• Sandisk Corporation v. Netlist, Inc.Some claims unpatentable
  PTAB · Dec 14, 2015 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1, 14, 15, 19–25, and 27–34 are unpatentable; the Board found other challenged claims not shown unpatentable on the grounds decided.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference in the opinions of the two experts is that Dr. Sechen believes a person of ordinary skill in the art would have an additional four years of experience, education, or a combination of the two, beyond that proposed by Dr. Alpert. See Ex. 1009 ¶ 7. According to Dr. Alpert, the difference in the proposed levels of ordinary skill in the art is not material to any dispute over claim construction or patentability in this inter partes review. Id. We accord greater weight to Dr. Alpert’s opinion as to the level of ordinary skill in the art because he has experience in both teaching students and working with engineers in the industry, while Dr. Sechen’s experience is primarily in teaching. Compare Ex. 1007 ¶¶ 7, 21 with Ex. 2012 ¶¶ 3, 5. Moreover, based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art, we agree with Dr. Alpert’s opinion on the level of ordinary skill. Accordingly, we find that a person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10

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

    “The above disclosure uses the term “operable independently” to describe the data handlers as being discrete and functioning without being physically or logically connected to each other. Based on our review of the ’434 patent, the specification and claim 27 both use the term “operable independently” in the same manner, i.e., to describe a feature of the data handler that is distinct from its data generation feature. We agree with Petitioner, therefore, that when interpreted in the context of the ’434 patent in its entirety, the claim term “operable independently” “merely means that each data handler can operate without influence or control by any of the other data handlers.” Reply 5. The ’434 patent specification uses the term “operable independently” in accordance with its plain and ordinary meaning, and we find no basis for applying the narrower construction advanced by Patent Owner to any of the challenged claims. Accordingly, we interpret “operable independently” as “operable without influence or control by another.” See Cuozzo, 793 F.3d at 1278–79.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the above description in Averbuj, we agree with Patent Owner that Averbuj describes memory interfaces (the alleged data handlers) that are configured to produce address and control signals, and that Averbuj describes producing address and control signals in certain circumstances, e.g., when Averbuj’s sequencer (the alleged control module) specifies writing data in a particular pattern that requires transformation to conform to a particular configuration of a memory module. See PO Resp. 33. We also agree with Petitioner, however, that Averbuj’s memory interfaces are further configured to apply to the memory modules the same address and control signals received from, and produced by, the sequencers for testing (see Reply 15), e.g., when the sequencer sends signals that can be applied, without modification or transformation (see Ex. 1003 ¶ 56), directly to a memory module irrespective of its physical configuration. Thus, Petitioner has shown, by a preponderance of the evidence, that Averbuj’s sequencer meets the limitation of “a control module configured to generate address and control signals for testing the memory devices” as recited in challenged independent claims 1, 20, and 29 of the ’434 patent.” slip op. at 41

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

    “As discussed in Section IV.B.2.e., a petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent” (37 C.F.R. § 42.22(a)(2)), and “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response” (37 C.F.R. § 42.23(b)). We agree with Patent Owner that the Reply does more than merely respond to or rebut arguments made in Patent Owner’s Response; rather, it sets forth a theory that was not presented clearly in the Petition. Patent Owner’s position is supported by the fact that Dr. Sechen, whose skill level is at least (and appears to exceed) that of the ordinary artisan, apparently was unable to envision how Huang and Averbuj could be combined. Further, Dr. Alpert’s second declaration includes, at a minimum, opinions as to the understanding of the ordinary artisan with respect to the teachings of Huang and Averbuj that were not presented in his first declaration. In our judgment, consideration by the Board of the above-noted arguments in the Reply and evidence presented in Dr. Alpert’s second declaration in support thereof would be improper under 37 CFR § 42.23 and unfair to Patent Owner. We have, however, reviewed and considered the arguments in the Petition and evidence therein, and are in agreement with Patent Owner that Petitioner has not provided adequate explanation or evidence to support its contention that one of ordinary skill in the art would have had a reasonable expectation of success in combining Huang and Averbuj. Accordingly, Petitioner has not met its burden to show, by a preponderance of the evidence, that claims 7–12, 17, 18, 20–25, 27, 28, and 30–35 would have been unpatentable over Huang and Averbuj.” slip op. at 59

  Patent outcomesUS 8,001,434 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,001,434
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 22, 2015 · IPR2015-01049 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “(“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of claims 1, 2, 5, 7– 10, 12–16, 18–22, 25, and 28–31 of the ’577 patent and, therefore, deny the Petition for inter partes review..” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We note that Feldmeier discloses that “[a]ddress filtering is a process similar to address translation, except that rather than retrieving the data associated with an address, the process simply determines whether the address exists in a table of addresses.” Ex. 1005, 1:19–22. Feldmeier further discloses that “[t]he term address translation, as used herein, includes both address translation and address filtering operations.” Id. at 1:22–24. Also, as cited by Petitioner, “Demultiplexer 1430 routes the packet . . . to either output packet queue 1450 or to discard line 1460 depending on the signal received from network address lookup 1440.” Id. at 13:24–27. Finally, “[n]etwork address lookup 1440 is an apparatus for performing hierarchical address translation[s] according to an embodiment of the invention.” Id. at 13:19–22. These passages suggest that a translation that yields no match (filtering) results in the packet being sent to the discard line. In contrast, the Specification supports that a successful match leading to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 24 (“Feldmeier never discloses that its firewall device makes a decision to permit or deny a packet based on a matching entry in the network address lookup.”). Based on the above passages, Petitioner has not shown that, even under our broad construction of access control, an affirmative match in Feldmeier can result in a modification or a denial of packet forwarding, as required by claim 1.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 24 (“Feldmeier never discloses that its firewall device makes a decision to permit or deny a packet based on a matching entry in the network address lookup.”). Based on the above passages, Petitioner has not shown that, even under our broad construction of access control, an affirmative match in Feldmeier can result in a modification or a denial of packet forwarding, as required by claim 1.” slip op. at 11

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

    “In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices. Ex. 1001, 1:4–10. Patent Owner also cites certain dictionary definitions. Id. at 10–11. Patent Owner states that “modifying” transmission is “nowhere in the record.” Id. Nonetheless, Patent Owner does not explain why the embodiment cited by the Petitioner above is not relevant to construing the claims. Because the embodiment cited by Petitioner suggests that access control may be used to change the destination address of a packet, we apply a broader definition than proposed by Patent Owner. We find the broadest reasonable construction of “access control” to include restrictions or modifications on the intended destination address to which a packet is to be transmitted.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,377,577
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Black Hills Media, LLCAll claims unpatentable
  PTAB · Oct 21, 2015 · IPR2014-00735 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 4, 7, 10, 13, 14, and 16–21 are unpatentable as obvious over Degnbol; claim 15 is unpatentable as obvious over Degnbol and DeLorme.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “testified regarding Degnbol’s “incognito” mode. Ex. 1017, 215:22–218:22. Petitioner moves to exclude this redirect testimony as beyond the scope of Mr. Zatkovich’s Declaration (Ex. 2017) and Petitioner’s cross examination. Paper 43 (Mot. to Exclude), 1–3. Patent Owner does not cite to or rely on this testimony. Accordingly, we deny Petitioner’s Motion to Exclude as moot.” slip op. at 36

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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.” We resolve the question of obviousness 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;4 and (4) objective evidence of 3 At the oral hearing, Patent Owner admitted that it did not include in its Response any patentability argument distinguishing the prior art under its proposed construction of “user sending status.” Tr. 13:7–14:16. Instead, Patent Owner points to the testimony of Mr. Zatkovich, which Patent Owner admits is not cited in its Response. Id. (citing Ex. 2017 ¶¶ 81–89). Even if we were to adopt Patent Owner’s proposed construction of “user sending status,” Patent Owner has waived any patentability arguments based thereon, as they were not raised in the Response. See, e.g., Paper 27 (Scheduling Order), 2–3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”). 4 Petitioner, citing Dr. Heppe’s testimony, contends that a person of ordinary skill in the art “would typically have at least a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or equivalent thereof, and one to two years of experience in the field of computer communications, telecommunications, and/or communications networking.” Pet. 6 (citing Ex. 1005 ¶ 3). Patent Owner neither contends that this is incorrect nor proposes an alternative. On the full record, we adopt Petitioner’s statement of the level of skill in the art. nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 20

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “To the extent that Patent Owner’s characterization of the Specification’s description of “transmit status” is accurate, it is not consistent with how the term “user sending status” is used in claim 7. Specifically, claim 7 recites that “the central unit receives the user sending 2 The Specification generally uses the term “central server,” while the claims generally use the term “central unit.” The parties do not argue that these terms should be accorded different meanings. Reading the claims in light of the Specification, we understand these terms to be synonymous. status from the second mobile communications device and the information defining the locations of the first and the second mobile communications devices” and “if there is a match and depending upon the user sending status, effects the transmission to the first mobile communications device of locating information.” As Petitioner points out (Reply 18), claim 7 specifies that the central unit receives from the second mobile communications device both a user sending status and information defining location of the second mobile communications device. The user sending status is used by the central unit, along with the information defining the device’s location, to determine whether to send locating information to another device. Patent Owner’s proposed construction, and the explanation provided by Mr. Zatkovich, would exclude the second communications device from transmitting to the central server the very information specifically recited in claim 7. Because Mr. Zatkovich’s testimony, specifically his statement that “[t]he purpose of the user sending status in this example is to enable and disable the transmission of locating information from device 19 to the central server,” Ex. 2017 ¶ 56, is directly contradicted by the language of claim 7, the testimony lacks credibility. Moreover, as explained in the Decision to Institute (Dec. 11–12), the Specification describes embodiments in which the transmit status is transmitted to the central server and controls whether the central server transmits locating information to another device. Ex. 1007, 6:44–50, 8:1–7, 9:3–8, 10:50–59, 11:24–29. These passages provide additional support for Petitioner’s proposed construction of “user sending status.” Patent Owner’s proposed construction would exclude these embodiments.” slip op. at 17

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

    “We agree with Petitioner that the Specification describes examples of “locating information” that indicates that a mobile device is within a certain proximity but without specifying a specific location. Indeed, in this Figure 5 embodiment (Ex. 1007, 14:22–32), the term “locating information” is used to describe information that is not usable to arrive at a specific location. We conclude that a construction excluding such embodiments would be unreasonably narrow. See Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (“A claim construction that excludes a preferred embodiment is rarely, if ever correct and would require highly persuasive evidentiary support.” (internal quotation marks and citation omitted)). We note that Patent Owner does not offer persuasive evidence that the Specification defines “locating information” or excludes or disavows locating information that is not usable to arrive at a specific location. Patent Owner also argues that our construction “ignores the word ‘locating’” and “conflates the notions of ‘locating information’ and ‘proximity/profile data.’” PO Resp. 13. Patent Owner argues that proximity/profile data is distinct from locating information. Id. at 13–16. We agree with Patent Owner that locating information is distinct from proximity/profile data, but disagree that our construction conflates the two. According to the ’593 patent, in determining whether to send locating information, a central server evaluates profile data and proximity data to determine whether there is a match. Ex. 1007, 8:54–9:2. Locating information is not merely the profile and proximity data, nor is proximity/profile data sent to the mobile devices. Rather, the central server sends to a mobile device locating information that indicates to the mobile device that the profile and proximity data have been successfully matched. Id. at 9:3–8. Our construction of “locating information” is directed to the information transmitted by the central server, rather than the information received by the central server. As to reading the word “locating” out of “locating information,” Petitioner, in reliance on Dr. Heppe, argues that “information, sent as a consequence of a proximity test, is ‘locating information’ because information about a device’s proximity to known locations provides information about that device’s location.” Reply 3 (quoting Ex. 1014 ¶ 2). We credit Dr. Heppe’s testimony and agree with Petitioner. We conclude that our construction neither ignores “locating” nor conflates “locating information” with proximity/profile data.” slip op. at 12

  Patent outcomesUS 6,618,593 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,618,593
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Black Hills Media, LLCAll claims unpatentable
  PTAB · Oct 21, 2015 · IPR2015-00336 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 4, 7, 10, and 13–21 are unpatentable as obvious over Degnbol, with claim 15 also relying on DeLorme.

  RulingsFinal written decision

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

    “We agree with Petitioner that the Specification describes examples of “locating information” that indicates that a mobile device is within a certain proximity but without specifying a specific location. Indeed, in this Figure 5 embodiment (Ex. 1007, 14:22–32), the term “locating information” is used to describe information that is not usable to arrive at a specific location. We conclude that a construction excluding such embodiments would be unreasonably narrow. See Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (“A claim construction that excludes a preferred embodiment is rarely, if ever correct and would require highly persuasive evidentiary support.” (internal quotation marks and citation omitted)). We note that Patent Owner does not offer persuasive evidence that the Specification defines “locating information” or excludes or disavows locating information that is not usable to arrive at a specific location.” slip op. at 12

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

    “Neither party proposes a construction of “based upon the information defining the locations of the first and the second mobile communications devices.” Nevertheless, Patent Owner argues that “locating information” is further qualified by this claim language. PO Resp. 17. According to Patent Owner, in reliance on Mr. Zatkovich’s testimony, “[l]ocation information must include information about the locations of at least two devices.” Id. (citing Ex. 2017 ¶ 49). The plain language of the claims recites “based on,” rather than “includes.” Patent Owner does not persuasively argue that information “based on” the locations of two devices necessarily must include the two locations. Indeed, in the truck example Patent Owner cites (Id. at 6 (citing Ex. 1007, 11:46–57)), the information Patent Owner identifies as locating information is a transmission by the central server of a convenient meeting place, which, presumably, includes the location of neither truck. Mr. Zatkovich testifies that in instances such as textual directions and a video of the route to be travelled, “the ‘locating information’ is based on and derived from the locations of both devices.” Ex. 2017 ¶ 49. We agree. Nevertheless, information that indicates to a user that a second user is within a certain proximity of a first user also is based on and derived from the locations of both devices.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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.” We resolve the question of obviousness 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;4 and (4) objective evidence of 3 At the oral hearing, Patent Owner admitted that it did not include in its Response any patentability argument distinguishing the prior art under its proposed construction of “user sending status.” Tr. 13:7–14:16. Instead, Patent Owner points to the testimony of Mr. Zatkovich, which Patent Owner admits is not cited in its Response. Id. (citing Ex. 2017 ¶¶ 81–89). Even if we were to adopt Patent Owner’s proposed construction of “user sending status,” Patent Owner has waived any patentability arguments based thereon, as they were not raised in the Response. See, e.g., Paper 27 (Scheduling Order), 2–3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”). 4 Petitioner, citing Dr. Heppe’s testimony, contends that a person of ordinary skill in the art “would typically have at least a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or equivalent thereof, and one to two years of experience in the field of computer communications, telecommunications, and/or communications networking.” Pet. 6 (citing Ex. 1005 ¶ 3). Patent Owner neither contends that this is incorrect nor proposes an alternative. On the full record, we adopt Petitioner’s statement of the level of skill in the art. nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “communications device transmitting data defining its own location, these systems mentioned in Degnbol know the positions of the network’s cellular tower and use this information to derive the location of a communications device. To summarize, Degnbol’s cellular tower infers the location of communications devices.” Ex. 2017 ¶ 63. We understand Mr. Zatkovich to be testifying that Degnbol’s reference to “GPS” is a reference to the GPS coordinates of the cellular towers, rather than the GPS coordinates of the mobile telephones. Mr. Zatkovich does not cite to evidence other than Degnbol in reaching this conclusion. In reply, Dr. Heppe testifies, “a person of ordinary skill would understand Degnbol to teach (among other things) a ‘mobile-based’ position determination method with GPS receivers in (or associated with) the mobile devices.” Ex. 1014 ¶ 15. Dr. Heppe also relies exclusively on Degnbol’s disclosure in reaching his conclusion. Patent Owner argues that Degnbol has no explicit disclosure of mobile devices including GPS transceivers and that Degnbol’s distinction between “network-based” and “mobile-based” position calculation is “cryptic.” PO Resp. 27–28. The logical reading of Degnbol’s disclosure is that mobile- based methods, such as tracking a mobile phone’s position through receipt of GPS information from the phone, are distinct from “network-based” techniques, such as triangulation. See, e.g., Ex. 1003, 5:7–9 (“several determination methods, such as triangulation methods, GPS . . .”). As Dr. Heppe points out (Ex. 1014 ¶ 15), Figure 1 of Degnbol depicts a wireless network receiving “position reports” from users. To the extent there is any ambiguity, this is persuasive evidence that Degnbol’s cellular phones transmit information about their positions, such as GPS coordinates, to a central server. In consideration of all of this evidence, we find that Degnbol teaches first and second mobile communications devices “for transmitting information defining a location of” each device.” slip op. at 26

  Patent outcomesUS 6,618,593 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,618,593
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 19, 2015 · IPR2015-00973 · APJ Bryan F Moore · 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

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 1. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that independent claim 1, or claims 2, 5, 7–10, 12–16, 18–22, 25, 28, 29, and 31 that depend therefrom, are anticipated by Hendel.” slip op. at 11

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

    “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 also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). 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. 1 U.S. Patent No. 6,081,522, filed June 30, 1997, issued June 27, 2000 (Ex. 1007, “Hendel”). 2 U.S. Patent No. 5,938,736, filed June 30, 1997, issued Aug. 17, 1999 (Ex. 1008, “Muller”). 3 U.S. Patent No. 5,867,495, filed Nov. 18, 1996, issued Feb. 2, 1999 (Ex. 1019, “Elliot”). 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). Petitioner proposes constructions for the terms “access control,” “associative memory,” “packet label,” “responsive,” and “megapacket.” Pet. 5–9. We determine that the terms “associative memory,” “packet label,” “responsive,” and “megapacket” do not require express construction for purposes of our Decision.” slip op. at 6

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

    “As to the term “access control,” Petitioner asserts that “[a] person of skill in the art would have understood ‘access control’ to encompass restrictions or modifications of the transmission of a packet.” Pet. 5. Petitioner relies on the following passage from the Specification: [T]he invention can be used to augment or override routing decisions otherwise made by the router, using the access control element 120. In addition to specifying the packet 130 is to be dropped or forwarded to the higher-level processor, the access control element 120 can alter the output interface, which was selected by the routing element 110, to another selected output interface. The invention can thus be used to implement QOS (quality of service), and other administrative policies. Ex. 1001, 6:9–18. Patent Owner asserts “the plain and ordinary meaning of ‘access control’ is ‘restriction of packets from being transmitted from selected source devices to selected destination devices.’” Prelim. Resp. 10. Patent Owner relies on the following passage from the Specification (id.): In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “‘discarding’ packets does not concern access control,” that Hendel’s “packets are only filtered or discarded as part of the packet forwarding process when there is a problem with the packet,” and thus, “Hendel refers to such filtering or discarding occurring when packets are ‘ill-formed’ or have ‘no appropriate destination[s]’ or ‘unsupported’ headers.” Prelim Resp. 21–22 (citing Ex. 1007, 8:39–40, 10:51–52, 13:9–11). We agree. Although we did not adopt Patent Owner’s proposed construction of the claim term “access result,” Patent Owner nevertheless makes a salient argument. We find Petitioner has not shown that the filtering decision is done “in response to [] at least one selected match” as required by claim 1. The Specification supports that a successful match leading to an access result is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 21 (“the ‘matching entry,’ at most, provides a destination for Hendel’s system to forward the packet . . . [but,] where a destination is found, the packet is forwarded; there is no disclosure to generate any access result to possibly restrict access to the destination.”). Neither Petitioner, nor Petitioner’s Declarant, has tied an actual match in Hendel to a decision whether to forward the packet or make some modification to the intended transmission of the packet.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,377,577
• Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Aug 19, 2015 · IPR2014-00631 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, and 15–23 under specified obviousness combinations.

  RulingsFinal written decision

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

    “Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundTerm construed board ownDecided for petitioner

    “[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. The statement on which Patent Owner relies is only part of a sentence; the full sentence reads as follows: In amended Claim 1, a trigger condition and associated threshold [are] selected by a user in a step prior to image capture, the image capture device then monitors a signal corresponding to the trigger condition so that the image capture device can automatically determine when an image should he captured without intervention by a user. Ex. 1015, 6 (emphasis added). The thrust of that sentence, as explained in the paragraph that follows it in the prosecution history, is that, in claim 1, “the timing of image capture[] is determined automatically by the image capture device without the involvement of the user.” Id. (emphasis added). The Beck reference is not distinguished by the applicant on the basis of how the threshold level is selected, but rather on how an image is captured “after a trigger condition and associated threshold ha[ve] been satisfied.” Id. As such, whether “a trigger condition and associated threshold” are selected by a user, or by the device itself, is not central to applicant’s argument distinguishing the Beck reference. Accordingly, the statement that “a trigger condition and associated threshold [are] selected by a user” does not evidence a clear intent to disavow claim scope, contrary to Patent Owner’s contention. For the reasons discussed above, we determine that the broadest slip op. at 24

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “In opposition, Patent Owner argues that Mishima fails to disclose entering a threshold level corresponding to the automatic trigger condition, because, as asserted by Dr. Bovik, “the user is not involved in setting the threshold in any way.” PO Resp. 31 (citing Ex. 2006 ¶ 72). As discussed above, however, the user does not need to be involved in setting the threshold level under our interpretation of “entering.” See supra Section II.A.4. That is, the term “entering” is not limited to acts of entering performed by a user, but encompasses acts of entering performed by the image capture device itself. See id. We determine that Petitioner has made a sufficient showing that Mishima discloses “entering a threshold level.” See PO Resp. 32. In particular, Petitioner has shown that, when the user sets Mishima’s device in the automatic mode and selects a reference image for comparison with a captured image or photographic subject, the device sets or selects a threshold level, such as Kn, P, or 40%, and, thus, satisfies the “entering a threshold level” requirement under our claim construction. See Pet. 13–15; Pet. Reply 13–15; Ex. 1002 ¶ 43; Ex. 1016 ¶¶ 13, 48–50; Ex. 1005 ¶ 40 (describing “setting a threshold value Kn” based on reference brightness value K0), ¶ 90 (setting or selecting “X < P” to determine a match, where P is a threshold value and X is the average square of differences between the part that is subject to recognition and the user-selected image pattern); ¶ 114 (describing setting a threshold level as “40%” of “the number of pixels that produce 1”). Moreover, we are not persuaded by Dr. Bovik’s testimony that “the user [in Mishima] is not involved in setting the threshold in any way.” See Ex. 2006 ¶ 72. Dr. Bovik does not address adequately Mishima’s disclosure that the user places the camera in the automatic imaging mode and selects a reference image6 for comparison with a captured image or photographic subject. See, e.g., Ex. 1005 ¶¶ 26, 37, 38, 83, 85, 87, 97, 98, 107, 108; see Pet. Reply 14 (citing Ex. 1005 ¶¶ 37, 83). Those acts satisfy “selecting an automatic image trigger condition.” See Pet. 14; Ex. 1002 ¶ 42. Dr. Bovik does not discuss whether those acts also satisfy “entering a threshold level corresponding to the automatic image trigger condition.” As such, Dr. Bovik’s analysis of Mishima is inconsistent with his” slip op. at 31

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

    “In opposition, Patent Owner argues that a person of skill in the art would not have combined the teachings of Mishima and Misawa because: (1) the devices of Mishima and Misawa are not similar as Petitioner contends and, in fact, operate in fundamentally different ways, (2) the reasons Petitioner provides for combining Mishima and Misawa are undermined by the teachings of those references, and (3) Misawa would discourage one of ordinary skill from combining it with Mishima to arrive at the inventions of claims 3-6. PO Resp. 34. Patent Owner argues, for example, that Misawa “has nothing to do with automatic image trigger conditions, thresholds, or automatic image capture.” Id. at 35 (citing Ex. 2006 ¶ 91). We are persuaded by Petitioner, however, that Patent Owner’s argument is largely unresponsive to Petitioner’s asserted reason to combine, which “does not rely on Misawa for automatic image capture, but for an example user interface for creating an image database.” See Pet. Reply 15. We also are persuaded that a person of ordinary skill “would have looked to Misawa’s user interface as an example of how to construct/control image feature database 80 used in Mishima’s camera.” Id. at 16 (citing Ex 1005 ¶¶ 80, 94); see Ex. 1016 ¶¶ 53–55. Patent Owner has not persuaded us that using Misawa’s selection/extraction process in Mishima’s camera would have been outside the skill in the art, or yielded an unpredictable result. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Further, we are not persuaded by Patent Owner’s argument that Misawa would have led one in a divergent direction and, thus, teaches away from the recited method. See PO Resp. 44–45 (citing Ex. 2006 ¶¶ 108–111). Patent Owner has not shown that Misawa criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009 (“A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed.”) (emphases added; citation omitted). Patent Owner makes essentially the same arguments for claims 4–6 as” slip op. at 37

  Patent outcomesUS 7,817,914 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,817,914
• Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Aug 19, 2015 · IPR2014-00632 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, 15–18, 22, and 23 as obvious over specified combinations.

  RulingsFinal written decision

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

    “Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “7 Patent Owner does not dispute Petitioner’s definition of the level of skill in the art as “(1) a Bachelor’s degree in electronics, computer science, or a related discipline and 2-3 years of camera electronics design and implementation experience, or (2) a Master’s degree or higher in a field such as electronics, computer science, or a related discipline with some concentration in imaging systems or image processing.” PO Resp. 5 n.2 (citing Ex. 1002 ¶¶ 16–17; Ex. 2006 ¶¶ 25–27). We adopt that definition for purposes of this Final Written Decision. 8 Patent Owner does not contend in the Patent Owner Response that any secondary considerations are present that would render the challenged claims patentable over the combined teachings of these references.” slip op. at 35

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “electronic device.” See Pet. Reply 2 (citing Ex. 1016 ¶¶ 9–16). We credit Dr. Stevenson’s testimony on this point: Data entry in electronic devices occurs through a variety of different mechanisms. For instance, in the context of electronic devices, including digital cameras, “entering” of data encompasses the electronic input of data into a component of the electronic device, such as a processor or memory. An electronic device’s operating instructions may cause the device to input data into a processor or memory. The entered data may be data from another memory (e.g., read-only memory (“ROM”)), a removable memory card, or a network.” slip op. at 19

  Patent outcomesUS 7,817,914 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,817,914
• Juniper Networks, Inc. v. Brixham Solutions, Ltd.All claims unpatentable
  PTAB · Jul 27, 2015 · IPR2014-00425 · APJ Peter P Chen · IPR · Final written decision

  Claims 1–5, 8–11, 13–15, and 17 are unpatentable as obvious over either Hofmeister, RFC 3386, and Owens or Halabi, RFC 3386, and Owens.

  RulingsFinal written decision

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

    “In reply, Petitioner cites KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), noting, “KSR set forth a number of ‘Exemplary Rationales’ that support an obviousness finding . . . . Many of these rationales apply here and support the obviousness of the claims.” Pet. Reply 6. Petitioner describes in detail why it would have been obvious to combine Hofmeister with RFC 3386 and Owens, under several rationales set forth in KSR: combining prior art elements according to known methods to yield predictable results; using known techniques to improve similar methods in the same way; applying known techniques to known methods ready for improvement to yield predictable results; and using teachings, suggestions, or motivations in the prior art to modify or combine references to arrive at the claimed invention. Pet. Reply 6–10. As Petitioner contends, it would have been a natural fit and a predictable step for a [person having ordinary skill in the art] to use the Setup/Holding priority described in Hofmeister to make preemption decisions during network failure . . . to take advantage of well-known protection mechanisms, such as those in RFC 3386/Owens. Pet. Reply 10–11. We determine that Petitioner has provided adequately articulated reasoning for combining Hofmeister, RFC 3386, and Owens, supported by rational underpinnings, that are reasonable. See KSR, 550 U.S. at 418. Thus, we conclude that Petitioner has proved by a preponderance of the evidence that claims 1–5, 8–11, 13–15, and 17 are obvious in view of Hofmeister, RFC 3386, and Owens.” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “Opp. to Mot. to Excl. 6–7. While we agree with Petitioner that Patent Owner’s motion is procedurally defective for the reasons argued by Petitioner, for purposes of this decision we also review Patent Owner’s substantive arguments, which we also determine to be lacking in merit. Patent Owner argues that Ex. 1003 and Ex. 1027 should be excluded due to the “general evasiveness” of Dr. Lavian and “interference of counsel.” Mot. to Exclude 1. Petitioner contends that Dr. Lavian’s responses were not evasive but were proper, and Petitioner’s objections to the “content” and “form” also were proper under 37 C.F.R. § 42.53(f)(8). Opp. 8–13. Patent Owner responds that it “seeks to exclude the entirety of Dr. Lavian’s declaration . . . because of the behavior of the witness and his counsel at the deposition.” PO Reply 1. We agree with Petitioner that Dr. Lavian’s responses were not “evasive.” For example, Patent Owner’s argument directs us to a specific portion of the deposition where Dr. Lavian was asked, “did you add that element, 584b?” Mot. to Exclude 2 (quoting Ex. 2003, 34:18). We agree with Petitioner that this “only concrete example of this supposed ‘evasiveness’ identified” by Patent Owner concerns not the ’652 patent being challenged herein, but rather, the patent at issue in IPR2014-00431. Opp. 11. Although Patent Owner states that “this type of evasiveness pervaded the entirety of the deposition,” (Mot. to Excl. 3), based on our review of Ex. 2003, we are persuaded that Dr. Lavian responded to Patent Owner’s questions to the best of his ability and was not “evasive.” We further agree with Petitioner that its deposition objections were proper. See 37 C.F.R. § 42.53(f)(8)(“Any objection to the content, form, or manner of taking the deposition, including the qualifications of the officer, is waived unless made on the record during the deposition and preserved in a timely filed motion to exclude.”). Based on our review of Ex. 2003, Petitioner’s objections were directed to the content, form, or manner of taking the deposition, and, therefore, were proper under 37 C.F.R. § 42.53(f)(8). We are also not persuaded that the alleged behavior of opposing counsel, alone or “in combination with the other occurrences at the deposition” (Mot. to Exclude 4), is a sufficient basis to exclude Ex. 1003 and Ex. 1027. Accordingly, we deny Patent Owner’s Motion. As noted in our Decision to Institute, however, we reiterate that we have not considered any of Petitioner’s arguments made solely by virtue of incorporation by reference from either of the Lavian declarations. See supra n.1; Dec. to Inst., 11–12 n.1.” slip op. at 19

  • Skill levelSkill level board ownOther

    “Bachelor’s in computer science, electrical engineering, or the equivalent; and at least 7 years of professional experience in network communications and Internet protocols, or an advanced degree and 4 years’ experience.” Pet. 14 (citing Ex. 1003 ¶ 46). Patent Owner does not propose a level of ordinary skill in the art. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, Patent Owner has not proposed a level of ordinary skill, and Petitioner has not provided a sufficient explanation as to how its specific proposal regarding the level of ordinary skill (for example, the importance of the inclusion of “at least”) affects the analysis in this case. Therefore, we find the level of ordinary skill in the art to be reflected in the cited references and we determine that no express statement of the level of ordinary skill in the art is required.” slip op. at 9

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Patent Owner further contends there would have been no motivation to combine Hofmeister with RFC 3386 and Owens. PO Resp. 5–6. Patent Owner’s support for its arguments is the Declaration of Dr. George N. Rouskas, to which we accord little weight because his testimony is conclusory and unsupported by evidentiary explanations. See 37 C.F.R. § 42.65(a). At the oral hearing, Patent Owner’s counsel stated that “we heard [Petitioner’s] presentation about all this prior art out there that talks about preempting network traffic, and it’s legion. . . . And yes, it’s true, again, as with the other references, this is a concept that people would have known reading all of these references, prioritizing, working traffic under normal operating conditions.” Tr. 18:1–2, 28:11–14. Thus, Patent Owner concedes the existence of references disclosing the recited limitations in the challenged claims, but nevertheless argues that there is not any motivation to combine such references.” slip op. at 13

  Patent outcomesUS 7,940,652 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 7,940,652
• Juniper Networks, Inc. v. Brixham Solutions Ltd.All claims unpatentable
  PTAB · Jul 27, 2015 · IPR2014-00431 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 5, 6, 14, and 15 are unpatentable as obvious over Bell, Sierra-1, Sierra-2, and Sierra-3.

  RulingsFinal written decision

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

    “Transfer Mode (“ATM”), and Internet Protocol (“IP”) based services.” Ex. 1001, 5:54–58. Also, the ’895 patent describes that “[e]fficiency is greatly increased when each processing engine supports all protocols used in switch 90 at the OSI model layers supported by the processing engines.” Id. at 14:50–52. The ’895 patent further describes an embodiment that includes the link interfaces and processing engines coupled to a control bus, where the control bus “is a 100 Base- T Ethernet communications link . . . [that] employs the 100 Base-T Ethernet protocols for carrying and formatting data,” and in another embodiment the control bus “is a star-like switched Ethernet network.” Id. at 17:23–38. We agree with Petitioner’s construction of this limitation, to mean “two or more of ‘Ethernet, ATM, Frame Relay’ [that] constitute a first and second protocol within a layer,” is consistent with the specification that describes the network switch to provide “Frame Relay, Gigabit Ethernet, Asynchronous Transfer Mode (‘ATM’), and Internet Protocol (‘IP’) based services.” Pet. 25; Ex. 1001, 5:54–58. This construction is also consistent with the construction proffered by Patent Owner, requiring that “a processing engine must be capable of processing data according to at least two of the afore-referenced protocols.” PO Resp. 2. Accordingly, we agree with Petitioner that, under the broadest reasonable construction, the “multiprotocol” limitation means “two or more of ‘Ethernet, ATM, Frame Relay’ that constitute a first and second protocol within a layer” and we further agree with Patent Owner that a “processing engine” is capable of processing data according to at least two of the afore-referenced protocols.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “except for the limitation that the switch is configured to “map data from multiple link interfaces in said plurality of link interfaces to a first processing engine in said plurality of processing engines.” Pet. 28. Petitioner further contends that if Bell does not explicitly or inherently disclose the switch is configured to “map data from multiple link interfaces in said plurality of link interfaces to a first processing engine in said plurality of processing engines,” then Sierra-1, Sierra-2, and Sierra-3 disclose this limitation. Pet. 29–30. Petitioner specifically argues that Sierra-1 discloses flexible data transmissions that allows for time slots of data to be mapped from any port card to any forwarding card and Sierra-2 discloses a “‘connection map’ that is used to map data from the link interfaces to the processing engines.” Pet. 29–30 (citing Ex. 1006, 14, Fig. 2; Ex. 1005, 29–30). Sierra-1 further discloses multicast is supported as an output and can sample data from any input. Ex. 1006, 14, Fig. 2. Petitioner argues that it would have been obvious to combine Sierra-1, Sierra-2, and Sierra-3 with the Bell architecture, because Bell specifically mentions the use of Sierra’s cross-connection component. Pet. 30–31 (citing Ex. 1003 ¶ 261); Ex. 1004, 51:56–65.” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “Although we agree with Petitioner that Patent Owner’s motion is procedurally defective for the reasons argued by Petitioner (see Opp. 4–6), we also agree with Petitioner that Dr. Lavian’s responses were not “evasive” and highlight this argument for emphasis. For example, Patent Owner’s argument directs us to specific portion of the deposition where Dr. Lavian was asked “did you add that element, 548b?” Supp. Mot. to Exclude 2 (quoting Ex. 2002, 34:18). We agree with Petitioner that Dr. Lavian answered this question to the best of Dr. Lavian’s ability. Opp. 13 (citing Ex. 2002, 34:20–35:2). Furthermore, Patent Owner was able to rephrase the same question and elicit an additional response that Patent Owner did not determine to be “evasive.” See Ex. 2002, 36:6–20. Although Patent Owner directs us to an additional example where Dr. Lavian was allegedly “evasive” and generally concludes that “this type of evasiveness pervaded the entirety of the deposition,” based on our review of Ex. 2002, Patent Owner has not persuaded us that Dr. Lavian did not respond to the questions to the best of his ability. We further agree with Petitioner that Petitioner’s objections were proper. See 37 C.F.R. § 42.53(f)(8) (“Any objection to the content, form, or manner of taking the deposition, including the qualifications of the offier, is waived unless made on the record during the deposition and preserved in a timely filed motion to exclude.”). Based on our review of Ex. 2002, Petitioner’s objections were directed to the content, form, or manner of taking the deposition, and, therefore, were proper under 37 C.F.R. § 42.53(f)(8). We are also not persuaded that the behavior of opposing counsel, alone or “in combination with the occurences at the deposition” (Supp. Mot. to Exclude 4) is a sufficient basis to exclude Exhibit 1003 or Exhibit 1020. Such a remedy is incongruous and disproportional to any alleged harm suffered by Patent Owner during deposition. Accordingly, Patent Owner’s Motion to Exclude Exhibit 1003 and Exhibit 1020 is denied.” slip op. at 15

  Patent outcomesUS 7,535,895 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,535,895
• Micron Technology, Inc. / Unified Patents, Inc. v. MLC Intellectual Property, LLCInstitution denied
  PTAB · Jul 20, 2015 · IPR2015-00517 · APJ Kevin F Turner · IPR · Institution

  The Board denied institution because neither petition showed a reasonable likelihood that claims 1, 9, 10, 12, 30, 32, 42, or 45 were unpatentable over Kitamura or Mehrotra.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We review the Petitions under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on our review of the record, we conclude that neither Petitioner is reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable, based on the Petitions filed. See 35 U.S.C. § 314. B.” slip op. at 3

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

    “Kitamura is largely silent as to the specific functioning of the D/A conversion circuit 10. Kitamura discloses that D/A conversion circuit 10 and A/D conversion circuit 13 “preferably share a voltage dividing element and a reference voltage supply (for the purpose of making their characteristics uniform),” and level differences to maximize the operating margin (Ex. 1010 ¶ 11), but does not disclose a “selection” between reference voltages or signals. Although Petitioners emphasize the obviousness of certain elements of the challenged claims (Pet. 25– 26), the obviousness of selecting a reference voltage versus outputting a voltage from a D/A conversion is not discussed. Indeed, Dr. Baker’s discussion is clear (Ex. 1003 ¶¶ 74–79) as to how the output voltages could be set, but it remains unclear how Kitamura itself suggests the examples proffered. The normal function of a D/A converter is not to select between reference voltages, but to render the digital input into analog form. We are not persuaded that Kitamura teaches or suggests the selection of one of a plurality of reference voltages in accordance with the input information, per the challenged claims. In addition, the Petitions fail to provide any rationale for why Kitamura’s disclosure of D/A conversion renders the selection of a reference voltage or signal obvious. For these reasons, Patent Owner’s contentions that Kitamura does not teach or suggest “reference voltage selecting means,” or equivalent elements, or “reference voltages,” per the challenged claims, are persuasive. C.” slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner construction§112(f) appliesDecided for petitioner

    “Reference Voltage Selection Claim 1 recites “reference voltage selecting means for selecting one of a plurality of reference voltages,” with claims 9, 12, and 30 reciting “selecting device which selects one of a plurality of reference signals,” and claims 42 and 45 reciting “selecting one of a plurality of predetermined reference signals.” Petitioners acknowledge that the means-plus-function element in claim 1 is “governed by 35 U.S.C. § 112, ¶ 6,” and that the construction of the claim term in claim 1 “is applicable to claim terms” recited in claims 9, 12, 30, 42, and 45, discussed above. Pet. 5, 8. Petitioners assert that “the verify reference voltage select circuit 222 selects and provides such a reference voltage to the comparator,” and is the corresponding structure described in the specification. Id. at 56 (citing Ex. 1003 ¶¶ 4552). For purposes of this Decision, we construe the referenced claim terms according to that structure and apply the same to the analysis below. B.” slip op. at 6

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

    “Reference Voltages” “Reference Signals” All of the independent claims of the challenged claims recite either “reference signals” or “reference voltages.” Petitioners emphasize that “a person of ordinary skill in the art would have interpreted these features to be broad enough to include and be met by either a digital reference voltage/ signal or an analog reference voltage/signal.” Id. at 10 (citing Ex. 1003 ¶¶ 53–58). For purposes of this Decision, we construe the reference voltages and signals terms as being met by either digital or analog reference voltages/signals, and apply that construction to the analysis below. slip op. at 7

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 5,764,571

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.