• Polygroup Limited Mco v. Willis Electric Co., Ltd.Some claims unpatentable
  PTAB · Oct 8, 2020 · IPR2016-01612 · APJ Jeremy M Plenzler · IPR · Remand

  On remand, claims 1, 3, 4, 6, 8, and 9 of the ’186 patent were held unpatentable; other remanded challenged claims were not, and substitute claims 29 and 30 were allowed.

  RulingsRemand decision

  • RemandOther

    “On appeal, the U.S. Court of Appeals for the Federal Circuit vacated our Original Decision in part and remanded the cases for further proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934 (Fed. Cir. 2019). After conferring with the parties, we permitted additional briefing to address the issues on remand from the Federal Circuit. Paper 196.” slip op. at 2

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

    “electrical connection in a single step (e.g., “‘when’ the mechanical connection is made, an electrical connection is also made”) as Patent Owner alleges. Rather, claim 1 requires “a first trunk electrical connector” and “a second trunk electrical connector” with “the second tree portion [being] electrically connectable to the first tree portion such that a portion of the first trunk electrical connector of the first trunk portion contacts a portion of the second trunk electrical connector of the second trunk portion.” Although the claim also requires that “the second tree portion is mechanically coupleable to the first tree portion about a central vertical axis,” the claim permits that mechanical connection to be independent of the electrical connection. Giving claim 1 its proper reading, there is no dispute that Miller teaches first and second trunk electrical connectors or that its tree portions are coupleable about a central vertical axis as outlined in the Petition. See Pet. I 45–48.” slip op. at 14

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

    “Petitioner contends that one skilled in the art would have modified Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner reasons, for example, that “[i]t would have been obvious . . . to enhance the mechanical and electrical connections between the electrical contacts sets and wiring assemblies of Miller[] with the detachable electrical connectors of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66 (citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable connectors of Lessner provide a quick-connect engagement allowing the builder to easily and quickly attach the wires to the terminals on the trunk connector during assembly,” which “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts.” Id. at 66. Petitioner’s contentions as to why one skilled in the art would have modified Miller’s teachings are unpersuasive. As discussed above, Petitioner cited Miller’s plug and socket connectors as corresponding to the recited trunk connectors. Petitioner’s proposed modification in the Miller alone challenge adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing greater “ease and speed of assembly and disassembly” as alleged. Petitioner’s additional reasoning that the proposed modification “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts” is equally unpersuasive. The only difference resulting from the modification is that the plug and socket connectors could be removed from their respective wiring assemblies. That is, it provides for removal of one connector by providing yet another connector, which fails to provide a benefit because Miller’s plug and socket connectors are loose, rather than fixed within the trunk portions like Patent Owner’s connectors. For at least these reasons, Petitioner has failed to establish unpatentability of claim 7 of the ’186 patent by a preponderance of the evidence.” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner

    “D. Secondary Considerations As explained in the Original Decision, Patent Owner provides evidence related to non-obviousness of the claims. Original Decision 43–60. Considering that evidence, as explained in the Original Decision, relative to the fact that Miller alone teaches each element of these claims in a single embodiment16, we determine that Patent Owner’s evidence does not outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9. For the reasons set forth above, Petitioner has established by the preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable. Petitioner has failed to establish by the preponderance of the evidence that claim 7 is unpatentable.” slip op. at 21

  Patent outcomesUS 8,454,187 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,454,187
• Polygroup Limited Mco v. Willis Electric Co., Ltd.Some claims unpatentable
  PTAB · Oct 8, 2020 · IPR2016-01610 · APJ Jeremy M Plenzler · IPR · Remand

  On remand, claims 1, 3, 4, 6, 8, and 9 of the ’186 patent were held unpatentable; other remanded challenged claims were not shown unpatentable, and substitute claims 29 and 30 were allowed.

  RulingsRemand decision

  • RemandMixed

    “On appeal, the U.S. Court of Appeals for the Federal Circuit vacated our Original Decision in part and remanded the cases for further proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934 (Fed. Cir. 2019). After conferring with the parties, we permitted additional briefing to address the issues on remand from the Federal Circuit. Paper 196.” slip op. at 2

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

    “and the second wire are detachably connected to the first trunk electrical connector of the first trunk portion.” Petitioner acknowledges that “Miller does not expressly teach that the wiring assembly is ‘modular’ or ‘separably connected.’” Pet. II 65. Petitioner contends that “assemblies for providing a detachable connection between electrical contact sets and wiring harnesses were well-known in the art.” Id. (citing Ex. 1006 ¶¶ 261–67). Petitioner contends that “Lessner teaches a ‘quick-disconnect electrical connector for receiving and releasably retaining a male tab connector’ and a [person of skill in the art (POSA)] would recognize that it may be used to create detachable connections between the electrical contacts of a connector or plug, and the wires of a wiring assembly.” Id. (citing Ex. 1008, 1:10–11; Ex. 1006 ¶¶ 261–67). Petitioner contends that one skilled in the art would have modified Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner reasons, for example, that “[i]t would have been obvious . . . to enhance the mechanical and electrical connections between the electrical contacts sets and wiring assemblies of Miller[] with the detachable electrical connectors of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66 (citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable connectors of Lessner provide a quick-connect engagement allowing the builder to easily and quickly attach the wires to the terminals on the trunk connector during assembly,” which “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts.” Id. at 66. Petitioner’s contentions as to why one skilled in the art would have modified Miller’s teachings are unpersuasive. As discussed above, Petitioner cited Miller’s plug and socket connectors as corresponding to the recited trunk connectors. Petitioner’s proposed modification in the Miller alone challenge adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing greater “ease and speed of assembly and disassembly” as alleged. Petitioner’s additional reasoning that the proposed modification “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts” is equally unpersuasive. The only difference resulting from the modification is that the plug and socket connectors could be removed from their respective wiring assemblies. That is, it provides for removal of one connector by providing yet another connector, which fails to provide a benefit because Miller’s plug and socket connectors are loose, rather than fixed within the trunk portions like Patent Owner’s connectors. For at least these reasons, Petitioner has failed to establish unpatentability of claim 7 of the ’186 patent by a preponderance of the evidence.” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedUnpatentable

    “D. Secondary Considerations As explained in the Original Decision, Patent Owner provides evidence related to non-obviousness of the claims. Original Decision 43–60. Considering that evidence, as explained in the Original Decision, relative to the fact that Miller alone teaches each element of these claims in a single embodiment16, we determine that Patent Owner’s evidence does not outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9. For the reasons set forth above, Petitioner has established by the preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable. Petitioner has failed to establish by the preponderance of the evidence that claim 7 is unpatentable.” slip op. at 21

  • BurdenNot shown unpatentable

    “The figure reproduced above is a portion of Miller’s Figure 2, which is a front, partial section view of its artificial tree, along with Petitioner’s annotations noting Miller’s electrical connections (circled in red). Pet. I 29. As seen above, Petitioner cites Miller’s plug and socket connection as the electrical connection recited in the claims. See Pet. I 33 (“Miller also teaches that wires 22 of trunks 3, 5 are electrically connectable via plug and socket connectors of Fig. 2.”), 42, 57–58 (presenting similar contentions for claims 20 and 28). The problem with Petitioner’s contentions that rely on Miller alone is that the electrical connection in Miller is independent of the mechanical connection of tree portions (i.e., the mechanical connection does not result in the electrical connection in the manner claimed). For at least this reason, Petitioner’s challenges to claims 10, 20, and 28 based on Miller alone fail.” slip op. at 23

  Patent outcomesUS 8,454,186 mixed
  § 103 obviousness
  Patents in suitUS 8,454,186
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01033 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 17 is anticipated by Bednar, and claims 1 and 17 are obvious over Bednar and Gunther; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “requesting institution of inter partes review of claims 1, 4–6, and 17–19 of U.S. Patent No. 8,004,922 B2 (Ex. 1001, “the ’922 patent”). VLSI Technology LLC (“Patent Owner”) filed a Preliminary Response (Paper 12). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims. Paper 17 (“Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8–9; see Pet. 36 (citing Ex. 1002 ¶¶ 26–27).” slip op. at 9

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

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 45

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “preponderance of the evidence, that (1) claim 17 is anticipated by Bednar, and (2) claims 1 and 17 would have been obvious over the combination of Bednar and Gunther. For the reasons discussed above, Petitioner has not demonstrated, by a preponderance of the evidence, that (1) claim 1 is anticipated by Bednar or (2) claims 4–6, 18, and 19 would have been obvious over the combination of Bednar, Gunther, and Willingham. The chart below summarizes our conclusions.” slip op. at 91

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01144 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2, 7, and 8 are unpatentable as obvious over Bednar and Gunther; claim 3 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8; see Pet. 29 (citing Ex. 1102 ¶¶ 26–27).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “construction is erroneous. Accordingly, because the ’922 patent defines “power island,” we maintain and reaffirm that “power island” means a “group of components with similar power requirements.”” slip op. at 12

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

    “not to expressly construe “conversion controller” was erroneous or that an express construction is required to resolve any dispute between the parties. Accordingly, we maintain and reaffirm that because the construction of “conversion controller” does not resolve a controversy in the matter before us, we decline to construe it expressly.” slip op. at 13

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

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 86

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Wabco Holdings Inc. / Laydon Composites Ltd. v. Transtex Composites Inc.Some claims unpatentable
  PTAB · Jan 10, 2020 · IPR2018-01319 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 5–11, and 15–19 are unpatentable as obvious over Layfield and Rinard; claims 2–4, 12–14, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Micklow does not explain how or why he proposes a different level of ordinary skill in the art as compared to the level proposed by Petitioner and preliminarily adopted in our Decision on Institution. See generally id. ¶¶ 28–31. Additionally, neither Patent Owner nor Dr. Micklow argues that the difference in the proposed level of ordinary skill in the art affects the outcome of this proceeding; Dr. Micklow, in fact, states the contrary—that his opinions are the same under either level of skill. See Ex. 2001 ¶ 31.7 Nothing in the full record is sufficient to persuade us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm our preliminary finding that the level of ordinary skill in the art at the time of the invention would have been “a bachelor’s degree in mechanics, aeronautics, materials, or a related field of study, or equivalent experience, and at least two years of experience in the development of components of vehicles, or an equivalent amount of relevant work or research experience.” Inst. Dec. 10–11; see Pet. 10.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer. that because thermoplastic material is more resilient than aluminum, we should adopt Petitioner’s argument. Pet. Reply 15–16 (citing Ex. 1058, 1– 12; Ex. 1010 ¶¶ 77–82). We must base our decision in this case on the arguments and evidence presented. As explained above, the record before us has contradictory evidence in the form of Dr. Micklow’s testimony that was not before the examiner. 16 Petitioner does not cite Exhibit 1018 in the Petition, but instead cites to Mr. Tres’s testimony regarding the exhibit. Id. Thus, from the video, it is unknown whether the skirt panel is attached to the trailer by one strut, multiple struts, or additional features. Second, Petitioner does not identify clearly how the tested system precisely corresponds to the teachings of Layfield. For example, Patent Owner raises a number of issues with the struts and panels in the video to which Petitioner provides either no response or an unconvincing response. For example, Patent Owner argues that each embodiment of Layfield uses trusses 36 to “interconnect each skirt panel and reinforce the panel assembly,” while it is asserted that the skirt panels in the video do not have trusses and are not interconnected. PO Resp. 26. Petitioner argues that the skirt panels in the video were made according to the teachings of Layfield and did include “integral vertical lateral side edges as the connecting mechanism for adjacent panels.” Pet. Reply 19 (citing Exs. 1018, 2003, 2005; Ex. 1004, 18:36–39; Ex. 1010 ¶¶ 63–64; Ex. 1055 ¶¶ 37–38). Other than stating that the skirt panels have connecting mechanisms, Petitioner does not address the fact that the panels are not interconnected according to the teachings of Layfield, as Patent Owner correctly pointed out. See generally id. at 19–21.” slip op. at 28

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

    “components (see, e.g., id. at 17:1–10), Layfield does not contain any express disclosure concerning the flexibility of the struts. Nor does Layfield include any discussion about the desirability of strut flexibility. The closest Layfield comes to discussing flexibility of the struts is by frequently referring to the struts as “support struts” (see, e.g., id. at 18:40) and discussing the use of a “bracket means,” which is on the struts, to “rigidly secure” the skirt panels to the trailer (id. at 6:48–49). Further, Layfield’s detailed discussion of the embodiment of support strut 58 shown in Figure 10, reproduced below, highlights the bracing and reinforcement features. Figure 10, above, shows the construction detail of a support strut 58. Ex. 1004, 15:45. Specifically, Layfield discloses that strut 58 includes “a pair of spaced-apart vertical members 160, which are braced by horizontal cross-members 162” and “reinforcing rectangular lattice 170.” Id. at 15:46– 54. Thus, we agree with Patent Owner’s argument that “Layfield does not expressly teach that the ‘support struts 58’ are ‘resilient.’” PO Resp. 42 (citing Ex. 2001 ¶¶ 148–149). We reiterate that Petitioner’s first challenge is based on anticipation. Thus, Petitioner must show that resilient struts are “either expressly or inherently described, in” Layfield. Verdegaal Bros. Inc., 814 F.2d at 631; see also PO Resp. 42. In its Reply Brief and at the oral hearing, Petitioner contends that its challenge is based on express disclosure, not inherency. See Pet. Reply 17–18; Tr. 9:21–11:4 (arguing that “this is not a case of inherency”). Petitioner contends one of ordinary skill in the art “would have understood, based upon Layfield’s express disclosures concerning the material, structure, and connection of the strut, that the Layfield strut is resilient and can sustain significant and substantial elastic deformation.” Pet. Reply 18 (citing REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 960–61 (Fed. Cir. 2016)). Whether we analyze Petitioner’s argument based on express disclosure or inherency, we reach the same result. To begin, although we agree with Petitioner that a prior art reference “need not satisfy an ipsissimis verbis test” (Pet. Reply 17 (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), there is no express statement that Layfield’s strut is resilient or otherwise exhibits a characteristic synonymous with resiliency. Additionally, we do not agree that Petitioner’s reliance on the thermoplastic materials, disclosed by Layfield for construction of the strut, establishes whether the strut is resilient and capable of elastic deformation. The evidence submitted by the parties is contradictory as to whether one of ordinary skill in the art would have understood Layfield’s struts to be resilient based on the material alone.15 Compare Ex. 1010 ¶¶ 74–82 15 Petitioner also points to a finding by the examiner, during prosecution of the ’017 patent application, that an aluminum strut was resilient, and argues (Mr. Tres opining as to the materials disclosed by Layfield), with Ex. 2001 ¶¶ 160–164 (Dr. Micklow contradicting Mr. Tres’s testimony regarding the materials disclosed by Layfield). Further, the evidence is contradictory as to whether one of ordinary skill in the art would have understood from the design of Layfield’s strut, specifically the taper design and mechanism by which the strut connects to the trailer I-beam, that the strut is resilient. Compare Ex. 1010 ¶¶ 83–90 (Mr. Tres’s testimony regarding the design and connection mechanism), with Ex. 2001 ¶¶ 165–175 (Dr. Micklow’s contradictory testimony). Turning to Petitioner’s video (Ex. 1018), Petitioner asserts testing of commercial versions of the Layfield fairing illustrates what one skilled in the art would have understood from Layfield itself, namely that the Layfield strut is adapted to sustain an elastic deformation when a load is applied to the resilient strut when the skirt panel moves away from the configuration reducing air drag about the trailer and to self-recover the resilient strut original shape when the load is removed. Pet. 29 (citing Ex. 1010 ¶¶ 102–103).16 We afford this evidence little weight for several reasons. First, the video does not show the strut or the bending of a strut. See Ex. 1018. In fact, the only feature shown is a skirt panel attached to a trailer.” slip op. at 26

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

    “Additionally, Patent Owner similarly contends that the modifications proposed are redundant of Layfield’s “flexible lower panel 20,” which already “allow[s] flexing when impacting a road object.” PO Resp. 59 (citing Ex. 1004, 14:13–18); see PO Sur-reply 26–27. We disagree. Again, the proposed modifications here are to Layfield’s struts. In the context of Petitioner’s anticipation challenge, we agreed with Patent Owner and found that Petitioner had not established sufficiently on the record that Layfield’s struts were resilient. See supra, § II.D.a.i., ii. Therefore, the proposed modification addressed here, to make Layfield’s struts resilient, does not duplicate the objective of Layfield’s flexible lower panel 20 at least because (a) Layfield’s struts are a different structure than lower panel 20 and (b) modification of Layfield’s struts would provide greater impact protection to other panels aside from just lower panel 20. See Pet. Reply 26–27 (One of ordinary skill in the art “would have been motivated to do so because Rinard and Layfield both seek to provide fairing panels with ‘sufficient flexibility’ to bend when encountering objects.” (citing Ex. 1004, 12:67– 13:4; Ex. 1006, 10:43–50; Ex. 1055 ¶ 47)). We determine that Petitioner has shown that one of ordinary skill in the art would have had a reason with rational underpinning to look to other similar types of trailer components that are flexible to make further improvements to Layfield’s design. 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.”). Third, Patent Owner contends one of ordinary skill in the art “would not have a reasonable expectation of success at achieving the claimed technology by looking to the vertical supports of Rinard’s air scoops to modify the Layfield skirt panels 10 and support struts 58.” PO Resp. 61 (citing Ex. 2001 ¶¶ 237–240). Patent Owner asserts that because Layfield’s upper skirt panels are rigid and non-moving one of ordinary skill in the art “would not reasonably expect the hypothetical modified panels (with their reinforcing trusses 36) to move.” Id. Patent Owner also argues that Rinard teaches “an upper skirt panel that is rigid and non-moving” and so it is not reasonable to expect modifying Layfield as proposed would somehow cause Layfield’s fixed skirt panels to be able to move as claimed. PO Sur-reply 27–28 (citations omitted). We disagree for the same reasons discussed above—namely, we find Layfield’s upper skirt panels to be resilient. Therefore, one of ordinary skill in the art would have a reasonable expectation of success in achieving a resilient strut adapted as claimed by modifying Layfield’s strut in light of Rinard, for the reasons proposed by Petitioner. See Pet. Reply 27 (“Applying this solution to the Layfield skirt panel and struts would yield the predictable result of allowing the Layfield skirt panel 10 and struts 58 to absorb greater impacts without having to be repaired or replaced.” (citing Ex. 1021, 7–8, 11–12)).” slip op. at 42

  Patent outcomesUS 8,449,017 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,449,017
• Amazon.Com, Inc. / Amazon Digital Services, Inc. et al. v. Uniloc Luxembourg S.A.Some claims unpatentable
  PTAB · Aug 1, 2018 · IPR2017-00948 · APJ David C Mckone · IPR · Final written decision

  Claims 1–8, 18–22, and 25 are unpatentable; claims 9–17, 23, and 24 are not unpatentable; substitute claims 26–28 are denied.

  RulingsFinal written decision

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

    “The “verify” limitation of claim 1 expressly recites a check based “at least in part on a device identity.” The specification describes such a check as occurring at steps 15 and 16, not step 13. Steps 15 and 16 check whether the device identity is on record and, in response to that check, allow a digital product to be used on a device (steps 17, 18) or start a process to authorize the device. Id. at 5:1–9, 5:13–18. Although steps 15 and 16 are not expressly described as a verification of validity, steps 15 and 16, not step 13, logically track and most closely align with the language of claim 1’s “verify” and “in response to” limitations. Thus, the specification supports Petitioner’s view that the “verify” limitation can encompass checking whether unique device information is reflected in a database as authorized for a license.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “claim 1 is limiting, with Patent Owner arguing that it is and Petitioner arguing that it is not. Id. at 12–13. Patent Owner now argues that “[t]he preambles [of claims 1 and 22] expressly state that the claimed system and method are both directed to ‘adjusting’ the license in terms of its allowed copy count, which the preambles expressly define.” PO Resp. 9. We explained in the Institution Decision, however, that even if the preamble is limiting (e.g., by virtue of it providing antecedent basis (“at least one allowed copy count”) for “set the allowed copy count”), the language “[a] system for adjusting a license for a digital product over time” constitutes a 2 The preamble of claim 25 is not similar to that of claims 1 and 22, and Patent Owner does not propose an “adjusting” limitation for the language “in response to the device identity not being on the record, set the allowed copy count to a first upper limit for a first time period after an initial authorization of the digital product,” as recited in claim 25. statement of intended purpose and does not purport to modify any particular claim language, such as “set the allowed copy count.” Dec. 13–14. Patent Owner argues that our preliminary construction would vitiate the purpose of the preamble language and that, instead, “the claim limitations must be understood in light of the ‘adjusting’ context introduced in the preamble.” PO Resp. 9. However, “the mere fact that a structural term in the preamble is part of the claim does not mean that the preamble’s statement of purpose or other description is also part of the claim.” Marrin v. Griffin, 599 F.3d 1290, 1295 (Fed. Cir. 2010). Rather, the Federal Circuit has held that “a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Thus, an intended purpose set forth in a claim preamble and the context that purpose might provide, without more, are not limiting. Moreover, as Petitioner points out, “the claimed invention could be used to adjust an allowed device limit, at least to a higher limit, thereby satisfying the intended purpose of the invention.” Reply 4.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “On the complete record, we find that DeMello’s authentication, which checks a Passport ID and machine ID against stored records to authenticate a device, discloses executable code for the processor to “verify that a license data associated with the digital product is valid based at least in part on a device identity generated by sampling physical parameters of the given device,” as recited in claim 1 and similarly recited in claim 22.” slip op. at 29

  • Obviousness (§103) › KSR rationalesUnpatentableNot shown unpatentableMixed

    “The Federal Circuit has cautioned that “references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). That is not the case here. As explained above, both the ’960 patent and DeMello describe precise numbers of days as arbitrary and that their respective inventions contemplate other numbers. We find that it would have been reasonable for the skilled artisan to have selected six days, as recited in claim 6, in light of DeMello’s disclosure.” slip op. at 45

  Patent outcomesUS 8,566,960 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Alice · Bilski · Berkheimer · Graham
  Patents in suitUS 8,566,960
• Fedex Corporation v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Jul 20, 2018 · IPR2017-00729 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious over Rappaport, Rappaport and DeLorme, or Rappaport and Wright; claims 18–24 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have held at least a Bachelor’s Degree in Electrical Engineering, Computer Engineering, Computer Science, or an equivalent, and two or more years of industry experience in the field of mobile communications, or the academic equivalent thereof.” Pet. 8. Petitioner bases its argument on the testimony and experience of Dr. Lavian. Id. (citing Ex. 1005 ¶¶ 44–49). Patent Owner does not dispute Petitioner’s statement. See generally PO Resp. For the 3 The complete record does not include evidence of objective indicia of nonobviousness or secondary considerations. reasons given by Petitioner (Pet. 8; Ex. 1005 ¶¶ 44–49), we adopt Petitioner’s statement of the level of skill in the art.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Although Petitioner directs us to a portion of the ’581 Patent that Petitioner contends corresponds to the field management program, i.e., “Ex. 1001, 7:50–8:12” (Pet. 10), Petitioner does not identify teachings in Rappaport corresponding to the algorithm in the ’581 Patent, which includes “[t]he program would prompt the user for input of data related to the problem.” Ex. 1001, 7:54–55. Petitioner’s assertion that no substantial differences exist between “Rappaport’s memory, processor, and SitePlanner® program and the memory, processor, and field data management program” of the ’581 Patent is conclusory. Pet. 51. Although Petitioner includes references back to its contentions for other independent claims that do not require a prompt, Petitioner does not provide any explanation regarding these other teachings and the prompt requirement of claim 18. Id. As discussed above with respect to independent claims 1 and 7, Rappaport teaches repeating the cycle of making measurements, receiving optimized predictions, and reconfiguring the network. See, e.g., Ex. 1002, 19:1–8. However, Petitioner has not shown sufficiently that this teaching, or any other teaching in Rappaport, is the same or equivalent to a program that prompts the user to input data. Dr. Lavian’s testimony (see, e.g., Ex. 1006 ¶ 205) is conclusory and substantially the same as Petitioner’s contentions. Dr. Lavian testifies that the program in Rappaport when executed “is substantially equivalent” to that of the ’581 Patent. Id. Because Dr. Lavian does not disclose sufficiently the underlying facts or data on which his opinion is based, including what portions of Rappaport are substantially equivalent to the prompt in the ’581 Patent, we give his testimony (Ex. 1006 ¶ 205) little or no weight. 37 C.F.R. § 42.65(a).” slip op. at 45

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

    “Although Petitioner directs us to a portion of the ’581 Patent that Petitioner contends corresponds to the field management program, i.e., “Ex. 1001, 7:50–8:12” (Pet. 10), Petitioner does not identify teachings in Rappaport corresponding to the algorithm in the ’581 Patent, which includes “[t]he program would prompt the user for input of data related to the problem.” Ex. 1001, 7:54–55. Petitioner’s assertion that no substantial differences exist between “Rappaport’s memory, processor, and SitePlanner® program and the memory, processor, and field data management program” of the ’581 Patent is conclusory. Pet. 51. Although Petitioner includes references back to its contentions for other independent claims that do not require a prompt, Petitioner does not provide any explanation regarding these other teachings and the prompt requirement of claim 18. Id. As discussed above with respect to independent claims 1 and 7, Rappaport teaches repeating the cycle of making measurements, receiving optimized predictions, and reconfiguring the network. See, e.g., Ex. 1002, 19:1–8. However, Petitioner has not shown sufficiently that this teaching, or any other teaching in Rappaport, is the same or equivalent to a program that prompts the user to input data. Dr. Lavian’s testimony (see, e.g., Ex. 1006 ¶ 205) is conclusory and substantially the same as Petitioner’s contentions. Dr. Lavian testifies that the program in Rappaport when executed “is substantially equivalent” to that of the ’581 Patent. Id. Because Dr. Lavian does not disclose sufficiently the underlying facts or data on which his opinion is based, including what portions of Rappaport are substantially equivalent to the prompt in the ’581 Patent, we give his testimony (Ex. 1006 ¶ 205) little or no weight. 37 C.F.R. § 42.65(a). In summary, Petitioner has not provided persuasive contentions identifying in Rappaport teachings for the “means for managing data collected at the field using the at least one handheld device responsive to program,” recited in claim 18. On this record, we are not persuaded Petitioner establishes by a preponderance of the evidence that claim 18 is unpatentable over Rappaport.” slip op. at 45

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

    “Petitioner has shown that all the limitations of claim 1 are taught in Rappaport’s description with respect to two consecutive figures, i.e., Figures 9 and 10. Rappaport’s Figures 9 and 10 both pertain to a system with a handheld device that transmits field data to a remote server, consistent with Dr. Lavian’s testimony. Ex. 1006 ¶¶ 77, 80 (citing, e.g., Ex. 1002, (57), 1:12–18, 4:41–5:31, 18:7–18, 18:64–19:8, Figs. 1, 3, 9, 10). Even to the extent that these disclosures are of two separate embodiments, “[c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Consistent with Dr. Lavian’s testimony (Ex. 1006 ¶¶ 80–85), we find that it at least would have been obvious and predictable for a person having ordinary skill in the art to combine the functionality disclosed with respect to Figures 9 and 10 into a single handheld device that transmits measured field data to a remote server so that the technician could optimize on-site and on the fly. See, e.g., Ex. 1002, 18:7–18, 18:33–48, 18:64–19:8. Rappaport depicts handheld devices in Figures 1, 3, 9, and 10 and refers to each device as a “handheld computer.” See, e.g., Ex. 1002, 6:27–58, 9:26–36, 14:54–15:3, 16:56–65, 18:7–18, 18:64–19:8, Figs. 1, 3, 9, 10. Dr. Sharony’s testimony that the proposed combination is impractical because “the exemplary Palm IIIc handheld of Rappaport . . . only had one serial port” (Ex. 2008 ¶¶ 53–59) does not take into account the full disclosure of Rappaport including “many other portable handheld computers” that “could be used while staying within the spirit of the present invention” such as cellular phones, other PDAs running PalmOS and pocket or tablet personal computers (PCs) running the Windows OS or “another powerful OS.” See, e.g., Ex. 1002, 6:27–58; see also id. at 19:9–12 (“[T]hose skilled in the art will recognize that the invention can be practiced with considerable variation”).6 Additionally, Dr. Sharony’s testimony that the measurement device and the interface box must be connected “at the same time” (Ex. 2008 ¶ 53) is not commensurate with the scope of claim 1, which does not require simultaneous collection and transmission of field data.” slip op. at 24

  Patent outcomesUS 8,494,581 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,494,581
• Fredman Bros. Furniture Company, Inc. v. Bedgear, LLCSome claims unpatentable
  PTAB · Jun 12, 2018 · IPR2017-00350 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–11, 13, 15–22, 24, 25, and 27–34 are unpatentable; claim 23 was not shown unpatentable, because the Rasmussen anticipation challenge failed.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Accordingly, Petitioner has not persuaded us that claim 23 is” slip op. at 62

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Accordingly, Petitioner has not persuaded us that claim 23 is” slip op. at 62

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

  Patent outcomesUS 8,887,332 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,887,332
• Willis Electric Co., Ltd. v. Polygroup Macau Ltd. (Bvi)Some claims unpatentable
  PTAB · May 7, 2018 · IPR2017-00309 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1 and 4 are unpatentable over Chen and McLeish; the challenges to claims 2–3 and 5–10 were not established, and the Otto and McLeish ground failed.

  RulingsFinal written decision

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

    “Claim 1 recites “a plurality of tree trunk sections” and a “power distribution subsystem comprising a female end . . . having . . . a channel void” and specifies that the “power distribution system [is] disposed within an inner void of a second [tree] trunk section.” There is no dispute that each embodiment of the ’416 patent shows the power distribution subsystem is a component separate and distinct from the tubular structure defining the body of the various “tree trunk sections.” For example, Figure 8 of the ’416 patent, reproduced above in the summary of the ’416 patent, shows the power distribution subsystem as a separate component with female end 700 of the power distribution subsystem, itself, defining channel receiving void 710. Id. at 12:38–44, Fig. 8. Although the Specification of the ’416 patent makes clear that the patent is not limited to these embodiments (see, e.g., Ex. 1001, 6:14–56), the claims specifically recite a “power distribution subsystem” separate and distinct from the “tree trunk section.” Specifically, they require the “power distribution subsystem [is] disposed within an inner void of [the tree] trunk section.” Contrary to Petitioner’s contentions, the plain language of claim 1 requires that the “channel void” is formed in the “power distribution subsystem,” rather than some combination of an external surface of the power distribution subsystem and an internal surface defining the inner void of tree trunk section.4 Petitioner’s contentions regarding the word “having” do not persuade us otherwise. Petitioner’s proposed construction is unreasonably broad, as it is divorced from the plain language of the claims. The evidence before us, discussed above in this section, supports Patent Owner’s contentions that “the female end [of the power distribution subsystem] having . . . a channel void” requires that “channel void” is formed in the female end of the power distribution subsystem. For at least these reasons, we determine that the “channel void” in claim 1 must be formed in the female end of the power distribution subsystem (i.e., not defined only by an outer wall of the power distribution system in combination with an interior void of the tree trunk section).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Chen was published on March 29, 2012. Ex. 1007, (65). A provisional patent application, such as the one at issue in this proceeding, is available to the public upon written request and payment of a fee after, for example, the non-provisional application is published. See, e.g., 37 C.F.R. §§ 1.11(a) and 1.14(a)(1)(v). We see no basis for Patent Owner’s position that Chen’s provisional patent application was not sufficiently publicly available. Indeed, as noted above, Patent Owner’s position is premised on the mistaken understanding that provisional patent applications are not publicly available until the corresponding non-provisional filing issues as a patent. Patent Owner acknowledges it has no particular support for its contentions. See, e.g., Tr. 38:22–39:1 (“And while both sides have cited a variety of cases, surprisingly to me there is no case that precisely addresses this.”). Based on the record before us, we determine that the disclosure from the provisional application was properly incorporated by reference in Chen and publically available as of the publication date of the application resulting in the Chen patent (i.e., March 29, 2012). Therefore, the provisional application is part of the disclosure of Chen.” slip op. at 17

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

    “As for the “spring activated contact” limitations, we are persuaded by Petitioner’s contentions that spring-activated contacts were well known in the art at the time of the invention. See Pet. 33–35 (citing, e.g., Ex. 1007, 2:5–18, 11:21–28, 12:30–37; Ex. 1011, 12:64–67; Ex. 1002 ¶¶ 101–104). Indeed, there appears to be no dispute concerning that contention. See, e.g., PO Resp. 24. Nevertheless, we find that McLeish discloses spring-activated contacts. Ex. 1011, 12:64–67. Moreover, Chen also discloses, for example, “bringing a pair of spring contacts into alignment with a pair of terminals to make an electrical connection.” See Ex. 1007, 2:5–18. Further, we credit Dr. Durfee’s testimony, which provides additional evidence that spring-activated contacts were well known at the time of the invention. See Ex. 1002 ¶¶ 101–104. We are also persuaded that one skilled in the art would have found it obvious to utilize a spring-activated contact in the provisional application at least because “such a contact in the central void of the female end [would] secure a reliable connection.” Pet. 35; see also id. at 41–42. Patent Owner does not dispute Petitioner’s rationale in connection with the disclosure of the provisional application. With respect to the non-provisional disclosure, Patent Owner contends that Petitioner’s rationale is based on impermissible hindsight, that there is no evidence Chen’s connectors suffered from problems requiring the proposed modifications, and that the proposed modifications would render Chen inoperable. PO Resp. 22–29. To the extent these contentions are relevant to Petitioner’s proposed modification to the provisional application’s disclosure, we determine that Patent Owner’s response does not identify fault in Petitioner’s persuasive contentions with respect to the proposed modifications to the teachings of the provisional application’s disclosure. The provisional application explains that the portion considered the “central void” by Petitioner is “a conductive cylinder forming a recess 452 for receiving electrical connector [43]8.” Ex. 1008, 31. Petitioner’s proposed modification is simply to include a spring-activated contact on recess 452 to aid the engagement between recess 452 and electrical connector 438. Pet. 35; see also Tr. 59:8–9 (“With McLeish we’re only looking in this proceeding for very limited disclosure of electrical contacts.”). That recess 452 is part of what the provisional application’s disclosure, itself, characterizes as the female end. For at least the reasons explained above, we do not agree that such a modification is based solely on the disclosure from the ’416 patent. Nor does the proposed modification render the arrangement disclosed in the provisional application inoperable. Rather, spring-activated contacts improve the connection. See Ex. 1002 ¶ 102 (“[S]pring-activated contact(s) will ensure a more reliable electrical connection between two contacts. This is especially true where the electrical connections are detachable.”).” slip op. at 22

  Patent outcomesUS 8,863,416 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,863,416
• Department Of Justice v. Discovery Patents, LLCSome claims unpatentable
  PTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision

  Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7

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

    “We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8

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

    “We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10

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

    “We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11

  Patent outcomesUS 7,323,980 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,323,980

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.