• Inductev, Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Feb 13, 2025 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Final written decision

  Claim 16 was cancelled on Patent Owner’s motion; claim 17 was held unpatentable as obvious over Cook ’554 and over Lee and Cook ’523.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’719 patent, we apply the pre-AIA version of § 103. by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description. PO Resp. 14. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “[i]t will be appreciated that a network of capacitors, as used herein, may in general refer to any circuit topology including one or more capacitors, including without limitation any of the circuits specifically disclosed herein using capacitors, or any other equivalent or different circuit structure(s), unless another meaning is explicitly provided or otherwise clear from the context. Id. at 52:32–38 (emphasis added). Thus, the ’719 patent expressly defines the phrase “a network of capacitors” as any circuit topology including one or more capacitors. Id.” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Patent Owner’s argument is unavailing. Even if Patent Owner is correct that elements E and F in Figure 4-12 of the Cook Provisional only represent the delivered power level (not the received power level), other portions of the Cook Provisional disclose tuning the resonant frequency of the resonant circuit based on the received power level. See Pet. Reply 5–6. In particular, the Cook Provisional states that “[t]he control system of the receiver is in charge of . . . antenna tuning control.” Ex. 1006, 31. The Cook Provisional also states that “[t]he receiver[’]s control system may determine the model parameters using specific measurements (e.g. antenna current and voltage, input power, etc.) and calibration routines.” Id. (emphasis added). Thus, the Cook Provisional discloses tuning the resonant frequency based on input power. Id.” slip op. at 10

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “D. Motion to Amend Patent Owner’s non-contingent Motion to Amend requests that we cancel claim 16. Mot. Amend 1. Petitioner does not oppose Patent Owner’s request. Id. We grant Patent Owner’s unopposed request to cancel claim 16, and, as a result, we do not reach the asserted grounds for claim 16.” slip op. at 8

  Patent outcomesUS 8,461,719 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,461,719
• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Jun 5, 2024 · IPR2022-01449 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 3, 7, 11–15, 17–20, and 23 are unpatentable as obvious over the asserted combinations of prior art.

  RulingsFinal written decision

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

    “from cameras by outdoor terminal 100. Id. at 4. Jae also discloses wireless transmission by the cameras to a “wireless receiving means” at “the outdoor terminal or indoor terminal.” Ex. 1011, 8. Accordingly, even if Jae teaches a wired connection between the indoor and outdoor terminal, Jae does not teach away from a wireless connection due to bandwidth limitations, because Jae discloses transmitting wireless video from the cameras to “the outdoor terminal or indoor terminal,” thereby contemplating either one. See id. Merely teaching a way to transmit data (e.g., wired) does not teach away from transmitting data another way (e.g. wireless).” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “hindsight based on the ’644 patent, it was well known that wireless camera systems existed at the time of the invention. Reply 11 (citing Ex. 1051 ¶¶ 18–34). See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as [a conclusion of obviousness] takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.”). At the cited declaration passages, Dr. Hochwald points to numerous examples supported by record evidence of wireless camera video spanning over the last 50 years or more, including the famous example of the wireless video of the moon landing in 1969. See, e.g., Ex. 1051 ¶ 22 (citing Ex. 1036, 2–5).” slip op. at 28

  • Skill levelOther
  • Expert testimonyOther

  Patent outcomesUS 7,193,644 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,193,644
• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Apr 24, 2024 · IPR2022-01365 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 14 and 15 are unpatentable as obvious under the seven § 103 grounds based on the listed combinations of prior art.

  RulingsFinal written decision

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

    “d) Conclusion on Motivation to Combine Considering the foregoing, we determine that Petitioner has shown by” slip op. at 37

  • Expert testimonyOther

  Patent outcomesUS 8,164,614 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,164,614
• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Apr 10, 2024 · IPR2022-01364 · APJ Karl D Easthom · IPR · Final written decision

  Claims 14 and 15 are unpatentable because Petitioner showed by a preponderance of the evidence that the challenged claims would have been obvious over the applied prior-art combinations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Determining whether an invention would have been obvious under 35 U.S.C. § 103 requires resolving the level of ordinary skill in the pertinent art at the time of the effective filing date of the claimed invention. Graham, person who knows the relevant art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors in determining the level of ordinary skill in the art include the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. One or more factors may predominate. Id. Petitioner contends that “[a] person of ordinary skill in the art (‘POSITA’) for the ’184 patent is generally one who has a Bachelor’s degree in computer science, electrical engineering, or a related field, with two years of experience in audio and/or video processing, networked communication systems, sensor systems, and/or remote monitoring systems.” Pet. 7 (citing Ex. 1034 ¶¶ 21–24). Patent Owner contends that Petitioner’s declarant, Dr. Hochwald, “rel[ies] on conclusory statements regarding a person of ordinary skill in the art.” PO Resp. 2. Patent Owner contends that Dr. Hochwald “lists a handful of factors” and “fails to provide any analysis of those factors with which the Board can determine” whether his opinion “is based on sufficient facts or data; . . . is the product of reliable principles and methods; and . . . reliably applied the principles and methods to the facts of the case.” Id. (citing Ex. 1034 ¶¶ 21–23; quoting Fed. R. Evid. 702) (alterations in original). Patent Owner contends that we should afford Dr. Hochwald’s conclusory opinion no weight. Id. In addition, Patent Owner contends that Dr. Hochwald’s opinion is a “black box” such that “each of Petitioner’s grounds lack a reliable prerequisite determination of the level of skill of a [person of ordinary skill in the art] and are flawed as a result.” Id. In reply, Petitioner contends that Dr. Hochwald “explains the factors” slip op. at 8

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

    “obviousness of the subject matter of claim 1. Accordingly, with respect to the subject matter of dependent claims 14 and 15 that necessarily include all the limitations of independent claim 1, the record supports Petitioner’s showing that Vaios, or alternatively, the combined teachings of Vaios, Menard, and/or Saylor would have rendered the subject matter of claim 1 obvious. Our determination here is consistent with the final written decision in the ’811 IPR FWD. See ’811 IPR FWD 44 (determining “that Petitioner shows by a preponderance of evidence that . . . claim 1 [of the ’184 patent] would have been obvious over the combined teachings of Vaios with Menard, and/or Saylor”).15” slip op. at 52

  • BurdenFwd all claims unpatentableUnpatentable

    “IV. CONCLUSION For the reasons discussed above, Petitioner has shown by a preponderance of the evidence that claims 14 and 15 of the ’343 patent are unpatentable, as summarized in the table below. Claims 35 Reference(s)/Basis Claims Claims U.S.C. § Shown Not shown Unpatentable Unpatentable 103 Vaios, Menard, 15 Saylor 103 Vaios, Sabie, 14 Menard, Saylor 103 Vaios, Jae, 14 Menard, Saylor 103 Vaios, Schnell, 15 Menard, Saylor 103 Naidoo-068, Sabie, 14 Vaios, Saylor 103 Naidoo-068, Jae, 14 Vaios, Saylor 103 Naidoo-068, Schnell, Vaios, 15 Saylor Overall 14, 15 Outcome Accordingly, it is ORDERED that Petitioner establishes by a preponderance of evidence that challenged claims 14 and 15 are unpatentable;” slip op. at 102

  Patent outcomesUS 8,144,184 unpatentable
  § 103 obviousnesscites Graham
  Patents in suitUS 8,144,184
• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Mar 19, 2024 · IPR2022-01352 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 11, 13, and 14 are unpatentable as obvious over Vaios, Menard, and Schnell; the Board did not reach the Klein-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Petitioner and Patent Owner that the two proposed levels of ordinary skill in the art are similar and any differences are immaterial to the outcome of this case. Id.; Ex. 2011, 13:4–10; 14:14–21. We apply Patent Owner’s proposal, however, because it includes an upper limit of four years of experience, and also provides that graduate education could substitute for professional experience or significant experience in the field could substitute for formal education in addition to similar qualifications as Petitioner proposes. In addition, we find that Patent Owner’s statement of the level of ordinary skill in the art is consistent with the content of the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Patent Owner’s proposal for the level of ordinary skill in the art in this decision. C.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownPlain and ordinary meaningOther

    “device that locks a door of a home or office (Ex. 1001, 6:44–46, Fig. 1 [116], 18:36–38, Fig. 6 [2114]); and (2) a device included in the DVMS module that enables it to be installed securely wherever holstered (id. at 8:7– 13, Fig. 2 [28]). Claim 13 is the only challenged claim that recites a “locking mechanism.” Id. at 20:40. In light of the specification’s treatment of a device that enables secure installment of one member to another as a locking mechanism, we find no fault with Petitioner reading “locking mechanism” to encompass both a deadbolt as well as structures that render the wireless module capable of secure installment. Claim 13 does not require any particular structure or configuration for the “locking mechanism.” Nor does claim 13 require any particular level of performance or effectiveness for the “locking mechanism.” Patent Owner does not offer any contrary construction or identify any disavowal that would narrow the scope of “locking mechanism” in claim 13 to encompass only one of the two devices identified in the specification (i.e., the deadbolt and the device enabling the DVMS module to be installed securely wherever holstered). Besides “locking mechanism,” Patent Owner does not identify what other claim terms Petitioner has allegedly misconstrued such that we could take cognizance of a dispute regarding the meaning of those terms to be applied in this decision. As such, there are no remaining claim construction disputes that we need to resolve. We apply the plain and ordinary meaning to the remainder of the claim terms. D.” slip op. at 16

  • Strike new argumentNew argument consideredDecided for petitioner

    “Petitioner’s Expert Testimony Patent Owner contends that “Petitioner violates 37 C.F.R. § 42.6(a)(3) by [citing Dr. Hochwald’s declaration], which includes pages of arguments and evidence that are not in the Petition.” Resp. 30. Patent Owner further argues that “all facts . . . that are not specifically discussed in the Petition should be disregarded by the Board.” Id. Patent Owner does not identify what arguments, evidence, or facts it alleges to have been incorporated by reference improperly from Dr. Hochwald’s declaration into the Petition. Consequently, Patent Owner has not demonstrated that Petitioner committed the violation it asserts, nor has Patent Owner shown that the circumstances here warrant imposing the severe consequence of disregarding Petitioner’s expert’s declaration. In other words, Patent Owner’s arguments are conclusory because they do not cite to underlying evidence. Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017). F.” slip op. at 17

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

    “An obviousness determination generally requires a finding that ‘all claimed limitations are disclosed in the prior art.’” Univ. of Strathclyde v. Clear-Vu Lighting LLC, 17 F.4th 155, 160 (citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014); Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337–38 (Fed. Cir. 2020)). Petitioner concedes that Vaios does not disclose a speaker and that this ground cannot stand. Tr. 7:3–11. Petitioner does not rely on Schnell to teach or suggest the claimed speaker. Consequently, Petitioner fails to show by a preponderance of the evidence unpatentability under § 103 of any of the claims challenged in this ground. G. slip op. at 18

  Patent outcomesUS 8,154,581 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,154,581
• Apple Inc. / Samsung Electronics Co., Ltd. et al. v. Smart Mobile Technologies LLCAll claims unpatentable
  PTAB · Nov 28, 2023 · IPR2022-00979 · APJ Paul J Korniczky · IPR · Final written decision

  Claims 1, 2, 4, 5, 15, and 20 are unpatentable as obvious over the instituted grounds involving Rautiola, Regnier, Sainton, and, for claim 4, Wilson.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a 3 Patent Owner has not directed us to any objective evidence of non-obviousness. See PO Resp. hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. Petitioner states a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of networking and wireless devices. Lack of work experience can be remedied by additional education, and vice versa.” Pet. 9 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute Petitioner’s proffered level of skill discussed by Petitioner’s declarant. See PO Resp. We adopt Petitioner’s definition of the level of ordinary skill for the purposes of this Decision.” slip op. at 9

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

    “Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 11

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

    “To qualify as prior art for an obviousness analysis, a reference must qualify as “analogous art,” i.e., it must satisfy one of the following conditions: (1) the reference must be from the same field of the inventor’s endeavor; or (2) the reference must be reasonably pertinent to the particular problem with which the inventor is involved. K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012).” slip op. at 16

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

    “We agree. Rautiola teaches that its server can distribute various voice, e-mail, and data services to client computers, such as laptop 9. Ex. 1005, Fig. 2, 4:31–34, 1:31–36; Ex. 1003 ¶¶ 148, 202. And, as Petitioner explains, Regnier’s technique of a server that (i) downloads, to a client device, client-side portions of application services and (ii) dynamically controls whether the client device can use and/or access the service, discloses a server that enables converting a client between a plurality of functions (e.g., office telephone, database, e-mail). Pet. 54 (citing Ex. 1003 ¶¶ 156–159, 202). Thus, Petitioner demonstrates that it would have been obvious to a person of ordinary skill in the art “to combine Rautiola’s singular server that provides services, such as database, phone calls, data, fax, e-mail and voice mail services, with the implementation details of Regnier describing that a server provides services to a laptop by downloading client-side portions (‘providing a plurality of functions to the mobile device’).” Pet. 48–49 (citing Ex. 1003 ¶¶ 149–150). We determine that Petitioner has proven, by a preponderance of the evidence, that Rautiola and Regnier teach limitations 1.9 and 20.9.” slip op. at 30

  Patent outcomesUS 9,049,119 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,049,119
• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Nov 14, 2023 · IPR2022-00813 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–13 and 16–20 are unpatentable, principally as obvious over the cited combinations; the Board did not reach the Vaios and Naidoo-068 anticipation grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner that its proposal for the level of ordinary skill should be applied in this Petition, particularly in the absence of any counter proposal from Patent Owner. Petitioner’s expert used the correct factors to arrive at its proposed level of skill in the art, and we agree with Petitioner that its proposal is also consistent with the prior art cited in the Petition. Reply 2; accord Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We also find the proposed level of skill in the art consistent with the amount of detail and explanation of the technology that is given in the ’614 patent itself. Accordingly, we apply Petitioner’s proposal for the level of ordinary skill in the art in this decision. D.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner argues that Petitioner’s expert provided no support for these statements. Resp. 41. Petitioner disagrees, contending that Dr. Hochwald adequately supports these statements with evidence. Reply 15 (citing Ex. 1002 ¶¶ 117–120; Ex. 1051 ¶¶ 34–37, 41–42). As support, Dr. Hochwald states that implementing wireless transmission and reception into cameras was well known, and such cameras were commercially available. Ex. 1051 ¶¶ 34–35; Ex. 1004, 20:2–22, 21:1– 22:15; Ex. 1038 (embedded Bluetooth CCD camera); Ex. 1045 (press release for AXCESS wireless security camera with streaming video). Dr. Hochwald further states that the basic architecture of the combined system would not change merely because the communication protocol between the camera and the local computer system is wireless instead of wired. Ex. 1051 ¶ 36. We agree with Dr. Hochwald and find Dr. Hochwald’s statements are not merely ipse dixit, but are adequately supported with underlying facts and data. See 37 C.F.R. § 42.65(a). Patent Owner further argues that Petitioner’s expert never did an analysis identifying the “changes in interface, complexity, cost, or methodology” for modifying the architecture and system in Vaios, and that this dooms the challenge ground because Vaios requires the solution to be “inexpensive.” Resp. 41 (citing Ex. 1003, 1:60–63). Dr. Hochwald’s statement, however, indicates that changing the interface from wired to wireless was “simple” and not prohibitively costly, and thus did not require the detailed analysis that Patent Owner seeks.” slip op. at 32

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

    “In sum, Petitioner contends that no claim construction is necessary. Patent Owner argues that it disputes Petitioner’s claim constructions that it allegedly made for its anticipation and obviousness arguments. However, Patent Owner does not identify what those allegedly disputed claim terms are nor what meanings should be ascribed to them. As no specific controversy over claim language has been identified to us, we decline to construe any claim term explicitly and instead will apply the ordinary and customary meaning as understood by a person of ordinary skill in the art in this decision. See supra Nidec; Wellman; Vivid Techs. E.” slip op. at 15

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

    “Accordingly, “there [were] apparent reason[s] to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. j) Reasons for Combining Vaios and Saylor Patent Owner alleges that Petitioner has not explained how or why Saylor and Vaios would be combined. Resp. 52. Patent Owner argues that Saylor teaches “[h]ome security systems offer limited services . . . The industry itself has remained stagnant and inflexible.” Id. (citing Ex. 1008, 1:54–57) (second alteration in original). Patent Owner asserts [n]othing in the Petition or expert declaration explains how or why one would combine the apparently incompatible limitations of Vaios (e.g., local computer, camera, network requirements) and Saylor (e.g., need for long battery life, wireless connection, and reduced alarm notifications). Id. Patent Owner’s arguments do not address Petitioner’s reasons to combine Vaios and Saylor. Pet. 14. Petitioner stated that the combination incorporates known elements (e.g., associating respective individuals with specific devices via a database/address book as taught in Saylor) into Vaios’ system (e.g., local computer system 12) in a known manner to yield predictable results, and had a reasonable expectation of success. Id. Petitioner further stated that the proposed combination offered advantages that would have motivated a person of ordinary skill in the art to make the combination, such as providing notifications and data to specific, desired individuals per user preferences and assigning a notification priority that conserves system resources and speeds alarm response by contacting” slip op. at 35

  Patent outcomesUS 8,164,614 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,164,614
• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Nov 3, 2023 · IPR2022-00811 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–13 and 16–21 are unpatentable, principally as obvious over the cited combinations of Vaios, Menard, Saylor, and other references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’184 patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner also argues that “Dr. Hochwald’s declaration offers no technical support or evidence for his statements.” PO Resp. 21. Patent Owner fails to provide a single example to support this argument. See id. The Hochwald Declaration cites to or reproduces record evidence, or provides reasoned analysis, throughout, including at the complained about portion of the Petition. See, e.g., Ex. 1002 ¶¶ 127–141 (relying on citations to Vaios and Saylor (cited at Pet. 13–15)); PO Resp. 20 (citing Pet. 15 as allegedly deficient). Based on the foregoing discussion, Petitioner does not improperly avoid word limits, and there is insufficient reason identified by Patent Owner on this record to dismiss the Petition or discount the weight of the Hochwald Declaration.” slip op. at 11

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

    “Pet. 6. Patent Owner “does not take a position regarding the need for claim construction at this time.” However, Patent Owner contends “Petitioner . . . improperly construe[s] certain terms,” which “[t]he Board should disregard, . . . particularly without the required showing of necessity.” PO Resp. 2. Patent Owner fails to point to any specific term in this trial that Patent Owner regards as an “improper construction,” and the Board is unable to find one. construe any claim terms, because any construction would not impact the analysis of Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “Resp. 27–40), largely rest on an improper requirement for bodily incorporation of the two video surveillance systems to show obviousness, and fail to undermine Petitioner’s showing that implementing Vaios’s camera as a wireless camera would have been obvious based on Menard’s wireless camera teachings. An artisan of ordinary skill is not an automaton, blindly and bodily incorporating features of one teaching into those of another without any consideration of cost or other trade-offs. Moreover, Vaios indicates that its inexpensive systems eliminate expensive cables, further at least suggesting a wireless solution, as discussed above and as noted in the Institution Decision. See Ex. 1001, 1:46–63; Inst. Dec. 23 (citing Ex. 1001, 1:46–63); Ex. 1051 ¶¶ 33–34 (testifying that the combination would “facilitate easier camera installation and maintenance” and “the process of including wireless transmission and reception, and was much easier to install and maintain wireless devices that did not require one to run wires throughout a building or access those wires in the event of a communication problem with the system”); Ex. 1002 ¶¶ 107–120 (providing similar analysis as to known wireless functionality). There is not adequate evidentiary support for the argument that implementing Vaios’s camera wirelessly would require substantial changes or prohibitively high cost, or produce an inoperable system, where Vaios at least discloses using “wireless” “communications devices” and systems (Ex. 1003, 2:26–30, 4:7–11) and systems Fig. 2 (“INTERNET,” “WIRE/WIRELESS”) and eliminating “expensive” cables (id. at 1:46–59), and Menard discloses wireless video capability, without describing much detail, similar to the ’184 patent, thereby signifying that skilled artisans understood that “wireless” video for a camera would have been a readily available feature relatively simple to implement. See Ex. 1051 ¶ 35 (testifying that “the successful implementation of wireless transceivers into cameras w[as] already well documented, going back almost a full century” and “by 2002, it was well known how to build and implement cameras capable of wirelessly transmitting video, audio, and sensor data”). Even if providing wireless functionality to Vaios’s video camera results in eliminating hardware and software in Vaios’s computer system, this does not destroy the functionality or purpose of Vaios’s system, it simply results at most in rearranging hardware and software in the combined system. See Ex. 1051 ¶¶ 34–36 (testifying, inter alia, that “the combination of Vaios and Menard . . . would not have destroyed any aspects of Vaios”). Vaios supports this testimony, indicating that rearranging components and their functionality to function with systems at different locations does not destroy” slip op. at 22

  Patent outcomesUS 8,144,184 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,144,184
• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00812 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–10, 12, and 15–20 are unpatentable, principally as obvious over Vaios and Menard; the Board did not reach the Klein-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “in the art are similar and any differences are immaterial to the outcome of this case. Id.; Ex. 1031, 13:4–10; 14:14–21. We apply Patent Owner’s proposal, however, because it includes an upper limit of four years of experience, and also provides that graduate education could substitute for professional experience or significant experience in the field could substitute for formal education in addition to similar qualifications as Petitioner proposes. In addition, we find that Patent Owner’s statement of the level of ordinary skill in the art is consistent with the content of the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Patent Owner’s proposal for the level of ordinary skill in the art in this decision. C.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner has not demonstrated that Petitioner committed the violation it asserts, nor has Patent Owner shown that the circumstances here warrant imposing the severe consequence of disregarding Petitioner’s expert’s declaration. Attorney argument alone is not evidence that could support such an assertion. Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017). F.” slip op. at 16

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

    “Patent Owner argues that it disputes Petitioner’s claim constructions that it allegedly made for its anticipation and obviousness arguments. However, Patent Owner does not identify what those allegedly disputed claim terms are nor what meanings should be ascribed to them. As no specific controversy over claim language has been identified to us, we decline to construe any claim term and instead will apply the ordinary and customary meaning as understood by a person of ordinary skill in the art in this decision. See Nidec, Wellman, Vivid Techs., supra. D.” slip op. at 15

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

  Patent outcomesUS 8,154,581 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,154,581
• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Oct 19, 2023 · IPR2022-00810 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–10 and 13–21 are unpatentable: Vaios anticipates some claims, and the listed Vaios, Klein, and Naidoo-068 combinations render the remaining claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 8 (citing Ex. 1002 ¶¶ 21–24). Patent Owner responds that “Petitioner and its expert rely on conclusory statements regarding a person of ordinary skill in the art” such that Dr. “Hochwald’s conclusory opinion should be given no weight.” PO Resp. 4–5 (citing Ex. 1002 ¶¶ 21–24). Notwithstanding Patent Owner’s arguments, Dr. Hochwald declares that “[a]ll of the opinions contained in this declaration are based on the documents I have reviewed and my professional judgment, as well as my education, experience, and professional knowledge.” Ex. 1002 ¶ 17. Such documents include the “’098 patent (EX1001), the prosecution history of the ’098 patent (EX1017), the prior art references cited herein, and other Hochwald bases his proposed level of ordinary skill on the relevant documents. Moreover, Patent Owner does not offer a proposed level of ordinary skill in the art or even argue that a different level would result in a different analysis by Dr. Hochwald or any other declarant. See id. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’098 patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “Phillips. See Pet. 7–8. The parties disagree over whether the preamble is limiting. Compare PO Resp. 2–3 (arguing the preamble is limiting), with Reply 2–3 (arguing that “‘for receiving a person at an entrance’ clearly states an intended purpose of the invention”). As the analysis of the grounds art renders the claims unpatentable.” slip op. at 9

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

    “In any event, even if we generally adopt what Patent Owner refers to as an agreed upon plain and ordinary meaning and construe “detecting a person at the entrance” as limited to “detecting a person at an exterior,” and further construe “exterior” as referring to the exterior of an area defined by some type of a “demarcation line” according to the ’098 patent’s description of Figure 1 (see Ex. 1001, 6:40–50), the Petitioner persuasively shows that the prior art teaches the limitation (including when the “demarcation line” defines the exterior of a building), as discussed further below. Accordingly, it is not necessary to explicitly construe the limitation any further or to construe any other claim terms, because any construction would not impact the analysis of Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “shows that the ’384 provisional does not contemplate transmitting “video of the person at the entrance” to a “remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance,” using “a graphic user interface,” as claim step 1c requires. Disclosure in the ’384 provisional of a generic laptop or other remote peripheral device that may be capable of viewing video in isolation is not possession of the claimed invention. In other words, as Petitioner persuasively shows, “[c]ommunication of actual video to the remote peripheral device was not countenanced in the provisional, and [Patent Owner] fails to identify evidence to the contrary.” Id. at 9. That is, as Petitioner also argues, “[w]ritten description support is not established simply by identifying peripheral devices such as PDAs and laptop[s] in the provisional and arguing that such devices were ‘capable of’ displaying video, nor by the provisional’s disclosure of ‘communications’ between the central computer and said peripheral devices.” Id. at 8–9 (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1331–32 (Fed. Cir. 2008)). Under the rationale and holding of Tech. Licensing Corp., even if “a person skilled in the art might conclude” that the ’384 provisional’s disclosed system is capable of performing the same function of viewing the particular video at a remote peripheral device, this is not enough to show adequate written description. See id. at 1334 (“This evidence persuaded the trial court that a person skilled in the art might conclude that R21 and R26 establishing a level shifted signal [as recited in the ’250 patent claims at issue], but that was all,” and that evidence is insufficient to satisfy written description for a level shifted signal), 1333–34 (“The pertinent question is not whether a person skilled in the art could look at both Figure 3 [from the earlier-filed ’323 application] and Figure 16 [from the ’250 patent at issue] and determine that the resistors in the former perform a similar function to the resistors in the latter. Rather, the issue is whether a person skilled in the art would understand from the earlier application alone, without consulting the new matter in the ’250 patent, that the inventor had possession of the claimed ‘other circuit’ in 1992 when the ′323 application was filed.”). Even if there is a disclosure in the ’384 provisional of a system that merely is capable of providing for the viewing of live streaming or recorded video at the remote peripheral device of “the person at the entrance,” this still is not sufficient written description for claim 1, step 1c. Rather, claim 1 requires “a graphic user interface” (which facilitates and controls the viewing) at “the remote peripheral device,” because it requires “providing a [GUI] to a remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance.”14 There is no disclosure in the ’384 provisional for providing a GUI to a remote peripheral device. See Inst. Dec. 9 (indicating a lack of showing as to the claimed” slip op. at 19

  Patent outcomesUS 8,139,098 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,139,098

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.