• Maxlinear, Inc. v. Cresta Technology Corp. And CF Crespe LLCSome claims unpatentable
  PTAB · Aug 15, 2016 · IPR2015-00594 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1–17 and 24–29 are unpatentable; claims 18–23 were not shown unpatentable because the § 103(c) safe haven bars the obviousness grounds against them.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “We agree with Patent Owner that the burden of persuasion to establish unpatentability is Petitioner’s burden and that burden never shifts to Patent Owner. See PO Resp. 3–4; 35 U.S.C. § 316(e); Nike, Inc. v. Adidias AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). Patent Owner argues that Petitioner has not met the burden of establishing that Favrat is “by another” as required by § 102(e). PO Resp. 4–25. Petitioner responds that Patent Owner is incorrect in that the burden of production has shifted to Patent Owner. Pet. Reply 2–3 (citing Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015)). The shifting burden of production is not applicable to our analysis under § 102(e). See In re Magnum Oil Tools Int’l, Ltd., 2016 WL 3974202, No. 2015-1300, slip op. at 13–18 (Fed. Cir. 2016). Patent Owner here, like the patent owner in Magnum Oil Tools, seeks to disprove Petitioner’s contention. Magnum Oil Tools, slip op. at 16. The inquiry before us is whether Petitioner has shown by a preponderance of the evidence that Favrat is “by another” as required by § 102(e).” slip op. at 14

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

    “Mr. Mombers, a Group B inventor, testified to the ITC that he conceived of the signal processor of claim 1, the sole independent claim of the ’792 patent, and thus conceived of every claim of the ’792 patent. All of the evidence presented to the ITC that was submitted and argued here is consistent with Mr. Mombers’s assertion. Patent Owner corroborated this testimony by stating that Favrat is prior art under § 102(e), meaning it is “by another.” Considering the entire admissible record, we determine that a 19 In re Land, 368 F.2d 866 (Fed. Cir. 1966), is also distinguishable because the patents were related. preponderance of the evidence demonstrates that Favrat is “by another” as required by § 102(e).” slip op. at 23

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

    “Consequently, with regard to claims 3, 6–10, and 12–17, Patent Owner has failed to carry its burden of establishing when the ’792 patent “was made.” As a result, the safe haven of § 103(c) does not apply, and we need not reach the question of common ownership or obligation of assignment as of the filing date of the ’792 patent. b) Claims 18–23 The evidence provided by Petitioner does not address claims 18–23. See Ex. 1212, 5–6. That is, Patent Owner did not assert these claims were conceived and reduced to practice at an earlier date. Given the absence of evidence to the contrary, the presumption that the ’792 patent “was made” as of its filing date applies. Our inquiry is then whether as of that date, Favrat and the ’792 patent were “owned by the same person or subject to an obligation of assignment to the same person.” See 35 U.S.C. § 103(c)(1). As explained above, Patent Owner asserts, with supporting evidence, that Favrat and the ’792 patent were commonly owned as of the filing date of the ’792 patent. Petitioner provides no evidence to the contrary regarding 23 Petitioner contends, without supporting evidence, that because the references asserted against Patent Owner in the ITC proceeding predated even the May 2001 date, Patent Owner changed to rely upon the filing date of the ’792 patent as the priority date. Pet. Reply 19 n.9. common ownership or evidence of assignment as of the filing date of the ’792 patent. Rather, Petitioner provides argument and evidence regarding common ownership and obligation of assignment for dates prior to the filing date of the ’792 patent. See Pet. Reply 17–24. We need not consider this argument and evidence as it does not pertain to the date at issue (i.e., the filing date of the ’792 patent, which is the date that claims 18–23 were made). In light of this, Patent Owner has demonstrated that claims 18–23 are subject to the safe haven of § 103(c). Consequently a ground of unpatentability based on obviousness may not be asserted against Patent Owner for these claims.” slip op. at 27

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached

    “because it is in response to Patent Owner’s argument in the Response that Favrat is not prior art under § 102(a). See PO Resp. 22 n.2; Paper 71, 1. However, this does not end our inquiry. If the assertion that Favrat is prior art under § 102(a) was required to be in the Petition, then the fact that the issue was raised in Patent Owner’s Response does not cure that oversight. As the Federal Circuit recently emphasized, It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify “with particularity” the “evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). Intelligent Bio-Systems, 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see also 37 C.F.R. § 42.104(b)(2) (requiring a petition to specify the specific statutory grounds under 35 U.S.C. § 102). Prior to filing of the instant Petition, Petitioner knew from Patent Owner’s contentions in the ITC proceeding that the safe haven of § 103(c) was a potential issue. See Ex. 1207, 3. Even armed with this knowledge, Petitioner chose not to assert in the Petition that Favrat is prior art under § 102(a). If Petitioner had asserted both § 102(a) and § 102(e), perhaps Patent Owner would have chosen a different response and the evidence in this proceeding would have developed differently. In the particular circumstances of this case, adding consideration of § 102(a) at this late date would deprive Patent Owner of due process. Consequently, we do not consider Petitioner’s contention that Favrat is prior art under § 102(a).” slip op. at 29

  Patent outcomesUS 7,265,792 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 7,265,792
• Zhongshan Broad-Ocean Motor Co. Ltd. v. Nidec Motor CorporationSome claims unpatentable
  PTAB · Jun 22, 2016 · IPR2015-00465 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 3, 7, and 18 are unpatentable as anticipated by Mullin and Pant; claim 2 was not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “the ‘first sensing circuit’ and the ‘second sensing circuit’ sense power simultaneously,” and further argues “[n]or does Patent Owner present any argument with reference to, e.g., the 459 Patent specification or prosecution history as to why this additional limitation should be read into this claim.” Pet. Reply 23. Petitioner’s reply, however, fails to recognize that Petitioner bears the burden of demonstrating that Mullin anticipates the claim, including providing sufficient evidence and argument in support of its proposed claim interpretation. The Petition fails to provide a sufficient explanation to support that “when both” should be construed in the manner asserted by Petitioner, particularly when the more natural reading of the claim language conveys that two sensing circuits sense power at the same time. Although Petitioner provided a second declaration from Mr. McAlexander in reply to Patent Owner’s response, neither that declaration nor Mr. McAlexander’s first declaration provides sufficient support for how claim 2 would have been understood by a person of ordinary skill to show that it is anticipated by Mullin. See Exs. 1007 and 1011. Because Petitioner failed to persuasively prove that claim 2 requires only that one of two sensors senses power for the motor controller to determine that power is applied to the second input, Petitioner has not shown by a preponderance of the evidence that claim 2 of the ’459 patent is anticipated by Mullin.” slip op. at 14

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

    “Mot. 15. Patent Owner’s attorney argument, which cites no evidence, does not support the contention that the proposed amended claim would not have been obvious to a person of ordinary skill in the art. Nonobviousness cannot be established by attacking the references individually when unpatentability is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Even if each prior art reference is “missing at least two of the required limitations,” that has limited bearing on whether a combination of those references renders the claim obvious. Similarly, Patent Owner provides insufficient support for its implicit argument that one would not combine the references because, individually, they provide a “complete solution” to the problem they intend to address. Where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, Patent Owner’s suggestion that there “is no reason one of skill would engage in mixing and matching,” fails to adequately address whether the combination would have been obvious. See Mot. 15.” slip op. at 28

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

    “We agree with Petitioner that, for Mullin to anticipate claim 1, Mullin need not disclose power sensed at COM. See Pet. Reply 19–22. The claim language does not require power to be sensed at any specific location, only that one sensing circuit senses “power applied to” the first and second inputs, and the other senses “power applied to” the second and third inputs. Patent Owner does not direct us to any persuasive disclosure in the ’459 patent to support its contention that claim 1 requires that power be sensed at the second input. See PO Resp. 21–26. Similarly, although Dr. Horenstein states that “the Mullin circuit is incapable of providing unique information that power has been connected to COM,” a point not in dispute, Dr. Horenstein provides only conclusory assertions and no persuasive explanation for why claim 1 would be understood to require such “unique information” for the second input. See Ex. 2001 ¶¶ 56, 63. Moreover, in Mullin, when a sensor detects power at either P2 or P3, power is necessarily applied to COM (neutral) to complete the circuit, even if the sensor does not directly detect power at COM. As Dr. Horenstein explained, “at least two inputs from the source of AC power – generally line and neutral – would have to be connected in order to complete the circuit and enable the flow of power to the motor.” Ex. 2001 ¶ 53. Mr. McAlexander similarly explained that by the very nature of alternating current, “the flow of electric charge periodically reverses direction.” Ex. 1011 ¶ 12. Thus, when alternating current is applied to Mullin’s input P2 and COM it will “be input from the input P2 and return by way of the COM, and at other times it will be input from the COM and return by way of the input P2.” Id. ¶ 13. The same is true of P3 and COM. See id. As shown by Petitioner, Dr. Horenstein confirmed during cross-examination that, when AC power, as referred to in Mullin, is applied to the power input P2 and common input COM as shown above, the opto-isolator ISO1 senses this power and outputs a corresponding signal, [and] when Mullin’s AC power is applied to the power input P3 and common input COM as shown above, the opto-isolator ISO2 senses this power and outputs a corresponding signal. Pet. Reply 22; see also Ex. 1010, 68:24–69:19. Accordingly, the testimony of Mr. McAlexander and Dr. Horenstein supports our determination that Mullin discloses a first sensing circuits that “senses power applied to the first and second inputs” and a second sensing circuit that “senses power applied to the second and third inputs,” as well as a motor controller that is “operable for determining that power is applied to the first input when the first sensing circuit senses power,” as required by claim 1.” slip op. at 11

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

    “Ex. 2001 ¶¶ 104–105. Thus, Dr. Horenstein contends there is a lack of a motivation to combine the references because opto-couplers are simpler and require fewer parts than the current based sensor of Nordby. In KSR, the Supreme Court rejected the Federal Circuit’s rigid application of its “teaching, suggestion, motivation” test in favor of an expansive and flexible approach. 550 U.S. at 415. The Supreme Court noted that often, it will be necessary: to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. Id. at 418. Moreover, the Federal Circuit has explained that: an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal – and even common-sensical – we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). In this case, Patent Owner’s contention that there is no motivation to substitute one sensor for another is not supported by anything beyond conclusory statements. Moreover, contrary to the assertion that voltage and current sensors are “not substitutable,” Nordby expressly states that “[v]oltage (potential) sensing may be used, or alternately, current (flow) sensing may be used. Since the sensing scheme is used only to detect the presence or absence of voltage or current on the sensed line and does not require any significant accuracy, the cost of either type of sense circuitry can be made very low.” Ex. 1004, 4:43–48. In light of the evidence that current and voltage sensors were known to be interchangeable, Patent Owner’s contention that there was “no reason one of skill would have sought to replace those voltage based opto-isolator systems with the bulky current transformer and attendant circuitry of Nordby,” is insufficient to demonstrate the combination of references was not obvious. See Mot. 16.” slip op. at 30

  Patent outcomesUS 8,049,459 mixed
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,049,459
• Google Inc. v. Network-1 Technologies, Inc.Some claims unpatentable
  PTAB · Jun 20, 2016 · IPR2015-00345 · APJ Kevin F Turner · IPR · Final written decision

  Claims 9–16, 23, and 24 were held unpatentable as anticipated by Iwamura; the Board did not find claims 1–8, 21, 22, 25–27, 29, 30, 33–35, 37, and 38 unpatentable.

  RulingsFinal written decision

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

    “Although the sections of the Specification of the ’237 Patent cited by Petitioner relate to disk size, that size is a direct result of the number of records in the data set. Claim 1, for example, recites “using the received features extracted from the media work to perform a sub-linear time search of extracted features of identified media works.” For that claim, under our adopted claim construction, the size of the data set would be the number of extracted features of the identified media works. It would not be logical to assume that the size of the data set would be the length of an individual record or the amount of disk space the data set occupies when the number of extracted features would be readily available. Although disk space could be used as a measure, it would be variable with respect to the format of the disk space, for example. Therefore, we are not persuaded that disk space should be used as a determinant of data set size in the construction of “sub-linear search.” As such, the data set would be the number of extracted features, in claim 1, irrespective of the exact number of commercials or frames.” slip op. at 7

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

    “ii) “non-exhaustive search” With respect to the claim term “non-exhaustive search,” Patent Owner emphasizes that a non-exhaustive search makes a comparison without all possible matches but does not concern itself with whether all data within all possible matches have been compared. PO Resp. 6–7. Petitioner does not dispute the construction, and we remain persuaded that a “non-exhaustive” search need not consider all data within all possible matches, but rather should be exhaustive or non-exhaustive with respect to the number of records in a database. See Dec. 5–7.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “Petitioner responds that the statements in the Specification do not rise to the level of lexicography or disavowal. Reply 4–5 (citing Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App'x 864, 868 (Fed. Cir. 2014); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998)). We agree, given that the cited portion provides that an approximate nearest neighbor search may be an example of a sublinear search, but not that all approximate nearest neighbor searches must be sub-linear. Additionally, Patent Owner has not provided persuasive evidence that all approximate nearest neighbor searches must be sub-linear, other than the citation to the Specification. As well, similar to our discussion of neighbor searches above, we are not persuaded that if an approximate nearest neighbor search happens to arrive at an exact match, that would negate the nature of the search. We are persuaded that an approximate nearest neighbor search would depend on the search methodology and not on the specific results obtained. Additionally, as Petitioner points out, the instant claims confirm that sublinearity is not necessarily required for an approximate nearest neighbor search. Reply 5–6. Claim 33 recites, in part, a “sublinear approximate nearest neighbor search,” whereas claims 9 and 12 simply recite an “approximate nearest neighbor search,” without the sublinear modifier. Interpreting all recitations of approximate nearest neighbor searches as intrinsically sublinear would render the limitation in claim 33 superfluous. Id. (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005); Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1274–75 (Fed. Cir. 2012)). For this additional reason, we remain persuaded that an approximate nearest neighbor search corresponds to “identifying a close match that is not necessarily the closest match,” without a requirement of being sublinear.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “in which he agrees that Iwamura’s system compares a work to be identified with each reference work in the database. PO Resp. 26–28 (citing Ex. 2006, 207:18–23, 223:2–8, 247:18–20, 269:19–270:2, 271:19–21); see also Tr. 17:17 (Petitioner conceding at oral hearing that “every song is looked at”). Dr. Moulin also acknowledges that if a non-exhaustive search is one that does not look at each of the melodies in the database, Iwamura discloses an exhaustive search rather than a non-exhaustive search. Ex. 2006, 233:24– 234:14; see PO Resp. 27. Despite Dr. Moulin’s testimony and Iwamura’s description of a search that compares an input melody to each melody in the database, Petitioner contends that Iwamura discloses a non-exhaustive search. First, Petitioner submits that Iwamura specifically identifies its peak note search as a non-exhaustive search because the “search speed using peak notes is 20% of a brute force search.” Pet. 9–10 (quoting Ex. 1012, 9:8–11); Reply 7–8 (citing Ex. 1012, 9:7–11; Ex. 2005 ¶ 82; Ex. 2001). We agree with Patent Owner, however, that Iwamura’s peak note search accelerates a search within a single comparison between a work to be identified and an individual record in the database, while still comparing the work to each record in the database. See PO Resp. 29–30. In other words, the peak search technique may improve the efficiency of an individual comparison between an entered melody and a reference melody in the database, but it is still an exhaustive search because it compares the entered melody with each musical work in the database, as confirmed by Petitioner’s declarant, Dr. Moulin. Id. (citing Ex. 2006, 269:19–270:2). Petitioner further argues that Iwamura discloses a non-exhaustive search because the search can be accelerated by stopping the search when computations “exceed[] a certain limit.” Pet. 10 (quoting Ex. 1012, 7:56– 57). We agree with Patent Owner that this disclosure also refers to improving the speed of a comparison between the work to be identified and a single record in the reference database. See PO Resp. 32 (citing Ex. 2005 ¶ 179). As Dr. Karypis explains and Dr. Moulin confirms, when the total absolute difference computed between the entered melody and a particular reference melody exceeds a certain limit, the computation stops, and the search shifts to the next peak range comparison within the same record. Id. at 32–35 (citing Ex. 2005 ¶¶ 180–81; Ex. 2006, 241:24–242:2). Thus, Iwamura’s computation “limit” does not describe a non-exhaustive search because Iwamura still compares a work to be identified with each reference melody in the database.” slip op. at 16

  Patent outcomesUS 8,205,237 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,205,237
• Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationSome claims unpatentable
  PTAB · Jun 13, 2016 · IPR2015-00467 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3, 5–9, 11–19, and 28 are unpatentable as obvious over Emesh and Mak; claim 10 was not shown unpatentable over Emesh, Mak, and Miyazaki.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “5 The level of ordinary skill in the art in this case is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, although the parties disagree slightly as to the precise education and experience level possessed by a person of ordinary skill in the art, neither party asserts that resolution of the level of skill in the art between these two competing definitions would impact the outcome of this case. See Ex. 1003 ¶ 11; Ex. 2002 ¶ 40.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “persuaded that the reference supports Dr. Rubloff’s testimony that one of ordinary skill in the art would have understood that two layers of tungsten could be deposited in a multi-chambered tool. See Ex. 1005, 9:55–58 (noting that the two tungsten layers could be formed in “different chambers or in different deposition machines”).” slip op. at 16

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

    “On this record, Petitioner persuasively articulates—supported by the testimony of Dr. Rubloff—that one of ordinary skill in the art would have sought to implement Emesh’s two layer tungsten deposition process within two chambers of Mak’s multi-chamber fabrication tool in order to improve process stability and throughput. Pet. 13–15; Ex. 1003 ¶¶ B4–6, 29–30; Ex. 2005, 457:19–459–15. Petitioner also persuasively articulates that because Mak’s cold wall CVD chamber is similar to the Varian 5101 cold wall system used in Emesh, and because Mak discloses the deposition of tungsten over a broad range of pressures, one of ordinary skill in the art would have understood that Emesh’s tungsten deposition process could be performed in Mak’s multi-chamber tool. Pet. 13–15; Reply 12; Ex. 1003 ¶¶ B6–8 (citing Ex. 1010, 453–454; Ex. 1009, 4:66–5:8, 9:4–46); Ex. 1019 ¶ 2A.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “specifically requires a WF6 flow rate of 10–40 sccm,” see Ex. 2002 ¶¶ 89– 90, we note that the discussion of predetermined flow rates in Emesh is in relation to the “preferred embodiment,” and not the invention as a whole. Ex. 1009, 4:63–65, 5:36–42. Moreover, dependent claim 2 recites that “the flow rate of WF6 is maintained in the range 10 to 40 sccm,” raising a presumption that the WF6 flow rates of Emesh may be broader than 10 to 40 sccm. Id. at 12:39–41; see Bancorp Services v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1275 (Fed. Cir. 2012) (noting that “the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim”). Thus, we are not persuaded that Emesh teaches away from, or would otherwise discourage one of ordinary skill in the art from modifying, the disclosed WF6 flow rate. Based on the foregoing, we credit the testimony of Dr. Rubloff and find that one of ordinary skill in the art would have sought to modify the WF6 flow rate of Emesh within the range of 40 to 133 sccm (while maintaining a H2/WF6 ratio of 6) with a reasonable expectation of success.” slip op. at 18

  Patent outcomesUS 6,030,893 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,030,893
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00548 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 4–6, 10, and 13–20 are unpatentable as obvious; claims 2 and 11 were not shown unpatentable because the petition did not establish their variable-length header adjustment limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “Fischer teaches that the comparators in coherent demodulator 114 convert a “‘spread spectrum modulated’ analog signal into a digital signal,” as opposed to “other analog signals.” See PO Resp. 13. To the contrary, Fischer states that “[t]he communicators preferably transmit and receive messages over a wireless physical layer provided by a direct-sequence, spread spectrum (DSSS) radio data link.” Ex. 1004, 14:24–27. Fischer further explains that “[s]ince many of the signals in the coherent demodulator 114 are analog signals, the coherent demodulator 114 includes comparators to establish digital waveforms.” Ex. 1004, 16:58–60. As shown in Figure 5 of Fischer, the coherent demodulator 114 is followed by spread spectrum correlator and decoder 130, which “handles the demodulator 114 output to regenerate the unspread data.” Ex. 1004, 17:58– 60. Thus, we agree with Petitioner, as supported by Prof. Ding, that a person of ordinary skill in the art “would have understood Fischer to describe that the demodulator 114 converts the analog DSSS modulated messages received by antennas 100/102 to digital signals and outputs these digital DSSS modulated messages in I and Q format to spread spectrum correlator and decoder 130.” Reply 3–4; Ex. 1013 ¶ 5.” slip op. at 18

  • Skill levelOther

    “3. Claims 1, 10, and 17 Petitioner argues that each of independent claims 1, 10, and 17 is unpatentable as obvious over Fischer and Nakamura. Pet. 15–26. Notwithstanding the fact that claim 1 recites “means” for performing identified functions, whereas claims 10 and 17 do not recite “means” limitations, the three claims recite similar subject matter, and Petitioner advances the same reasoning in its analysis of all three claims. Id. Patent Owner’s Response also generally addresses claims 1, 10, and 17 collectively in a similar manner. PO Resp. 10–31. Although our analysis below primarily focuses on claim 1, our determinations with respect to claim 1 apply for the same reasons to the identified similar limitations of claims 10 and 17.” slip op. at 16

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

    “The Petition makes no mention of Nakamura in its discussion of the additional limitations of claims 2 and 11. Yet in reply, Petitioner argues that “[i]n view of Fischer’s variable length preambles, a [person of ordinary skill in the art] would have found it obvious to utilize Nakamura’s timer function and its repetitive duration function.” Reply 15. Petitioner may not rely on a new argument asserting that Nakamura teaches the additional limitations for claims 2 and 11 presented for the first time in its Reply. Moreover, Petitioner fails to address how either Fischer or Nakamura teaches means for adjusting means for timing when Fischer contains no timer, and when the timer of Nakamura is described as being based on a predetermined period of time. See Ex. 1005, 6:31–36 (“timer 34 permits the switch 14 to transfer from terminal A to terminal B after the lapse of predetermined time”); see also Ex. 2006, ¶¶ 83–84. Petitioner’s contention that “Nakamura’s timer is also flexible” is insufficiently supported by any reference to either Nakamura or the declaration of Prof. Ding. See Reply 16–17; see also Ex. 1013 (no discussion of claims 2 or 11). Petitioner has not demonstrated that the features of claims 2 or 11 are disclosed by the combination of Fischer and Nakamura. 5. Claims 4, 5, 6, 13, 14, 16, and 18–20 Petitioner has persuasively shown that each of the additional limitations of dependent claims 4, 5, 6, 13, 14, 16, and 18–20 are taught by the combination of Fischer and Nakamura. For example, claims 4, 14, and 19 all require a “single monolithic device.” Petitioner has shown that Fischer RF modem 96 is a single monolithic device, and that Fischer communicator 60 is a circuit contained on a single monolithic device that includes RF modem 60. See Pet. 27–28; Ex. 1003 ¶¶ 41–42. Petitioner has also shown that RF modem 96 includes coherent demodulator 114 that provides in-phase and quadrature data outputs that are responsive to an analog signal that has in-phase and quadrature components, corresponding to the requirements of an analog signal “in the form of in-phase and quadrature components” as recited in claims 5 and 16. See Pet. 28–29; Ex. 1003 ¶ 38. With respect to the limitations of claims 6, 16, and 20 requiring PN modulation and phase shift keyed modulation, Petitioner has shown that Fischer discloses RF modem 96 supports BPSK or QPSK, and that it would have been obvious to implement direct sequence spread modulation by using PN modulation. See Pet. 29; Ex. 1003 ¶¶ 34, 37. We are also persuaded that Fischer discloses the “antenna selection circuitry” as recited in claim 13 and the “serial data stream” as recited in claim 18. See Pet. 30–31; Ex. 1003 ¶ 40. Patent Owner does not substantively dispute Petitioner’s assertion that Fischer teaches each of these limitations.” slip op. at 25

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

    “Patent Owner contends that “[i]f reliability alone is the concern,” then “the most reliable method is to use BPSK for the entire packet (as taught by Fischer).” PO Resp. 38. We are not, however, persuaded that “reliability alone is the concern.” Nakamura and Fischer clearly teach a benefit to using both BPSK and QPSK consisting of improved reliability for BPSK with enhanced speed from QPSK. Thus, we find Patent Owner’s contention that those of skill “would not look beyond the teachings of Fischer” unpersuasive. See id. Likewise, Patent Owner’s contention that Fischer already teaches improved reliability by using longer preambles has no bearing on whether one of ordinary skill in the art would have also looked to Nakamura for other means of improving reliability. See id. at 39. We find that Petitioner articulates sufficient reasoning with rational underpinnings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).” slip op. at 28

  Patent outcomesUS 5,712,870 mixed
  § 103 obviousnesscites KSR
  Patents in suitUS 5,712,870
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00553 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–3, 5–10, 13, 18, and 23 are unpatentable under § 103; claims 4, 11–12, 14–17, and 19–22 were not shown unpatentable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPrinted publication establishedDecided for petitioner

    “A reference is established to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” In” slip op. at 8

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

    “the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system” because “Wu itself references the 802.11a standard as a multi-carrier OFDM scheme that is able to achieve data rates that are faster than the 802.11b transmission rates used in the Wu system.” Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68; Ex. 1108, 411). Petitioner contends that [w]ith this motivation in mind a [person of ordinary skill in the art] would have recognized that adding the multi-carrier 802.11a modulation scheme to the modulation schemes already available in the Wu system would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme[,] and supports that contention with testimony by Dr. Almeroth. Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68). Petitioner identifies such a technique as disclosed by Böhnke. Id. at 49. Böhnke “relates to the mapping of data and pilot symbols in an OFDM-system.” Ex. 1113, col. 1, ll. 4–5. Figure 2 of Böhnke is reproduced below. Figure 2 illustrates a sequence that includes a first OFDM modulated signal S1, a midamble MA that can be OFDM modulated or single-carrier modulated, and a second OFDM symbol S2. Id. at col. 4, ll. 36–41. The midamble can be used for the transmission of pilot symbols, which “are necessary for a channel estimation such as to effect coherent detection of e.g. OFDM-modulated signals,” and such pilot symbols can be created by a single carrier modulation with a known training sequence. Id. col. 1, ll. 7–9, col. 5, ll. 45–49, col. 5, ll. 61–63. Böhnke, thus, uses the channel estimation obtained from the single-carrier training sequence to detect multi-carrier OFDM symbols by matching bandwidth and performing synchronization. Id. at col. 2, ll. 43–45, col. 2, ll. 61–62. Petitioner reasons that the Böhnke channel-estimation techniques “provide a way to combine a high-rate, multicarrier OFDM data transmission scheme with a single carrier training sequence” and that [w]ith this background, a [person of ordinary skill in the art] investigating options for including the multi-carrier 802.11a standard in the Wu system would have appreciated that Bohnke’s channel estimation techniques could be applied to Wu’s single-carrier 802.11b preamble and used for acquisition of data modulated according to multi-carrier 802.11a.” slip op. at 12

  • BurdenMixed

    “We agree with Patent Owner that Petitioner’s analysis of claim 22, which recites separate single-carrier and multi-carrier receivers, as well as a switch coupled to such receivers, is deficient. Petitioner’s assertion that claim 22 is unpatentable for “reasons similar to those explained in regards to claims 1-3 and 5” insufficiently addresses these limitations, which do not appear in claims 1–3 or 5. Pet. 58.” slip op. at 23

  Patent outcomesUS 6,754,195 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,754,195
• Hart Communication Foundation v. Sipco, LLCSome claims unpatentable
  PTAB · Nov 13, 2015 · IPR2014-00751 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 2–4 are unpatentable under § 103; claims 1 and 9–13 were not shown unpatentable because the art did not establish the claimed wireless retransmission.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “distances.” Id. ¶¶ 7, 6. Although we credit those opinions of Mr. Gannon, we find more compelling the bases for Dr. Almeroth’s opinion that one of skill in the art would be disinclined to use wireless communication at multiple levels of Enterprise Server CM’s tree hierarchy.” slip op. at 19

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

    “articulated clearly in the Petition, and it is, nevertheless, unpersuasive in light of Dr. Almeroth’s testimony. Nor are we persuaded by Petitioner’s general argument that various of the references disclose wireless communications that a person of skill in the art would have found obvious to implement in the tree hierarchy disclosed by Enterprise Server CM. See id. at 2–4. That argument is insufficiently supported by evidence that responds to the several issues raised by Dr. Almeroth. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (unsupported attorney argument in a brief cannot take the place of evidence).” slip op. at 18

  Patent outcomesUS 7,468,661 mixed
  § 103 obviousness
  Patents in suitUS 7,468,661

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.