- Securus Technologies, Inc. v. Global Tel*link CorporationNo claims unpatentablePTAB · Apr 7, 2016 · IPR2015-00155 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–6 were not shown unpatentable under §103(a) over Susen and Gainsboro because Susen did not disclose steps within the construed access-attempt scope and the combination rationale was insufficient.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not proffer an explicit construction of any term, contending that “no construction is necessary of the ’243 patent claim terms,” but responds in its Reply to constructions proposed by Patent Owner for “public telephone network” and “access attempt to said public telephone network.” Pet. 8; Reply 4–7. 1. “public telephone network” Patent Owner contends that “public telephone network,” as recited in the phrase “access attempt to said public telephone network,” should be construed interchangeably with the term “public switched telephone network” as “a network of telephone communication links and switches, not associated with any particular person or facility, that carries telephone signals of the general public.” PO Resp. 10–13. Petitioner responds that the term “is well understood” without explicit construction and that Patent Owner’s proposed construction “unnecessarily and improperly limits the meaning” of the term. Reply 5. We agree with Petitioner that no express construction is necessary. Patent Owner’s expert testified at his deposition that a person of ordinary skill would understand what is meant by “public telephone network” and that the ’243 patent does not apply any definition of the term outside of its normally understood definition. Ex. 1009, 110:5–111:9.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Petitioner that “access attempt to said public telephone network” is not appropriately construed as a “period of time.” Nevertheless, disagreement between the parties over the scope of the fuller phrase, “during each access attempt to said public telephone network by said potential caller,” requires resolution—specifically, which of the steps that follow recitation of the “during” phrase must be performed “during each access attempt.” A grammatically rigid reading of the claim, which includes two colons and two instances of the word “and,” suggests an illogical construction in which the scope of “during each access attempt” includes the “prompting,” first “recording,” “matching,” “comparing,” “granting,” “monitoring,” and second “recording” limitations. The parties agree that such a construction is inappropriate, and we find it inconsistent with the Specification of the ’243 patent because at least the “monitoring” and second “recording” limitations logically require a connection established within the public telephone network before they can be performed. See PO Resp. 15– 16; Reply 19–20; Tr. 39:18–40:3 (Patent Owner acknowledging “sloppy draftsmanship”). Petitioner contends that, because “during each access attempt . . . ” is followed by a colon without further punctuation or indentation, “[t]he broadest reasonable interpretation of the claims would apply this limitation to only the first step following the colon: ‘prompting.’” Reply 19. Patent Owner contends instead that the “granting” limitation provides a logical conclusion to the “access attempt” so that each of the “prompting,” first “recording,” “matching,” “comparing,” and “granting” limitations are within the scope of “during each access attempt.” PO Resp. 15–16; see Tr. 38:7–20 (confirming Patent Owner’s position that the “granting” limitation is within scope). Patent Owner supports its position with testimony by Leonard J. Forys, Ph. D., who testifies as follows: Simply put, it is my opinion that an “access attempt” is defined by a starting point (e.g., the beginning of the attempt) and the point at which the “attempt” either succeeds or fails. In this case, because the claim recites an “access attempt to said public telephone network”, the “attempt” will succeed or fail (and thus conclude) when the caller is granted access to, or ultimately denied access from, the public telephone network. The period in between these two events comprises some calling procedure in which the caller may be asked to provide certain information, dial the outgoing number, authenticate himself/herself, etc. The above construction is thus supported by this common sense approach. Ex. 2004 ¶ 47. We credit this testimony, and afford it greater weight on this point than the testimony of Petitioner’s witness, Robert Akl, Ph. D., who declined at his deposition to provide meaningful details explaining how he arrived at his opinion that the scope of the recited “during each access attempt . . . ” is more limited. See Ex. 2003, 46:24–48:22. We also agree with Patent Owner that a construction that affords greater scope to “during each access attempt” is consistent with the Specification of the ’243 patent. See PO Resp. 14–15. Accordingly, we construe the scope of “during each access attempt to” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The key to supporting a conclusion of unpatentability under 35 U.S.C. § 103(a) is the clear articulation of reasons why the claimed invention would have been obvious. The Supreme Court has clarified the requirements that must be met to establish a prima facie case of obviousness, emphasizing that the “analysis should be made explicit.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Although the reasoning may draw from numerous intrinsic and extrinsic sources, conclusions of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 15
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner supports its statements with testimony by Dr. Akl, but that testimony repeats the statements made in the Petition with only minimal surface changes. See Ex. 1005 ¶¶ 60, 75, 94.4 As Patent Owner contends, these statements are also made within the context of a broad characterization of the art, namely “managing institutional calls.” See PO Resp. 21–22. The cursory assertion that the prior-art references are drawn from the same 4 With respect to the third statement, addressing claim 6, Dr. Akl provides the additional conclusory assertion that “One skilled in the art would understand that combining these references would be obvious and beneficial in that it would enhance the security of the system.” Ex. 1005 ¶ 94. broadly characterized field provides insufficient analysis concerning why and how a person of ordinary skill in the art would have modified or combined the prior art in the manner asserted, and inadequately articulates “reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine elements in the way the claimed new invention does.”). Furthermore, Petitioner’s perfunctory analysis is effectively rebutted by Dr. Forys, who testifies that “Susen and Gainsboro are directed to unrelated concepts” and “directed to very different architectures that are not easily combined.” Ex. 2004 ¶¶ 53, 56. We credit the testimony of Dr. Forys more strongly than that of Dr. Akl because Dr. Forys provides explicit reasoning to support his opinion that Susen and Gainsboro are concerned with different implementation settings, rely on different architecture structures, have technical incompatibilities, and are drawn from different fields. See id. ¶¶ 52–61; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 16
Patent outcomesUS 7,853,243 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,853,243 - Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCNo claims unpatentablePTAB · Nov 30, 2015 · IPR2014-00552 · APJ Thomas L Giannetti · IPR · Final written decision
Petitioner failed to prove claims 1–23 unpatentable because Webster was disqualified as prior art under § 103(c).
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“In an inter partes review, the burden of proof is on the Petitioner to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). This burden never shifts to the Patent Owner. Id. However, the burden of production, a separate burden, does shift once the Petitioner comes forward with evidence establishing prior art. Id. at 1379–80. Thus, to prevail on this dispositive issue, Patent Owner must overcome Webster by establishing that § 103(c) applies to the fact of this case.” slip op. at 7
- ExcludeMotion to exclude, deniedMixed
“We agree with Patent Owner and are persuaded that the W–2 form and pay stub should not be excluded. Petitioner’s argument based on alleged inconsistencies goes to the weight, not the admissibility, of the evidence. As to the hearsay objections, we agree with the reasoning of Snow, supra, that the EIN and other information are not assertions subject to the hearsay rule. To the same effect are United States v. Koch, 625 F.3d 470, 480 (8th Cir. 2010) (computer flash drive with manufacturer’s label “China” not inadmissible hearsay to prove place of manufacture); United States v. Bowling, 32 F.3d 326, 328 (8th Cir. 1994) (manufacturer’s name stamped on firearm not hearsay). We are persuaded that the EIN and other identifying information on the W-2 and pay stub, like the examples in those cases, are circumstantial evidence of Seals’employment and not assertions by Intersil. We agree that the pay stub is not hearsay and should be admitted.14 Although Petitioner challenges this evidence as untrustworthy, we are mindful of the fact that Petitioner had a chance to cross-examine Mr. Seals on its content.” slip op. at 22
Patent outcomesUS 6,754,195 not shown unpatentable§ 103 obviousnessPatents in suitUS 6,754,195 - Homeland Housewares, LLC v. Whirlpool CorporationNo claims unpatentablePTAB · Oct 21, 2015 · IPR2014-00877 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–16 were not shown unpatentable: Kolar did not anticipate them, Kolar did not render them obvious, and Wulf did not anticipate them.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“As Petitioner observes, the Board has found the rule of Harza inapplicable where duplicating components would have rendered the claimed subject matter unsuitable for its intended purpose. PO Resp. 43 (citing Ex parte Efremova, No. 2010-003842, 2011 WL 1131352, at *3 (BPAI Mar. 28, 2011)). We agree with the reasoning of the panel in Efremova. Mr. Faerber testifies that “it would not have been obvious to repeat the drink program of Figure 6, in whole or in part” because “[r]epeating a program would risk overmixing the blender contents, and would defeat the purpose of having a set program to produce consistent and complete results.” Ex. 2001 ¶ 89. We credit the testimony of Mr. Faerber, which is uncontroverted.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“3. “to effect a pulsing” Patent Owner proposes that “to effect a pulsing,” which is recited in each of the independent claims, should be construed to mean “to effect a series of repeated pulses.” PO Resp. 14–20. Patent Owner contends that the specification supports a distinction between “pulsing” and “pulses,” and that it would be unreasonable to construe “pulsing” to include only one pulse. Id. Patent Owner supports its position with uncontroverted testimony by Mr. Faerber. Ex. 2001 ¶¶ 46–53. Petitioner responds in its Reply that “a ‘pulsing that includes only one pulse is still a reasonable interpretation which the Board should adopt.” Reply 6. But Petitioner recanted that position in its argument at oral hearing: JUDGE BOUCHER: . . . You seem to indicate that a “pulsing” implie[s] that there would be multiple pulses. Is that a correct understanding of Petitioner’s position? MR. TROJAN: That’s correct, that -- right. Tr. 7:12–16. We adopt Patent Owner’s proposed construction of “to effect a pulsing” as “to effect a series of repeated pulses.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner responds that “[i]t is noteworthy that the limitation . . . is at the very end of claim 1,” contending that “what happen[s] after the blade reaches the operating speed is not covered by the claims.” Reply 6. We are not persuaded by this contention because the “pulsing” recited in the independent claims requires multiple pulses, each of which has the recited “constant speed phase,” “deceleration phase,” and “acceleration phase.” We also are unpersuaded by Petitioner’s argument that the cutter assembly may have multiple operating speeds. See id. at 7–8. Even acknowledging that the recitation of “a predetermined operating speed” in the “constant speed phase” allows for the possibility that the cutter assembly may have more than one predetermined operating speed, the relevant limitation refers to increasing the speed of the cutter assembly “to the operating speed” (emphasis added). Petitioner’s argument is not supported by the claim language nor by any evidence presented by Petitioner. We adopt Patent Owner’s construction of “to the operating speed” as “up to, but not past, the operating speed.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Kolar does not disclose “automatically controlling a rotational speed of the cutter assembly to effect a pulsing,” wherein each pulse comprises the recited “constant speed phase,” “deceleration phase,” and “acceleration phase.” See PO Resp. 26–31. First, Patent Owner observes that the “pulse blend” routine identified by Petitioner executes separately from automatically controlled user drink programs as a manual pulse in which the blender motor runs only as long as the user is pushing the pulse button. Id. at 27–28. Patent Owner supports its position with unrebutted testimony by Mr. Faerber. Ex. 2001 ¶ 74. Thus, the “pulse blend” routine described by Kolar does not “automatically” control a rotational speed of the cutter assembly to effect a pulsing as required by the independent claims. Second, as Mr. Faerber testifies, Figure 6 of Kolar “depicts a set of different, non-repeating steps. No part of the drink program is repeated.” Ex. 2001 ¶ 75. The illustrated sequence, for example, has only a single deceleration phase, and, therefore, does not disclose “effect[ing] a pulsing” by effecting a series of repeated pulses that each have a constant speed phase, a deceleration phase, and an acceleration phase. See PO Resp. 31. We also agree with Patent Owner that Kolar does not disclose an acceleration phase, where the speed of the cutter assembly is “increased from the settling speed to the operating speed,” as recited in each of the independent claims. See id. at 32–33. Patent Owner supports its position with unrebutted testimony by Mr. Faerber. Ex. 2001 ¶¶ 77–83. The acceleration phase identified by Petitioner between t4 and t5 in Figure 6 of Kolar does not increase “to the operating speed,” as we have construed the phrase, but instead increases to a speed greater than the operating speed. For these reasons, we conclude that Petitioner has not shown, by a preponderance of the evidence, that any claim of the ’688 patent is anticipated by Kolar.” slip op. at 9
Patent outcomesUS 7,581,688 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,581,688 - Canon Inc. v. Intellectual Ventures I LLCNo claims unpatentablePTAB · Oct 2, 2015 · IPR2014-00757 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–20 were not shown unpatentable because the asserted references did not disclose received scan control signals that contain no timing control signals.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“considerations are relevant. First, the Specification of the ’285 patent explains that the “flat cable transmits scanning control signals . . . instead of timing control signals.” Ex. 1001, col. 4, ll. 26–28 (emphasis added). In the related proceeding, we observed that this portion of the Specification “suggests a distinction between scanning control signals and timing control signals,” but “does not support unambiguously Patent Owner’s position of complete independence between scan control signals and timing control signals.” Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00535, slip op. at 8 (PTAB Sept. 23, 2015) (Paper 37). We note that a construction of “scan control signals” and “timing control signals” that effected such complete independence would render the negative limitation that “the received scan control signals do not comprise any timing control signals” superfluous in the claims of the ’285 patent. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (citing Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000)); see Gen. Am. Transp. Corp. v. Cryo- Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting district-court claim construction that rendered claim requirement superfluous). Second, we disagree with Petitioner’s contention that Patent Owner’s” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“3. Means-Plus-Function Limitations Claims 1–6 include several terms recited as “means for” performing identified functions. In the Institution Decision, we construed these recitations under 35 U.S.C. § 112, ¶ 6, as follows. Dec. 7–8. We see no reason to alter those constructions based on the positions of the parties as developed during the trial, and accordingly adopt them herein.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“generation of timing control signals in response to receipt of scan control signals, “wherein the [received] scan control signals do not comprise any timing control signals.” Petitioner contends that all limitations of the independent claims, including this recitation, are disclosed by Hayashi. Pet. 17–25. Specifically, Petitioner contends that the set of signals WR*, A<0>, and CDATA<7, . . . ,0> are “scan control signals” and that the signals output by driving clock generating circuit 112 are “timing control signals.” Id. at 17–19. Petitioner identifies a distinction in the functionality of signals WR*, A<0>, and CDATA<7, . . . ,0>, and the functionality of signals output by driving clock generating circuit 112. Because the signals output by the driving clock generating circuit are produced in response to a data value carried by CDATA<7, . . . ,0>, Petitioner contends that CDATA<7, . . . , 0> is not itself a timing control signal. Id. at 19. According to Petitioner, only signals output by Hayashi’s driving clock generating circuit are timing control signals, not signals traveling to the driving clock generating circuit. Id. Petitioner supports its argument with testimony by Richard Carley, Ph.D. Ex. 1002 ¶¶ 52–60, 121–128, 196–203.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Petitioner thus contends that all limitations of the independent claims, including the requirement that “the [received] scan control signals do not comprise any timing control signals,” are disclosed by Tsuboi and Wada. Pet. 41–54. Patent Owner responds that “[p]eople of ordinary skill in the art would readily recognize Tsuboi’s primary scanning synchronization signal and Wada’s synchronization signal TR are timing control signals.” PO Resp. 25. Similar to its argument directed at the Hayashi-based grounds, Patent Owner relies on testimony by Dr. Zech that a “CPU is understood by one of ordinary skill in the art to control a timing generator.” Id. at 25–26 (citing Ex. 2004 ¶ 69). Patent Owner observes that “Tsuboi’s primary scanning synchronization signal is generated . . . by CPU 21” and that “Wada’s synchronization signal TR is also generated by a timing generator, namely control signal generating circuit 27.” Id. (citing Ex. 1005 ¶ 39; Ex. 1006 ¶ 18). Patent Owner further notes that Petitioner’s expert, Dr. Carley, acknowledged during his deposition that the primary scanning synchronization signal “is used to align the reading out of the CCD in time, meaning it starts it up.” Id. at 26 (citing Ex. 2006, 72:14–16). Under the claim construction we have adopted, we are persuaded by Patent Owner’s analysis. Based on the evidence before us, we find that Petitioner has not demonstrated that Tsuboi or Wada discloses “wherein the received scan control signals do not comprise any timing control signals,” as recited in each independent claim. Patent Owner’s analysis thus applies to all claims of the ’285 patent. Accordingly, we conclude that Petitioner has not established, by a preponderance of the evidence, that any claim of the ’285 patent is unpatentable over Tsuboi and Wada together or in combination with other art.” slip op. at 17
Patent outcomesUS 8,300,285 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,300,285
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.