• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 2, 2023 · IPR2021-01333 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 18, 26, 27, 29, and 31 were not shown unpatentable because Ogasawara did not disclose claim 18’s determining limitation, and the obviousness grounds did not cure that deficiency.

  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 a “Bachelor of Science in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and one to two years of experience 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the ’252 patent was filed before the effective date of the relevant amendment, the pre-AIA versions of §§ 102, 103 apply. working with image processing, image recognition, or a related field.” Pet. 17 (citing Ex. 1003 ¶ 43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jeffrey Rodriguez. Ex. 1003 ¶ 43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 15. We adopt Petitioner’s description, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 5

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

    “C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in federal district court in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). Patent Owner proposes construing the term “the image” in all challenged claims to refer to “the same, single image.” PO Resp. 20. Based on this proposed construction, Patent Owner argues that the combination of Ogasawara and Bolle does not teach the limitations of claim 31. Id. at 59–60. As discussed below, for reasons unrelated to the term “the image,” Petitioner does not meet its burden to show that the challenged claims are unpatentable. See Sections II.D–II.F. Therefore, we determine that the term “the image” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 6

  • BurdenNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

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

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  Patent outcomesUS 7,899,252 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,899,252
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 1, 2023 · IPR2021-01304 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1, 10, 12, 13, and 15 were not shown unpatentable because Petitioner failed to prove a rational reason to combine Ogasawara and Bolle or a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDenied

    “We credit Dr. Bajaj’s (Patent Owner’s expert) testimony that Bolle requires a stationary camera and spatially registered images for purposes of segmentation via Bolle’s Figure 3a and 3b embodiments, which we find to be well-aligned with Bolle’s disclosure and the complete record before us. See, e.g., Ex. 2007 ¶ 33. We find Dr. Bajaj’s testimony on this issue much more credible than Dr. Rodriguez’s (Petitioner’s expert) testimony to the contrary, which we find to be misaligned at best with Bolle’s explicit disclosures discussed above. See, e.g., Ex. 1050 ¶ 51 (Dr. Rodriguez testifying that Bolle’s Figure 4 shows a stationary camera, but Bolle allegedly is not limited to using a stationary camera; and that Bolle’s segmentation techniques do not require “exact alignment,” merely “approximate[]” alignment of images, without explaining how or why the skilled artisan would have interpreted Bolle in that way); Ex. 2008, 97:22– 99:6 (testifying on re-direct to the same); see also Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015).” slip op. at 42

  • Skill levelSkill level petitioner adoptedOther

    “In determining the level of ordinary skill in the art, various factors may be considered, 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.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’036 patent, the background technical field, the prior art, and Petitioner’s unopposed proposed definition of the skilled artisan, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Rodriguez (Ex. 1003 ¶¶ 46–47).” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “in the District Court Case entered a Markman order construing the Recognizes Limitation, among others. See Ex. 2006, 16–18, 21–22.4 Specifically, the court construed the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” Ex. 2006, 21–22 (emphasis added). As explained in our Institution Decision (Dec. 17–19), we have reviewed the district court’s reasoning, as well as the ’036 patent and other evidence of record before us, and agree that for reasons given by the district court, the Recognizes Limitation should be given the same construction as determined by the district court. Neither 4 Unless otherwise specified, citations to exhibits use the page numbers assigned by the parties, not the original page numbers. party since has urged (or persuaded) us to revise this construction. Based on the complete record before us, we continue to construe the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” See Dec. 17–19; Ex. 2006, 21–22. Both parties adopt this construction for purposes of their post-institution arguments in this case. See PO Resp. 18–19 (“Patent Owner and its expert apply this claim construction in their analysis in the remainder of this IPR, but do not necessarily agree it is correct.”); see generally Pet. Reply (arguing “matching” as per this construction); Pet. (same).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “modifier. The definite article “the” can be used to modify something plural, e.g., “the digital representations.” Although in claim 1, “the” is used to modify a “digital representation,” that does not help the Patent Owner, because nothing in the claim excludes the involvement of additional digital representations while one “digital representation” is analyzed. Patent Owner points to nothing in claim 1 which restricts the analyzing to “only” one digital representation or “no more” than one digital representation, and we see none. Further, claim 1 uses the non-limiting phrase “comprising,” which creates a presumption that the claim is not limited to only those elements expressly recited in the claim. Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). We recognize that the only embodiment described in the specification of the ’036 patent analyzes only a single digital representation, but we are not required to construe the claim as limited to just that embodiment. Innova/Pre Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1121–22 (Fed. Cir. 2004). Such a construction is neither encouraged nor presumed. Id. Additionally, Patent Owner points to no expressions of disavowal either in the prosecution history or in the specification of the ’036 patent with regard to “a digital representation” in which the patent applicant disavows, with clarity, claim scope covering analysis of more than one digital representation. For the foregoing reasons, we disagree with Patent Owner, and we determine that analyzing “a digital representation” as recited in claim 1 does not preclude involvement of an additional digital representation or digital representations in the analysis.” slip op. at 17

  Patent outcomesUS 8,478,036 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,478,036
• Juniper Networks, Inc. v. Smart Path Connections, LLCNo claims unpatentable
  PTAB · Jan 19, 2023 · IPR2021-01356 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–24 were not shown unpatentable because the asserted combinations failed to account for required claim limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Preliminary Response, Patent Owner took no position with respect to the level of ordinary skill in the art. In the Decision to Institute, we adopted Petitioner’s articulation of the level of ordinary skill in the art. Inst. Dec. 11. Post institution, Patent Owner does not dispute our adopted level of ordinary skill in the art. Petitioner’s assertion is supported by the testimony of Dr. Lavian. Ex. 1003 ¶¶ 91–100. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, in the absence of a contrary contention by Patent Owner, we continue to adopt Petitioner’s proposed level of ordinary skill in the art, as stated in two alternatives noted above. C.” slip op. at 11

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

    “Because the above-quoted limitations of claims 1 and 12 plainly require that only a single copy of each data packet be forwarded to the output ports forming a subset (which according to limitations [1.1] and [12.1] forms a LAG), any position of Petitioner asserting the contrary must be contained in the Petition. 37 C.F.R. § 42.204(b)(3) (“the petition must set forth . . . [h]ow the challenged claim is to be construed.”). If not, Patent Owner is deprived of an adequate opportunity to respond, for example, by relying on expert testimony in a declaration to support its Response. Petitioner’s articulated claim construction position regarding forwarding only a single copy is belated, and no explanation has been provided to justify omission of this claim construction position in the § 42.204(b)(3). Thus, the argument is not entitled to consideration. Even if we do consider Petitioner’s belated claim construction position, it is nonetheless without merit and we are unpersuaded. Petitioner’s contention is based on the doctrine of claim differentiation, which disfavors reading a limitation expressly stated in a dependent claim into a claim from which it depends. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). Specifically, the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim. Id. Here, dependent claims 3 and 14 respectively narrow independent” slip op. at 13

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

    “For several reasons, we are not persuaded by Petitioner that Borgione forwards only a single copy of a packet via the output ports of Borgione’s LAG as identified by Petitioner. Nowhere in the above-cited portions of Borgione is an indication that no other copy or replicated packet will be forwarded via the output ports of Borgione’s LAG. The above-cited description discusses one forwarding instance but does not represent that there is no other forwarding of a copied or replicated packet. To the contrary, the cited text indicates that other copies or replicated versions would still be forwarded via the output ports of the same LAG. Borgione describes that upon receipt of a packet with a multicast destination address, i.e., a multicast packet, a linking node such as node 110 identifies the network nodes subscribing to the multicast group and replicates the packet. Ex, 1006, 6:14–17. Borgione further states: “The replicated multicast packets can then be forwarded to the identified network nodes [such as node 120].” Id. at 6:17–18. With regard to distributing forwarded copies to balance the traffic load within the LAG, Petitioner cites to the following disclosure of Borgione:” slip op. at 29

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

    “First, the articulated motivation to combine is overly general and is disconnected with the circumstances and requirements of Devi. Mazzola discloses an address-translation mechanism using table look-up, as discussed above in Section II.D.3. It makes no mention of and is not concerned with aggregated links, sending a packet to just one port in an aggregated link, or load distribution among the ports in an aggregated link. It makes no distinction between one port and a plurality of ports, as it discloses that the index value retrieved from a table may be associated with either one port or a plurality of ports. Ex. 1007, 9:28–31 (“In response, the LTL translates the received index to a signal that selects a port or a group of ports for receiving the data frame.”). Although Mazzola describes that each port is associated with a unique index value and a VLAN “color” identifier (Ex. 1007, 3:12– 14), Mazzola also describes that “[t]he destination of any frame may be one or more ports” (id. at 6:16–17) and that a port can be a multicast port including a group of ports (id. at 6:20–24). The “efficiency” Mazzola mentions appears to be using a look-up table for address conversion versus not using a look-up table, and has little, if anything, to do with associating an FMID with a port versus associating an FMID with a group of ports or a LAG. Further, with Devi’s disclosure of sending only one packet to a LAG and load balancing among the ports in a LAG (limitation [1.2]), it is uncertain whether table look-up as described in Mazzola would even work in that environment. Petitioner does not address entries have to be revised. The statement of increased efficiency is speculative in the context of Devi. Second, Petitioner has over-simplified the issue with limitation [1.3] and has not adequately explained how Mazzola’s address-translation mechanism would be incorporated into Devi without affecting those portions of Devi relied on by Petitioner to account for limitation [1.2]. It is not adequately explained how Devi would be modified to incorporate teachings from Mazzola. Petitioner does not adequately address whether the proposed combination would impact Devi’s components and functionality that are also relied on by Petitioner. It is unclear why the purported combination would have been successful.” slip op. at 47

  Patent outcomesUS 7,697,525 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,697,525
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Jan 9, 2023 · IPR2021-01081 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1, 2, 4, 7, 9, 18, and 20 were not shown unpatentable because Petitioner failed to establish a rational reason to combine the references and a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “imaging device (camera) to obtain two images for purposes of segmentation via Bolle’s Figure 3a and 3b embodiments, and that Ogasawara teaches using a mobile device to obtain a single image for purposes of pattern recognition. Bolle itself explicitly states that the object, background, and image input device “should be at the same position” when acquiring the first/dark image and second/light image, and that the two images must be spatially registered (explained above). Ex. 1006, 10:31–44; see id. at 9:48–51 (“By placing the object 131 on the surface 405, the distance 407 between camera 120 and object 131 remains fixed thus providing the means for repeatable imaging.”). We credit Dr. Bajaj’s (Patent Owner’s expert) testimony that Bolle requires a stationary camera and spatially registered images for purposes of segmentation via Bolle’s Figure 3a and 3b embodiments, which we find to be well-aligned with Bolle’s disclosure and the complete record before us. See, e.g., Ex. 2006 ¶ 38. We find Dr. Bajaj’s testimony on this issue much more credible than Dr. Rodriguez’s (Petitioner’s expert) testimony to the contrary, which we find to be misaligned at best with Bolle’s explicit disclosures discussed above. See, e.g., Ex. 1050 ¶ 66 (Dr. Rodriguez testifying that Bolle’s Figure 4 shows a stationary camera, but Bolle allegedly is not limited to using a stationary camera; and that Bolle’s segmentation techniques do not require “exact alignment,” merely “approximate[]” alignment of images, without explaining how or why the skilled artisan would have interpreted Bolle in that way); Ex. 2007, 97:22– 99:6 (testifying on re-direct to the same); see also Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015).” slip op. at 41

  • ExcludeMotion to exclude, deniedDenied

    “Paragraph 37 of Exhibit 2006 that ‘a person of ordinary skill in the art would have known that a wireless videophone available in the late-1990s would have significantly less processing power than any of the hardware discussed in Bolle.’ Ex. 2006, ¶ 37. Dr. Bajaj, however, provides no facts or data to support this bald assertion.” Mot. Excl. 5. We disagree that Dr. Bajaj has to show more. As an expert in the field, Dr. Bajaj can testify as to his opinion regarding the state of the art at a certain time period, without need of specific underlying material. The subject is not one for which Dr. Bajaj needs to run an experiment to observe the results. In the absence of supporting material, the testimony may be challenged as lacking sufficient credibility, but the testimony is not inadmissible. In any event, as discussed above, our decision assumes that Ogasawara’s videophone has processing circuitry just as powerful as Bolle’s computer. The testimony did not result in any detriment to Petitioner.” slip op. at 60

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

    “Figure 3a embodiment, Petitioner offers no specific reason, let alone a rational one stated with particularity, for why the skilled artisan would have turned specifically to Bolle’s “image segmentation” teaching of comparing two spatially registered images of a scene, one with and the other without an object present, as depicted in Figure 3a. Instead, Petitioner takes Bolle’s teachings concerning Figure 3a out of context, and argues only generally that the skilled artisan allegedly would have been motivated to use Bolle’s “image segmentation” (generically) with Ogasawara to achieve the invention of claim 1. See, e.g., Pet. 21 (Petitioner arguing generally that combining Ogasawara and Bolle would have “achieve[d] a system that could more” slip op. at 31

  Patent outcomesUS 7,881,529 not shown unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,881,529
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Jan 9, 2023 · IPR2021-01332 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–3, 6, and 18 were not shown unpatentable because Petitioner failed to establish motivation to combine Ogasawara and Bolle or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art] . . . would have had a range of knowledge roughly equivalent to the knowledge and/or training of a person holding the degree of Bachelor of Science in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and one to two years of experience working with image processing, image recognition, or a related field.” Pet. 21 (citing Ex. 1003 ¶ 53). In the Decision to Institute, we determined that Petitioner’s articulation is consistent with the prior art and patent specification and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level “does not contend that an alternative level of ordinary skill in the art should be applied.” PO Resp. 18. Thus, we maintain our adoption of Petitioner’s articulation of the level of ordinary skill in the art. C.” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for petitioner

    “The district court construed the recognize limitation to mean “recognizing the at least one object in the scene as a target object based at least in part on the at least one characteristic of the video stream by comparing the at least one characteristic with characteristics of objects stored in a database to find a match.” Id. at 19. In adopting this construction, the district court remarked: “The Court agrees with Defendants that the ‘recognizing’ step requires querying a database.” Id. The district court rejected parts of Petitioner’s proposed construction there, finding no reason to change “recognizing” to “identifying,” and also finding no reason to change “based at least in part on the at least one characteristic” to “matching the at least one characteristic.” Ex. 2006, 17–19. With regard to the requirement of “finding a match,” the district court explained: “The intrinsic evidence consistently emphasizes that the system compares parameters in order to match a target object with an object in a database in order to ‘recognize’ the target.” Id. at 18; see also id. at 18–19. The district court also did not adopt Patent Owner’s plain and ordinary meaning.” slip op. at 16

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

    “Patent Owner is correct that the antecedent basis in claim 1 for “the scene” is the earlier recited “a scene.” Patent Owner is incorrect, however, in characterizing “the” as a singular modifier. The definite article “the” can be used to modify something plural, e.g., “the scenes.” Although in claim 1, “the” is used to modify a “scene,” that does not help the Patent Owner, because nothing in the claim excludes the involvement of additional scenes while one “scene” is analyzed. Patent Owner points to nothing in claim 1 which restricts the analyzing to “only” one scene or “no more” than one scene, and we see none. Further, claim 1 uses the non-limiting phrase “comprising,” which creates a presumption that the claim is not limited to only those elements expressly recited in the claim. Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). We recognize that the only embodiment described in the specification of the ’004 patent analyzes only a single scene, but we are not required to construe the claim as limited to just that embodiment. Innova/Pre Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1121–22 (Fed. Cir. 2004). Such a construction is neither encouraged nor presumed. Id. Additionally, Patent Owner points to no expressions of disavowal either in the prosecution history or in the specification of the ’004 patent with regard to “a scene” in which the patent applicant disavows, with clarity, claim scope covering analysis of more than one scene. For the foregoing reasons, we disagree with Patent Owner, and we determine that analyzing “a scene” as recited in claim 1 does not preclude involvement of additional scene or scenes in the analysis.” slip op. at 19

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

    “that Bolle’s camera and light source are stationary. The camera is stationary for a critical reason, that Bolle’s segmentation method requires spatial registration between two images taken by the camera. Ex. 1006, 10:31–34. Bolle explains: [T]he object 131, the background 312, and the image input device 120 should be at the same position in both step 510 and 520 to assure that the first and second images are in spatial registration. Suppose each pixel is numbered starting in the upper left corner of the image then proceeding across the first line then down to the second line in the manner of reading a book. Registration means that each numbered pixel in the first image corresponds to the same area of the scene (object(s) 131 and background 312) as the identically numbered pixel in the second image. Id. at 10:31–40 (emphases added). We credit Dr. Bajaj’s testimony that “[a] person of ordinary skill in the art would have recognized that Bolle contemplates that the image processing would be performed at the point of sale by a cashier, using a stationary device with a stationary camera, light source, and object platform.” Ex. 2007 ¶ 33. The testimony is supported by Figures 1 and 4 of Bolle. We credit that testimony over Dr. Rodriguez’s suggestion that Bolle discloses an embodiment which makes use of a mobile device for taking the images.” slip op. at 53

  Patent outcomesUS 9,324,004 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,324,004
• DISH Network L.L.C. / DISH Technologies L.L.C. et al. v. Sound View Innovations, LLCNo claims unpatentable
  PTAB · Feb 8, 2022 · IPR2020-01276 · APJ John A Hudalla · IPR · Final written decision

  The Board held claims 1–3, 5–7, 13–15, 18, 20, 21, 24, 25, 27, and 29 not unpatentable over either asserted obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “After institution, neither party put forth arguments related to the level of ordinary skill. We discern no reason to change the level of ordinary skill in the art applied in this Final Written Decision. Thus, a person of ordinary skill in the art would have had either (1) a Bachelor of Science in Electrical Engineering, Computer Engineering, Computer Science, or a related field, as well as three to four years of experience in implementing protocols and/or equipment for streaming multimedia data; or (2) a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in implementing protocols and/or equipment for streaming multimedia data. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’796 patent and the asserted prior art.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “independent claims 1, 15, 20, and 27 are limiting. Dec. on Inst. 10–11. Petitioner does not take an express position on whether the preambles of the challenged claims are limiting. See Pet. 21 (stating that Geagan teaches the preamble “to the extent it is limiting”). Patent Owner supports our preliminary determination that the preambles are limiting. PO Resp. 37–41. Given this posture, we discern no reason to change our initial determination that the preambles are limiting. Thus, even though the disposition of this case does not turn on any particular limitation in the preamble, we maintain our determination that the preambles of claims 1, 15, 20, and 27 are limiting to the extent they color our analysis of Petitioner’s rationale for combining various prior art references.” slip op. at 9

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

    “We determine that no terms require explicit construction.2 See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 10

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

    “Petitioner attempts to decouple these central control aspects from the functionality of sliding windows. In particular, Petitioner argues that “[t]he majority of the functionality for implementing the sliding window buffers is found in Vishlitzky’s stream servers themselves” and that Patent Owner has not established “that the controller servers of Vishlitzky exercise control over the playout history, the buffers, or sliding window functionality of Vishlitzky’s stream servers.” Pet. Reply 8–9. Yet Petitioner expressly relies on Vishlitzky’s admission control program, which runs on controller servers 28, 29, to teach the “determining” step of claim 1. Pet. 35–36, 40–41; Pet. Reply 21–22. Petitioner has not explained how the admission control program’s centralized function of choosing an appropriate stream server to service a request (see Ex. 1010, 7:62–8:3) would be implemented in the stream servers themselves. In addition, Petitioner’s analogy between Vishlitzky’s controller servers and the memory controllers used with Geagan’s proxy (Pet. 63; Pet. Reply 9) does not detail how and whether Petitioner proposes to modify Vishlitzky’s centralized controller functions such that they might be compatible with “the distributed nature of Geagan’s proxy approach,” as Petitioner characterizes it. Pet. Reply 10. At the oral hearing, Petitioner also suggested that a controller within a single proxy from Geagan could allocate incoming requests to multiple of Vishlitzky’s stream servers within that same proxy. Tr. 55:1–57:21; see also PO Sur-reply 23–24 (discussing this potential argument). In other words, Petitioner seemed to suggest that multiple stream servers from Vishlitzky’s stream server architecture in Figure 16, along with controller servers from Figure 2, could be replicated in each of Geagan’s proxies. Yet Petitioner disavows such a mapping in its Reply: “[T]he Petition does not propose that a POSITA would have bodily incorporated the entirety of Vishlitzky’s hardware control structure when implementing Geagan’s system using Vishlitzky’s ‘sliding window’ to store cached streaming content.” Pet. Reply 6. Nor was this the combination described in the Petition. Instead, Petitioner proposed “to implement the buffer of Geagan as a ‘pre-configured playout history (PH) buffer’ . . . because Vishlitzky teaches that it is advantageous to pre-configure a playout buffer.” Pet. 34; see also id. at 62–63 (“[A] POSITA would have had a reasonable expectation of success in implementing details of the ATM-based stream server of Vishlitzky in Geagan’s proxy . . . .”). Petitioner further characterizes this as “[t]he buffer of Geagan’s proxy, as implemented as a pre-configured PH buffer per Vishlitzky.” Pet. 39. And, importantly, Petitioner cites the creation of another proxy device in Geagan for teaching the recited “non pre-configured PH buffer”: “Geagan in view of Vishlitzky discloses ‘servicing the first request from a non pre-configured PH buffer,’ such as by live-streaming content using a buffer at the proxy device that is created at the time of the request for an unpopular live stream.” Pet. 42 (emphasis added). Finally, even if Petitioner’s papers had proposed a combination where Vishlitzky’s entire stream server and controller architecture is incorporated in each of Geagan’s proxies, Petitioner has failed to articulate reasons with some rational underpinning why an ordinarily skilled artisan would have made this combination. Thus, we are not persuaded by Petitioner’s arguments. At the very least, Petitioner has not explained where Vishlitzky’s controller servers would be disposed in the combined system and how they” slip op. at 28

  Patent outcomesUS 6,757,796 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,757,796
• Intel Corporation v. Parkervision, Inc.No claims unpatentable
  PTAB · Jan 21, 2022 · IPR2020-01302 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 3, 4, 7, and 9–11 were not determined unpatentable because the asserted Larson and Larson–Butler grounds did not teach sampling.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Neither party contends that the differences in proposals affect the outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art from the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’474 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include the specifics from option (b) of Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 11

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

    “Because the parties agree that the claims remaining in the trial require “sampling” and also agree that the prior art asserted in this case does not teach “sampling” (as discussed further below), we need not construe these terms expressly to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803. sampling Although claim 1 does not recite “sampling” expressly, the post- institution briefs make clear that the parties agree that claim 1 and its dependent claims require sampling. In particular, Patent Owner contends, (1) “the ’474 patent pertains to a technique called sampling, which involves the use of a ‘switch’” (PO Resp. 2); (2) “all of the challenged claims are directed to a sampling system and, in particular, an energy sampling system (also known as an energy transfer system)” (id.); and (3) “[t]he challenged claims only cover energy sampling and the use of switches” (id. at 20). In its Reply, although Petitioner disagrees with Patent Owner’s interpretation of the claims as limited to energy sampling (i.e., energy transfer systems) (Pet. Reply 3–7), Petitioner contends that based on its “subsequent analysis of [Patent Owner’s] foundational ’551 patent—one of the multiple patents which the ’474 patent incorporates by reference—[Petitioner] now agrees with [Patent Owner] that the claims cover only systems that down-convert by sampling.” Pet. Reply 2. Thus, at a minimum, the parties agree that the claims at issue in this proceeding require sampling.” slip op. at 13

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

    “Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19

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

    “Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19

  Patent outcomesUS 7,539,474 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,539,474
• Comcast Cable Communications, LLC v. Promptu Systems CorporationNo claims unpatentable
  PTAB · Mar 29, 2019 · IPR2018-00340 · APJ Alex S Yap · IPR · Final written decision

  Claims 1–7, 17–24, and 33 were not shown unpatentable under any asserted § 103 ground because the petition failed to establish the claimed command function.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner that the definitions for a person of ordinary skill in the art involving unrelated patents in different proceedings need not be the same in each proceeding. Reply 2–4. Although the patents in each proceeding before us are issued to the same assignee and have some of the same inventors, the specific goal of each patent differ between proceedings. We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent discloses a system that includes voice recognition processing,” it discusses voice recognition technology only as a component part of the system, and expertise in voice recognition technology was not required to understand the ’538 Patent because it does not discuss any particular voice recognition techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr. Wechselberger that a practitioner would have understood how to implement existing voice recognition products in a cable television network without having special knowledge or experience with voice recognition algorithms. Id. ¶¶ 5–7. For the foregoing reasons, we credit the testimony of Mr. Wechselberger regarding the person of ordinary skill in the art and adopt, with modification (e.g., removing the words “at least” from Petitioner’s proposed definition), Petitioner’s definition of a person of ordinary skill in the art: (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and three years of work experience in the field of analog and digital television systems with exposure to interactive networks and associated control technologies; or (ii) a Master’s of Science degree (or equivalent) in electrical engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the same field. We further note that the prior art in the instant proceeding reflects the” slip op. at 13

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

    “specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). As the Federal Circuit has noted, “‘structure disclosed in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6.’” Saffran v. Johnson & Johnson, 712 F.3d 549, 562 (Fed. Cir. 2013) (quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). We are not persuaded that Petitioner has identified sufficient corresponding structure for this means-plus-function limitation. Here, Petitioner contends that the corresponding structure for performing the recited function is “‘a processor’ and equivalents.” Pet. 11. Petitioner’s expert further opines that “the patent identifies the Motorola DCT-2000 set-top box (’538 Patent[,] 3:51–52), and a person of ordinary skill in the art would have known that the DCT-2000 includes a processor that executes command functions from the cable head-end.” Ex. 1022 ¶ 138. However, for means-plus-function limitations,” slip op. at 18

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Not shown unpatentable

    “[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015) (en banc) (“In cases . . . involving a claim limitation that is subject to § 112, para. 6 that must be implemented in a special purpose computer, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor[; it must] disclose an algorithm for performing the claimed function.”) (citations omitted); Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). We decline to adopt Petitioner’s proposed construction because Petitioner has not explained sufficiently that the recited function for this term (“responsive to receipt of the command functions for executing the command functions”) is a basic computer function that would not require a special purpose computer, nor has Petitioner directed us to any portion of the Specification sufficient to link a structure (i.e., an algorithm)4 to the recited function. The reference to “a processor” without specifying the algorithm is too generic to identify any specific structure. In Aristocrat, the Federal Circuit stated that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Id., emphasis added. As the Federal Circuit explained, “a general purpose computer programmed to carry out a particular algorithm creates a ‘new machine’ because a general purpose computer ‘in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.’” 521 F.3d at 1333 (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also WMS Gaming, Inc. v. Int’l Game Techs., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Consequently, the specification must disclose enough of a specific algorithm to provide the necessary structure under § 112, sixth paragraph. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Allowing a computer programmed to perform a specialized function to be claimed without disclosure of the algorithm used for that programming would exhibit the same type of impermissible overbreadth of purely functional claims. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).” slip op. at 19

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “includes a set-top box compatible command function” because “while the references’ disclosures broadly indicate that their set-top boxes receive some information from a remote network location,” the information does not require a command to be sent for decoding or formatting. Ex. 2033 ¶ 43. Specifically, Mr. Tinsman testifies: Cable digital television content is typically transmitted as compressed data that must be decompressed by the set-top box for display on a television. Such content information is generally comprised of the compressed video data accompanied by metadata describing the content data to the set-top box, including, e.g., details of the data’s format. A POSITA would know that a set-top box does not need to receive specific instructions to perform a function every time it receives content data. Instead, the video decoder in the set top box automatically decodes the incoming data for display on a television without needing specific instructions to do so from the head-end unit. Id. We credit the above-quoted testimony of Mr. Tinsman, and find it to be persuasive. Patent Owner also points out that Mr. Wechselberger admitted that decoding and formatting information does not necessarily require a command to be sent. Resp. 29–30 (citing Ex. 2034, 50:20–24 (“Q Is it your opinion that decoding and formatting information necessarily requires a command to be sent from the head end to the set top box? A No.”)); see also Ex. 2034, 50:25–52:20. In contrast, we do not credit the conclusory testimony of Mr. Wechselberger that “[a] person of ordinary skill in the art would know that remote server 108 would send a ‘set-top-box-compatible command function’ to the communications box 104 (‘set-top box’) as a prerequisite to permit it to decode and format the video signal for display on display device 112.” Ex. 1022 ¶ 178. This conclusory statement is not supported by persuasive evidence, and is inconsistent with Mr. Wechselberger’s admission that decoding and formatting information does not necessarily require a command to be sent. See Ex. 2034, 50:20–24.” slip op. at 29

  Patent outcomesUS 7,260,538 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,260,538
• Comcast Cable Communications, LLC v. Promptu Systems CorporationNo claims unpatentable
  PTAB · Mar 29, 2019 · IPR2018-00341 · APJ Alex S Yap · IPR · Final written decision

  Claims 34, 35, 37, 40, and 41 were not shown unpatentable under any asserted obviousness ground because the prior art did not establish the claimed set-top-box-compatible instructions.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedSkill level board ownDecided for petitioner

    “We agree with Petitioner that the definitions for a person of ordinary skill in the art involving unrelated patents in different proceedings need not be the same in each proceeding. Reply 2–4. Although the patents in each proceeding before us are issued to the same assignee and have some of the same inventors, the specific goal of each patent differ between proceedings. We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent discloses a system that includes voice recognition processing,” it discusses voice recognition technology only as a component part of the system, and expertise in voice recognition technology was not required to understand the ’538 Patent because it does not discuss any particular voice recognition techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr. Wechselberger that a practitioner would have understood how to implement existing voice recognition products in a cable television network without having special knowledge or experience with voice recognition algorithms. Id. ¶¶ 5–7. For the foregoing reasons, we credit the testimony of Mr. Wechselberger regarding the person of ordinary skill in the art and adopt, with modification (e.g., removing the words “at least” from Petitioner’s proposed definition), Petitioner’s definition of a person of ordinary skill in the art: (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and three years of work experience in the field of analog and digital television systems with exposure to interactive networks and associated control technologies; or (ii) a Master’s of Science degree (or equivalent) in electrical engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the same field. We further note that the prior art in the instant proceeding reflects the” slip op. at 14

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

    “The use of the term “means” triggers a rebuttable presumption that § 112, ¶ 6 applies. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). One way in which this presumption can be overcome is if “the claim recites sufficient structure for performing the described functions in their entirety.” Id. To determine if the claim recites sufficient structure, “it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359–60 (Fed. Cir. 2004). Here, for each limitation, the claim recites sufficient structure for performing the described functions. For example, a television remote control is sufficient structure “for directly and wirelessly controlling television sets and additionally receiving user voice input and wirelessly transmitting first output representative of the voice input to a television settop box means” (Ex. 1022 ¶ 139) and a television set-top box is sufficient structure for “receiving television input signals via cable television link and providing television output signals compatible with television sets, and responsive to receiving the first output from one of the television remote control means to transmit representative second output to a central processing station via the cable television link.” (id. ¶ 143). Therefore, based on our review of the record before us, we are persuaded by Petitioner that these terms do not invoke 35 U.S.C. § 112, ¶ 6.” slip op. at 16

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

    “Petitioner’s conclusory rationale for the combinations, however, is untethered to any claim limitations. See Pet. 35–38, 56–58 (citing to Ex. 1022 ¶¶ 226–229, 232–234; 299–300, 304–306). For example, when discussing the combination of the references for a particular limitation, Petitioner starts with a discussion of either Julia or Murdock, followed by a discussion of Houser, and then provides a conclusory assertion that the combination would disclose the limitation at issue. See, e.g., Pet. 24–25 (“Julia also discloses . . . . In addition, Houser discloses . . . . Thus, Julia alone or combined with Houser discloses . . .”), 26–27 (“As explained above, Julia discloses . . . . In addition, Houser also discloses . . . . Thus, Julia alone or combined with Houser discloses . . .”). These discussions do not articulate, with respect to any specific limitation, or for any claim as a whole, why or how Julia or Murdock can and should be combined with Houser. A determination of obviousness cannot be reached where the record lacks “explanation as to how or why the references would be combined to produce the claimed invention.” TriVascular, 812 F.3d at 1066. The Petitioner also states that “a skilled artisan would have been capable of combining the teaching[s] of [the prior art references because such] combination[s] would have been no more than combining prior art elements according to known methods to yield predictable results.” However, this discussion is similarly untethered to any claim element, or to the claim as a whole. Pet. 37–38, 58 (citing to Ex. 1022 ¶¶ 233, 306–307.) And, again, we are not informed what teaching of one reference is proposed to be combined with what teaching of the other reference, or why and how the combination would have been made. To the extent Petitioner’s position is that once it establishes that two prior art references are within the same field and are directed to solving the same problem, then all features within one reference can be used within the other, and vice versa, without need for further explanation, it cites no authority to support that broad position and we are aware of none. Therefore, we determine that Petitioner has not established, by a preponderance of the evidence, that claims 34, 35, 37, 40, and 41 would have been obvious over Julia in view of Houser or Murdock in view of Houser. 3.” slip op. at 20

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Id. We credit the above-quoted testimony of Mr. Tinsman, and find it to be persuasive. Patent Owner also points out that Mr. Wechselberger admitted that decoding and formatting information does not necessarily require an instruction to be sent.4 Resp. 31 (citing Ex. 2034, 50:20–24 (“Q Is it your opinion that decoding and formatting information necessarily requires a command to be sent from the head end to the set top box? A No.”)); see also Ex. 2034, 50:25–52:20. In contrast, we do not credit the conclusory testimony of Mr. Wechselberger that “[a] person of ordinary skill in the art would know that remote server 108 would send a ‘set-top-box-compatible instruction’ to the communications box 104 (‘set-top box’) as a prerequisite to permit it to decode and format the video signal for display on display device 112.” Ex. 1022 ¶ 176. This conclusory statement is not supported by persuasive evidence, and is inconsistent with Mr. Wechselberger’s admission that an instruction be sent. See Ex. 2034, 50:20–24.” slip op. at 23

  Patent outcomesUS 7,260,538 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,260,538
• Unified Patents Inc. v. Hailo Technologies, LLC, D/B/A Bring, LLCNo claims unpatentable
  PTAB · Jan 25, 2019 · IPR2017-01865 · APJ Joseph L Dixon · IPR · Final written decision

  Claims 1–7 were not shown unpatentable: the combinations of Penzias, Clagett, and Nimura, with Behr for claims 2–6, did not establish the claimed system for multiple transportation companies.

  RulingsFinal written decision

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

    “flowchart in which a user selects one of the plural companies at step 300. The corresponding disclosure states, “all authorized taxi companies would appear along with other information and/or advertisements.” On the following screen, the user will “Select a Company” 300 which will service the request. See Ex. 1001, 3:58–62. Additionally, the ’619 patent discloses that “[t]he present invention embodies a computerized system which enables customers to select a transportation company, in this example a taxi company, from a menu of all permitted and participating companies.” Id. at 2:26–29. Based on our review of the Specification of the ’619 patent, we determine that the claim term “transportation companies” should be accorded its plain and ordinary meaning. That is, we construe “company” as a “commercial business.” THE OXFORD DESK DICTIONARY AND THESAURUS, 146 (American ed. 1997) Ex. 3001. For a “transportation company,” the commercial business would be transportation services. We further clarify that “transportation companies” requires plural companies.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Although there are slight differences between the definitions proffered by Petitioner and Patent Owner, the parties agreed that there is no meaningful distinction between them that would change the analysis in this proceeding. See Tr. 26–27. We agree and also find that both definitions are consistent with the level of ordinary skill in the art reflected by the prior art of record—namely, Penzias. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt Petitioner’s articulation of the level of ordinary skill in the art for purposes of this Decision, but our conclusion would not differ if we were to accept Patent Owner’s articulation. See Pet. 7.” slip op. at 11

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

    “speculation and conjecture. While Mr. Andrews speculates that the multiple paths “could represent” several transportation companies, Mr. Andrews provides no evidence to support a finding that Penzias teaches or suggests a user interface for the multiple transportation companies. Consequently, we do not credit Mr. Andrews’ testimony in this regard because it is not supported by the disclosure in Penzias. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based in entitled to little or no weight.”). We have reviewed Petitioner’s analysis, which is rebutted by Patent Owner, and we conclude that the First Alternative based upon the teachings of Penzias alone for the claimed multiple “transportation companies” is deficient because Petitioner has not shown that Penzias teaches or suggests multiple “transportation companies,” but merely shows multiple routes by different drivers of multi-passenger vans all controlled by a single transportation company. As a result, Penzias does not teach or suggest “displaying a list of authorized transportation companies for selection by the operator of the computer,” where the user selects a desired company, followed by displaying the proximate fare for the selected location and payment options honored by the selected company, and then initiating a dispatch call for available taxi from the selected company, as required by the method of independent claim 1. We find that Penzias only provides a process for a single “transportation company” and does not provide any teaching or suggestion to expand the user interface and process for multiple “transportation companies.”” slip op. at 22

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

    “Second, Petitioner showed that, based on the teachings of the applied references, it would have been obvious to combine Penzias, Clagett, and Nimura according to known methods to yield predictable results. Pet., 31–32. The Petition provided adequate reasoning based on rational underpinnings for why one of ordinary skill in the art would have modified the asserted prior art. Pet., 31–32 (citing Ex. 1012, ¶¶ 160–162); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR, 550 U.S. at 418. Accordingly, the Board should reject Patent Owner’s erroneous problem-solution argument about why a POSA would have combined the asserted references. Reply 25–26. Again, we disagree with the Petitioner and find that the proffered combination falls short of merely yielding predictable results. Petitioner has provided insufficient evidence that, at the time of the invention in 1997, it would have been obvious to one of ordinary skill in the art to provide a user interface for multiple transportation companies to deliver instructional messages to the consumer to allow the consumer to select a desired company and provide the relevant claimed information to ultimately dispatch a taxi/transportation vehicle/vehicle for hire from the selected company.” slip op. at 26

  Patent outcomesUS 5,973,619 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 5,973,619

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.