• Apple Inc. v. Scramoge Technology Ltd.Some claims unpatentable
  PTAB · Aug 1, 2023 · IPR2022-00350 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1–12 and 14–20 are unpatentable as obvious; claim 13 is not shown unpatentable. Proposed substitute claims 21–23 are unpatentable, so the revised motion to amend is denied.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Petitioner’s proposed combination of Hong and Park teaches the recited short-range communication antenna of limitation 1.3. We also are persuaded that Petitioner’s proffered reasoning for modifying Hong’s device to include Park’s NFC antenna coil is sufficient to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 20

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

    “claims 1, 12, and 11, respectively. RMTA 1. A listing of proposed substitute claims 21–23 is provided by Patent Owner in the Appendix of its Revised Motion to Amend. Id. at 25–29. For the reasons explained below, we determine that Patent Owner has shown that proposed substitute claims 21–23 meet the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. We also determine that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 21–23 are unpatentable over prior art. Accordingly, we deny Patent Owner’s Revised Motion to Amend.” slip op. at 62

  • ExcludeOther

    “We do not rely on either of Exhibits 2017 and 2018. Accordingly, Petitioner’s Motion to Strike is dismissed as moot.” slip op. at 118

  Patent outcomesUS 9,806,565 mixed
  § 103 obviousnesscites Phillips
  Patents in suitUS 9,806,565
• Microsoft Corporation v. D3d Technologies, Inc.Some claims unpatentable
  PTAB · Feb 13, 2023 · IPR2021-01325 · APJ Jameson Lee · IPR · Final written decision

  Claims 70–73, 75–80, 84, 89–92, 94–97, 99, 103, and 107 are unpatentable as obvious; claims 74 and 93 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “In the Decision to Institute, we adopted Petitioner’s articulation of the level of ordinary skill in the art, sans the qualifier “at least” for the level of education and for the amount of experience, to keep the level from being vague and overbroad and extending into the level of an expert. Inst. Dec. 11. Post institution, neither party disputes our adopted level of ordinary skill in the art. That level is consistent with what is reflected by 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, we adhere to the level of ordinary skill in the art as adopted in the Decision to Institute, i.e., one of ordinary skill in the art would have had a Bachelor’s degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and two years of experience in the field working with, teaching, or researching stereoscopic and/or virtual/augmented reality (VR/AR) display technologies. C.” slip op. at 11

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

    “Pet. 8 (footnote omitted). Patent Owner has not proposed a construction for either “cursor,” “3D cursor,” or “three-dimensional cursor.” Nor did Patent Owner express disagreement in its Preliminary Response with Petitioner’s proposed construction. In the Decision to Institute, we agreed with and adopted Petitioner’s proposed construction. Inst. Dec. 13. Post institution of review, Patent Owner has not objected to or disagreed with the construction we adopted. Accordingly, we adhere to our preliminary construction that “three-dimensional cursor” means “three-dimensional indicator movable within a three-dimensional image, image space, and volume.”9” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “known term of art (Reply 15),10 Petitioner does not specifically articulate what that meaning is as an established term of art. In that regard, Petitioner cites to paragraph 17 of the second declaration of Dr. Fuchs (Ex. 1039), which states, in its entirety: Based on my experience, a POSITA would have understood “measurement markings” to mean markings that are used for measurements. The measurements can be of various types, e.g., distances, locations, orientation. MS-1001, 6:47–7:8. This would be the plain and ordinary meaning of the term according to a POSITA. Ex. 1039 ¶ 17. That testimony does not support treating “measurement markings” as an established term of art having a common meaning to those of ordinary skill in the art. Dr. Fuchs cites to no examples of how the term 10 Petitioner also states that the term should be construed according to its plain and ordinary meaning. Reply 15. common and specific meaning across those patents and publications, and in particular with the broad meaning urged by Petitioner. We accord very little weight to his testimony with regard to Petitioner’s assertion that “measurement markings” is a term of art. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). The general testimony also does not comport with or match the more narrow usage within the disclosure of the ’457 patent as discussed above. See Wi-Lan, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (extrinsic evidence “is generally of less significance than the intrinsic record” in matters of claim construction). Dr. Fuchs also does not state that “measurement markings” is an established term of art with a common meaning to those of ordinary skill in the art.” slip op. at 23

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

    “[A] POSITA would have combined Avila’s display interface that shows orthogonal cross-sectional imaging slices and a selected 3D ROI on the same display screen (see Avila’s FIG. 10) with Acosta’s teachings so that a viewer (e.g., a physician) could see a 3D image of an anatomical structure and corresponding 2D orthogonal cross-sectional imaging slices in areas of interest. MS-1003, ¶[61]. In other implementations, the 3D sampling probe/cursor can be displayed along with background portions of the 3D volume and 2D cross-sectional imaging slices. MS-1007, 6:12–67; MS-1005, ¶[0096]. In this manner, the viewer would have multiple views of the selected 3D ROI by itself or within a 3D image (options disclosed by Acosta) along with relevant slice views. MS-1005, ¶[0096]; MS-1003, ¶[61]. Pet. 17. Acosta and Avila such that orthogonal cross-sectional imaging slices would be displayed in Acosta’s system has evidentiary support and rational underpinning. Patent Owner presents no argument regarding the alleged reasoning to combine teachings. We are persuaded by Petitioner’s articulation of the reasoning to combine such that orthogonal cross-sectional imaging slices as taught by Avila would be displayed in Acosta together with the 3D cursor.” slip op. at 46

  Patent outcomesUS 10,795,457 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,795,457
• Forescout Technologies, Inc. v. Fortinet, Inc.Some claims unpatentable
  PTAB · Jan 25, 2023 · IPR2021-01329 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 15, and 16 are unpatentable as obvious over Mahaffey; the other challenged claims were not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that Petitioner’s definition is consistent with the prior art and patent specification before us 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 of skill). For the purpose of our decision, we adopt Petitioner’s proposal on the level of ordinary skill.” slip op. at 7

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

    “We find that the specification, therefore, supports Patent Owner’s argument that the term “web content filtering” differs from “web filtering”” slip op. at 10

  • BurdenDecided for patent owner

    “particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring IPR petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)) (emphasis added). This burden does not shift to Patent Owner, except in limited circumstances not present here. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an IPR). By not providing a claim construction for a key term, “web content filtering,” Petitioner failed to live up to its obligation to provide an understandable explanation of the element-by-element specifics of the unpatentability challenges, including the particular portions of prior art supporting those challenges. See 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(3)– (4); Harmonic Inc., 815 F.3d at 1363–64; Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015). “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intel. Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)); see also MModal LLC v. Nuance Communicatons, Inc., 846 Fed. Appx. 900, 906 (Fed. Cir. 2021) (non-precedential).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by these belated arguments, as they are based entirely on testimony by Dr. Cole as to what a person of ordinary skill “would understand” that is unsupported by any citations to Syvanne or other evidence of record. Such unsupported opinions are not entitled to any weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Consolidated Trial Practice Guide 35 (November 2019)8 (“The Board has broad discretion to assign weight to be accorded expert testimony. . . . However, the testimony must be based on sufficient facts and data.”); Fed. R. Evid. 702(b). “[E]xpert testimony cannot take the place of disclosure from patents or printed publications. In other words, 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. substitute for disclosure in a prior art reference itself.” Consolidated Practice Guide at 36.” slip op. at 26

  Patent outcomesUS 9,894,034 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,894,034
• Momentum Dynamics Corporation v. Witricity CorporationSome claims unpatentable
  PTAB · Nov 22, 2022 · IPR2021-01167 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1, 9, 10, 12, 13, 18, 36, 37, 43, 44, and 49 are unpatentable; claims 46–48, 50, and 51 were not shown unpatentable, chiefly because the asserted art lacked the construed configurable bridge structure.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that [a] person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had a Bachelor’s degree in electrical engineering or an equivalent field, and at least two years’ industry experience, or equivalent research. Alternatively, a POSA could substitute directly relevant additional education for experience, e.g., an advanced degree relating to the design of circuits using inductive coupling, or an advance degree in electrical engineering or an equivalent field with at least one year of industry experience. Pet. 10 (citing Ex. 1003 ¶¶ 8–12). Patent Owner does not address the level of skill in the art. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions addressed by the ’581 patent and prior art of record. We adopt Petitioner’s definition of the level of skill, except that we delete the phrase “at least” to avoid ambiguity.” slip op. at 10

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

    “Turning to our analysis, we first note that means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112, para. 6, which states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.6 Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015). “[T]he use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies.” Id. (citing Personalized Media 6 See supra, n.2 (explaining that the pre-AIA version of § 112 applies). Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998)). That presumption is not rebutted here. Neither party disputes that 35 U.S.C. § 112, paragraph 6 applies to all of the “means” terms recited in the ’581 patent claims. Pet. 11–16; PO Resp. 7–15, 34–35. “Construing a means-plus-function claim term is a two-step process. The court must first identify the claimed function. . . . Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Williamson, 792 F.3d at 1351 (citing Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012)). “Structure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Id. at 1352 (citing B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)).” slip op. at 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner

    “We agree with Petitioner that the claimed function in the “means for converting” limitation is “converting a power from a power supply system to a power at an operating frequency for transfer of wireless energy.” Pet. 11. But we disagree with Petitioner that the corresponding structure is “an oscillator with amplifier; the half-bridge inverter in Figure 19A below; or the full-bridge inverter in Figure 19B.” See id. For the reasons below, we identify the disclosed structure corresponding to the “means for converting” limitation to be “a bridge circuit configurable between a full-bridge mode and a half-bridge mode, as shown in Figures 19A and 19B, and equivalents thereof.”” slip op. at 14

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

    “generally given their plain and ordinary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). For lexicography, “[e]ven when guidance is not provided in explicit definitional format, the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.” In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1150 (Fed. Cir. 2012) (quoting Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004)). For example, “a patent’s repeated and consistent description of a claim term may inform its construction.” Groove Digital, Inc. v. United Bank, 825 Fed. App’x 852 (Fed. Cir. 2020) (nonprecedential) (citing Abbott, 696 F.3d at 1150). For disavowal to be applicable, “the specification must contain expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Cont’l Circuits, 915 F.3d at 797 (quotations and citations omitted).” slip op. at 26

  Patent outcomesUS 8,884,581 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,884,581
• ROKU, Inc. v. Flexiworld Technologies, Inc.Some claims unpatentable
  PTAB · Oct 21, 2022 · IPR2021-00714 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–10, 12, and 14 are unpatentable; claims 15–20 were not shown unpatentable, principally because the prior art did not teach required claim limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a bachelor’s degree in computer science, computer engineering, or a similar field and two years of experience developing software. The POSA would be familiar with well-known networking technologies. . . . This description is approximate and additional experience could make up for less education and vice versa. Pet. 10–11 (citing Ex. 1002 ¶ 10). Patent Owner does not address the level of ordinary skill. See generally PO Resp. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’064 patent and prior art of record. purposes of this Decision.” slip op. at 8

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

    “The Petition states that no terms require express construction. Pet. 10. Patent Owner does not provide any express constructions or argue that any terms require construction. PO Resp. 10. Petitioner and Patent Owner also note that there were claim construction disputes in the District Court (Pet. 10, PO Resp. 10) and that the District Court has now issued a claim construction order (Prelim. Resp. 7; Ex. 2010). We agree that no claim term needs to be construed. See 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.” (internal quotation omitted)).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableDecided for patent owner

    “The mere listing of features that are present in Ortiz is not a reason why a person of skill in the art would have combined Ortiz with Ikonen. An obviousness determination must include “some articulated reasoning with some rational underpinning to support the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)). Thus, for this additional reason Petitioner has not shown how the combination of Ikonen, Beck, and Ortiz, or the combination of Ikonen, Beck, Ortiz, and Garfunkel, teaches all of the limitations of these claims.” slip op. at 16

  • Expert testimonyPetitioner expert creditedOther

    “Petitioner’s declarant testimony that one of ordinary skill in the art “would consider the document data received by the interface box [in Yamaguchi] to be an ‘output data stream’ as claimed.” Ex. 1002 ¶ 216; see also Pet. 53. Petitioner’s declarant explains that this is based on the ’064 patent’s teaching of “using conventional wireless technologies such as Bluetooth and 802.11” for uploading the output data stream. Id. Further, the claim requires that the “output data stream correspond[] to at least part of digital content that includes . . . document content” and Patent Owner’s declarant admits that Yamaguchi teaches uploading a document. Thus, it is not clear that anything further is required by the claim. After our review of Petitioner’s assertions with respect to this claim limitation, we determine that Petitioner’s position is supported by a preponderance of the evidence.” slip op. at 28

  Patent outcomesUS 8,989,064 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,989,064
• Petitioner v. Unification Technologies LLCSome claims unpatentable
  PTAB · Jul 8, 2022 · IPR2021-00344 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–5 and 8–12 are unpatentable as obvious over Suda, and claims 22–26 are not shown unpatentable because their scope cannot be determined with reasonable certainty.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–667 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Construction Order construing various terms of the ’658 patent: Claim Term Construction An identifier that can be associated with a physical address on a storage “logical identifier” device for identifying data stored at the physical address “logical identifier [that/in Indefinite the index] is empty” “data associated with the Not indefinite; plain and ordinary logical identifier [has meaning been/is] erased” Not indefinite; not subject to §112(f); “marking module” plain and ordinary meaning Not indefinite; not subject to §112(f); “storage module” plain and ordinary meaning “instructions configured to . . . recording persistent Not indefinite; not subject to §112(f); data . . . in response the plain and ordinary meaning indication” Ex. 2006, 2–3. We address three claim interpretation issues. First, in the Decision on Institution, based on the record at the time, we agreed with and adopted the district court’s construction of “logical identifier.” Dec. on Inst. 11–12. The parties agree with that construction. See PO Resp. 19; Reply 3. Based on the full trial record, we interpret “logical identifier” in the same manner as the district court.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “No other claim terms require interpretation to decide the issues presented during trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted)).” slip op. at 12

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

    “Third, with respect to the “module” and “instructions” terms listed above, neither party argues that the terms are means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph, and the district court construed them not to be means-plus-function limitations. See PO Resp. 18–19; Reply 3–4; Ex. 2006, 2–3. We presume that the terms are not means-plus-function limitations because they do not use the word “means” and find no basis on the record before us to conclude otherwise. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (“Because invoking § 112 ¶ 6 is typically a choice left to the claim drafter, we presume at the first step of the analysis that a claim limitation is subject to § 112 ¶ 6 when the claim language includes the term ‘means.’ . . . The inverse is also true—we presume that a claim limitation is not drafted in means-plus-function format in the absence of the term ‘means.’ . . . [T]his presumption is rebuttable [and] can be overcome if a challenger demonstrates that the claim term ‘fails to recite sufficiently definite structure.’”) (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015)). No other claim terms require interpretation to decide the issues” slip op. at 12

  Patent outcomesUS 8,762,658 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,762,658
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationSome claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01494 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–8, 10–12, 21–24, and 26 are unpatentable as obvious over Li and Tiedemann, with or without ETSI1997; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In its Response, InterDigital does not contest Dr. Acampora’s articulation of the level of ordinary skill, except that “InterDigital applies Petitioners’ alleged baseline level of ordinary skill without the phrase ‘at least.’” PO Resp. 3. We agree with InterDigital that the term at least arguably “creates unnecessary ambiguity.” Id. (citing Inst. Dec. 9–10). But we find that Petitioner’s articulation, after deleting the phrase at least, is reasonable in light of the subject matter involved in the ’449 patent, and we adopt it for our decision.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To the extent that text was copied and pasted in either direction between the Petition and Dr. Acampora’s declaration, we disagree that this mere fact indicates that we should give Dr. Acampora’s testimony less weight. Patent Owner does not argue that Dr. Acampora was uninvolved with the preparation of his declaration, which he signed, under penalty of perjury, and presented as reflecting his own opinions. That typographical errors may, for example, have been propagated from his declaration to the Petition is by itself of little consequence. The cited Wowza decision does not suggest otherwise. In that case, the Board assigned little weight to the expert declaration, not because of its similarity to the petition, but because the declaration did not disclose the underlying facts or data on which its opinion testimony was based. See IPR2013-00054, Paper 16 at 4–5. As Petitioner correctly argues in its Reply, InterDigital does not “identif[y] where Dr. Acampora fails to provide sufficient facts underlying his opinions.” Pet. Reply 1 n.1.” slip op. at 20

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. “channel quality” InterDigital states that the court in the parallel district court litigation adopted the parties’ agreed construction of “channel quality” as meaning “a value/values quantifying how efficiently downlink resources of a channel can communicate information.” PO Resp. 3–4 (citing Ex. 2008, 1; Ex. 2009, 18). InterDigital contends that the ’449 patent suggests this construction, and that both sides’ experts agree with it. Id. at 4 (citing Ex. 1001, 1:36–61; Ex. 2001 ¶¶ 33–35; Ex. 2002, 21:14–22; Ex. 2007, 26:12–17). Because the meaning of this term is uncontested, and it is consistent with the evidence of record, we adopt the parties’ agreed construction. See 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 11

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

    “For the above reasons, we determine that Petitioner has persuasively shown that a channel quality of the plurality of downlink resources and the related term a first channel quality indication for the plurality of downlink resources mean “a channel quality value related to the ‘plurality of downlink resources’ as a whole.” Pet. 11–13. We also determine that Petitioner has persuasively shown that both alternatives 8 and 9 reflect embodiments of this term, which is consistent with the district court’s construction that provides “a mean or reference value related to the plurality” as examples of a channel quality value related to the plurality of downlink resources as a whole, explicitly referencing alternative 9 in its analysis. See Ex. 2009, 12– 13.” slip op. at 18

  Patent outcomesUS 9,456,449 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,456,449
• Shenzhen Carku Technology Co., Ltd. v. The Noco CompanySome claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00944 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–10 and 12–23 are unpatentable over the listed grounds; claim 11 was not shown unpatentable because the evidence did not establish the claimed connection sequence.

  RulingsFinal written decision

  • Expert testimonyOther

    “Q. So Richardson contemplates a flow of control where the shunt calibration flag was not set, correct? A. That is reasonable. He shows an option -- an option of a “no” result from Step 406. Ex. 1047, 110:14–18. Dr. Wood also agrees that when the shunt calibration flag is not set and the procedure advances to Step 420, the contact relay in Richardson is still open: Q. Now, if the shunt calibration flag is not set and we go to Step 420, the starter contact relay in Richardson is still open, correct? A. That is my understanding. Id. at 77:10–13. Dr. Wood further agrees that when the shunt calibration flag is not set and the procedure advances to Step 214, where reverse polarity connection is tested, the starter contact relay is still open: Q. Okay. Then if we continue to Step 214 in this example, where the shunt calibration flag was not set, when we’re testing for the condition reverse jumper cable voltage, the starter contact relay is still open, right? A. That appears to be the case.” slip op. at 65

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

    “Referring to FIG. 3, Klang states: “[t[he reverse polarity sensor 48, connected in a like manner across the battery terminals 20, 22, senses negative voltage indicating that the battery leads are connected backwards.” Ex. 1007, 6:20–23. Klang’s reverse polarity sensor provides an output signal (sensed negative voltage) indicating whether the battery has a proper polarity connection. Klang states: “[i]f the start button has not been pressed, at step 144, the OCV [battery open circuit voltage] is compared to a low negative voltage to determine whether the conducting cables 18 are properly connected to the battery 16. If the OCV is less than -0.5V, the method proceeds at step 146 to notify the operator that the leads are reversed.” Ex. 1007, 8:55– 60.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “references. Accordingly, consideration and discussion of the objective evidence of nonobviousness is unnecessary.” slip op. at 92

  • ExcludeMotion to exclude, deniedDenied

    “discussed below, the Motion is denied.” slip op. at 94

  Patent outcomesUS 9,007,015 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,007,015
• Intel Corporation v. Pact XPP Schweiz AGSome claims unpatentable
  PTAB · Sep 8, 2021 · IPR2020-00539 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 5, 6, 8, 12, 14–24, 28, 30, and 33 are unpatentable under the Nicol and Nicol–Bhatia obviousness grounds; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

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

    “2. Reason to combine Nicol and Bhatia Intel argues that a person of ordinary skill in the art “would have been motivated to combine the complementary teachings of Nicol and Bhatia” for the following four reasons: (1) both references “are directed to interrelated thermal and power management aspects that are critical and ubiquitous in processor-based systems,” Pet. 52–53 (citing Ex. 1008, code (54); Ex. 1009, 1:6–8; Ex. 1001 ¶¶ 231–233); (2) the references “both describe a flexible multiprocessor architecture in which software residing in a controller is programmed to selectively control the power supply of each processor, notably by dynamically adjusting the processor’s clock frequency during operation,” Pet. 53–54 (citing Ex. 1008, 2:18–27, 3:13–18; Ex. 1009, 1:57– 59, 2:28–31, 3:23–28, 3:33–38, 12:26–37; Ex. 1001 ¶¶ 231–233); (3) since Nicol “does not discuss over-temperature protection,” which is “critical for high-performance systems such as Nicol’s multiprocessor system,” a person of ordinary skill in the art “would have been motivated to consult Bhatia, which discusses well-known techniques of providing over-temperature protection,” Pet. 54–55 (citing Ex. 1008, 3:9–20, 4:11–13; Ex. 1009, 2:18– 22, 3:33–46; Ex. 1001 ¶¶ 231–233); and (4) a person of ordinary skill in the art “would have been motivated to consult Bhatia [to implement] low activity states in Nicol’s system as . . . means to further minimize power consumption,” Pet. 55 (citing Ex. 1009, 12:58–64; Ex. 1001 ¶¶ 231–233). In its Response, PACT argues that Intel’s four arguments “amount to little more than a suggestion that Nicol and Bhatia manage aspects of a computer system and it would be beneficial to combine these aspects,” which, “without any showing of actual motivation is plainly insufficient,” and “evidences application of impermissible hindsight bias.” PO Resp. 43– 44 (citing Ex. 2027 ¶ 110; Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018)). PACT also argues that Intel “makes no attempt to explain how a system combining Nicol and Bhatia would function, likely due to the fact that managing a plurality of metrics to create an efficient processing system is extremely difficult.” PO Resp. 44 (citing Ex. 2027 ¶ 111). Citing Dr. Mangione-Smith’s testimony, Patent Owner contends that a person of ordinary skill in the art “might spend their entire career developing intricate systems for managing processor temperature and clock frequency among a plurality of processors, and [Intel] dismisses it as a mere triviality.” Id. at 44–45 (citing Ex. 2027 ¶ 111).” slip op. at 58

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

    “between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). For a combination of known elements that are not explicitly found together in the prior art, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). A successful petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 418); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4) (2020).” slip op. at 16

  Patent outcomesUS 9,552,047 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,552,047
• Marvell Semiconductor, Inc. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Feb 1, 2021 · IPR2019-01350 · APJ Jameson Lee · IPR · Final written decision

  Claims 3 and 9 are unpatentable as obvious over Shellhammer; claim 8 was not reached on the merits.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteDecided for patent owner

    “Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020) (footnote omitted). This is such a situation. We cannot reach a decision on the merits with respect to whether Petitioner has established the unpatentability of claim 8 under any ground of unpatentability asserted by Petitioner, i.e., (1) obvious over Sherman and Trompower, (2) obvious over Shellhammer and Trompower, and (3) obvious over Shellhammer and Panasik.” slip op. at 77

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “challenged claims indeed do satisfy the requirements of 35 U.S.C. § 119 with respect to the foreign application the priority of which it claims.5 Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). Dynamic Drinkware stated that because the USPTO does not examine priority claims unless necessary, the Board has no basis to presume that a patent is necessarily entitled to the filing date of its provisional application. Id. at 1380. Under the reasoning of Dynamic Drinkware, the same would be true for a foreign application the priority of which has been claimed. Patent Owner has made no substantive showing in this proceeding of actual entitlement to the filing date of the German Application, by satisfaction of all pertinent requirements of 35 U.S.C. § 119. Accordingly, the effective filing date of the ’676 patent is August 8, 2001, not the earlier filing date of German Application No. 100 39 532.5.” slip op. at 13

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

    “supported by the underlying disclosure of Sherman. Dr. Roy in paragraph 175 of his Declaration (Ex. 1003) cites to column 4, lines 1–8, of Sherman, which states: “The CFP occurs with a regular period, and all 802.11 terminals set their NAV’s during the CFP. To realize such a super frame the following sequence of frames/phases can be used as shown in the graph of FIG. 5.” Ex. 1004, 4:1–5. This disclosure does not indicate, as Dr. Roy concludes, that the control station “relinquish[es]” time to 802.11 CP access if no HIPERLAN/2 transmission requests are pending. Ex. 1003 ¶ 175. We also find unpersuasive Dr. Roy’s testimony that if there is sufficient HIPERLAN/2 traffic, Sherman teaches that the HIPERLAN/2 phase may be extended to very close to the entire superframe. Id. As discussed above, in Sherman, the CFP already is preset, without regard to whether or how many HIPERLAN/2 requests are pending. Ex. 1004, 6:5–6. Dr. Roy’s conclusion is not supported by the disclosure of Sherman and also is not adequately explained.” slip op. at 34

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

    “III. CONSTITUTIONAL APPOINTMENT Patent Owner argues that Administrative Patent Judges (“APJs”) “are principal officers under the Appointments Clause of the Constitution” “but undisputably are not appointed through the constitutionally-mandated mechanism of appointment for principal officers.” PO Resp. 60. The Federal Circuit, however, addressed this issue and devised a remedy in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1325 (Fed. Cir. 2019) cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13, 2020). Patent Owner argues that the remedy devised by the Federal Circuit “impermissibly rewrites the statutes governing APJs.” Id. at 61. We decline to consider the argument because the Arthrex decision states otherwise. See Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”).” slip op. at 77

  Patent outcomesUS 7,016,676 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,016,676

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