• Department Of Justice v. Discovery Patents, LLCSome claims unpatentable
  PTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision

  Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8

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

    “We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10

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

    “We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11

  Patent outcomesUS 7,323,980 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,323,980
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.Some claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01828 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 21, 281, 283–286, 288, 289, and 293 are unpatentable as obvious over Nozawa and Philips 4052; claims 25, 26, 363–366, 368, 369, and 373 were not proven unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Qualcomm contends, citing Dr. Larson’s testimony, that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 10–11 (citing Ex. 1002 ¶¶ 31–39). ParkerVision does not contest Qualcomm’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, we adopt Qualcomm’s proposed level of ordinary skill in the art.” slip op. at 11

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

    “During the trial, ParkerVision asserted that we should maintain our construction of “harmonic” (PO Resp. 19–23), and Qualcomm did not address the adopted construction. With respect to the remaining terms, ParkerVision argues that none of these terms are material to the remaining dispute between the parties, which is focused on the “harmonic” limitation. Id. at 24–25. On this, we agree. As the remaining terms are not material to the parties’ dispute, we decline to construe them further. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

  • Expert testimonyOther

    “Regarding the Maas equation, ParkerVision directs us to a portion of Dr. Larson’s deposition, in which Dr. Larson used the Maas equation to calculate the harmonics produced by a mixer, given certain assumed inputs supplied by ParkerVision’s counsel (an input signal of 100 kHz and an LO input of 1 MHz). Id. at 29–31 (citing Ex. 2001, 177–87). ParkerVision notes that Dr. Larson’s calculations produced -0.9, 3.1, and -4.9 MHz as the first three harmonics, which are not integer multiples. PO Resp. 31. Thus, ParkerVision argues, the circuit of Nozawa does not necessarily produce a plurality of harmonics, defined by the ’940 patent as being integer multiples of the fundamental frequency. Id. Qualcomm argues that the Maas equation “shows that Nozawa will necessarily produce the required ‘integer multiple’ harmonics for many input frequencies.” Pet. Reply 4 (emphasis added). According to Qualcomm, it is not required to show that Nozawa will produce integer multiple harmonics for all operating conditions; rather, it is only relevant that Nozawa could be operated to produce the harmonics. Id. Regarding Dr. Larson’s calculations during his deposition, Qualcomm contends that even using the assumed inputs provided by ParkerVision, the Maas equation shows that the 35th and 37th harmonics are 35.1 and -36.9 MHz, respectively, which are integer multiples of the fundamental frequency of 0.9 MHz. Id. at 7. Qualcomm also notes that selecting slightly different input frequencies for the Maas equation will produce much lower integer multiple harmonics, such as at the 7th and 9th harmonics. Id. at 8. The parties’ disagreements over the various inputs and permutations of the Maas equation aside, one point appears to be beyond dispute: under some conditions, but not all conditions, the Maas equation shows that Nozawa’s structure will produce a periodic signal that contains integer multiples of the fundamental frequency. In other words, the structure of Nozawa is capable of producing a signal that satisfies the limitations of the claim. Qualcomm argues that this is sufficient to show unpatentability. Pet. Reply 13 (citing Gen. Electric Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 248–49 (1945)). On this point, we agree. Claim 21 and its dependents are apparatus claims; as such, they “cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). In other words, the “periodic signal” limitations, which are directed to the transitory electrical signals produced by the apparatus, cannot give rise to patentability so long as the underlying apparatus has been shown to be capable of generating those signals. Here, it is undisputed that Nozawa’s circuit is capable of generating a periodic signal having a plurality of harmonics, wherein those harmonics are integer multiples of the fundamental frequency. Furthermore, we agree with Qualcomm that Nozawa’s low-pass filter is capable of isolating one or more of those harmonics, as desired.” slip op. at 16

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

    “Qualcomm contends that “Nozawa and Philips 4052 both provide architectures and methods for upconversion that can be used for a transmitter.” Pet. 21. Indeed, as Qualcomm observes, the 74HC4052 chip described in Philips 4052 is used in Nozawa. Id. at 28–29. We agree with Qualcomm that a person of ordinary skill in the art would have had reason to look to the disclosure of Philips 4052 to learn more about the operation of the 74HC4052 chip disclosed in Nozawa. ParkerVision does not challenge that a person of ordinary skill in the art would have combined Nozawa with Philips 4052.” slip op. at 12

  Patent outcomesUS 6,091,940 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,091,940
• Telit Wireless Solutions Inc. / Telit Communications PLC et al. v. M2m Solutions LLCSome claims unpatentable
  PTAB · Mar 6, 2017 · IPR2016-00055 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–23 and 29 are unpatentable as obvious; claim 24 was not shown unpatentable because Van Bergen does not disclose the coded number and telephone number in the same transmission.

  RulingsFinal written decision

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

    “authenticates the at least one of the transmissions including the at least one telephone number or IP address and the coded number by determining that the at least one of the transmissions includes the coded number.” Ex. 1101, 12:48–52, 15:2–6, 16:15–19 (emphasis added). Here, the emphasized phrase “the at least one of the transmissions” takes antecedent basis from the first recitation of “at least one of the transmissions,” which is the transmission within which the telephone number (or IP address) is included. Therefore, the processing module performs authentication “by determining that the at least one of the transmissions includes the coded number,” and “the at least one of the transmissions” is defined in the claim as the transmission within which the telephone number (or IP address) is included. As such, the independent claims require processing module authentication of one transmission that includes both the telephone number (or IP address) and the coded number. Certainly, the claim allows for the existence of more than one transmission, but there must be at least one transmission that contains both.” slip op. at 9

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

    “According to the prosecution history, therefore, the applicant added the language “permitted to” because the Examiner did not believe it was “clear” in the claims as written that the language “configured to” meant that the device was also “permitted to” call those numbers. There is no mention of restricting what numbers the device can call. Patent Owner further contends the Specification of the ’717 patent “expressly disclose[s] the concept of restrictive outbound calling lists.” PO Resp. 17 (citing Ex. 1101, 2:20–23, 2:28–32). One of these passages, in the “Background of the Invention” section, states: “Clearly there is a need to provide a means to limit the cost of calling and also to provide a means to prevent the child dialling overseas numbers for extensive periods of time.” Ex. 1101, 2:20–23 (emphasis added). This passage describes a goal of controlling durations of calls to certain numbers, i.e., overseas calls, not completely blocking the sending of outgoing wireless transmissions to such numbers. The other passage cited by Patent Owner similarly states: “An improved child Hotlink communicator, which restricts the usage of the mobile phone and thereby does not generate high charges through uncontrolled calling, is clearly a solution to the family tariffing challenge.” Id. at 2:28–32. This also relates to “control” of calling, not necessarily blocking outgoing transmissions. We do not read these passages as the applicant acting as a lexicographer and defining the “configured to and permitted to” language in the claims.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyNo construction neededDecided for petitioner

    “3. “Processing module for authenticating” Neither Petitioner nor Patent Owner argued that the limitation of independent claims 1, 24, and 29 reciting “a processing module for authenticating one or more wireless transmissions sent from a programming transmitter and received by the programmable communicator device by determining if at least one transmission contains a coded number” should be interpreted as a means-plus-function limitation under 35 U.S.C. § 112, paragraph 6. Based on the full record developed during trial, we determine that this limitation is not governed by 35 U.S.C. § 112, paragraph 6, and does not require further construction. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (“When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” (internal quotations and citation omitted)).” slip op. at 14

  • Skill levelSkill level board ownDecided for petitioner

    “that time, that the skill level of a person of ordinary skill in the art, at the relevant time for the ’717 patent (May 2000), would have been “at least an undergraduate degree in electrical engineering and three years of experience working the development of wireless subscriber terminal systems or components, or an equivalent combination of education and experience in related fields.” Dec. on Inst. 23 n.4 (citing Sierra Wireless Am., Inc. et al. v. M2M Solutions LLC, Case IPR2015-01823, slip op. at 11 n.4 (PTAB Mar. 8, 2016) (Paper 16)). The parties did not propose a different level of ordinary skill in the art during trial. Based on the record developed during trial, we see no reason to deviate from our prior determination of the skill level of a person of ordinary skill in the art. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 15

  Patent outcomesUS 8,648,717 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,648,717
• Samsung Electronics Co., Ltd v. Elbrus International LimitedSome claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01524 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1, 2, 5–7, and 9 are unpatentable as obvious; claim 3 was not shown unpatentable because the record did not establish Watanabe’s required transistor terminal couplings.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “We credit the testimony provided by the declarants for both parties and hold that one of ordinary skill in the art would have possessed an undergraduate degree in electrical engineering or equivalent field and at least two years of experience in the design and/or analysis of data transfer or equivalent circuits. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 5

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

    “We agree with, and adopt, Petitioner’s interpretation of the plain and ordinary meaning of bus, as informed by the 1994 IEEE Standard Glossary of Computer Hardware Terminology. It is well settled that judges may consult dictionary definitions when construing claim terms so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents. Vitronics Corp. v.” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Petitioner argues and Patent Owner acknowledges, the reference upon which Patent Owner relies was published several years after the filing date of the application leading to the ’130 patent. Tr. 35:7–13; see also Reply 3 (Petitioner arguing that Patent Owner’s interpretation of “bus” is flawed because it is from a document dated over 13 years after the alleged invention date of the ’130 patent). Additionally, Dr. Huber elaborates on Patent Owner’s understanding of the term “bus,” stating that a bus, unlike a node, has a span, and acts like a bridge between two points. Ex. 2004 ¶ 59, 62. Dr. Huber, however, offers no underlying facts or data to support this interpretation. Pursuant to 37 C.F.R. § 42.65(a), such testimony is entitled to little or no weight. Also, neither definition from the parties’ technical dictionaries includes a “span” requirement for the term. See Exs. 1010, 2005; Tr. 35:14–17.” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “interpretation of “bus” in light of the ’130 patent Specification is “one or more conductors that are used for the transmission of signals, data, or power.” Ex. 1010, 13; Reply 2. Sukegawa discloses a “signal transmission circuit,” wherein a signal is transmitted to receiver circuit 4 containing output terminals OUT and OUT_. Ex. 1005, Fig. 1, 9:4–24. We agree with Petitioner that the lines between transistor 34 and inverter 36 are used to transmit signals from input 4a to the output labeled OUT_, and that the lines between transistor 35 and inverter 37 are used to transmit signals from input 4b to the output labeled OUT. Pet. 23–25; Reply 3–5; Ex. 1005, Fig. 1, 9:4– 7, 9:14–24; Ex. 1011, 37:10–38:18. Sukegawa explains that these lines carry a voltage (i.e., an electrical signal). Ex. 1005, 8:59–64, 9:4–7; Pet. 26; Ex. 1002 ¶ 31. Dr. Huber, Patent Owner’s declarant, agreed that “the connections of the various transistors” in Sukegawa Figure 1, including transistors 34 and 35, are conductors. Ex. 1011, 48:25–49:20. We agree with Petitioner that a person of ordinary skill in the art would consider these lines to be conductors. Reply 3. Thus, under our (and Petitioner’s) construction of the term “bus,” the pink lines Petitioner identified in Sukegawa comprise a “bus.”” slip op. at 14

  Patent outcomesUS 6,366,130 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,366,130
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01248 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 5, 20, 22–25, and 30 are unpatentable as obvious over Yamashita and Shamoon; claims 2–4, 6–8, and 19 were not proven unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that Patent Owner is attempting to improperly limit the construction. As we explained in our Decision on Institution, we declined to limit “comparison” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the “comparison” is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 9. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparison” that we adopted. See Inst. Dec. 9 (citing Ex. 2003 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2011 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”).” slip op. at 6

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

    “Here, we agree with Petitioner that the plain language of the claim is sufficient and no construction is necessary for this term. The claim language already establishes that there are two user profiles, each is associated with a particular and different mobile device, and the profiles include “information to alter an operating condition of the network device according to a preference of a [first/second] user.” The claim already addresses what attributes the user profile must have. We see no support in the claim language or specification for Patent Owner’s additional requirements that the profiles be “individual” and “include information unique to each user.”” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “v. Summary as to Claims 1, 20, 22–25, and 30 Patent Owner raises no evidence of secondary considerations of nonobviousness in this case. Thus, weighing the evidence of obviousness that is before us, we find that Petitioner has shown by a preponderance of the evidence that claims 1, 20, 22–25, and 30 would have been obvious over the combination of Yamashita and Shamoon.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “We do not find Patent Owner’s arguments persuasive. Teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).4 Patent Owner cites nothing in Yamashita that says that adding the features from Shamoon in addition to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages. 4 We understand Patent Owner to be arguing both that the references teach away from the combination generally and teach away because, in particular, the combination would change the principle of operation of the system. PO Resp. 33–36. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); see also Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) (finding no teaching away where nothing in the prior art device suggested that the claimed invention was unlikely to work). The lack of teaching away is confirmed by Yamashita’s disclosure of an embodiment requiring manual interaction. See Reply 20 (citing Ex. 1006, 22:31–51). Indeed, although Patent Owner contends that automatic functionality is “not the focus or main purpose of Shamoon,” PO Resp. 35, Shamoon’s system demonstrates that automatic functionality can be combined with manual functionality to result in a working system. See Ex. 1007, 8:36–45. As for Patent Owner’s contentions that Yamashita “abandoned bi- directional communication” (PO Resp. 35), we find no support in the cited portions of Yamashita for these contentions. Although Yamashita does tout the benefits of its automatic control system, the cited portions of Yamashita are silent about the advantages or disadvantages of “bi-directional communication.” As for Patent Owner’s arguments about substantial reconstruction and redesign (PO Resp. 36 (citing Ex. 2008 ¶ 91)), we do not find the testimony or argument persuasive. Yamashita’s control terminal and mobile terminals already has built in communication abilities (Ex. 1006, 11:31–38), and we find Dr. Selker’s testimony persuasive that a person of ordinary skill would have been motivated to add the ability to communicate the thermostat reading to verify that Yamashita’s automatic control worked. Ex. 1002 ¶¶ 205–207. As for Patent Owner’s allegation that the combination with Shamoon would change Yamashita’s principle of operation, we disagree. Yamashita would continue to work as before; the messages, rules, and control information would continue operate in the same manner. Shamoon would only add additional functionality to allow for an improved user interface and two-way communication. Where the device would operate on the same principles as before, the combination does not change the principle of operation. See Mouttet, 686 F.3d at 1332 (noting Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). As Petitioner explains, Shamoon demonstrates that its known techniques have been used to improve similar devices in similar ways. We find that Petitioner has articulated sufficient reasoning with rational underpinnings to support the combination. See Ex. 1002 ¶¶ 205–207, 213. Thus, we conclude that a person of ordinary skill would have had reason to combine the teachings of Yamashita and Shamoon.” slip op. at 29

  Patent outcomesUS 8,626,344 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,626,344
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01251 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 9–14, 16, and 26–29 are unpatentable as obvious over Yamashita and Shamoon; claims 15, 17, and 18 were not proven unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that Patent Owner’s further narrowing of our construction is improperly limiting. As we explained in our Decision on Institution, we declined to limit “comparing” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the comparison is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 10. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparing” that we adopted; rather, each of them emphasizes determining similarities as well. See Inst. Dec. 9 (citing Ex. 2002 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2006 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”). The specification does not compel a different understanding. The” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “that the parties’ actual dispute is twofold. First, the parties dispute whether the mobile device must be able to transmit location information to the site regardless of whether the proximity setting is enabled or disabled. See Reply 8–9; PO Resp. 14–15. Second, Patent Owner argues that the entire process of proximity detection must be automatic. PO Resp. 14. As we explain below, we agree with Petitioner that this term does not require that the mobile device continue to send location reports if the proximity setting is not enabled, whereas we disagree with Petitioner that the proximity setting is limited to enabling or disabling the ability to send location reports. Instead, we find the specification supports a broader construction. In particular, we find that the specification states that “[f]or example, a user may enable proximity detection using proximity detection selector 1036 and energy use at a site may be altered based on a user[’]s distance to the site.” Ex. 1001, 46:45–48. It further explains that “[i]n some forms, proximity detection selector 1036 can be hidden, displayed, selectable, or any combination thereof in response to a user having a mobile device capable of being detected when a user is at or away from a site.” Id. at 46:50–54. Thus, we consider the broadest reasonable construction of “proximity setting” consistent with the specification to be “a setting that can enable or disable proximity detection, where energy use at a site may be altered based on the user’s location.” Both parties acknowledge that this is a reasonable meaning of the term. Reply 8; PO Resp. 12.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “In sum, Petitioner has shown sufficiently that the control terminal in Yamashita receives messages from the wireless terminals that represent the relative location of the mobile terminal (e.g., within 300 m of the site or moving away from the site) and that the control terminal includes a number of rules to compare the messages to determine what control information to send to the controlled appliances, and that as a result of the comparison sends control information to alter the condition of the controlled appliances. See Ex. 1002 ¶¶ 214–216. Thus, we are persuaded that Yamashita accounts for the “comparing limitations” of claim 9.” slip op. at 27

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

    “We find that Petitioner has shown adequately that a person of ordinary skill would have been motivated to combine Yamashita with Shamoon. In particular, we do not agree with Patent Owner that Yamashita teaches away from the combination or that the combination would change the principle of operation of Yamashita.3 Patent Owner is correct that Yamashita distinguishes manual control, and notes the disadvantages of “burdensome operations” and the possibility the user may forget to perform the required operations. Ex. 1005, 1:35–40. Patent Owner is also correct that Yamashita states that one objective of the invention is a system that can automatically control an appliance based on position without requiring any operation by the user. Id. at 1:44–47. Yet, Yamashita also discloses an embodiment where the user is prompted before a message is sent, which does require an operation by the user. Id. at 23:31–51. Thus, we do not agree that Yamashita disparages all manual interaction as Patent Owner contends. Moreover, teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Patent Owner cites nothing in Yamashita that says that adding the communication features from Shamoon to transmit the thermostat readings to the mobile terminal to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages, not that communicating information from the site to” slip op. at 32

  Patent outcomesUS 8,626,344 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,626,344
• Qualcomm Inc. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-01580 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 5, 6, 8, 17, 18, and 20 are unpatentable; claims 7 and 19 were not shown unpatentable because Cuffaro does not disclose a specified number of votes and the obviousness testimony was insufficient.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, Qualcomm Inc. filed substantially the same petition in IPR2015-01580 (IPR2015-01580, Paper 1), together with a Motion for Joinder of IPR2015-01580 with the instant proceeding (IPR2015-01580, Paper 2). On September 17, 2015, we granted a motion to terminate this proceeding with respect to MediaTek Inc. and MediaTek USA, Inc., but not as to Patent Owner, leaving only Patent Owner as a party to the proceeding. Paper 22. On November 16, 2015, we granted Qualcomm Inc.’s Motion for Joinder, joining Qualcomm Inc. to the instant proceeding. Paper 23. Qualcomm Inc. (“Petitioner”) is now the sole petitioner.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “phrase “means for . . . .” Petitioner construes these terms in accordance with 35 U.S.C. § 112 ¶ 6, identifying an algorithm described in the specification corresponding to each “means” limitation. Pet. 7–9 (citing Ex. 1001, col. 8, l. 8–38, col. 8, ll. 49–col. 9, l. 16, col. 19, l. 25–col. 20, l. 67). Petitioner identifies a general purpose computer, processor 704 in Figure 7, as structure for “executing the instructions associated with the corresponding function” recited in each “means limitation,” except for the “means fro [sic] the first participant to communicate . . .” recited in claims 5 and 20. Pet. 7–9 (citing Ex. 1001, Fig. 7, col. 25, ll. 13–18). For the “means fro [sic] the first participant to communicate” limitation, Petitioner identifies transceiver 216, shown in Figure 2, reproduced supra. Pet. 9 (citing Ex. 1001, Fig. 2, col. 9, ll. 54–59). Patent Owner does not contest these identifications. We agree with Petitioner’s identifications and adopt them as our constructions of the means-plus-function limitations. Specifically, as to those means-plus-function limitations that correspond to processor 704 in Figure 7, Petitioner identifies in its claim chart the algorithm described in the specification for performing each function of these means. Pet. 8–9; See also Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (“When dealing with a ‘special purpose computer-implemented means-plus-function limitation,’ [the Federal Circuit] require[s] the specification to disclose the algorithm for performing the function.”); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009) (“[W]hen a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.”).” slip op. at 8

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

    “We are not persuaded by this reasoning. As Petitioner observes, the embodiments of the ’624 patent identified by Patent Owner are characterized as “examples,” and a person of ordinary skill “would understand that the example scenarios of the specification are not necessarily limiting on the claims.” Reply 3 (citing Ding Supp. Decl. ¶ 6). In addition, Petitioner notes that claim language in related patents owned by Patent Owner explicitly refers to participants, evidencing Patent Owner’s understanding “how to expressly create participant-specific voting requirements in claims.” Id. at 3. At the oral hearing, Patent Owner suggested that explicit reference to participants in such other claim language “was because it wanted to clarify that each participant got a single vote,” and explained its position that, in the claims at issue in this proceeding, “participant is implicit in the claim language as it is.” Tr. 78:16–25. But the claims are directed to a “communications apparatus,” and recite “votes” in the context of what the “particular communications channel” “receives.” Nothing within the structure of the claims requires resolving the origin of such votes. Furthermore, Patent Owner’s proposed construction is inconsistent with the construction it agreed to before the district court in the Qualcomm Litigation. In that litigation, the parties agreed that the term “vote” should be construed as “a binary expression (to use or not to use),” a construction that makes no reference to the origin of the “vote” as from a participant or otherwise. Ex. 1014, 6. We see no compelling reason to excuse the inconsistency by adopting a narrower construction when the Board applies a claim-construction standard (broadest reasonable interpretation) that could only result in the same or a broader construction. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to find infringement.” (quoting Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970))). Accordingly, we construe “votes to use a particular communications channel” as “expressions of preference for using the particular communications channel.”” slip op. at 10

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

    “Patent Owner responds that “the Gerten device is not capable of and expressly teaches away from performing this functionality.” PO Resp. 15 (citing Melendez Decl. ¶ 33). Patent Owner contends that “Gerten’s disclosure is directed toward eliminating channels for use in an entire piconet as opposed to eliminating channels for use by certain participants within a piconet.” Id. at 16 (emphasis added). Patent Owner argues that Gerten does not disclose a selection kernel capable of maintaining synchronization between a master and more than one slave in a piconet, with the master and one slave using a default set of channels while the same master and a different slave use a different set of channels. Id. We are not persuaded that the absence of a specific teaching of such a selection kernel supports the conclusion that one of skill in the art would understand Gerten to function in the manner Patent Owner suggests. In this instance, Petitioner refers to two embodiments of Gerten “in which a first participant communicates with a second participant via a normal sequence and with another participant via an adaptive hopping sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below. Figure 3 illustrates “methodology for determining and communicating channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As illustrated in the drawing, a master unit performs a discovery process (block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 60, 64. If the slave unit is capable of using interference avoidance, the master unit begins the process of determining a modified set of channels for use (block 120). Id. ¶ 45. If a second slave unable to use interference avoidance enters the piconet, standard frequency hopping is used. Supp. Ding Decl. ¶ 9. Under Patent Owner’s characterization of Gerten, entry of the second slave into the network would require the first slave necessarily to revert back to the default hopping sequence. Id. ¶ 10. But this would undermine the stated benefits of Gerten, which explicitly discloses: The above process can be applied to a Bluetooth example and includes identification of a Bluetooth device’s ability to support interference avoidance, the measurements of signal strength on all channels and identification of which channel should not be used without violating the FCC rules, a method of modifying the Bluetooth hop sequence so that it will avoid channels containing strong or fixed interferers while still supporting standard Bluetooth hopping with other non-enabled members of the piconet and a method of relating necessary interference avoidance information to the remote Bluetooth devices. Ex. 1003, col. 4, l. 66–col. 5, l. 9 (emphasis added).” slip op. at 17

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• Qualcomm Inc. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-01581 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 9, 10, 12, 21, 22, and 24 are unpatentable; claims 11 and 23 are not shown unpatentable because Cuffaro does not establish the specified vote threshold.

  RulingsFinal written decision

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

    “1. “hopping sequence” Each of challenged claims 9, 10, 22, and 24 recites a “hopping sequence.” Petitioner’s declarant, Dr. Zhi Ding, attests that the phrase is “a well-understood term of art.” Ding Decl. ¶ 35 (citing Ex. 1016, 127–33). Consistent with Dr. Ding’s testimony, we applied a preliminary construction of “hopping sequence” in the Institution Decision as “the order in which the communications network hops among the set of frequencies.” Dec. 7. That construction is not contested by Patent Owner, and we adopt it for this Final Written Decision.” slip op. at 8

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

    “Furthermore, Patent Owner’s proposed construction is inconsistent with the construction it agreed to before the district court in the Qualcomm Litigation. In that litigation, the parties agreed that the term “vote” should be construed as “a binary expression (to use or not to use),” a construction that makes no reference to the origin of the “vote” as from a participant or otherwise. Ex. 1018, 6. We see no compelling reason to excuse the inconsistency by adopting a narrower construction when the Board applies a claim-construction standard (broadest reasonable interpretation) that could only result in the same or a broader construction. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to find infringement.” (quoting Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970))). Accordingly, we construe “votes to use a particular communications channel” as “expressions of preference for using the particular communications channel.”” slip op. at 10

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

    “In addressing independent claim 9’s specific requirement that different sets of channels be used with the second and third communications devices, Petitioner reasons that the process summarized above may be applied by the master device to each of the slave devices separately: “the master device of Gerten performs a service discovery request to determine if each slave device has interference avoidance capabilities.” Id. at 19 (emphasis added) (citing Ding Decl. ¶ 53; Ex. 1003, col. 4, ll. 38–51). Thus, Petitioner argues, if one slave has such interference avoidance capabilities, communications with that slave may take place using a modified frequency hopping scheme; if another (legacy) slave lacks such interference avoidance capabilities, communications take place using a normal mode with default communications channels that are not changed based on channel performance. Id. (citing Ding Decl. ¶ 54); see id. at 17–18. Thus, Petitioner concludes, the recited communications with the third communications device over default communications channels occur “while” communicating with the second communications device over the first and second sets of communications channels, as we have construed the term “while.” Petitioner supports this reasoning with testimony by Dr. Ding, which we credit. Id. at 19–20 (citing Ding Decl. ¶¶ 52–54). Patent Owner responds that “the Gerten device is not capable of and expressly teaches away from performing this functionality.” PO Resp. 15 (citing Melendez Decl. ¶ 32). Patent Owner contends that “Gerten’s disclosure is directed toward eliminating channels for use in an entire piconet as opposed to eliminating channels for use by certain participants within a piconet.” Id. (emphasis added). Patent Owner argues that Gerten does not disclose a selection kernel capable of maintaining synchronization between a master and more than one slave in a piconet, with the master and one slave using a default set of channels while the same master and a different slave use a different set of channels. Id. We are not persuaded that the absence of a specific teaching of such a selection kernel supports the conclusion that one of skill in the art would understand Gerten to function in the manner Patent Owner suggests. In this instance, Petitioner refers to two embodiments of Gerten “in which a first participant communicates with a second participant via a normal sequence and with another participant via an adaptive hopping sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below. Figure 3 illustrates “methodology for determining and communicating channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As illustrated in the drawing, a master unit performs a discovery process (block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 58, 61. If the slave unit is capable of using interference avoidance, the master unit begins the process of determining a modified set of channels for use (block 120). Id. ¶ 46. If a second slave unable to use interference avoidance enters the piconet, standard frequency hopping is used. Supp. Ding Decl. ¶ 9. Under Patent Owner’s characterization of Gerten, entry of the second slave into the network would require the first slave necessarily to revert back” slip op. at 15

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

    “base station. Ex. 1004, col. 7, ll. 23–47. Because Cuffaro does not limit the type of communications link used for such reporting, Petitioner reasons, and we agree, that “one skilled in the art would consider it obvious for the slave device in Gerten to perform the interference signal strength measurements” and to communicate channel performance data measured by the slave device over one or more of the plurality of communications channels based on the hopping sequence. Pet. 29. Petitioner supports this reasoning with declaration testimony by Dr. Ding. Ding Decl. ¶ 100. Petitioner further provides persuasive reasoning why a person of ordinary skill in the art would have combined the relevant teachings of Gerten and Cuffaro, including that “Cuffaro and Gerten are in the same field of endeavor” of selecting channels to avoid interference in a communications system; that measuring interference signal strength at a slave device such as described by Cuffaro provides a more accurate determination of the impact of the receiver unit from the interference on a given channel, and, therefore, would provide more accurate identification of bad channels in Gerten; and that Gerten suggests such a modification by describing that both a master and a slave can participate in identifying channels to avoid. Pet. 29–31. Petitioner supports this reasoning with declaration testimony by Dr. Ding. Ding Decl. ¶¶ 101, 102. Patent Owner responds by observing that, unlike Gerten, “Cuffaro does not relate to communications systems wherein the devices that are communicating with each other . . . are even transmitting or receiving on the same channels.” PO Resp. 21. Instead, the cellular telephone systems described by Cuffaro use separate physical channels for uplink and downlink. Ex. 1004, col. 4, ll. 9–11. Patent Owner contends that, in Cuffaro, performance data cannot be sent back on the same set of channels on which they were received, and, therefore “[a] mobile station of Cuffaro cannot transmit channel performance data ‘over one or more of the plurality of communications channels.’” PO Resp. 21–22. Dr. Melendez agrees. Melendez Decl. ¶¶ 41–43. Even accepting that Patent Owner’s contention regarding Cuffaro is factually accurate does not lead to the conclusion that Petitioner’s reasoning regarding the combination of Gerten and Cuffaro is deficient. Petitioner does not propose simply to incorporate the performance-data communication mechanism of Cuffaro into the system of Gerten. Rather, Petitioner relies on Cuffaro’s teaching of communicating performance data between devices, and applying that teaching to the system described by Gerten. See Reply 9– 10. That Cuffaro incidentally uses different frequencies for uplink and downlink communications does not diminish the relevance of the teaching identified by Petitioner.” slip op. at 23

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• Qualcomm Inc. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-01577 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, 4, 13, 14, 16, 25, 26, 28, and 29 are unpatentable; claims 3, 15, and 27 were not shown unpatentable, with the specified-vote limitation not established.

  RulingsFinal written decision

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

    “sequence.” Petitioner’s declarant, Dr. Zhi Ding, attests that the phrase is “a well-understood term of art.” Ding Decl. ¶ 35 (citing Ex. 1016, 127–33). Consistent with Dr. Ding’s testimony, we applied a preliminary construction of “hopping sequence” in the Institution Decision as “the order in which the communications network hops among the set of frequencies.” Dec. 7. That construction is not contested by Patent Owner, and we adopt it for this Final Written Decision.” slip op. at 8

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

    “as disclosed by Gerten’s description of modified frequency hopping schemes. Id. at 14. In doing so, Petitioner notes that Gerten discloses periodic updating of the modified frequency hopping scheme, supporting a conclusion that Gerten discloses selection at different times. Id. at 14, 15– 16. Petitioner highlights this periodic updating to identify distinct “period[s] of time” during which different “set[s] of two or more communications channels [are] used to transmit and receive.” Id. at 15–16 (italics omitted). In addressing independent claim 1’s specific requirement that different sets of channels be used with the second and third communications devices, Petitioner reasons that the process summarized above may be applied by the master device to each of the slave devices separately: “the master device of Gerten performs a service discovery request to determine if each slave device has interference avoidance capabilities.” Id. at 18 (emphasis added) (citing Ding Decl. ¶ 53; Ex. 1003, col. 4, ll. 38–51). Thus, Petitioner argues, if one slave has such interference avoidance capabilities, communications with that slave may take place using a modified frequency hopping scheme; if another (legacy) slave lacks such interference avoidance capabilities, communications take place using a normal mode with default communications channels that are not changed based on channel performance. Id. at 18 (citing Ding Decl. ¶ 55); see id. at 16–17. Thus, Petitioner concludes, the recited transmissions and receptions from the third communications device over default communications channels occur “while” transmitting to and receiving from the second communications device over the first and second sets of communications channels, as we have construed the term “while.” Petitioner supports this reasoning with testimony by Dr. Ding, which we credit. Id. at 18 (citing Ding Decl. ¶¶ 53– 55).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “Petitioner further provides persuasive reasoning why a person of ordinary skill in the art would have combined the relevant teachings of Gerten and Cuffaro, including that “Cuffaro and Gerten are in the same field of endeavor” of selecting channels to avoid interference in a communications system; that measuring interference signal strength at a slave device such as described by Cuffaro provides a more accurate determination of the impact of the receiver unit from the interference on a given channel, and, therefore, would provide more accurate identification of bad channels in Gerten; and that Gerten suggests such a modification by describing that both a master and a slave can participate in identifying channels to avoid. Pet. 30–31. Petitioner supports this reasoning with declaration testimony by Dr. Ding. Ding Decl. ¶¶ 128, 129.” slip op. at 24

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). Patent Owner understates the degree to which Petitioner addresses the analogousness of the art by focusing on Petitioner’s contention that Gerten and Cuffaro are in the same field of endeavor. PO Resp. 40 (citing Pet. 30). Petitioner also addresses the second prong of the Clay test by providing reasons why a person of skill in the art would use the transmitted performance data of Cuffaro in the selection process of Gerten, including improved accuracy in determining the impact on the receiver unit from the interference on a given channel. See Pet. 31. We agree with Petitioner’s reasoning and find that Cuffaro and Gerten are analogous art to the claimed invention at least because they are reasonably pertinent to the particular problem with which the inventor was involved. We conclude that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 14, and 26 are unpatentable under 35 U.S.C. § 103(a) over Gerten and Cuffaro.” slip op. at 26

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• Marvell Semiconductor, Inc. / Mediatek Inc. et al. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00316 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 9, 10, 12, 21, 22, and 24 are unpatentable; claims 11 and 23 are not shown unpatentable because Cuffaro does not support the specified-vote limitation.

  RulingsFinal written decision

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

    “1. “hopping sequence” Each of challenged claims 9, 10, 22, and 24 recites a “hopping sequence.” Petitioner’s declarant, Dr. Zhi Ding, attests that the phrase is “a well-understood term of art.” Ding Decl. ¶ 35 (citing Ex. 1016, 127–33). Consistent with Dr. Ding’s testimony, we applied a preliminary construction of “hopping sequence” in the Institution Decision as “the order in which the communications network hops among the set of frequencies.” Dec. 7. That construction is not contested by Patent Owner, and we adopt it for this Final Written Decision.” slip op. at 8

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

    “participants in such other claim language “was because it wanted to clarify that each participant got a single vote,” and explained its position that, in the claims at issue in this proceeding, “participant is implicit in the claim language as it is.” Tr. 78:16–25. But the claims are directed to a “communications device,” and recite “votes” in the context of what the “particular communications channel” “receives.” Nothing within the structure of the claims requires resolving the origin of such votes. Furthermore, Patent Owner’s proposed construction is inconsistent with the construction it agreed to before the district court in the Qualcomm Litigation. In that litigation, the parties agreed that the term “vote” should be construed as “a binary expression (to use or not to use),” a construction that makes no reference to the origin of the “vote” as from a participant or otherwise. Ex. 1018, 6. We see no compelling reason to excuse the inconsistency by adopting a narrower construction when the Board applies a claim-construction standard (broadest reasonable interpretation) that could only result in the same or a broader construction. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to find infringement.” (quoting Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970))). Accordingly, we construe “votes to use a particular communications channel” as “expressions of preference for using the particular communications channel.”” slip op. at 10

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

    “(citing Melendez Decl. ¶ 32). Patent Owner contends that “Gerten’s disclosure is directed toward eliminating channels for use in an entire piconet as opposed to eliminating channels for use by certain participants within a piconet.” Id. (emphasis added). Patent Owner argues that Gerten does not disclose a selection kernel capable of maintaining synchronization between a master and more than one slave in a piconet, with the master and one slave using a default set of channels while the same master and a different slave use a different set of channels. Id. We are not persuaded that the absence of a specific teaching of such a selection kernel supports the conclusion that one of skill in the art would understand Gerten to function in the manner Patent Owner suggests. In this instance, Petitioner refers to two embodiments of Gerten “in which a first participant communicates with a second participant via a normal sequence and with another participant via an adaptive hopping sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below. Figure 3 illustrates “methodology for determining and communicating channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As illustrated in the drawing, a master unit performs a discovery process (block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 58, 61. If the slave unit is capable of using interference avoidance, the master unit begins the process of determining a modified set of channels for use (block 120). Id. ¶ 46. If a second slave unable to use interference avoidance enters the piconet, standard frequency hopping is used. Supp. Ding Decl. ¶ 9. Under Patent Owner’s characterization of Gerten, entry of the second slave into the network would require the first slave necessarily to revert back to the default hopping sequence. Id. ¶ 10. But this would undermine the stated benefits of Gerten, which explicitly discloses: The above process can be applied to a Bluetooth example and includes identification of a Bluetooth device’s ability to support interference avoidance, the measurements of signal strength on all channels and identification of which channel should not be used without violating the FCC rules, a method of modifying the Bluetooth hop sequence so that it will avoid channels containing strong or fixed interferers while still supporting standard Bluetooth hopping with other non-enabled members of the piconet and a method of relating necessary interference avoidance information to the remote Bluetooth devices. Ex. 1003, col. 4, l. 66–col. 5, l. 9 (emphasis added).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “teaches away from the claim limitations. See PO Resp. 15. A prior-art reference does not teach away from the claimed subject matter unless the prior-art reference also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In support of this contention, Patent Owner relies on testimony by Dr. Melendez that “the only selection kernels (Gerten Fig. 6 and Fig. 7) disclosed for the transceiver (Gerten Fig. 2) in Gerten are expressly not capable of providing the subject claimed limitations of the [’]624 patent as is discussed below, and so would serve only to teach away from the claim.” Melendez Decl. ¶ 32. Even if Dr. Melendez’s statement is accurate, such examples in Gerten do not meet the “teaching away” standard because the mere use of examples in a reference that function in a different way does not criticize, discredit, or otherwise discourage the solution claimed. In addition, “[t]eaching away is irrelevant to anticipation.” Seachange Int’l, Inc. v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).” slip op. at 19

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624

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.