- PTAB · Mar 7, 2024 · IPR2023-01352 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–5 and all petition challenges, finding a reasonable likelihood that Petitioner would prevail on at least one claim, including obviousness over Meisel, Kaneda, and Freidin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–5 in the ’058 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of the Preliminary Response, Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 7 (quoting Pet. 7). Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan as it is consistent with the level of skill shown in the ’058 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“recited in claim 1 excludes information reflected in acoustic signals. Claim 1 does not recite whether the voicing sensor is acoustic or non-acoustic. See Ex. 1001, 11:8–35. Notably, claim 2’s limitations are similar to those in claim 1, but claim 5, which depends from claim 2, recites the “voicing sensor includes at least one detector selected from a group including . . . acoustic throat microphones.” See id. at 12:1–5, 30–33 (emphasis added). That is, claims 2 and 5 suggest that neither the term “physiological” nor the term “voicing sensor” excludes acoustic microphones. On the current record, we preliminarily determine that the ’058 patent also supports this reading. For example, the ’058 patent discloses a “nonacoustic sensor” but explains that other embodiments “may use any sensor that is able to detect human tissue motion associated with speech and is unaffected by environmental acoustic noise.” Id. at 3:60–63. The ’058 patent also discloses that some embodiments are “acoustic-only.” Id. at 3:10–4:13, 4:42–57, cited in Prelim. Resp. 10. Thus, we determine, at this stage, the term “voicing sensor” encompasses acoustic microphones. See Pet. 21 (citing Ex. 1001, 3:61–63; Ex. 1005, 1:10–15, 2:31–35).” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“stage, we are persuaded that Petitioner sufficiently supports its assertion that Freidin’s cross correlation would improve the accuracy of Meisel’s identification. Pet. 31–32. The Petition explains that, unlike Meisel, Freidin describes how to use the cross correlation data: While Meisel and Freidin both correlate between signals, Freidin describes the cross correlation function to produce the cross correlation data and explains how to use that cross correlation data to compare it with threshold yTH to identify a result, such as Meisel’s voiced speech.” slip op. at 33
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,246,058 - PTAB · Feb 29, 2024 · IPR2023-01291 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–26 and all asserted grounds, finding a reasonable likelihood that Meta would prevail on the petition’s obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[W]ould have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. Work experience can substitute for formal education and additional formal education can substitute for work experience. Pet. 4–5 (citing Anderson Decl. ¶ 31). Patent Owner does not dispute Petitioner’s proposal at this stage of the proceeding. Prelim. Resp. 11–12. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“For purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Andrea, Hussain, and Holzrichter. The Holzrichter system uses both EM and acoustic sensors to detect both voiced and unvoiced speech in order to accurately perform its speech recognition process, determining “onset of speech, rejection of external noise, vocalized pitch periods, articulator conditions, accurate timing, the identification of the speaker, acoustic speech unit recognition, and organ mechanical parameters.” Ex. 1007, Abstract. Voiced speech occurs when the vocal cords are vibrating, and unvoiced speech occurs when the vocal cords are not vibrating.4 Id. at 22:24–26. Holzrichter explains, and provides examples underscoring, the importance of detecting both voiced and unvoiced speech in a speech recognition application. E.g., id. at Figs. 9A–B, 25A–H, 13:19–27, 22:15–29, 31:51–57, 45:2–7. The record does not support, however, Patent Owner’s attorney argument that one of ordinary skill would accord the same importance to detecting both voiced and unvoiced speech in a noise cancellation application such as is disclosed in the ’543 patent, Andrea and Hussain. “Speech recognition systems . . . are known to experience problems due to levels of background noise that are in fact, considered quite acceptable to human listeners.” Ex. 1006, 10. Andrea does not distinguish between voiced and unvoiced speech. See generally Ex. 1005. Hussain simply assumes that “an effective voice activity detector (VAD) is available.” Ex. 1006, 11. The ’543 patent indicates that the degree of precision in” slip op. at 18
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,467,543 - PTAB · Jan 19, 2024 · IPR2023-01248 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–26 on all grounds in the Petition, finding a reasonable likelihood that at least one challenged claim is unpatentable, including under §103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On July 26, 2023, Petitioner also filed a Motion For Joinder To And Consolidation With Related Inter Partes Review IPR2023-00275, which Patent Owner opposed on August 28, 2023. Papers 2, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00275, Paper 15. Accordingly, Petitioner’s motion to join is denied as moot.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention of the ’543 patent: [W]ould have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. . . . Work experience can substitute for formal education and additional formal education can substitute for work experience. . . . Pet. 13 (citing Stern Decl. ¶ 28). Patent Owner utilizes Petitioner’s proposal at this stage of the proceeding. Prelim. Resp. 9. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 11
- Expert testimonyPetitioner expert creditedOther
“Patent Owner does not specifically challenge the motivation for combining Burnett and Hussain. See generally Prelim. Resp. At this stage, we credit the testimony of Petitioner’s declarant that one of ordinary skill would have been motivated to make the combination because using adaptive noise cancellation methods on individual sub-bands rather than full-band processing is advantageous as compared to full-band processing because it provides, inter alia, improved performance in reverberant environments. Stern Decl. ¶ 76. Accordingly, for purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Burnett and Hussain.” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,467,543 - PTAB · Jan 19, 2024 · IPR2023-01222 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–26 of the ’543 patent for all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“individual frequency sub-bands to combat reverberation effects and improve noise cancellation, and one of ordinary skill would have reasonably expected to succeed in making such a combination. Pet. 25–27 (citing Stern Decl. ¶¶ 34, 74–78). For example, Hussain explains that sub-band processing “is capable of outperforming conventional noise cancellation schemes.” Ex. 1006, 10, 12.” slip op. at 16
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On July 20, 2023, Petitioner also filed a Motion For Joinder To And Consolidation With Related Inter Partes Review IPR2023-00275, which Patent Owner opposed on August 21, 2023. Papers 3, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00275, Paper 15. Accordingly, Petitioner’s motion to join is denied as moot.” slip op. at 2
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,467,543 - PTAB · Jan 19, 2024 · IPR2023-01229 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 23–28 and 41–46 based on obviousness over Kanamori and McCowan, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage and on this record, Petitioner sufficiently shows that Kanamori discloses a microphone device corresponding to the recited microphone array in [23P] (Pet. 11), Kanamori’s main signal is a first virtual microphone as recited in [23A] and it would have been obvious to use omnidirectional microphones as recited in [23B] (id. at 11–16), Kanamori’s noise-reference signal m2 is a second virtual microphone as recited in [23C] (id. at 16–17), Kanamori’s second combination is different from the first as recited in [23D] because, unlike m1’s formation, m2’s formation does not involve multiplication by an amplification ratio (id. at 17–18), Kanamori discloses or suggests the first linear response recited in [23E] as discussed above and shown by the plots in the Petition (id. at 18–25), Kanamori discloses or suggests human speech, as in [23H], because Kanamori states that the voice is “from the talker” (id. at 43). Thus, Petitioner has shown a reasonable likelihood of prevailing as to the unpatentability of claim 23. See id. at 11–43.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner’s explanation is sufficient for the Board to institute trial in this case. Specifically, Petitioner asserts that, for speech and noise with farfield origins, Kanamori’s microphone device would struggle to differentiate and suppress noise coming from the same direction as the speech. Id. at 30 (citing Ex. 1005 ¶ 168; Ex. 1003 ¶ 87). According to the Petition, it would have been obvious to modify Kanamori’s noise-reference signal m2 to account for different amplitudes, which may be significant for near-field cases. Id. at 31 (citing Ex. 1006, 90; Ex. 1003 ¶ 89). Petitioner’s rationale relies upon McCowan to show that it would have been obvious to modify Kanamori’s noise-reference signal m2 in those near-field cases. Id. Petitioner’s arguments are adequately supported by the record at this” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“II. MOTION FOR JOINDER Petitioner filed a Motion for Joinder (Paper 3), requesting joinder as a petitioner in IPR2023-00561. IPR2023-00561 had been joined to IPR2022- 01061. IPR2023-00561, Paper 9 (Granting Motion for Joinder). On August 10, 2023, the Board terminated both IPR2022-01061 and IPR2023- 00561. IPR2023-00561, Paper 30. Thus, the Motion for Joinder is dismissed as moot.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“According to Patent Owner, A person of ordinary skill in the art (‘POSITA’) would have a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. Work experience can substitute for formal education and additional formal education can substitute for work experience. Prelim. Resp. 15. In Patent Owner’s view, this agrees with Petitioner’s definition. Id. (citing Pet 4–5; Ex. 1003 ¶¶ 24–25). We see no meaningful differences in the parties’ proposed qualifications that would affect our decision here. In this decision, we adopt a definition of one of ordinary skill in the art consistent with the parties’ proposals. See Pet. 4–5; Prelim. Resp. 15. To the extent that the parties disagree about the level of ordinary skill in the art during trial, they are encouraged to explain how the differences affect the Board’s assessment of Petitioner’s obviousness analysis.” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,503,691 - PTAB · Jan 19, 2024 · IPR2023-01228 · APJ Jason M Repko · IPR · Institution
Instituted review of claims 1–22 and 29–40 on obviousness over Kanamori and McCowan; Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed in this Decision, Petitioner has met this standard. Thus, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“At this stage, we disagree with Patent Owner because “[a] suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art . . . .” In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006). Although “demonstrating a teaching, suggestion, or motivation to combine known elements” by identifying language in a reference that specifically states a motivation can be a “helpful insight,” “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007). Instead, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“II. MOTION FOR JOINDER Petitioner filed a Motion for Joinder (Paper 3), requesting joinder as a petitioner in IPR2023-00559. IPR2023-00559 had been joined to IPR2022- 01060. IPR2023-00559, Paper 9 (Granting Motion for Joinder). On August 10, 2023, the Board terminated both IPR2022-01060 and IPR2023-00559. IPR2023-00559, Paper 13; IPR2022-01060, Paper 30. Thus, the Motion for Joinder is dismissed as moot.” slip op. at 2
§ 103 obviousnesscites KSRPatents in suitUS 8,503,691 - PTAB · Jan 10, 2024 · IPR2023-01119 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR of claims 1–5 on all petition challenges, finding a reasonable likelihood that Sony would prevail on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“C. Motion for Joinder and Consolidation Petitioner moves for joinder to and consolidation with related IPR proceeding IPR2023-00222 under 35 U.S.C. § 315 and 37 C.F.R. § 42.122(b). Paper 3 (Motion for Joinder). IPR proceeding IPR2023-00222 has been terminated due to settlement. See IPR2023-00222, Paper 13. Thus, there is no proceeding with which to join the present case. Accordingly, Petitioner’s motion for joinder and consolidation is denied.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The analysis below, however, discusses the meaning of “noise” as recited in claim 1. See supra §§ E.1.i. & F.1.e. In particular, at this stage and on this record, we disagree with Patent Owner’s arguments in claim 1 because we determine that the claim 1 sets the boundary for what is considered “noise” for the reasons discussed below. See id. During trial, the parties are invited to address whether the Board should read the claim in this way in its Final Decision.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 16–17. Petitioner also asserts that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. at 16. Dr. Stern’s testimony supports Petitioner’s assertions. See Ex. 1002 ¶¶ 30–32. For purposes of the Preliminary Response, Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 7 (quoting Pet. 165 [read: 16]–17). Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan as it is consistent with the level of skill shown in the ’058 patent and the asserted prior art.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,246,058 - PTAB · Jan 9, 2024 · IPR2023-01177 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–28 over all asserted challenges, finding a reasonable likelihood of success on at least one claim; it dismissed Sony’s joinder motion as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, and for the reasons explained below, we determine Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we 1 Petitioner identifies itself, Sony Electronics Inc., as well as Sony Group Corporation, Sony Corporation, and Sony Corporation of America, as the real parties-in-interest. Pet. 93. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 6, 2. institute an inter partes review of claims 1–28 in the ’611 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“seeking joinder as a party in the Amazon IPR and consolidation with the Amazon IPR. Paper 3, 1. In August 2023, the Board terminated the Amazon IPR in view of representations by Amazon and Patent Owner that they had settled their dispute in the Amazon IPR and related district court litigation. IPR2023-00286, Paper 16, 2. We dismiss Petitioner’s Motion for Joinder as moot in view of the Amazon IPR termination.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6. Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Dr. Kenny’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 22–23. Patent Owner asserts that “[a] person of ordinary skill in the art would have a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Prelim. Resp. 13. Patent Owner also asserts that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. Dr. Sayeed’s testimony supports Patent Owner’s assertions. See Ex. 2002 ¶ 26. Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “approximately three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 13; Pet. 6. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“In regards to Patent Owner’s position that the filter β(z) described in the Specification is the claimed filter (Prelim. Resp. 11), we note that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d at 1316. However, “[t]o act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “the specification may reveal an intentional disclaimer, or disavowal, of claim scope,” and it is the inventor’s disavowal that is dispositive of the claim construction. Phillips, 415 F.3d at 1316; see also Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (“To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’”)). Furthermore, it is impermissible to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Our view, at this juncture, is that the Specification does not indicate that there is an intended “special definition” for the term “filter that describes a relationship for speech between the first physical microphone and the second physical microphone.” Moreover, the Specification does not contain an express any disavowal of the scope of the claim term to limit the scope of the term to Patent Owner’s relied-upon citation to the disclosure relating to β(z). See Ex. 1001, 5:31–32. Accordingly, on this record, in the absence of a special definition of the term, we decline to import limitations into the claim term and read in the β(z) embodiment only into the term. Patent Owner also asserts that its proposed claim construction should be adopted because under a broad claim construction the term could include a delay filter, but then in view of dependent claim 7, this would result in applying two delays in succession. Prelim. Resp. 16. Patent Owner, with Dr. Sayeed’s supporting testimony, asserts that because “[a]pplying two delays in succession is equivalent to applying a single delay for the sum of those two delays,” so a person of skill in the art would realize the filter at issue cannot be a delay filter. Id.; Ex. 2002 ¶ 62. On this record, we find that Patent Owner’s assertion, and the supporting testimony, fail to provide support explaining why two delays in succession would not be acceptable. The parties may present additional briefing on this issue during trial.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,326,611 - PTAB · Jan 9, 2024 · IPR2023-01155 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–28 and all petitioned challenges, finding a reasonable likelihood of success on at least one claim; the joinder motion was dismissed as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, and for the reasons explained below, we determine Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we 1 Petitioner identifies itself, LG Electronics Inc., as the real party-in-interest. Pet. 96. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 6, 2. institute an inter partes review of claims 1–28 in the ’611 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“seeking joinder as a party in the Amazon IPR and consolidation with the Amazon IPR. Paper 3, 1. In August 2023, the Board terminated the Amazon IPR in view of representations by Amazon and Patent Owner that they had settled their dispute in the Amazon IPR and related district court litigation. IPR2023-00286, Paper 16, 2. We dismiss Petitioner’s Motion for Joinder as moot in view of the Amazon IPR termination.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “approximately three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 13; Pet. 6. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“the Specification is the claimed filter (Prelim. Resp. 11), we note that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d at 1316. However, “[t]o act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “the specification may reveal an intentional disclaimer, or disavowal, of claim scope,” and it is the inventor’s disavowal that is dispositive of the claim construction. Phillips, 415 F.3d at 1316; see also Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (“To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’”)). Furthermore, it is impermissible to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Our view, at this juncture, is that the Specification does not indicate that there is an intended “special definition” for the term “filter that describes a relationship for speech between the first physical microphone and the second physical microphone.” Moreover, the Specification does not contain an express any disavowal of the scope of the claim term to limit the scope of the term to Patent Owner’s relied-upon citation to the disclosure relating to β(z). See Ex. 1001, 5:31–32. Accordingly, on this record, in the absence of a special definition of the term, we decline to import limitations into the claim term and read in the β(z) embodiment only into the term. Patent Owner also asserts that its proposed claim construction should be adopted because under a broad claim construction the term could include a delay filter, but then in view of dependent claim 7, this would result in applying two delays in succession. Prelim. Resp. 16. Patent Owner, with Dr. Sayeed’s supporting testimony, asserts that because “[a]pplying two delays in succession is equivalent to applying a single delay for the sum of those two delays,” so a person of skill in the art would realize the filter at issue cannot be a delay filter. Id.; Ex. 2002 ¶ 62. On this record, we find that Patent Owner’s assertion, and the supporting testimony, fail to provide support explaining why two delays in succession would not be acceptable. The parties may present additional briefing on this issue during trial.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,326,611 - PTAB · Jan 9, 2024 · IPR2023-01128 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR of claims 1, 2, and 5–28 on all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, and for the reasons 1 Petitioner identifies itself, Meta Platforms, Inc., as the real party-in-interest. Pet. 97. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 7, 2. explained below, we determine Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 2, and 5–28 in the ’611 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“seeking joinder as a party in the Amazon IPR and consolidation with the Amazon IPR. Paper 2, 1. In August 2023, the Board terminated the Amazon IPR in view of representations by Amazon and Patent Owner that they had settled their dispute in the Amazon IPR and related district court litigation. IPR2023-00286, Paper 16, 2. Subsequently, in September 2023, Petitioner filed an Unopposed Motion to Withdraw the Motion for Joinder, stating that “in view of the Board’s Termination Order in the Amazon IPR, Petitioner should be permitted to withdraw its Joinder Motion.” Paper 9, 2. Based on the foregoing, we grant Petitioner’s Unopposed Motion to Withdraw the Motion for Joinder, as the underlying Motion for Joinder is moot in view of the Amazon IPR termination.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “approximately three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 13; Pet. 6–7. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“that filter,” based on the ’611 patent Specification’s disclosure that β(z) “describes the relationship between O and calibrated O for speech.” Prelim. Resp. 11; Prelim. Sur-Reply 1; Ex. 1001, 5:31–32. We agree with Patent Owner that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d at 1316. However, “[t]o act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “the specification may reveal an intentional disclaimer, or disavowal, of claim scope,” and it is the inventor’s disavowal that is dispositive of the claim construction. Phillips, 415 F.3d at 1316; see also Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (“To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’”)). Furthermore, it is impermissible to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Our view, at this juncture, is that the Specification does not indicate that there is an intended “special definition” for the term “filter that describes a relationship for speech between the first physical microphone and the second physical microphone.” Moreover, the Specification does not contain an express any disavowal of the scope of the claim term to limit the scope of the term to Patent Owner’s relied-upon citation to the disclosure relating to β(z). See Ex. 1001, 5:31–32. Accordingly, on this record, in the absence of a special definition of the term, we decline to import limitations into the claim term and read in the β(z) embodiment only into the term.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,326,611
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.