• Diablo Technologies, Inc. v. Netlist, Inc.All claims unpatentable
  PTAB · Dec 14, 2015 · IPR2014-01011 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 15–17, 22, 24, 26, and 31–33 are unpatentable as obvious over Ludwig and Amidi; claims 22 and 26 are also anticipated by Amidi.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “time it was made, we determine the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).” slip op. at 16

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372– 73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). We find that, although Dr. Jagannathan is less experienced than Dr. Sechen in the area of memory module design, he is qualified sufficiently to testify about memory systems and memory modules.” slip op. at 18

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

    “The specification of the ’150 patent does not define explicitly the term “memory module.” The specification does, however, teach embodiments that describe a memory module as comprising a plurality of memory devices on a carrier and a circuit. Ex. 1001, 2:63–64; 3:7–9; 4:59–63. In another embodiment, a memory module comprises (i) a printed circuit board on which memory devices are mounted, (ii) a plurality of edge connectors configured to be electrically coupled to a corresponding plurality of contacts of a module slot of the computer system, and (iii) a plurality of electrical conduits which electrically couple the memory devices to the circuit and which electrically couple the circuit to the edge connectors. Id. at 5:24–32. The ’150 patent also teaches that memory modules in the disclosed embodiments are compatible with at least single in-line memory modules (SIMMS) and dual in-line memory modules (DIMMS). Id. at 5:32–39.” slip op. at 10

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

    “Despite Dr. Sechen’s explanation of asynchronous and synchronous memory (see id. ¶¶ 87–92), we do not agree that the teachings of Ludwig are incompatible with the synchronous memory of Amidi, because Ludwig expressly suggests apply its VIC chip to synchronized memory. See Ex. 1001, 10:10–13 (“A valuable added function might be synchronized memory signals to enhance the speed of the memory.”). We also credit the testimony of Dr. Jagannathan, who states “[t]here was sufficient motivation for one of ordinary skill to apply the circuit including a CPLD, a PLL, and a register in Amidi to the interface chip in Ludwig. One of ordinary skill would recognize the benefits of doing so as taught in Ludwig. For example, Ludwig teaches ‘a valuable added function [of the VIC chip] might be synchronized memory signals to enhance the speed of the memory function.’” Ex. 1007 ¶ 118 (citing Ex. 1011, 10:11–13). Therefore, we are persuaded that the teachings of Ludwig and Amidi are combinable. Based on the evidence of record, we agree with Petitioner’s position that challenged independent claims 15, 22, and 31 would have been obvious over Ludwig and Amidi. Specifically, we are persuaded by Petitioner’s reasoning and the evidentiary record that Amidi teaches a circuit mounted on a memory module that is electrically coupled to a first DDR memory device and a second DDR memory device. We are further persuaded that Amidi teaches a circuit with a logic element, a register, and a PLL. We also are persuaded that the teachings of Amidi could have been implemented using the common data signal line and tri-state buffer system disclosed in Ludwig so that by (i) selectively electrically coupling a first data signal line to the common data signal line and (ii) selectively electrically coupling a second data signal line to the common data signal line, the circuit is responsive to a set of input signals. Additionally, we credit the testimony of Dr. Jagannathan that a person of ordinary skill in the art would have had reason to combine the teachings of Ludwig and Amidi, which both relate to memory modules, and are directed to solving the same problem of using additional memory devices in a memory module to increase the overall memory density of the module without hindering the ability of the module to interface with a pre-existing memory controller. See id. ¶ 116. Additionally, we note that the testimony of Patent Owner’s Declarant, Dr. Sechen, is based on the claim constructions proffered by Patent Owner and not on the constructions set forth in the Decision to Institute. Compare Ex. 2002 ¶¶ 38–72, with Dec. to Inst. 7–12. We have considered as relevant, however, the portions of his analysis regarding the prior art and alleged nonobviousness of the claims and accorded the appropriate weight to that particular testimony. Accordingly, we hold that Petitioner has shown by a preponderance of the evidence that claims 15, 22, and 31 of the ’150 patent are unpatentable under 35 U.S.C. § 103(a) as having been obvious over the combination of Ludwig and Amidi.” slip op. at 35

  Patent outcomesUS 7,881,150 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,881,150
• Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Aug 19, 2015 · IPR2014-00631 · APJ Richard E Rice · IPR · Final written decision

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

  RulingsFinal written decision

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

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

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

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

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

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

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

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

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

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

  RulingsFinal written decision

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

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

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

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

  Patent outcomesUS 7,817,914 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,817,914
• Finjan, Inc. v. Fireeye, Inc.Some claims unpatentable
  PTAB · Jul 10, 2015 · IPR2014-00344 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–4, 6–8, 19, 20, 22–25, and 27–29 are unpatentable under §103; claim 21 was not shown unpatentable because the Chen ground did not establish the replayer limitation.

  RulingsFinal written decision

  • BurdenMixed

    “determine Petitioner’s arguments are not persuasive. Although Chen discloses forwarding suspicious packets to a clone, Petitioner has not explained sufficiently how forwarding packets teaches or suggests “configuring a replayer to transmit . . . data to the virtual machine.” Moreover, Petitioner does not explain how Chen’s logging disclosure (Ex. 1009, 2–3) applies to configuring a replayer. At the oral hearing, Petitioner was asked to explain its reliance on Chen for this limitation.” slip op. at 31

  • Skill levelSkill level board ownDecided for petitioner

    “2. Level of Ordinary Skill in the Art The parties agree that a person of ordinary skill in the art would have the following education and/or experience: a recent degree in a field such as computer science or computer networking and two or more years of experience in the computer networking or computer security industry. PO Resp. 17; Ex. 1030 ¶ 33. “Alternatively, in lieu of recent formal education, a person of ordinary skill in the art would have had six or more years of relevant experience in the computer networking or computer security industry.” Id. This level of ordinary skill in the art is consistent with the ordinary skill reflected in the prior art of record, which is directed to computer networking and computer security systems. For example, Venezia and Kaeo both disclose intrusion-detection-systems. Ex. 1005; Ex. 1006. With this level of ordinary skill in mind, we now turn to the analysis” slip op. at 14

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

    “1. flag or flagging (Claims 1 and 19) For the purposes of our Decision to Institute, we determined that the broadest reasonable interpretation of the terms “flag” and “flagging” is “identify” and “identifying.” Dec. 7. Neither party disputes this interpretation. Pet. 5; PO Resp. 12. Based on the complete record now before us, we discern no reason to change the interpretation; thus, we adopt our previous analysis and interpret “flag” and “flagging” to mean “identify” and “identifying,” respectively.” slip op. at 6

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

    “Next, Patent Owner argues that Petitioner has not provided a reason for why a person of ordinary skill in the art would modify Venezia to (1) flag for replay and (2) include an analysis environment. PO Resp. 25– 26. Nonetheless, Petitioner has explained sufficiently how Venezia teaches both flagging for replay and an analysis environment. Thus, Petitioner does not rely on a modification of Venezia to disclose these features. Additionally, we are persuaded that Petitioner has provided sufficient rationale to combine the teachings of Kaeo and Venezia. Pet. 26. These rationales include combining Venezia’s replay features with Kaeo’s IDS to minimize false positives in Kaeo’s IDS through further verification of suspicious packets with Venezia’s replay. Id. Accordingly, based on the evidence and arguments presented, Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that claims 1 and 19 would have been obvious over Kaeo and Venezia.” slip op. at 22

  Patent outcomesUS 8,291,499 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,291,499
• Microsoft Corporation v. Enfish, LLCSome claims unpatentable
  PTAB · Mar 2, 2015 · IPR2013-00561 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 46 and 54 were held unpatentable; claims 55, 56, and 60 were not shown unpatentable; claims 16, 24–26, and 30 were terminated because their means-plus-function limitation lacked sufficient disclosed structure.

  RulingsFinal written decision

  • BurdenMixed

    “Microsoft has shown by a preponderance of the evidence that claims 46 and 54 of the ’775 patent are unpatentable. Microsoft has not shown that claims 55, 56, and 60 of the ’775 patent are unpatentable. For the reasons discussed below, we are unable to reach a determination on the alleged grounds of unpatentability over prior art for claims 16, 24–26 and 30. Accordingly, we terminate this proceeding with respect to claims 16, 24–26 and 30 under 37 C.F.R. § 42.72.” slip op. at 3

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

    “1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. & Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’775 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the portions of the ’775 patent specification that Enfish identifies.” slip op. at 10

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

    “We determine that Enfish’s proposed construction of OID introduces requirements beyond what is needed for an OID to identify data and retrieve data from memory. Enfish, for example, contends that “an OID is unique among all rows and columns of the logical table.” PO Resp. 29. Additionally, claims 46 and 54 recite that an OID is included “to identify” each attribute set and each record, but do not specifically recite using an OID to retrieve data from memory.” slip op. at 14

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

    “80, PG 453, 471, 481, 482, 484, Ex. 1219 ¶¶ 67–93, 119–131). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 54. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1204, LR 558. The table object comprises “records (rows) and fields (columns).” Id. As an additional example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses each record and each attribute set including an OID, as recited in claim 54. In the cited portions above, Visual Basic describes assigning a primary key and that “[a] table’s primary key is the determining factor when testing to see if the record is unique within the table.” Ex. 1204, PF 39. According to Visual Basic “[Visual Basic] creates an index on the primary key of the table and uses it to find records and to create joins between tables.” Id. Regarding each column including an OID, according to Visual Basic, “[e]ach Field in the Fields collection of a TableDef has a unique value in the OrdinalPosition property.” Id. at LR 425. Furthermore, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses indexing data stored in the table and a cell including a pointer to an index record, as recited in claim 54. In the cited portions above, Visual Basic discloses an index object used for creating indexes to “speed up the process of finding records.” Ex. 1204, LR 276; see also id. at PF 37, 38, PG 482. Visual Basic also discloses a cell pointing to an index object. Id. at LR 280, PG 484.” slip op. at 17

  Patent outcomesUS 6,163,775 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,163,775
• Microsoft Corporation v. Enfish, LLCSome claims unpatentable
  PTAB · Mar 2, 2015 · IPR2013-00560 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 47–48 are unpatentable as anticipated by Visual Basic, and claims 49–50 as obvious over Visual Basic and Jensen; claims 51–53 were not shown unpatentable, and claims 17–23 were terminated.

  RulingsFinal written decision

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

    “Enfish contends that our construction for “object identification number” is incomplete. PO Resp. 15. We evaluate Enfish’s contention below. Enfish also provides a proposed construction for “anchor,” recited in claims 21 and 51. PO Resp. 22. Because we determine that Microsoft has not met its burden with respect to these claims for other reasons, no construction of this term for the purposes of this Decision is necessary. We discern no reason, based on the complete record now before us, to change our constructions in the Decision to Institute of “logical table,” “object identification number,” and “attribute set.”” slip op. at 8

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

    “evidence, and the detailed claim analysis, which reads persuasively all elements of claim 47 onto the disclosure of Visual Basic. Pet. 33–46 (citing Ex. 1104, LR 162, 185, 280, 425, 484, 532, 558, PF 1, 3, 18, 37–39, 40, 47, 76, 80, PG 453, 471, 481, 482 ; Ex. 1119 ¶¶ 67–98). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 47. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1104, LR 558. The table object comprises “records (rows) and fields (columns).” Id.” slip op. at 16

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

    “2007 ¶ 231. In contrast to Dr. Jagadish’s statement, however, Jensen teaches an object-oriented application for managing information retrieved from a structured database, such as a relational database. Ex. 1106, Abstract. Enfish further contends that Microsoft does not explain why one of ordinary skill in the art would have been motivated to apply the pointers of Jensen to the indexing structure in Visual Basic. PO Resp. 35. We, however, are persuaded that Microsoft has shown a sufficiently articulated reason with rational underpinning to support obviousness (Pet. 48–49 (citing Ex. 1119 ¶¶ 387–404)). Microsoft, for example, states “[i]t was well known in the art at the time that indexes such as the index disclosed in [Visual Basic], maintain object identification numbers of the cell for locating data.” Pet. 49 (emphasis added). Microsoft continues, “Jensen discloses containing the address in a pointer, e.g., a physical memory address (i.e., OIDs).” Id. (citing Ex. 1106, 7:29–35). Dr. Hosking testifies “[i]t was well known in the art at the time that Index Objects locate data by maintaining object identification numbers in the internal pointers as disclosed in Jensen.” Ex. 1119 ¶ 403 (emphasis added). Dr. Hosking further testifies “[a] person of ordinary skill in the art would be motivated to combine Jensen’s teaching of maintaining the OIDs in a pointer with [Visual Basic’s] disclosure of identifying the logical columns / rows with the OIDs.” Ex. 1119 ¶ 404. The predictable use of familiar prior art elements according to their established functions renders the recited invention obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention.”). Enfish contends that the claimed invention received industry accolades, including praise from Microsoft, satisfied a long-felt need, resulted in success where others had failed, as well as commercial success. PO Resp. 42–47. Enfish points to features of claim 17, which Enfish contends are the features of the claimed invention that resulted in the objective indicia of success to which Enfish refers. Id. at 43–44. Claim 17 of the ’775 patent, however, is challenged on the basis that it is anticipated by Visual Basic. Secondary considerations do not weigh into determinations regarding anticipation. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Because we conclude that Microsoft has not shown that claims 51–53 of the ’775 patent are unpatentable for other reasons, the only claims that we need to evaluate are dependent claims 49 and 50 of the ’775 patent. Microsoft asserts that claims 49 and 50 are obvious over the combination of Visual Basic with a reference that teaches referencing objects through two-way pointers. Pet. 49 (citing Ex. 1106, 7:29–35). Enfish has not shown a nexus between any of the accolades or successes it says occurred and the use of two-way pointers.” slip op. at 24

  Patent outcomesUS 6,163,775 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,163,775
• Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentable
  PTAB · Jan 27, 2015 · IPR2013-00469 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–37 are unpatentable: claims 1, 6, 7, 17, 18, 20–22, and 36 over Wright Jr.; claims 1–37 over Wright Jr. and Goodman.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “following education and experience: Bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, at least 2 years of experience with the design and programming of patient monitoring systems, and at least 1 year of experience with the design or programming of networked systems. Ex. 1008 ¶ 23. Patent Owner’s declarant, Dr. Yadin David, disagrees with the above assertion, asserting instead that a person of ordinary skill in the art would not have had the 1 year of experience with the design and programming of networked systems. Ex. 2007 ¶ 23. The disagreement appears to be immaterial to the arguments presented by Patent Owner, however, because Dr. David declares that this additional experience would not affect his opinions. Id. Accordingly, we need not determine which of the alleged education and experience proffered by the parties is correct. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Goodman reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to the configuration of communications systems, such as electronic or wireless systems and personal computer systems for communicating with a central monitoring system, which is computer-implemented technology. See Ex. 1003, 3:5059; see also id. at 6:125 (describing the features of the computer-implemented technology at issue in Goodman). With this level of ordinary skill in” slip op. at 9

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

    “patent as described in the Decision on Institution. Patent Owner explains that Petitioner “filed a new petition seeking inter partes review of related U.S. Patent No. 7,587,469” in which Petitioner “advances a very different construction” for the term “script program.” PO Resp. 5–6. However, Petitioner does not advance a different construction for the term “script program” in this proceeding. We adopt our previous analysis for the non-disputed claim terms, and interpret these terms as follows: Term Interpretation “script program” a program that contains a set of instructions that is capable of being executed and interpreted “data merge program” a program that combines two or more sets of data into one “pointer” an identifier that indicates the location of an item “script assignment unit” a program that associates a script program with an individual See ’468 Dec. on Inst. 5–9.” slip op. at 6

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

    “Nonetheless, where there is an attempt to show obviousness over a single reference, there also must be a showing of a suggestion or motivation to modify the teachings of that reference to achieve the claimed invention. Sibia Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). Determining obviousness with respect to whether a single piece of prior art could be modified to produce the claimed invention invokes an inquiry into whether a person having ordinary skill in the art would have had a reason to so modify the prior art reference. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir. 2010). An obviousness challenge relying on such a modification to bridge the difference between the prior art and the claimed invention must be supported by articulated reasoning with rational underpinning to explain why the person of ordinary skill in the art would make the modification. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (Kahn). The Supreme Court has admonished courts that this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing Kahn, 441 F.3d at 988). For example, Petitioner relies on knowledge of one of ordinary skill to meet the “one or more databases” limitation. Petitioner explains that user responses are stored on the personal computer in a tab-delimited format for use with a database. Pet. 37–38 (citing Ex. 1002, 3:28–40, 5:7–15, 14:1–10). Wright Jr. also teaches that a form can be selected from a list of existing forms. Id. Patent Owner’s declarant Dr. David acknowledged one of ordinary skill would be aware of the ability to store a list of forms in a database. Ex. 1041, 557:14–19 (agreeing that “one of ordinary skill would understand that one way to store such a list of forms would be to store them in a computer database that’s accessible on the computer”). Given that the use of databases was well within the skill of one of ordinary skill, and given that the form data in Wright Jr. is stored in tab-delimited format, Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that a person of ordinary skill in the art would have made the modification to store Wright Jr.’s forms in a database.” slip op. at 12

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Evidence of commercial success, however, “is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the allegedly successful product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the commercial success is due to an unclaimed feature of the device,” or “if the feature that creates the commercial success was known in the prior art, the success is not pertinent.” Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of “whether the commercial success of the embodying product resulted from the merits of the claimed invention as opposed to the prior art or other extrinsic factors”). If a patent owner is able to show a sufficient nexus, “the burden shifts to the challenger to prove that the commercial success is instead due to other factors extraneous to the patented invention, such as advertising or superior workmanship.” J.T. Eaton & Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). Patent Owner has not established a sufficient nexus between the claimed monitoring system, method, or apparatus and the alleged commercial success of the Health Buddy. Patent Owner argues that the success of the Health Buddy was “directly attributable to the invention of the ’192 patent.” PO Resp. 24 (citing Ex. 2007 ¶¶ 81, 83, 88–89, 99). Patent Owner and Dr. David, however, do not provide any analysis of how the Health Buddy allegedly embodied the challenged claims, or explain in any detail why it was the unique characteristics of the claimed monitoring system, method, or apparatus that drove sales. Instead, Dr. David” slip op. at 34

  Patent outcomesUS 7,516,192 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,516,192

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.