nexus Patent Owner’s evidence of nexus shows that the claimed invention reads on the product sold, and that the claimed invention is not a subcomponent of, but rather the entirety of, the product sold. Ex. 2005 ¶¶ 39–41; see also Exs. 2010–2015 (describing the PPP cap as having the claimed features of a groove and/or harder steel); WBIP, LLC v. Kohler Co., 829 F.3d 1317 (Fed. Cir. 2016) (“[T]here is a presumption of nexus . . . when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘is the invention disclosed and claimed.’”); Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (presumption does not apply if the claimed invention is merely a subcomponent of the product). Although the hardness of the steel in the product sold is much higher than the lower end of the claimed range,15 based on the evidence before us we consider this a maximization of the benefits of PPP’s innovation in its commercial embodiment (i.e., using the thinnest, hardest steel for the most cost savings), rather than evidence that the secondary considerations only apply to a small portion of the claims. Further, although some of the evidence of secondary considerations is drawn to the thinness of the steel rather than its hardness (e.g., Exs. 2013, 2014), based on the record before us, the thinness of the steel is only allowed because it is harder. See, e.g., Ex. 2005 ¶¶ 15–16 (Mr. Merino testifying that “the crown-cap industry has focused on light-weighting – that is, reducing the thickness of the steel used . . . and offsetting for the reduced thickness by using harder steel”). That is, the purpose of using harder steel is so that a manufacturer can use less of it per cap, to reap the benefits of using less raw material. In conclusion, Patent Owner’s evidence regarding nexus indicates that there will be a strong correlation between any evidence in this case highlighting the merits of the commercial PPP crown cap and the merits of the claimed invention. In other words, we will consider evidence of the success and praise of the new PPP crown cap as direct evidence of the 15 The evidence before us indicates that PPP used caps having an average hardness of about 76. Ex. 2005 ¶ 40; Ex. 2011 (specifying DR9CA steel); Ex. 2012 (same). Claim 1 requires a minimum average hardness of greater than 62; claims 5–8 walk that minimum up to 65, 68, 71, and 73, respectively.” slip op. at 17

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner

    “claimed invention, was introduced in 2009. Id. ¶ 45. The table shows how sales of the new low-gauge (“LG”) cap displaced sales of the standard (“STD”) cap from 2010–2015. In and of itself, this displacement pattern does not show success—it shows a typical obsolescence curve as one version of a product replaces another. If this were enough to show success, then virtually every product generation would instantly be successful, even if sales or market share remained flat overall.16 What is persuasive here is that PPP’s market share grew during this replacement period, by about 7%— from 88.7% of the market to 95.5% of the market. This allows us to infer that the increase in market share is because of the merits of the new product, even if we cannot infer that the displacement was because of the merits of the new product.” slip op. at 19

  Patent outcomesUS 8,550,271 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,550,271
• Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01359 · APJ Lynne E Pettigrew · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

  Patent outcomesUS 6,493,426 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,493,426

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.