• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2022-00362 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable because the evidence did not establish the sensors were fixed relative to each other.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8

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

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2021-00921 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.

  RulingsFinal written decision

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

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

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

    “We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18. 6. Dependent Claims 2, 3, 5–7, 9, 10, 12, and 14–17 Petitioner provides reasonable and detailed explanations, supported by the testimony of Dr. Bederson, indicating where in the references the limitations of claims 2, 3, 5–7, 9, 10, 12, and 14–17 are disclosed. Pet. 33– 43, 44, 47, 49. Further, Patent Owner offers no arguments particularly directed to these dependent claims. PO Resp. 22, 25, 28. We have considered the evidence and arguments of record and determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 2, 3, 5–7, 9, 10, 12, and 14–17 for the reasons discussed in the Petition and as supported by the testimony of Dr. Bederson.” slip op. at 34

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Global Shade Corporation v. With-U E-Commerce (Shanghai) Co., Ltd.Some claims unpatentable
  PTAB · Jul 25, 2022 · IPR2021-00365 · APJ Barry L Grossman · IPR · Final written decision

  Claims 8, 9, and 11 are unpatentable under § 103; claim 7 was not shown unpatentable. The motion to amend was denied because substitute claims 12–14 were unpatentable.

  RulingsFinal written decision

  • Skill levelDecided for patent owner

    “B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Env’t Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355. Additionally, the Supreme Court informs us that “[a] person of” slip op. at 17

  • Expert testimonyPetitioner expert discountedOther

    “claims of the ’710 patent.” Ex. 1002 ¶ 28. Dr. Stein does not provide the underlying facts or data on which his opinion testimony is based. Accordingly, it is entitled to little or no weight.” slip op. at 19

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

    “piece for engaging said clamping groove” should be construed under § 112(f), even though it does not include the term “means,” because:” slip op. at 24

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

    “supports a conclusion that claims 8, 9 and 11 are valid.” PO Resp. 66 (heading “D”). The “secondary evidence” on which Patent Owner relies is the “existence of patents granted on the invention in other countries, like China and Japan” (PO Resp. 67), superior utility of the claimed invention relative to the prior art (id. at 68), “Petitioner’s copying or imitating the patented technology” (id. at 72), and attempts to license the patented technology (id. at 74).” slip op. at 54

  Patent outcomesUS 10,273,710 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,273,710
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsSome claims unpatentable
  PTAB · Jul 15, 2022 · IPR2021-00734 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–4, 6, and 7 are unpatentable over Talukdar and Li; claim 8 was not shown unpatentable over Talukdar and Nystrom. The motion to amend was granted.

  RulingsFinal written decision

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

    “7. Conclusion Patent Owner has shown: (1) the amendment proposes a reasonable number of substitute claims; (2) the proposed substitute claims are supported in the original disclosure; (3) the amendment responds to a ground of unpatentability involved in the trial; and (4) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter. Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 44–47, 49, and 50 are unpatentable. Accordingly, Patent Owner’s Motion to Amend is granted.” slip op. at 82

  • ExcludeMotion to exclude, deniedDenied

    “Owner’s Motion to Exclude because Dr. Roy’s testimony should not be excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable,’” which is a “basic gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding would be considerably lower than in a lay jury trial and the wholesale exclusion of a witness’s declaration is rarely called for in a proceeding before the Board.” slip op. at 16

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

    “testimony (Ex. 1002), we are persuaded that Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Talukdar’s hybrid frame that includes a first section with data configured in 802.16(e) format for 802.16(e) fixed remote units and a second section that includes data configured in 802.16(m) format for faster moving 802.16(m) mobile remote units, because it would have provided the benefit of enabling the hybrid frame to accommodate data for a greater range of remote units within Talukdar’s wireless system. See Pet. 40–42; KSR, 550 U.S. at 421.” slip op. at 43

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

    “considerations before reaching our conclusion on obviousness as to the subject matter of claim 1. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). Patent Owner asserts that there is evidence of commercial success and licensing of the ’096 Patent to industry leaders in the wireless chip industry. See PO Resp. 53–54 (citing Exs. 2007–2010; IPR2020-01576, Ex. 1028 (confidential patent license agreement filed under seal)). Exhibit 2007 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA (W.D. Tex.). Exhibit 2008 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. ASUSTek Computer, Inc., No. 6:20-cv- 00142-ADA (W.D. Tex.). Exhibits 2009 and 2010 are a joint motion to dismiss with prejudice, and an order of dismissal, respectively, entered in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.). A copy of IPR2020-01576, Ex. 1028 has not been entered in the record of” slip op. at 49

  Patent outcomesUS 8,265,096 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,265,096
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsSome claims unpatentable
  PTAB · Jul 15, 2022 · IPR2021-00375 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–4, 6, and 7 are unpatentable over Talukdar and Li; claim 8 was not shown unpatentable over Talukdar and Nystrom.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Owner’s Motion to Exclude because Dr. Roy’s testimony should not be excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable,’” which is a “basic gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding would be considerably lower than in a lay jury trial and the wholesale exclusion of a witness’s declaration is rarely called for in a proceeding before the Board.” slip op. at 16

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

    “testimony (Ex. 1002), we are persuaded that Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Talukdar’s hybrid frame that includes a first section with data configured in 802.16(e) format for 802.16(e) fixed remote units and a second section that includes data configured in 802.16(m) format for faster moving 802.16(m) mobile remote units, because it would have provided the benefit of enabling the hybrid frame to accommodate data for a greater range of remote units within Talukdar’s wireless system. See Pet. 40–42; KSR, 550 U.S. at 421.” slip op. at 43

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

    “considerations before reaching our conclusion on obviousness as to the subject matter of claim 1. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). Patent Owner asserts that there is evidence of commercial success and licensing of the ’096 Patent to industry leaders in the wireless chip industry. See PO Resp. 53–54 (citing Exs. 2007–2010; IPR2020-01576, Ex. 1028 (confidential patent license agreement filed under seal)). Exhibit 2007 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA (W.D. Tex.). Exhibit 2008 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. ASUSTek Computer, Inc., No. 6:20-cv- 00142-ADA (W.D. Tex.). Exhibits 2009 and 2010 are a joint motion to dismiss with prejudice, and an order of dismissal, respectively, entered in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.). A copy of IPR2020-01576, Ex. 1028 has not been entered in the record of” slip op. at 49

  • Strike new argumentNew argument disregardedDecided for patent owner

    “ordinary skill in the art would have been motivated to combine the teachings of Talukdar and Nystrom (i.e., because Talukdar teaches the pilot density for 802.16(e) and 802.16(m) sections of a frame could be different, Nystrom teaches pilot structures for different scenarios, and obvious to try denser pilot symbols) are outside the scope of a proper reply because they were not presented previously in the Petition. Compare Pet. Reply 18–19, with Pet. 60–68. Although Petitioner is permitted in its Reply to address issues discussed in an institution decision, Petitioner may not submit new arguments that it could have presented earlier to make out a prima facie case of unpatentability. See Consolidated Trial Practice Guide18 (“CTPG”) 73. The opportunity to address issues discussed in an institution decision does not mean to proceed in a new direction with a new approach compared to the position taken in the Petition. See id. at 74. Furthermore, a reply that raises a new issue or belatedly presents evidence may not be considered. See id. Accordingly, we decline to consider Petitioner’s belated Reply arguments and evidence asserting new reasons why a person of ordinary skill in the art” slip op. at 60

  Patent outcomesUS 8,265,096 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,265,096
• Zillow Group, Inc. / Zillow, Inc. et al. v. International Business Machines Corp.Some claims unpatentable
  PTAB · Mar 3, 2022 · IPR2020-01655 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–3 are unpatentable as anticipated by Linden; Petitioner did not show claims 4–7, 9–17, 19, and 20 unpatentable on the asserted anticipation grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “1 Chewy, Inc. filed a Petition seeking review of the same claims challenged in Zillow’s Petition and also a Motion for Joinder with this proceeding. Paper 25, 2. We granted Chewy Inc.’s Petition and Motion for Joinder. Id. at 25.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner agrees with Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 10 We adopt Petitioner’s proposed level of ordinary skill in the art because it appears consistent with the problems addressed in the ’443 patent and the prior art of record.” slip op. at 7

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

    “Patent Owner adopts our “application of the plain and ordinary meaning to the claim terms.” PO Resp. 10. Because there is no dispute that the claims should be analyzed using the plain and ordinary meaning thereof, we apply the plain and ordinary meaning. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1015 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7

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

    “disclose this limitation, i.e., Linden does not perform word matching, is likewise unavailing because it is premised on an ipsissimis verbis test. We turn to Linden’s disclosure relied on by Petitioner. Linden discloses that “[t]he similar items table 60 could also reflect non-collaborative type item similarities including content-based similarities derived by comparing item contents or descriptions.” Ex. 1003, 9:12–15 (emphasis added). Linden also discloses “if the user is currently searching for books on a particular topic and has added several such books to the shopping cart, this method will more likely produce other books that involve the same or similar topics.” Id. at 3:52–55 (emphasis added). Linden also discloses “the current and/or past contents of a shopping cart can be used to generate recommendations in a system in which mappings of items to lists of similar items are generated from a computer-based comparison of item contents.” Id. at 16:52–56. Linden, thus, explicitly discloses generating recommendations by comparing item contents or descriptions and provides a specific example of matching books involving the same or similar topics. We find this disclosure corresponds to the requirement of step 1[c] of “identifying . . . at least one advertisement . . . having at least one word that matches said . . . search result item.” After considering the evidence cited by Petitioner in light of Patent Owner’s contentions, we find Petitioner establishes that Linden discloses this limitation.” slip op. at 17

  Patent outcomesUS 7,076,443 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 7,076,443
• Cradlepoint, Inc. / Sierra Wireless, Inc. et al. v. Sisvel International S.A.Some claims unpatentable
  PTAB · Jan 18, 2022 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–3 and 9 are unpatentable as obvious over Chen; claims 4–8 and 10 were not shown unpatentable on the instituted grounds.

  RulingsFinal written decision

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

    “Response. Paper 10 (“Prelim. Resp.”). We instituted an inter partes review on all challenged claims on all grounds set forth in the Petition. Paper 11 (“Institution Decision” or “Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art.” slip op. at 10

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

    “Petitioner proposes a construction for the term “code rate.” Separately, with regard to means-plus-function limitations recited in claims 5, 9, and 10, Petitioner provides claim construction contentions that identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function, as required by 37 C.F.R. § 42.104(b)(3). Pet. 33–37. Patent Owner does not propose a definition for any claim term nor does it contest any of Petitioner’s proposed constructions. PO Resp. 7–9. In the Institution Decision, we preliminarily construed the means- plus-function claim limitations as set forth in the table below, but determined that it was not necessary for us to construe the claim term “code rate.” Inst. Dec. 11–20 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)).5 Based on the 5 Petitioner notes that “construction may be helpful to establishing the inverse and counterintuitive relationship between code rate and redundancy in which an increased code rate (e.g., 1/2) means that fewer redundant bits are transmitted whereas a decreased code rate (e.g., 1/4) means that more determination that we need not expressly construe “code rate” and our preliminary determinations for the means-plus-functions terms for the reasons set forth in our Institution Decision, which we adopt and do not repeat herein, and which are reflected in the table below. Id. at 11–19. Because Petitioner presents further argument for its construction of “means for detecting” in its Petitioner’s Reply––we address that argument below for completeness.” slip op. at 11

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

    “We recognize, however, “the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005); see also Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950–53 (Fed. Cir. 2007). “The prohibition against using expert testimony in this manner is a direct consequence of the requirement that the specification itself adequately disclose the corresponding structure.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (citing AllVoice Computing PLC v. Nuance Commc'ns., required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The specification must “disclose an algorithm for performing the claimed function.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008); Aristocrat, 521 F.3d at 1333. The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.Cir.2008) (internal citation omitted)). “Simply disclosing software, however, ‘without providing some detail about the means to accomplish the function[,] is not enough.’” Id. (citing Finisar, 523 F.3d at 1340–41 (citation omitted)). In the present proceeding, even assuming, arguendo, that the record sufficiently supports a finding that a POSITA would have known of FEC, CRC, ARQ, and hybrid ARQ protocols, Petitioner has not shown that the specification of the ’561 patent discloses a sufficient algorithm, whether “as a mathematical formula, in prose, or as a flow chart, or any other manner that provides sufficient structure” for the “means for detecting,” including an algorithm for performing any one or more of these protocols. Noah, 675 F.3d at 1312. The ’561 patent discloses “means (224) for detecting a need for retransmission of the received coded data block,” “CCU [Channel Coding Unit] [that] is responsible for channel coding, including forward error coding FEC” as well as detecting the “[t]he need for retransmission . . . by an error errors occurring on the channel with sufficient certainty.” Ex. 1001, code (57), 2:25, 6:64–65, 7:54–59; see id. at Fig. 5, Step 508, 10:41–44. Petitioner has not shown that the ’561 patent presents an algorithm for how the error detection code detects an error, nor explained the circumstances under which the error correcting code cannot correct errors and what constitutes “sufficient certainty.” Id. at 7:54–59. Although the ’561 patent discloses examples of incremental redundancy protocols such as “hybrid FEC/ARQ (Forward Error Correction/Automatic Repeat Request), which uses error correction coding in order to decrease the number of retransmissions,” it does not present an algorithm for implementing the same. Id. at 2:33–37. For the foregoing reasons and based on the entirety of the record developed during trial, we conclude that Petitioner fails to identify sufficient algorithmic structure corresponding to the “means for detecting” recited in independent claims 5 and 10.” slip op. at 15

  Patent outcomesUS 6,529,561 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,529,561
• Target Corporation v. Proxicom Wireless, LLCSome claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00931 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1–5, 14–18, 27, 31, 36, 42, 48, 49, and 52–55 are unpatentable over Perttila alone or Perttila and Insolia; claims 37 and 43 were not shown unpatentable.

  RulingsFinal written decision

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

    “We instituted trial based on all asserted claims and grounds of unpatentability as follows: Claims Challenged 35 U.S.C. § Reference(s) 1–5, 14–18, 27, 31, 36, 37, 42, 43, 102(b)3 Perttila 48, 52, 55 1–5, 14–18, 27, 31, 36, 37, 42, 43, 103(a) Perttila 48, 49, 52, 55 27, 31, 53, 54” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner concedes that the level of skill as defined by Petitioner “is generally sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 9. However, Patent Owner also notes that “Petitioner’s proposed level of skill in the art does not include any reference to electronic commerce” and contends that “a POSITA should also have 1-2 years of experience designing or implementing systems for electronic commerce including the use of wireless communications.”5 Id. at 10 (citing Ex. 2010 ¶¶ 6–9, 22–24). The level of ordinary skill in the art may be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision. We note that we would reach the same conclusions herein using Patent Owner’s alternate definition.” slip op. at 9

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

    “Notwithstanding the arguments in its briefing, Petitioner’s counsel acknowledged during the hearing that the claims require the entity or object to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . . that physical presence is connoted by the word ‘proximity’ and by ‘located.’”). There is, accordingly, no controversy regarding whether “an entity or object located in proximity to the second device” requires the entity or object to have a physical presence. Moreover, as explained below our decision does not depend on an express construction of this term. We conclude, therefore, that there is no need for us to construe this term. 2. “wireless device” Patent Owner argues that, as recited in the challenged claims, “wireless device” “refer[s] to wireless communication capabilities, not that a wireless device would be precluded from having any external wires whatsoever.” PO Resp. 19. However, Patent Owner concedes that construction of “wireless device” is “not necessary to resolve the dispute here.” Id. Petitioner argues that “‘wireless device’ should be construed to require a device without external wires,” noting that the claims of the ’359 patent recite a “wireless device” rather than a “wireless communication device.” Pet. Reply 5–6. However, Petitioner also concedes that “no construction of this term is necessary.” Id. at 5. No construction of this term is necessary. The parties both agree that no construction is needed, and as explained below our decision does not depend on a construction of this term.” slip op. at 12

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

    “As noted above, Petitioner maps Perttila’s disclosure of “electronic coupon information including various offerings” to the recited “list of goods” and notes that the merchant-media device can be located in a store where the advertised goods are sold. Pet. 51–52 (citing Ex. 1006 ¶¶ 26, 39); see also Ex. 1003 ¶ 177. However, neither Petitioner nor its declarant identifies adequately any “list of goods” that Perttila’s remote server delivers to the first wireless device. At best, Petitioner and its declarant describe an iterative process whereby a user interacts with a plurality of tags or beacons in a store to receive multiple electronic coupons. Pet. Reply 17–18; Ex. 1003 ¶ 177. However, Petitioner fails to explain adequately how delivering coupons one at a time in an iterative process constitutes delivering a list of goods as part of an electronic commerce transaction. Petitioner also refers to Perttila’s disclosure of delivering a restaurant menu. Pet. 52–53 (citing Ex. 1006 ¶¶ 26); see also Ex. 1003 ¶ 177. However, Petitioner and its declarant again fail to explain adequately how sending a restaurant menu constitutes delivering a list of goods as a step in a process for an electronic commerce transaction. Perttila discloses that, in embodiments, the billboard may promote a food product and the user’s interaction with the billboard results in the server sending “a restaurant menu or a recipe involving that particular food or food type.” Ex. 1006 ¶ 26. However, neither Petitioner nor its declarant explain adequately how this constitutes a step in a process for an electronic commerce transaction. Notably, Petitioner and its declarant fail to identify any discussion or suggestion in Perttila of the user interacting with the menu after it has been delivered. Nor do we see any such disclosure in Perttila. Rather, Perttila merely discloses sending a restaurant menu as part of “electronic coupon information”: “In another application, the billboard may be promoting a food product, and the request to the remote server corresponds to a request for receiving electronic coupon information including, for example, a restaurant menu or a recipe involving that particular food or food type.” Id. Moreover, we note that Petitioner does not propose to modify Perttila’s system in some manner such that a user could interact with the delivered menu as part of an electronic commerce transaction. Petitioner also refers to Perttila’s disclosure of delivering a movie ticket. Pet. 52–53 (citing Ex. 1006 ¶¶ 44–50); see also Ex. 1003 ¶ 177. However, Petitioner and its declarant again fail to explain adequately how sending an electronic movie ticket constitutes delivering a list of goods as a step in a process for an electronic commerce transaction. Perttila discloses that its system may be used to purchase a movie ticket that is redeemed “at a time much later than the time when the electronic coupon is received.” Ex. 1006 ¶ 44. Perttila discloses purchasing the movie ticket and later using a menu displayed on the user’s mobile phone to activate and validate the ticket at the theater. E.g., id. ¶¶ 46–50. Petitioner fails to explain persuasively how delivering an electronic movie ticket in the manner disclosed by Perttila constitutes delivering a list of goods as a step in a process for an electronic commerce transaction.” slip op. at 38

  Patent outcomesUS 8,090,359 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,090,359
• Satco Products, Inc. v. Seoul Semiconductor Co., Ltd.Some claims unpatentable
  PTAB · Oct 22, 2021 · IPR2020-00836 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1, 10, 15, 18, and 21 are unpatentable; claims 2, 3, 11, 12, 17, and 19 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art The level of skill in the art is a factual determination that provides a” slip op. at 9

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

    “take issue with the Board’s construction of ‘phase voltage’ in the Institution Decision as it does not implicate any dispute here.” PO Resp. 3. In the Reply, Petitioner also does not challenge the Board’s preliminary determination. See generally Pet. Reply. Having considered the record as a whole, we see no reason to depart from our preliminary finding. Accordingly, we find that the Specification defines “phase voltage,” i.e.,” slip op. at 14

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

    “dimming circuit’ that must be part of the ‘driver circuit,’” without requiring it to be completely distinct from the phase switch or other elements of the driver circuit. Pet. Reply 5. Accordingly, we decline to adopt Patent Owner’s proposed construction that limits the dimming circuit to “a circuit, separate and distinct from the phase switches, that provides a dimming effect.” See PO Resp. 25. Instead, we recognize the ordinary and customary meaning for the “dimming circuit,” i.e., any circuit comprised in the driver circuit that is capable of providing a dimming effect.” slip op. at 28

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

    “proposed construction for “phase switch.” Rather, as discussed above, we have found that the Specification broadly defines the term without requiring the device to determine when to turn itself on or off. As defined in the Specification, “The phase switch is a general term to indicate any device that, when turned on, conducts electrical current.” Ex. 1001, 3:43–44 (emphasis added). There is no dispute between the parties that Chiang’s CCUs are devices that, when turned on, conduct electrical current. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that Chiang’s CCUs are a “plurality of phase switches.”” slip op. at 36

  Patent outcomesUS 7,081,722 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,081,722
• Asetek Danmark A/S v. Coolit Systems, Inc.Some claims unpatentable
  PTAB · Oct 12, 2021 · IPR2020-00825 · APJ Scott C Moore · IPR · Final written decision

  Claims 1, 2, 4, 5, and 9 are unpatentable over Bezama or Bezama and Chiang; claims 13–15 were not shown unpatentable over Kang or Anderson.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “the 2007 Provisional describes the material of which plate 240 is made, much less indicates that the inventor had possession of an invention including a manifold body (i.e., plate 240) defining a pair of compliant surfaces. See generally Ex. 1005.” slip op. at 24

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

    “Bezama discloses all limitations of claims 1 and 9. See Pet. 23–39; Ex. 1003 ¶¶ 65–86. Patent Owner’s attempt to disqualify Bezama as prior art fails because claims 1 and 9 are not entitled to a priority date earlier than July 27, 2011. See supra § II.E. On this record, and considering all of the evidence and arguments put forth by the parties, we find that Petitioner has shown by a preponderance of the evidence that claims 1 and 9 are unpatentable as anticipated by Bezama. G.” slip op. at 31

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

    “teach or suggest each limitation recited in claims 2, 4, and 5, and these contentions are supported by testimony from Dr. Tilton. See Pet. 54–66; Ex. 1003 ¶¶ 114–137. Petitioner additionally identifies rationales for why a person of ordinary skill in the art would have had reason to combine the teachings of Bezama and Chiang to arrive at the inventions recited in those claims. See id.” slip op. at 31

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “bifurcated flow limitation of claim 13. Resp. 46–52. In particular, Patent Owner asserts, with support from Dr. Pokharna, that the fluid entering any of Kang’s inlet channels 44 would mix with fluid from adjacent inlet channels, and that the bulk of the fluid from any inlet channel would exit through adjacent outlet channels, rather than traveling to the outer-most outlet channels as Petitioner suggests. Id. at 47–48; Ex. 2038 ¶¶ 105–114. Patent Owner’s argument is persuasive and supported by well-reasoned testimony from Dr. Pokharna. For example, Dr. Pokharna correctly points out that Dr. Tilton has admitted that microchannels have high flow resistance. Ex. 2038 ¶ 112 (citing Ex. 1003 ¶ 158). We agree with Dr. Pokharna that because of this high flow resistance, fluid entering a microchannel through any inlet channel 44 would tend to exit through the path of least resistance (i.e., the nearest outlet channel 47) rather than traveling to each end of the microchannel and exiting through the most distant outlets. See id. ¶ 112. contention that in Kang that the bulk of any fluid entering a microchannel would exit through the closest outlet channel 47. See Reply 17–18. Instead, Petitioner contends that at least some portion of the fluid will reach each end of the microchannel. See id. This argument is not persuasive because claim 13 recites that the flow that enters each channel through the one aperture “bifurcates into two sub flows,” and requires that each of the recited outlet regions receives “one of the two sub flows” or “the other of the two sub flows.” This claim language is not satisfied by an outlet region that receives only a portion of one of the two recited sub flows. Claim 13 requires that each outlet region receive one of the same two sub flows that originally entered the microchannel. See also Ex. 2038 ¶ 108. Petitioner neither proposes a claim construction that would encompass such an embodiment, nor offers any persuasive evidence that a POSITA would read claim 13 to encompass such an embodiment. Accordingly, on this record, we are not persuaded by a preponderance of the evidence that Kang teaches or suggests a flow of heat exchange fluid that is bifurcated into two sub flows within each of the microchannels, wherein each of these two sub flows is received by one of the two outlet regions adjacent to the opposing ends of the microchannels, in the manner required by claim 13.” slip op. at 36

  Patent outcomesUS 10,274,266 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,274,266

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.