• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Oct 22, 2015 · IPR2014-00963 · APJ David C Mckone · IPR · Final written decision

  Claims 1–16 were not shown unpatentable because the ’480 patent did not disclose frequency hopping and the proposed obviousness combination lacked a reasonable expectation of success.

  RulingsFinal written decision

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

    “In the Decision to Institute, in light of an agreement between the parties, we preliminarily determined that “broadband transceiver,” recited in claim 1, means “a transceiver that covers a substantial portion of the bandwidth available to the wireless service provider who is operating the basestation,” with the clarification that such a transceiver does not include a set of single-frequency transceivers. Dec. 10. Neither party contests this construction. On the complete record, we maintain this construction. We further determined that no other claim term required express construction. Dec. 10. Neither party proposes a construction of any other term and we find it unnecessary to construe any other term to resolve the dispute between the parties.” slip op. at 8

  • Skill levelSkill level board ownDecided for petitioner

    “1. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art would have had at least a B.S. degree in Electrical Engineering, Computer Engineering, or the like, and at least three years of additional academic or industry experience. Pet. 11 (citing Ex. 1003 (Stark Decl.) ¶ 45). Dr. Wells “generally agree[s] with Dr. Stark in paragraph 45 of his declaration.” Ex. 2007 ¶ 20. We adopt the parties agreed statement of the level of skill of a person of ordinary skill in the art.” slip op. at 21

  • Expert testimonyPetitioner expert discountedMixed

    “Dr. Stark’s testimony also is not supported by the description in the ’480 patent. In one example, Dr. Stark testifies that: For the case of the receiver side (dehopping) as shown is Fig. 3, the same logical channel would “hop” onto different RF channels each successive GSM TDMA frame. This would mean that for a particular TDMA frame, a given logical channel, e.g., channel 1 on slot 1, would be at a particular RF channel such as indicated by location “27” in the table in Fig. 3. But in the next TDMA frame, the same logical channel, would be placed onto a different RF channel, e.g., location “2” in the table in Fig. 3. By the controller supplying a new mapping signal (table) every TDMA frame, the samples from the correct RF channel for the associated logical channel could be placed onto the TDM bus for processing by the corresponding DSP 18. Ex. 1022 ¶ 17. This is inconsistent with the description in the ’480 patent. Locations “27” and “2” in DP RAM Enable 202 merely indicate whether data can be asserted into time slots 27 and 2. Ex. 1006, 9:46–10:3. Changing the mapping in DP RAM Enable 202 to enable slot “2” and disable slot “27,” without additional changes elsewhere in the system, would not result in different RF channels being switched to the same logical channel. In this example, and the others cited above, Dr. Stark repeatedly testifies that simply re-programming DP RAM Enable 202 will change the mapping of physical RF channels and logical channels. Nevertheless, as Patent Owner argues (PO Resp. 26–27), the ’480 patent does not support that testimony. Because Dr. Stark’s testimony is inconsistent with the description in the ’480 patent, we give his testimony little weight.5” slip op. at 28

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

    “(Ex. 1006, 5:4–17) describes a basestation’s exchange of RF signals with mobile subscriber terminals. Specifically, the passage is directed to the modulation of voice and data channels over RF carrier signals: “The RF carrier signals are modulated with voice and/or data (channel) signals which are to be coupled to the public switched telephone network (PSTN) by the basestation 10.” Ex. 1006, 5:6–9 (emphasis added). In that context, the ’480 patent explains that “[t]he particular modulation in use[] may be any one of a number of different wireless (air interface) standards such as the well known Advanced Mobile Phone Service (AMPS), time division multiple access (TDMA) such as IS-54B, code division multiple access (CDMA) such as IS-95, frequency hopping standards such as the European Groupe Speciale Mobile (GSM).” Id. at 5:9–17 (emphases added). We find that this passage states, at most, that the system described in the ’480 patent supports the modulation specified by the GSM standard. Petitioner admitted at the hearing that frequency hopping is not a modulation scheme and that GSM specifies the same modulation scheme whether or not frequency hopping is used. Tr. 62:17–63:23. The passage of column 5, lines 9–17, of the ’480 patent is consistent with the system of the ’480 patent being programmed to support the modulation scheme of GSM, without supporting the optional frequency hopping functionality. While GSM is referred to as a “frequency hopping standard[],” the frequency hopping functionality is inapposite to the modulation being discussed in the passage. Tr. 63:17–22 (“JUDGE McKONE: And you can use the same modulation regardless of whether you are using frequency hopping or not, is that right? MR. SPEARS: Exactly. Yeah, it’s the same slot. It’s the same framing. It’s the same TDMA frames. It is all the same.”). We find that the ’480 patent does not state, explicitly or implicitly, that the described system implements the optional frequency hopping functionality of GSM. We recognize that Dr. Stark testifies that “a [person of ordinary skill in the art] would have understood that explicit reference to GSM to include reference to the constituent part of the GSM standard that specifies frequency hopping, i.e., GSM 05.02, and thus a [person of ordinary skill in the art] would understand that the ʼ480 Patent discloses this limitation as described below.” Ex. 1003 ¶ 90. Dr. Stark’s testimony, however, relies on his assumption that frequency hopping is a type of modulation. Id. As noted above, Petitioner has conceded that frequency hopping is not a type of modulation. Accordingly, we do not credit Dr. Stark’s testimony on this point. At the hearing, Petitioner argued that “there is no reason to say you are doing frequency hopping unless you are frequency hopping.” Tr. 63:22– 23. We are not persuaded. The ’480 patent does not state that its system is “doing frequency hopping.” Rather, it characterizes GSM as a “frequency hopping standard[].” While this characterization may be relevant to obviousness (discussed below), it is not a statement explicitly showing that the system of the ’480 patent implements frequency hopping.” slip op. at 17

  Patent outcomesUS 6,952,408 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,952,408
• Edmund Optics, Inc. v. Semrock, Inc.No claims unpatentable
  PTAB · Sep 16, 2015 · IPR2014-00599 · APJ William A Capp · IPR · Final written decision

  Claims 33–36, 39–41, 44, and 45 were not shown unpatentable: MacLeod did not enable claim 33 for anticipation, and Edmund did not establish obviousness over MacLeod.

  RulingsFinal written decision

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

    “After considering claim 33 in view of the specification, as a whole, we are not persuaded that the intrinsic record requires a departure from the plain and ordinary meaning of “multi-layer, thin-film, laser-line filters.” The standard for finding claim scope disavowal is exacting. See GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). It is not enough that the only embodiments, or all of the embodiments, contain a particular limitation. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal. See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009). Furthermore, even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1315 (Fed. Cir. 2010). It is the claims that define the metes and bounds of the patentee’s invention. See Phillips, 415 F.3d at 1313. Thus, the patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope. See Thorner, 669 F.3d at 1366. Each claim does not need to cover every feature disclosed in a specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1182 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “The MacLeod Treatise is a non-patent, printed publication. Edmund relies on In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012), for the proposition that a non-patent, printed publication is presumptively enabled for purposes of an anticipation analysis. Paper 69, 1. Semrock distinguishes Antor Media as being restricted to the context of patent prosecution. Paper 68, 3. The Court, in Antor Media, explained the underlying rationale for permitting a presumption of enablement during patent prosecution. [A]n examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible. An examiner, therefore, is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling. Consistent with the statutory frame-work and our precedent, we therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement. Antor Media, 689 F.3d at 1289. In the case of Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003), the Federal Circuit held that an accused infringer should be entitled to have a district court presume the enablement of unclaimed material in a prior art patent asserted against a patentee. Id. at 1355. In dicta, the Amgen Court stated that its reasoning “might” also apply to prior art printed publications. We note that by logical extension, our reasoning here might also apply to prior art printed publications as well, but as Sugimoto is a patent we need not and do not so decide today. See id. (emphasis added). Thus, the Amgen Court did not reach that issue in its decision. See id. District Courts are split on this issue. We note that at least one district court decision has held that a district court should presume that a prior art printed publication is enabled. See Robocast, Inc. v. Apple Inc., 39 F. Supp. 3d 552, 565 (D. Del. 2014). Other district courts maintain otherwise. See e.g., CA, Inc. v. Simple.com., Inc., 780 F. Supp. 2d 196, 250 (E.D.N.Y. 2009); Matsushita Elec. Indus. Co. v. Samsung Electronics Co., 2006 WL 1794768, *5 (D.N.J. June 26, 2006).” slip op. at 21

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

    “G. Ultimate Determination of Enablement A patent claim “cannot be anticipated by a prior art reference if the allegedly anticipatory [disclosure] cited as prior art [is] not enabled.” In re NTP, Inc., 654 F.3d 1279, 1301 (Fed. Cir. 2011). Although anticipation is a question of fact, whether a prior art reference is enabling is a question of law with underlying factual inquiries. Id. The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard for a patent application under section 112. See Verizon Services Corp., v. Cox Fibernet Virginia, Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). Anticipation does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure. See Schering Corp., v. Geneva Pharma, Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003); citing In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). Nevertheless, we determine that the MacLeod Treatise does not enable claim 33. Claim 33 is directed to optical performance parameters. There is no dispute that multi-layer, thin-film, laser-line filters comprised of alternating layers of ZnS and Cryolite were known in the prior art. Thus, Semrock distinguishes its invention over prior art soft-coated filters on the basis of optical performance, not on the basis of using the basic structure of alternating layers of refractive materials with Fabry-Perot cavities. Upon consideration of the various Wands factors, including the absence of any working examples that demonstrate that Edmund’s theoretical calculations are capable of realization, we conclude that Semrock has carried its burden of showing that the MacLeod Treatise does not enable claim 33.” slip op. at 32

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

    “By waiting and filing its expert declaration after Semrock filed its Patent Owner Response, Edmund effectively precluded Semrock from addressing Professor MacLeod’s Exhibit 1029 declaration in its Response. This also effectively precluded Semrock’s expert, Dr. Rancourt, from responding to Professor MacLeod’s belated testimony in his declaration that was filed in support of Semrock’s Response. We will not countenance such tactics. See Murphy v. Village of Hoffman Estates, 1999 U.S. Dist. LEXIS 3320, at *5–6 (N.D. Ill. 1999) (“[I]t is established beyond peradventure that it is improper to sandbag one’s opponent by raising new matter in reply.”). A Reply that belatedly presents evidence will not be considered. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. Edmund’s original Petition asserted a ground of unpatentability over the ZnS/Cryolite of Figure 7.26 of the MacLeod Treatise. If Edmund wanted to present a ground of unpatentability over the ZnS/Cryolite embodiment of Figure 7.26 in combination with a tantala/silica embodiment, Edmund should have presented evidence as to how and why a person of ordinary skill in the art would have combined the two embodiments to achieve the invention of claim 33 contemporaneous with the filing of its original Petition. See KSR, 550 U.S. at 418 (requiring articulated reasoning with rationale underpinning as to how or why a person of ordinary skill in the art would have combined or modified the teachings of the prior art). Presenting such evidence and argument for the first time in a Reply is untimely.” slip op. at 43

  Patent outcomesUS 7,119,960 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,119,960
• Edmund Optics, Inc. v. Semrock, Inc.No claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00583 · APJ William A Capp · IPR · Final written decision

  Claim 1 was not shown unpatentable because Starke does not disclose the expected deposition time for an entire layer required by the Board’s construction.

  RulingsFinal written decision

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

    “From this disclosure, we conclude that the ti referred to in line 10 of column 10 is the same ti referred to in connection with layers that are not optically monitored. If, as Edmund contends, ti represents an estimated remaining time until deposition is terminated and is calculated repeatedly and intermittently reset during deposition, the time represented by ti becomes a moving target and the time represented by 95% of ti becomes increasingly smaller until it approaches and becomes essentially equal to the “new deposition time” identified in line 11 as the time difference between a hypothetical continually recalculated ti and a “new deposition time” approaches zero. See Ex. 1001, 10:11. We think the better interpretation is that the ti identified in line 11 is a different and distinct time from the “new deposition duration” identified later in the same line of the specification. In other words, for optically monitored layers, ti is calculated one time at or before commencement of deposition of an optically monitored layer. Another time, represented by 95% of ti is then calculated one time such that it becomes a fixed moment in time for initiation of a calculation of a “new deposition duration.” Thus, based on our review of the specification, the term “expected deposition time ti” has the same meaning for layers that are optically monitored and layers that are not optically monitored. In view of the foregoing, we construe “expected deposition time ti of the layer” to mean a time based upon the designed (“theoretical”) thickness di and deposition rate ri where the designed thickness di represents the thickness of an entire layer, not a portion thereof. 2. “measuring during deposition for a period less than ti, a measured” slip op. at 10

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

    “Edmund’s position on whether Starke calculates an “expected deposition time ti” is predicated on the Board adopting Edmund’s proposed claim construction. We do not adopt that construction. Starke’s system depends on taking optical monitoring transmission measurements after deposition has commenced. Edmund fails to identify any disclosure in Starke that a data processor calculates an expected deposition time ti based on the design thickness of an entire layer. Thus, Starke does not satisfy the limitation directed to calculating an “expected deposition time ti” as we have construed that limitation. “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Inasmuch as Starke fails to disclose all elements of claim 1, we find that Edmund has failed to establish, by a preponderance of the evidence, that Starke anticipates claim 1.” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert discountedOther

    “At the outset, we have considered the claim construction testimony of both Patent Owner’s Declarant, Dr. Rancourt, and Petitioner’s Declarant, Professor MacLeod. We note, however, that “conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court.” Phillips, 415 F.3d at 1318.2 In the instant case, the experts’ testimony does little more than repeat, without citation to additional evidence, the conclusory arguments of their respective counsel. Thus, we focus primarily on the intrinsic record to construe the term at issue. Id. (“extrinsic evidence in general is less reliable than the patent and its prosecution history in determining how to read claim terms”).” slip op. at 7

  • ExcludeMotion to exclude, deniedDenied

    “its own expert, Professor MacLeod, in a different, but related, inter partes review. Edmund argues that it is improper to take cross-examination testimony obtained in one case and then use it another case. Edmund also argues that the cross-examination exceeds the scope of direction examination. Paper 45. The testimony in question goes to an issue of claim construction. We have previously explained that our claim construction in this case is based primarily on the intrinsic record and that the parties’ proffered expert testimony is neither needed nor helpful in assisting our claim construction efforts.3 Nevertheless, we DENY Edmund’s motion to exclude Professor MacLeod’s Exhibit 2008 deposition testimony, but afford the testimony little weight.” slip op. at 17

  Patent outcomesUS 7,068,430 not shown unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 7,068,430
• Eizo Corporation v. Barco N.V.No claims unpatentable
  PTAB · Jul 14, 2015 · IPR2014-00358 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 101–104 were not shown unpatentable as obvious over Greene and Kamada because the combination did not teach a tolerance level that varies among display pixels.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party of interest, or privy of the petitioner is served with a complaint alleging infringement of the patent (emphasis added). Here, Patent Owner served upon Petitioner a complaint alleging infringement of the ʼ849 patent. See Ex. 2002. Patent Owner acknowledges that this original complaint does not allege infringement of the ʼ707 patent. Tr. 35:22–23. The reissuance of the ʼ849 patent as the ʼ707 patent did not continue the ʼ849 patent, but rather resulted in the surrender of the ʼ849 patent and the issuance of a new patent, the ʼ707 patent. Patent Owner served Petitioner with an amended complaint alleging infringement of the ʼ707 patent on January 17, 2013. See Ex. 2004. The Board accorded the instant Petition a filing date of January 17, 2014. See Paper 3. Patent Owner acknowledges that the claims challenged in the Petition were not in the original ʼ849 patent. Tr. 36:18–20. Accordingly, Section 315(b) is not applicable here because the Petition was not filed more than one year after Petitioner was served with the amended complaint first alleging infringement of the ʼ707 patent.” slip op. at 8

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

    “to pixel non-uniformity. Ex. 2005, 2:55–3:2. Neither Petitioner nor Patent Owner sets forth a construction for “tolerance level.” See Tr. 7:22–8:2, 11:18–21, 24:10–12; Pet. 10. The ʼ707 patent does not provide a specific definition for “tolerance level,” but discloses that in measuring a color shift “small deviations in color go unnoticed. This means that there is a certain tolerance on differences in luminosity relationships of sub-pixel elements which still provide an apparently uniform display.” Ex. 1001, 12:65–13:1. The ordinary and customary definition for “tolerance” is “[l]eeway for variation from a standard” and “[t]he permissible deviation from a specified value of a structural dimension, often expressed as a percent,”4 and the ordinary and customary definition for “level” is “[r]elative position or rank on a scale.”5 Accordingly, we determine that the ordinary and customary meaning of “tolerance level” is a permissible deviation or variation from a position on a scale. This meaning of “tolerance level” is consistent with its usage in the ʼ707 patent specification. See Ex. 1001, 12:65–13:1. Accordingly, based on its ordinary and customary meaning and its usage in the ʼ707 patent specification and claims, we construe “tolerance level” to 4 See tolerance, THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (2011) (available at http://search.credoreference.com/content/entry/hmdictenglang/tolerance/0). 5 See level, THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (2011) (available at http://search.credoreference.com/content/entry/hmdictenglang/level/0). mean the permissible amount of deviation in luminosity that still provides an apparently uniform display. II.” slip op. at 6

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

    “independent claim 101, except for the limitation “wherein the tolerance level varies among pixels of the display.” Pet. 38–42. Petitioner argues that Kamada teaches that a constant correction value is applied to a rectangular region, and the correction value gradually decreases in the surrounding region until it becomes zero. Pet. 40 (citing Ex. 1004 ¶ 45). Petitioner further argues that both Greene and Kamada are directed to suppressing nonuniformity or unevenness of light-output in pixel displays and that a person with ordinary skill in the art would have had reason to combine the teachings of Greene and Kamada in order to reduce the size of correction data that needs to be stored, an advantage taught by Kamada. Pet. 40–41 (citing Ex. 1004 ¶ 47).” slip op. at 12

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

    “We are persuaded by Patent Owner that Kamada fails to teach that “the tolerance level varies among pixels of the display.” As discussed above, we construe the term “tolerance level” to mean the permissible amount of deviation in luminosity that still provides an apparently uniform display. See supra Section I.E.1. As argued by Petitioner, Kamada teaches the application of a constant correction value in a specified region and the decrease of the constant correction value in the region surrounding the specified region. See Pet. 40 (citing Ex. 1004 ¶ 45). The correction value corresponds to an amount of shift by which a gray level is changed. Ex. 1004 ¶ 45. That is, the correction value defines the amount of gray level shift applied to each pixel. See Tr. 12:17–24. Therefore, the correction value and “tolerance level” are independent values, and, accordingly, we are not persuaded that Kamada’s teaching of a correction value meets the limitation “the tolerance level varies among pixels of the display.” Petitioner acknowledges that the constant correction value and tolerance levels are not the same values. Tr. 12:10–16. Petitioner, however, contends that the correction value and tolerance level are related, such that, for example, the lower the tolerance, the more correction that will be applied. Id. Petitioner also argues that “reducing the correction for pixels located in the surrounding region at the edge of the display implicitly recognizes that the threshold or tolerance level for pixels depends on the position of the pixel in the display.” Pet. 40. We are not persuaded that this can be inferred from Kamada. As discussed above, Kamada teaches the application of a constant correction value to pixels, and Kamada is silent as to the application of the correction value based on a “tolerance level.” See Ex. 1004 ¶ 45. Although Kamada teaches the application of the constant correction value based on the location of the pixel, Kamada applies the same correction value regardless of the luminosity of the pixel. Ex. 1004 ¶ 45; see Tr. 12:17–24. As such, Kamada’s constant correction value is applied regardless of any “tolerance value,” and, therefore, we do not infer that an increase or decrease in the correction value would be based on a “tolerance value.”” slip op. at 13

  Patent outcomesUS RE43,707 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
• International Business Machines Corporation v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Apr 3, 2015 · IPR2014-00180 · APJ David C Mckone · IPR · Final written decision

  Claims 1–11 were not shown unpatentable because Petitioner failed to establish the claimed feedback and a sufficient reason to combine Matsuzaki and Dworkin.

  RulingsFinal written decision

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

    “In the Reply, Petitioner again points to the prosecution history of the ’666 patent, arguing that it characterizes two arithmetic units of a Stojancic reference as performing multiplication, addition, and sign inversion. Reply 15 (citing Ex. 1018, at 5). Petitioner argues that this is a disclaimer of multifunctional units. Reply 15. We are not persuaded. The portion of the prosecution history cited by Petitioner characterizes the prior art, not the scope of the claims. We agree with Patent Owner that this does not rise to the level of “clear and unmistakable disavowal.” PO Resp. 8 (quoting Biogen Idec, Inc. v. GalxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013)). Accordingly, on the full trial record, we maintain our preliminary construction declining to limit “multiplication unit,” “addition unit,” and “sign inversion unit” to one function each.” slip op. at 7

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

    “2. “feedback” Claim 1 requires “wherein the outputs of the multiplication unit, the addition unit and the sign inversion unit are feedback to the arithmetic controller.” Petitioner proposes construing “feedback” to mean “a result that is directly transmitted back.” Pet. 8 (emphasis added). In the Decision to Institute, we were not persuaded by Petitioner’s arguments that the plain language of the claims and the Specification warranted such a construction, and declined to construe preliminarily the claims to include such a limitation. Dec. 11. Specifically, we recognized that the ’666 patent describes an embodiment in which temporary data is fed back directly from the multiplication, addition, and sign inversion units to a controller. Dec. 11. This is shown in Figure 2, reproduced above, where “[t]he outputs . . . k-bit ‘temp_data’ of MMU 15/ MADU 16/SIU 17 go to Controller 14.” Ex. 1005, 3:21–23. Nevertheless, on the record at that time, we declined to limit “feedback” based on an example of direct feedback in the Specification. Dec. 11. Petitioner does not challenge our initial construction of “feedback” in its Reply. In its Response, Patent Owner supports our preliminary construction in the Decision to Institute. PO Resp. 9. In response to questioning at the hearing, however, Patent Owner qualified its argument by noting that, if feedback is routed through intermediate components that change its value, the data would no longer be feedback of that value. Tr. 45:9–46:2. For example, if the value of the feedback from the multiplication unit changes before reaching the controller, it no longer would be output of the multiplication unit fed back to the controller. Id. Patent Owner’s argument is consistent with the plain language of the claims and the Specification. It is also consistent with the testimony of Petitioner’s Declarant, Dr. Çetin Koç, Ph.D., in support of Petitioner’s Reply, who testifies that the temp_data signals of the ’666 patent are multiplexed from the computational units to the controller. Ex. 1029 (“Koç Reply Decl.”) ¶ 42. In sum, we construe “wherein the outputs of the multiplication unit, the addition unit and the sign inversion unit are feedback to the arithmetic controller” to mean that the output values of the multiplication unit, the addition unit, and the sign inversion unit are feedback to the arithmetic controller, although those values may pass, unchanged, through intermediate components (e.g., latches and multiplexers).” slip op. at 8

  • ExcludeMotion to exclude, deniedDenied

    “Exclude) 1–6. We do not rely on these exhibits, however. Accordingly, Petitioner’s motion is moot. Petitioner’s Motion to Exclude is denied. 2. Patent Owner’s Motion to Exclude Patent Owner moves to exclude Exhibit 1036, a transcript of the deposition of Dr. Cheng (discussed above) as irrelevant and cumulative. Paper 34 (PO Mot. to Exclude) 3–7. Patent Owner argues that, in district court litigation, inventor testimony generally has little probative value. Id. at 4–5. As to Dr. Cheng’s testimony in particular, Patent Owner contends that it does not relate to the meaning of a claim term in the art. Id. at 5. Patent Owner also argues that Dr. Cheng’s testimony is cumulative of the testimony of Petitioner’s Declarant, Dr. Koç (Ex. 1001, “Koç Decl.”). PO Mot. to Exclude 6–7. Patent Owner’s arguments do not show the Cheng deposition transcript to be unduly prejudicial under Federal Rule of Evidence 403. Rather, Patent Owner’s arguments go to the weight we should give to the evidence. Accordingly, we decline to exclude Exhibit 1036.” slip op. at 10

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

    “According to the Supreme Court, the conclusion of obviousness based on a combination of references must be supported with explicit analysis of a reason to combine those references: Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Federal Circuit has stated that such reasons must be more than “mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); accord Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008) (agreeing with the district court’s reasoning that “some kind of motivation must be shown from some source, so that the jury can understand why a person of ordinary skill would have thought of either combining two or more references or modifying one to achieve the patented method”). “[W]hether there is a reason to combine prior art references is a question of fact.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed. Cir. 2012). To that end, we look to the evidence presented by Petitioner to determine if it supports an articulable reason to combine.” slip op. at 22

  Patent outcomesUS 7,634,666 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,634,666

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.