• Apple Inc. v. Personalized Media Communications LLCSome claims unpatentable
  PTAB · Sep 8, 2022 · IPR2016-01520 · APJ Kevin F Turner · IPR · Remand

  On remand, claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 were held unpatentable; claim 3 was not shown unpatentable, and the contingent motions to amend remained denied.

  RulingsRemand decision

  • RemandOther

    “CONCLUSION After reviewing the record developed during trial anew and taking into account the Federal Circuit’s decision, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 of the ’635 Patent are unpatentable, and that Petitioner has not demonstrated by a preponderance of the evidence that claim 3 of the ’635 Patent is unpatentable.” slip op. at 103

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

    “in the art would have understood “encrypted video” recited in claim 4 to exclude teletext and would recognize “video” to be distinct from static text and images. 754-PO Resp. 19. Petitioner counters that “video” is any information that is visually perceivable including the display of static pictures. 754-Pet. Reply 5 (citing IPR2016-00754, Ex. 2028, 10–12; IPR2016-00754, Ex. 1003, 278:21–24, 258:16–19, 13:38–52, 188:17–18, 249:53–56). During oral argument, Petitioner argued that a single image can qualify as video. IPR2016-00754, Paper 40, 14:24–25 (“JUDGE WARD: So one image qualifies as video. MR. SERNEL: I think arguably it would.”). We do not agree with Petitioner’s position that the display of a static image constitutes “video”; otherwise, there would be no difference in an image and video. We determine that video requires moving visuals. In its Preliminary Response, Patent Owner stated that video shows movement and changes within an image. IPR2016-00754, Paper 7, 60 (citing IPR2016- 00754, Ex. 2001 ¶ 122). Petitioner’s Declarant Mr. Wechselberger seems to agree as he describes that “[s]uccessive frames of text and/or graphics presented on the display means 20 constitutes video.” IPR2016-00754, Ex. 1001 ¶ 141. We determine that the construction of the term “video” recited in claim 4 of the ’635 Patent means “visually perceivable non-static imagery.”” slip op. at 44

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

    “teletext in accordance with its well-known capabilities as part of a television program. IPR2016-00754, Ex. 1001 ¶ 201. As the Supreme Court instructed in KSR, it is proper to “consider the inferences and creative steps a person of ordinary skill in the art would employ.” 550 U.S. at 401. Based on the foregoing, we determine Petitioner has provided a sufficient rationale for the modification of Guillou. Id. at 418. Accordingly, we determine the record supports Petitioner’s proposed modification of Guillou such that the encrypted materials comprise a portion of a television program, and we adopt Petitioner’s contentions as our own.” slip op. at 57

  Patent outcomesUS 8,559,635 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,559,635
• Apple Inc. v. Personalized Media Communications LLCSome claims unpatentable
  PTAB · Sep 8, 2022 · IPR2016-00754 · APJ Kevin F Turner · IPR · Remand

  On remand, claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 were held unpatentable; claim 3 was not shown unpatentable.

  RulingsRemand decision

  • RemandOther

    “D. Scope of Consideration on Remand Per the briefing on remand, Petitioner asserts that the above-discussed” slip op. at 11

  • Adverse judgmentAdverse judgmentOther

    “1 Patent Owner subsequently disclaimed claims 1 and 2 of the ’635 Patent (IPR2016-00754, Ex. 3001), such that we need not consider those claims with respect to the instituted grounds. 2 US Patent No. 4,337,483, filed Jan. 31, 1980 (Ex. 1006) (“Guillou”). 3 US Patent No. 4,388,643, filed Apr. 6, 1981 (Ex. 1008) (“Aminetzah”). 4 US Patent No. 3,743,767, filed Oct. 4, 1971 (Ex. 1009) (“Bitzer”). 5 Under Board practice at the time, not all grounds and claims proffered in the Petition were instituted.” slip op. at 2

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

    “L. Contingent Motions to Amend As discussed above, Patent Owner also filed a Contingent Motion to Amend in each proceeding (IPR2016-00754, Paper 15; IPR2016-01520, Paper 16). In respective Final Written Decisions (754-FWD, 1520-FWD), we denied both contingent motions to amend. See 754-FWD, 64–71; 1520- FWD, 55–66. As neither the Federal Circuit decision in PMC, nor the Order Granting Request for Director Review, addressed the contingent motions to amend, we incorporate-by-reference our prior analyses and continue to deny those motions, save consideration of one claim, discussed below. In both Final Written Decisions, we were not persuaded that Patent Owner had demonstrated that the substitute claims had proper written description support, with the exception of one claim in each Motion to Amend, where those latter, substituted claims were not shown to be patentable over the prior art of record. See 754-FWD, 64–71; 1520-FWD, 55–66. With respect to IPR2016-01520, substitute claim 41, a proposed substitute for challenged claim 3, was shown to have proper written description support. 1520-FWD, 62–63. As discussed above, however, claim 3 has not been demonstrated to be unpatentable, such that proposed, substitute claim 41 need not be considered, based on the contingencies specified in the Contingent Motion to Amend. IPR2016-01520, Paper 16.” slip op. at 101

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art According to Petitioner’s Declarant, Mr. Wechselberger, a person of” slip op. at 15

  Patent outcomesUS 8,559,635 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,559,635
• Assembly Guidance Systems, Inc. v. Virtek Vision International UlcSome claims unpatentable
  PTAB · May 6, 2022 · IPR2021-00062 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1, 2, 5, 7, and 10–13 are unpatentable as obvious; claims 3, 4, 6, 8, and 9 were not shown unpatentable because the asserted combinations lacked sufficient motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree (or equivalent education) in electrical engineering or electro-optics engineering or physics, with at least three years of experience in a relevant technical field, such as laser systems, with related experience in working with coordinate systems in three dimensional space.” Pet. 8 (citing Ex. 1007 ¶¶ 1–6). Patent Owner indicates that it “generally agrees with the definition,” but argues that the term “laser systems” is too broad in that it would include “completely unrelated technologies, such as medical lasers and cutting lasers.” PO Resp. 31 (citing Ex. 2005 ¶ 11). As such, Patent Owner proposes an alternate formulation, stating that the appropriate person of ordinary skill in the art would have: A bachelor’s degree (or equivalent education) in electrical engineering or electro-optics engineering or physics, with at least three years of experience in a relevant technical field such as laser systems for alignment and metrology, with related experience in working with coordinate systems in three-dimensional space. Id. at 32. We are not persuaded that the minor change in the formulation of the level of ordinary skill in the art affects the combinations proffered by Petition’s grounds of unpatentability, and adopt Patent Owner’s formulation for purposes of this decision, because it is more narrowly focused on alignment and metrology, which is consistent the with the ’734 patent and the prior art at issue. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “required,” and asserts that its definition of “reflecting” is “to throw back (heat, light, or sound) without absorbing it.” PO Resp. 26 (citing Ex. 2008). Patent Owner refers to the ’732 patent, which “describes its targets as being ‘reflective’ because they throw back non-laser light from the secondary light source and laser light from the laser source.” Id. (citing Ex. 1001, code (57), 2:5–13). We agree, in part, with Patent Owner’s definition and arguments. The specification of the ’732 patent describes reflection of light for making determinations, but does not include a limitation that there be no absorption. See Ex. 1001, code (57), 2:5–13. Mr. Dorsey-Palmateer testifies that reflective targets reflect both laser and non-laser light and reflecting light, but does not indicate that light could not be absorbed. Ex. 2005 ¶ 31; see also id. ¶¶ 26, 30. Mr. Dorsey-Palmateer also testifies that the ordinary meaning of reflecting light does not refer to the physics of what makes a light visible, but does not provide any explanation or support for this statement. Id. ¶ 31. An examination of the definitions in Exhibit 2008, taken from Merriam-Webster’s dictionary, does not show any definition that specifies absorption, with or without. The closest is “to throw back light or sound,” but the definition does not include any degree of absorption, per Patent Owner’s proposed construction. As such, we agree, in part, that a proper construction of “reflecting” is “to throw back.” It is self-evident that if all of the heat, light or sound is absorbed, then nothing can be thrown back. The addition of “without absorbing it” to the definition does not provide further clarity, as neither Patent Owner, nor the ’734 Patent, provides any means for determining a degree of absorption/reflectance. Patent Owner may be advocating the adoption of the alternative definition because Patent Owner seeks to distinguish certain types of reflection from “ordinary” reflection. Patent Owner asserts that “[t]he ordinary meaning of reflecting light, however, does not refer to the physics of what makes an object visible.” PO Resp. 27 (citing Ex. 2005 ¶ 31). Patent Owner’s declarant, Mr. Dorsey-Palmateer, asserts that: The term “reflective target” (also known as a “retroreflective target”) is known in the industry and refers to a target with a mirror-like, reflective surface that can reflect both laser and non-laser light. Note that the ordinary meaning of reflecting light, however, does not refer to the physics of what makes an object visible. Ex. 2005 ¶ 31. We do not agree. The terms “reflective target” and “retroreflective target” are different and cannot be presumed to have the same meaning. Further, the ’734 Patent does not disclose that the “reflective targets” to be “mirror-like,” and claim 1 merely requires that they “reflect[] light toward the photogrammetry device.” Lastly, it is exactly the amount of reflectance and at what wavelengths that determines the appearance of an object; the color of an object is determined by the absorption of wavelengths corresponding to that color and the reflectance back of the rest of the visible spectrum. See Paper 23, 56:21–59:8 (discussion from the Oral Hearing of Specification support for reflectance). Accordingly, the ’734 Patent provides no disclosure of reflecting light by allowing for no absorption, nor are there any other disclosures constraining the definition from the normal understanding of the term. As such, we agree, in part, with Patent Owner, that “reflecting” should be understood as “to throw back,” consistent with its ordinary and customary meaning, and apply the same in the analysis below.” slip op. at 12

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

    “We address these arguments by first looking to the subject language of independent claim 1: “identifying a pattern of the reflective targets on the work surface in a three dimensional coordinate system.” It is apparent that targets are on the work surface and are not placed according to the three-dimensional coordinate system; rather, it is the pattern that is identified in the three-dimensional coordinate system, according to claim 1. This suggests that this is not akin to the mere recognition of a constellation in the sky because the pattern is used later, in claim 1, to direct the laser beam to scan the targets and to calculate “a precise location of the targets.” A mere recognition of a pattern, i.e., the relative placement of targets, without more, such as providing their 3D coordinates, is not sufficient to meet the requirements of the claim. We also note that the term “pattern recognition” is a term of art (Ex. 3001) and is not used in the ’734 Patent. Similarly, “allat-once recognition” and “simultaneously identifying both the locations and relative positions” are not disclosed in the ’734 Patent. Although Patent Owner may envision such use of the method of independent claim 1, we are not persuaded that claim 1 requires the identification of the pattern to through “pattern recognition” or “all-at-once recognition.” In general, limitations are not to be read from the specification into the claims, although in this case, they do not appear to be recited in the Specification either. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). As such, we determine that “identifying a pattern of the reflective targets” should be construed as determining the locations, and thus the relative positions, of those targets. See Dec. 10–11.” slip op. at 15

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

    “We disagree with Patent Owner’s arguments. Although the analysis in the Petition could have been more robust, we continue to find that the Petition provides a motivation to combine the disclosure of Keitler and Briggs. The Petition provides the alternatives in Briggs, i.e., angular direction and 3D coordinates, such that one of ordinary skill in the art would have understood them to be alternative formulations. Pet. 33–35. “A person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421. The two alternatives satisfy the criterion supplied in KSR of “a finite number of identified predictable solutions,” such that it would have been obvious to try 3D coordinate process in the system disclosed in Keitler. That is what Petitioner is positing in its Petition. See Pet. 33–35. We find the support provided in the Petition to be sufficient, even absent additional support by Petitioner’s declarant. Based on the foregoing discussion and record developed during this proceeding, we determine that Petitioner has shown by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine the teachings of Keitler and Briggs as provided in the Petition.” slip op. at 22

  Patent outcomesUS 10,052,734 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,052,734
• Xilinx, Inc. / Xilinx Asia Pacific Pte. Ltd. v. Analog Devices, Inc.Some claims unpatentable
  PTAB · Mar 11, 2022 · IPR2020-01564 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1, 2, and 4–8 were not shown unpatentable; claim 12 was shown unpatentable as obvious over Elbornsson and Jamal, and over Eklund and Jamal.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner asserts a person of ordinary skill in the art (“POSITA”) at the time of the invention “would have at least a Master’s Degree in Electrical Engineering or equivalent field, including studies in designing data converters, and two to five years of relevant experience; or a Ph.D. degree in Electrical Engineering or equivalent field.” Pet. 34 (citing Ex. 1202 ¶¶ 17–18). Patent Owner does not address the level of ordinary skill in the art in its Response. See generally PO Resp. For purposes of this decision, we adopt Petitioner’s formulation because it is consistent with the ’750 patent and the asserted prior art.” slip op. at 9

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

    “U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. §42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Patent Owner contends that “random clock,” “offset sensing circuit,” and “sensing” a gain or offset signal need to be construed. PO Resp. 13–17. Petitioner contends that no construction of any term is necessary. Reply 2– 5. The contentions of the parties were addressed in our Final Written Decision for IPR2020-01483, which was mailed on the same day as this Decision. We decline to construe these terms for the reasons given in that Final Written Decision.” slip op. at 9

  • Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner

    “Dr. Raychowdhury testifies that, in Jamal’s technique, “the input is de-correlated from the pseudo random chopping sequence.” Ex. 2206 ¶ 64. Then, inexplicably, Dr. Raychowdhury testifies that “Jamal is unambiguous that ‘C[m] is white, has zero mean, and is uncorrelated with the input signal.’” Id. at ¶ 69. Patent Owner does not explain nor even address Dr. Raychowdhury’s inconsistent testimony. Given the inconsistent positions taken by Patent Owner’s expert, and the lack of explanation from Patent Owner, we give no weight to Dr. Raychowdhury’s testimony.” slip op. at 14

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

    “Even were we to accept Petitioner’s contention, that a ‘“random clock’ can be satisfied by a 1-bit pseudo-random bit sequence,” (Pet. 36), Jamal discloses that the alleged random clock C[m] “is uncorrelated with the input signal.” Ex. 1205, 8. A chopping SHA multiplies the input signal and the uncorrelated random signal C[m], then provides a chopped analog signal to the ADC converter. Id. Petitioner has not persuasively shown that chopping an input signal with an uncorrelated random signal, then providing the chopped signal to a converter as disclosed by Jamal, describes “said random clock configured to decorrelate an input signal provided to said first converter from said random clock” as recited in claim 1. We find that claim 1 is not unpatentable based on Jamal. Because claims 2 and 4–6 depend from claim 1, we find that these claims are also not unpatentable based on Jamal.” slip op. at 15

  Patent outcomesUS 6,900,750 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,900,750
• Xilinx, Inc. / Xilinx Asia Pacific Pte. Ltd. v. Analog Devices, Inc.Some claims unpatentable
  PTAB · Feb 2, 2022 · IPR2020-01336 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 4, and 6 are unpatentable as obvious over Oliaei; claims 3, 5, 7, 10–17, and 29 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address the level of ordinary skill in its Response. See generally PO Resp. Patent Owner’s declarant, Dr. Peter Kinget, testifies that Petitioner’s proposed level of education and experience for a person of ordinary skill is reasonable. Ex. 2002 ¶ 9. For purposes of this decision, we adopt Petitioner’s proposal because it is consistent with the ’463 patent and the asserted prior art and not disputed by Patent Owner.” slip op. at 6

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

    “U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. §42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).1 Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner contends it has construed all claim terms according to this standard, but does not propose any express constructions. See Pet. 32–33 (citing Ex. 1002 ¶¶ 20, 22, 134–135). Patent Owner does not expressly address claim construction of any claim terms in its Response. See generally PO Resp. We determine that no formal constructions of any specific terms or words in the claim are necessary in this proceeding.” slip op. at 7

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Overall, we find Dr. Holberg’s testimony particularly telling, and not very persuasive, with respect to combining Oliaei and Vittoz. Dr. Holberg makes clear that a person of ordinary skill in the art would have analyzed Oliaei’s circuit, and in particular any switches that were of concern, before implementing charge injection compensation circuitry. See, e.g., id. at 25:8– 26:22 (Dr. Holberg describing for a pacemaker amplifier circuit he designed “I definitely did a lot of analysis because I had to deal with the DC value, so I did a lot of analysis on the charge injection impact.”). Dr. Holberg did not, however, provide any technical analysis or circuit performance simulations in his original declaration showing that Oliaei would benefit from Vittoz’s charge injection compensation circuitry. See Ex. 1002 ¶¶ 200–218. Also, in his original Declaration, Dr. Holberg testified that “[a] POSITA could have combined the common-mode circuit and the common-mode feedback circuit of Oliaei with the impedance matching circuit of Vittoz using the known modeling methods disclosed by Vittoz.” Ex. 1002 ¶ 202 (citing Ex. 1012, 101–105, Fig. 7). The mere fact that the prior art reference could be modified does not satisfy the requirements for a finding of obviousness. Indeed, even if Vittoz’s charge injection circuit could be implemented in Oliaei’s CMFB circuit, and “a POSITA would recognize Vittoz’s balancing capacitors and dummy switches would operate in substantially the same way, whether in the system disclosed by Vittoz or the system disclosed by Oliaei,” as Dr. Holberg testifies, this does not explain persuasively why a person of ordinary skill in the art would have added Vittoz’s charge injection circuitry into Oliaei’s CMFB circuit.” slip op. at 44

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMixed

    “Considering all the evidence of record, we agree with Patent Owner that Petitioner has not asserted sufficient rationale for the combination of Oliaei and Vittoz. See PO Resp. 51–77; Ex. 2002 ¶¶ 71–103. Petitioner alleges similarities between Oliaei and Vittoz and that the resulting combination, based on a desire to compensate for charge injection, would have predictably yielded the claimed system. Pet. 77–81. The arguments and evidence are deficient, however, for several reasons. First, as discussed above, we considered Petitioner’s assertion that a person of skill in the art would consider charge injection as a reason to look to Vittoz. Pet. 77. The evidence from both Dr. Holberg and Dr. Kinget is clear, however, that charge injection is not always necessary or compensated for in every switched capacitor circuit. See, e.g., Ex. 2003, 39:16–18 (Dr. Holberg stating that “I’m sure I’ve never put charge compensation circuitry on every switch. I’m sure of that.”). Second, Petitioner’s evidence including simulations of the combined Oliaei and Vittoz teachings, together with Patent Owner’s simulation evidence, illustrate that there are no clear-cut improvements in Oliaei’s circuit. The experts’ simulations, as a whole, show that by choosing particular parameters Oliaei’s circuit performance might be improved, and choosing other reasonable parameters would not improve circuit performance. With results of the simulations going both ways, the evidence is not persuasive that the combination would have yielded a predictable result. Third, the alleged rationale of adding charge injection compensation does not address sufficiently the reason a person of ordinary skill in the art would combine the relevant teachings of Oliaei and Vittoz. Oliaei expressly discloses that the inventors undertook “numerous” simulations to address issues of clock-feedthrough glitches, i.e., charge injection, and that the results showed no impact of charge injection on system performance. Ex. 1007 5:17–32. Without sufficient explanation, Petitioner and Dr. Holberg have failed to present a persuasive rationale for the alleged combination.” slip op. at 49

  Patent outcomesUS 7,012,463 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,012,463
• Google LLC v. Personalized Media Communications, LLCSome claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00725 · APJ Georgianna W Braden · IPR · Final written decision

  Claim 4 is unpatentable as obvious over Torpey and Cox ’645; claims 5–10 were not shown unpatentable over Cox ’645 and Cox ’404.

  RulingsFinal written decision

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

    “transmission station’ is defined in” the ’560 patent. Ex. 1013, 29; see Ex. 2003, 3, 6. We agree that the ’560 patent defines the term “intermediate transmission station.” See Ex. 1001, 21:67–22:1. In particular, the patent states: “stations that receive and retransmit broadcast transmissions are called ‘intermediate transmission stations.’” Ex. 1001, 21:67–22:1; see Ex. 1013, 29; Ex. 2003, 3, 6. The ’560 patent further describes the “intermediate transmission station” as retransmitting programming both “over-the-air (hereinafter, ‘broadcast’) or over hard-wire (hereinafter, ‘cablecast’).” Ex. 1001, 7:16–22; see also 44:28–31 (“transmitting said transmissions via conventional broadcast or cablecast means”); 169:45–54. Consistent with the ’560 patent’s definition and both district courts, we construe “intermediate transmission station” to mean “station that can receive and retransmit broadcast transmissions.” See Ex. 1001, 21:48–50; Ex. 1013, 28–31, 88; Ex. 2003, 5–15. This definition does not exclude a station that can receive and retransmit hard-wire or cablecast transmission. See Ex. 1001, 7:16–22; see also id. at 44:28–31 (“transmitting said transmissions via conventional broadcast or cablecast means”), 169:45–54.” slip op. at 13

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

    “2. Other Terms Because the express construction of other claim terms are not needed to resolve any dispute in this proceeding at this time, we do not construe any of the other claim limitations. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1005, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner argues that a person having ordinary skill in the art at the time of the alleged invention would have had “at least a bachelor’s degree (or equivalent) in digital electronics, electrical engineering, computer engineering or a related technical degree, and two to five years of post-degree experience in a similar field.” PO Resp. 5. Dr. Weaver’s testimony supports Patent Owner’s position. See Ex. 2001 ¶ 35. Based on our review of the ’560 patent, the types of problems and solutions described in the ’560 patent and cited prior art, and the testimony of both Mr. Lipoff (see Ex. 1003 ¶ 33) and Dr. Weaver (see Ex. 2001 ¶ 35), we find that a person of ordinary skill in the art at the time of the claimed invention would have had at least a bachelor’s degree in electrical engineering or computer engineering (or equivalent), and at least two years of work experience in the field of television broadcasting systems, computer systems or television electronics, and/or multimedia or real-time video systems. We agree with Petitioner’s contention that “[w]ith more education, for example, postgraduate degrees and/or study, less experience is needed to attain an ordinary level of skill in the art. Similarly, more experience can substitute for formal education.” We note that our analysis would be the same under either party’s proposed level of skill in the art. C.” slip op. at 16

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

    “We agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Cox ’404’s column address code constitutes a record or that it is stored. See, e.g., Tr. 30:25–31:14. Additionally, we agree with Patent Owner that Petitioner fails to demonstrate that the column address code is altered “to indicate at least one of reception and storage of said selected a portion of units of programming,” as required by the challenged claim. Contrary to Petitioner’s argument that Cox ’404 discloses that “generated column address code which is incremented in response to each character Byte of the acquired data row” (Pet. 62–64; Tr. 17:24–20:13), Cox ’404 explicitly states the following: Each character Byte of a data row acquired by data acquisition circuit 44 is coupled to page memory 46 by a data line 56 and written into a corresponding memory location thereof in accordance with the address signals developed on an address bus 58, the address signals being formed by the row address code transmitted with the data row and an internally generated column address code which is incremented in response to each character Byte of the acquired data row. In other words, the row address code transmitted with each data row will cause the character Bytes of that row to be stored in the corresponding memory address row of page memory 46 while a clock internal of data acquisition circuit 44 will increment the column address for each character Byte of the row. Ex. 1007, 6:9–23 (emphasis added). We understand Cox ’404 to disclose that its incrementing step occurs in data acquisition circuit 44 of Figure 3, while the first character is being stored in page memory 46. Id. at 6:13–16, Fig. 3. But we do not find where incrementing is an indication of storage or that the purported record is maintained to indicate reception of a unit of programming. Based on the entire disclosure of Cox ’404, the incrementing may happen before, after, or at exactly the same time as the storage of the first character. Cox ’404 does not disclose any feedback mechanism for page memory 46 to indicate storage to data acquisition circuit 44, and therefore, the incrementing does not appear to be an indication of storage. See id. at 6:19–23, Fig. 3. Accordingly, based on the entirety of the trial record before us, we find Petitioner has failed to demonstrate by a preponderance of the evidence that the combination of Cox ’645 and Cox ’404 teaches more than one operating record or that the alleged operating records are altered to indicate reception and storage of a selected unit of programming as recited by the challenged claim.” slip op. at 54

  Patent outcomesUS 9,674,560 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,674,560
• Google LLC v. Personalized Media Communications, LLCSome claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00721 · APJ Steven M Amundson · IPR · Final written decision

  Claims 7, 8, and 10 are unpatentable under § 103(a) over each asserted combination; claim 9 was not shown unpatentable because Lovett and Cox do not teach its switch connections.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner’s description of an ordinarily skilled artisan requires slightly less experience (“two to five years”) than Petitioner’s description (“at least three years”). See Pet. 12; Resp. 4. We adopt Patent Owner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’920 patent as well as the asserted prior art. Moreover, if the prior art renders the claimed subject matter obvious to a person with less experience and less knowledge, then the prior art renders the claimed subject matter obvious to a person with more experience and more knowledge. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). We note that our analysis would not change if we adopted Petitioner’s description of an ordinarily skilled artisan. Consistent with this, Dr. Weaver testifies that “the analysis would be the same” under either Petitioner’s description of an ordinarily skilled artisan or Patent Owner’s description. Ex. 2001 ¶ 37; see id. ¶¶ 34, 36.” slip op. at 13

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

    “term ‘intermediate transmission station’ is defined in” the ’920 patent. Ex. 1013, 29; see Ex. 2003, 3, 6. We agree that the ’920 patent defines the term “intermediate transmission station.” See Ex. 1001, 21:48–50. In particular, the patent states: “stations that receive and retransmit broadcast transmissions are called ‘intermediate transmission stations.’” Ex. 1001, 21:48–50; see Ex. 1013, 29; Ex. 2003, 3, 6. Consistent with the ’920 patent’s definition and both district courts, we construe “intermediate transmission station” to mean “station that can receive and retransmit broadcast transmissions.” See Ex. 1001, 21:48–50; Ex. 1013, 28–31, 88; Ex. 2003, 5–15.” slip op. at 14

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

    “Based on the claim language and the ’920 patent’s specification, we agree with Patent Owner that “operatively connected [to]” means “connected to enable data communication operations with.” See Ex. 1001, 9:1–5, 167:61–168:36, 169:26–43, 169:61–170:36, 171:32–172:55, 173:57–62, 183:24–39, 289:1–14, Figs. 6A–6B; Paper 28, 1–3. We also agree with Patent Owner that Petitioner’s proposed constructions focus on switch operation, i.e., “permits the switch to selectively,” instead of external connections to the switch. See Paper 27, 1; Paper 30, 1.” slip op. at 17

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

    “We agree with Petitioner that an ordinarily skilled artisan would have had sound reasons, i.e., the reasons articulated by Dr. Neuhauser, to combine the teachings of Lovett and Cox as Petitioner proposes. See Ex. 1003 ¶¶ 65–67, 78, 86–87. For example, a “person of skill would have been motivated” to use Cox’s “known method” for distributing teletext content with “the teletext content distributed by Lovett” to achieve the advantages of Cox’s teletext communication system. Id. ¶ 67. We also agree with Petitioner that an ordinarily skilled artisan would have had a reasonable expectation of success. Id. ¶ 66. (j)” slip op. at 56

  Patent outcomesUS 7,865,920 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,865,920
• Callminer, Inc. v. Nice Ltd.Some claims unpatentable
  PTAB · Jul 12, 2021 · IPR2020-00245 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1, 2, and 4 are unpatentable as obvious over Margulies I and Wentink; claims 5 and 6 were not shown unpatentable because the references do not establish the claimed quota.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner disagrees with Petitioner’s assessment of the level of ordinary skill, asserting that the educational background is too narrow and that the work experience is incorrect. PO Resp. 8–10. Specifically, Patent Owner asserts that an ordinarily skilled artisan “would have held a bachelor’s degree in electrical engineering, computer engineering, telecommunications engineering, computer science, or a related field, and would have had 1 to 3 years of experience working in call or contact center design and operations, including work force quality management.” PO Resp. 9–10 (citing Ex. 2005 ¶ 29). Like Petitioner, Patent Owner asserts that “[a]dditional formal technical education could substitute for less technical experience, and vice versa.” Id. at 10. Neither party asserts that the patentability issues turn on the level of ordinary skill that we adopt. See Tr. 36:14–19; Ex. 2005 ¶ 25 (Patent Owner’s declarant stating that, “[w]hile I disagree with Petitioner’s proposed definition of a [person of ordinary skill in the art, my opinions would not change if Petitioner’s level of ordinary skill was adopted in this proceeding”). We determine that the level of ordinary skill proposed by Petitioner is consistent with the challenged patent and the asserted prior art and we therefore adopt that level for purposes of our analysis below.” slip op. at 9

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

    “We agree with Patent Owner that the statement in the specification on which Petitioner relies for its construction is not definitional, because it states how the quality task “may be viewed” rather than how the task is necessarily viewed. See Ex. 1001, 6:5–9. Also, because the passage from the specification is a broad description of what the quality plan may encompass, we do not find Petitioner’s proposal helpful in delineating the scope of “quality task” in the context of the patentability issues raised in this proceeding. However, we do acknowledge that the ’872 patent describes a “quality task” quite broadly, and provides options for what a quality task may encompass. As explained below, we are not persuaded that we should adopt Patent Owner’s construction because the specification does not clearly describe the quality task itself as performing a quality evaluation for one or more interaction recordings. Rather, the patent describes a quality task as facilitating a person such as a manager to perform the evaluation. Figures 2A–2E of the ’872 patent illustrate examples of computer screens used to define a quality task. Ex. 1001, 6:13–14. Figures 2A and 2B show that defining a quality task includes defining “various aspects of a quality task’s logic.” Id. at Figs. 2A, 2B, 6:26–30. Figures 2A and 2D illustrate that “an evaluation form may be associated with a quality task.” Id. at Figs. 2A, 2D, 8:10–28. According to the ’872 patent, the “associated evaluation form may be provided to a quality manager who may use the evaluation form to evaluate an interaction.” Id. at 8:11–13.” slip op. at 12

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

    “Petitioner provides persuasive reasoning with rational underpinning for combining the teachings of Margulies I (incorporating Margulies II) and Wentink. Pet. 44, 47, 48–49 (citing Ex. 1006 ¶¶ 97, 106–108). Petitioner persuasively shows that it would have been obvious to a person of ordinary skill in the art to substitute the manual selection of interaction recordings disclosed in Margulies I and Margulies II “with a system that automatically and non-randomly selects the interaction recordings for evaluation, using certain predetermined criteria, as disclosed in Wentink.” Pet. 44 (citing Ex. 1006 ¶ 97) (emphasis omitted). An ordinarily skilled artisan would have made this substitution (replacing a manual selection process with an automated, business rules-driven process) to cure the inefficiency disclosed in Wentink that “quality management systems in the prior art ‘often require additional personnel and distract contact center employees from their primary task of speaking with customers.’” Ex. 1005 ¶ 4; Ex. 1006 ¶ 108. Moreover, the substitution would have no unexpected results and would have required nothing more than a straightforward software modification of replacing the manual selection code disclosed in Margulies I and II with automated rules to determine which interaction recordings to select based on parameters defined by a user, as disclosed in Wentink. Ex. 1006 ¶¶ 106– 108.” slip op. at 26

  Patent outcomesUS 8,553,872 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,553,872
• Callminer, Inc. v. Nice Ltd.Some claims unpatentable
  PTAB · Jun 16, 2021 · IPR2020-00221 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious under § 103; CallMiner did not show claims 11–17 unpatentable because its petition lacked sufficiently specific § 112(f) structure analysis.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’475 Patent, the background technical field, and the prior art, we adopt Patent Owner’s submission on the level of ordinary skill in the art. We agree with Petitioner that the minor change in the level of ordinary skill in the art does not affect whether the cited art demonstrates the patentability of the challenged claims. As such, we determine that a person of ordinary skill in the art the time of the invention would have had (1) a Ph.D. in electrical engineering, computer science, linguistics, or a related field; (2) a Master’s degree in the same with one year of experience implementing systems performing speech analysis; or (3) a Bachelor’s degree in the same with three years of experience implementing systems performing speech analysis.” PO Resp. 8. However, even under Petitioner’s definition of the level of ordinary skill, we reach the same conclusions below regarding patentability of the challenged claims.” slip op. at 7

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

    “Under Phillips, we begin with the language of the claim itself. Phillips, 415 F.3d at 1314 (“the claims themselves provide substantial guidance as to the meaning of particular claim terms”). Here, claim 1 recites “performing an initial processing on the audio signal for locating an at least one event within the audio signal,” and “performing additional processing on a part of the audio signal.” Ex. 1001, 10:43–44, 47–48. It is clear from the claim that the processing events, i.e., initial and additional processing steps, are separate processing steps, although the language of claim 1 does not recite the distinctiveness that Patent Owner asserts, i.e., that there cannot be any overlap in techniques that fall under the different processing steps. The initial processing must “locat[e] an at least one event,” and the additional processing must “provide[e] output related to the audio signal,” per claim 1. Id. Given the language of the claim, including the “comprising” recitation, we are not persuaded that the initial processing could not also provide some output related to the audio signal, of which the location of the event would generally fall under a type of output related to that signal. In other words, we are not persuaded that each processing step is fulfilled by a separate and distinct set of analysis processes.” slip op. at 10

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

    “We concur with Patent Owner’s assertions that elements of claims 11– 17 should be properly construed under 35 U.S.C. § 112 ¶ 6. We find Dr. Cohen’s testimony to be helpful in that he testifies that the “component” language of claims 11 and 13 are “functional terms,” and although those claims do not use the word “means,” he testifies that “a skilled artisan would need to review the specification to understand the scope and meaning of these terms.” Ex. 2004 ¶ 86. Dr. Stern’s testimony provides citations to the Specification, and attempts to provide the corresponding structure in Petitioner’s “alternative constructions.” See Ex. 1005 ¶¶ 60–61. As such, both parties acknowledge the functional natures of claims 11–17 and suggest the possibility that the claims need to be evaluated under § 112 ¶ 6. Weighing the testimony of both declarants and reviewing the language of independent claim 11 and claims dependent thereon, we are persuaded that those claims recite structures in functional terms such that they recite meansplus-function limitations. We agree that Petitioner’s analysis provides citations to the Specification that are not sufficiently specific or explained to identify the portions of the Specification that describe the corresponding structure. For example, claim 11 recites “initial processing component for,” which Petitioner states has the function of “activating an at least one initial processing engine,” and Petitioner cites to the Abstract, three figures and eleven sections of the ’475 Patent. Pet. 17–18. The citations are wide-ranging but not specific, so that no particular element from the Specification of the ’475 Patent is asserted by Petitioner to be structure invoked. For the next limitation of claim 11, “initial processing engine for,” nearly the same citations are provided with the same lack of specificity. Petitioner cannot be said to have provided specific structures to the functional limitations of claims 11–17 through the descriptions provided in the Petition. See Pet. 17– 22. As such, we determine by a preponderance of evidence that the Petition fails, under 37 C.F.R. § 42.104(b)(3), to challenge claims 11–17 with sufficient specificity. Thus, Petitioner has failed to establish based on a preponderance of evidence that claims 11–17 are unpatentable as obvious under 35 U.S.C. § 103. Given this, we limit our obviousness analysis to consideration of claims 1–10 below.” slip op. at 22

  • BurdenNot shown unpatentable

    “We agree that Petitioner’s analysis provides citations to the Specification that are not sufficiently specific or explained to identify the portions of the Specification that describe the corresponding structure. For example, claim 11 recites “initial processing component for,” which Petitioner states has the function of “activating an at least one initial processing engine,” and Petitioner cites to the Abstract, three figures and eleven sections of the ’475 Patent. Pet. 17–18. The citations are wide-ranging but not specific, so that no particular element from the Specification of the ’475 Patent is asserted by Petitioner to be structure invoked. For the next limitation of claim 11, “initial processing engine for,” nearly the same citations are provided with the same lack of specificity. Petitioner cannot be said to have provided specific structures to the functional limitations of claims 11–17 through the descriptions provided in the Petition. See Pet. 17– 22. As such, we determine by a preponderance of evidence that the Petition fails, under 37 C.F.R. § 42.104(b)(3), to challenge claims 11–17 with sufficient specificity. Thus, Petitioner has failed to establish based on a preponderance of evidence that claims 11–17 are unpatentable as obvious under 35 U.S.C. § 103. Given this, we limit our obviousness analysis to consideration of claims 1–10 below.” slip op. at 22

  Patent outcomesUS 7,599,475 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,599,475
• Marvell Semiconductor, Inc. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Feb 1, 2021 · IPR2019-01350 · APJ Jameson Lee · IPR · Final written decision

  Claims 3 and 9 are unpatentable as obvious over Shellhammer; claim 8 was not reached on the merits.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteDecided for patent owner

    “Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020) (footnote omitted). This is such a situation. We cannot reach a decision on the merits with respect to whether Petitioner has established the unpatentability of claim 8 under any ground of unpatentability asserted by Petitioner, i.e., (1) obvious over Sherman and Trompower, (2) obvious over Shellhammer and Trompower, and (3) obvious over Shellhammer and Panasik.” slip op. at 77

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “challenged claims indeed do satisfy the requirements of 35 U.S.C. § 119 with respect to the foreign application the priority of which it claims.5 Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). Dynamic Drinkware stated that because the USPTO does not examine priority claims unless necessary, the Board has no basis to presume that a patent is necessarily entitled to the filing date of its provisional application. Id. at 1380. Under the reasoning of Dynamic Drinkware, the same would be true for a foreign application the priority of which has been claimed. Patent Owner has made no substantive showing in this proceeding of actual entitlement to the filing date of the German Application, by satisfaction of all pertinent requirements of 35 U.S.C. § 119. Accordingly, the effective filing date of the ’676 patent is August 8, 2001, not the earlier filing date of German Application No. 100 39 532.5.” slip op. at 13

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

    “supported by the underlying disclosure of Sherman. Dr. Roy in paragraph 175 of his Declaration (Ex. 1003) cites to column 4, lines 1–8, of Sherman, which states: “The CFP occurs with a regular period, and all 802.11 terminals set their NAV’s during the CFP. To realize such a super frame the following sequence of frames/phases can be used as shown in the graph of FIG. 5.” Ex. 1004, 4:1–5. This disclosure does not indicate, as Dr. Roy concludes, that the control station “relinquish[es]” time to 802.11 CP access if no HIPERLAN/2 transmission requests are pending. Ex. 1003 ¶ 175. We also find unpersuasive Dr. Roy’s testimony that if there is sufficient HIPERLAN/2 traffic, Sherman teaches that the HIPERLAN/2 phase may be extended to very close to the entire superframe. Id. As discussed above, in Sherman, the CFP already is preset, without regard to whether or how many HIPERLAN/2 requests are pending. Ex. 1004, 6:5–6. Dr. Roy’s conclusion is not supported by the disclosure of Sherman and also is not adequately explained.” slip op. at 34

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

    “III. CONSTITUTIONAL APPOINTMENT Patent Owner argues that Administrative Patent Judges (“APJs”) “are principal officers under the Appointments Clause of the Constitution” “but undisputably are not appointed through the constitutionally-mandated mechanism of appointment for principal officers.” PO Resp. 60. The Federal Circuit, however, addressed this issue and devised a remedy in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1325 (Fed. Cir. 2019) cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13, 2020). Patent Owner argues that the remedy devised by the Federal Circuit “impermissibly rewrites the statutes governing APJs.” Id. at 61. We decline to consider the argument because the Arthrex decision states otherwise. See Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”).” slip op. at 77

  Patent outcomesUS 7,016,676 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,016,676

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.