- Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00731 · APJ Trevor M Jefferson · IPR · Remand
Claim 28 is unpatentable under § 103(a) over Martin and Farley; Martin qualifies as prior art because Dr. Moran’s contribution made him a joint inventor of the relied-on disclosure.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’560 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 19:14–19:62. In addition, Patent Owner admits that “large portions of the ’560 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id.” slip op. at 21
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“With respect to Dr. Moran’s contribution to the Martin reference, we find Dr. Moran’s testimony credible over that of Mr. Cheyer and Mr. Martin, because, as the Federal Circuit noted, because the latter testimony conflicts with other evidence of record. Google, 34 F.4th at 1088. Cheyer’s and Martin’s testimony that Dr. Moran’s role was administrative and non-technical with respect to the core infrastructure of OAA is belied by a separate article describing OAA that includes the facilitator and lists Dr. Moran as the lead author. Ex. 1174, 1–2, 4. Indeed, the OAA article lists Dr. Moran and Mr. Cheyer as authors but excludes Mr. Martin. Id. Although Mr. Cheyer disagrees with the article’s description of the origins of OAA and the facilitator (Ex. 2037, 78:23–79:12 (Mr. Cheyer asserting that he “would not agree in the characterization of Open Agent Architecture grew out of [earlier] works” as described in the article)), Mr. Cheyer admits patent]” (id. at 1088), “which is a continuation-in-part of the application that resulted in the ’115 patent” (id. at 1086). in his deposition that Dr. Moran was extremely technical, and probably made technical contributions to OAA (id. at 34:1–20, 64:16–20, 102:2–4). Similarly, Mr. Martin’s testimony also supports that Dr. Moran “may have made contributions to the technological development of either interfaces for use with OAA, agents used with OAA, or systems based on OAA.” Ex. 2038, 116:2–8, 117:7–119:10. When viewed in light of Dr. Moran’s status as a joint inventor on the closely related ’931 patent (Ex. 2002, code (75)) and as a lead author of the substantive paper that discusses OAA’s early development, we find Mr. Martin’s and Mr. Cheyer’s admissions—that Dr. Moran made technical contributions to OAA—undermine their testimony that Dr. Moran’s inclusion as an author on the Martin reference was a matter of administrative respect and not a result of a technical contribution. See PO Remand 11; PO Resp. 50–51. Indeed, we find Cheyer and Martin’s general description of Dr. Moran—as an administrator without technical contributions to the Martin reference—is not supported by the full record, which instead supports Dr. Moran’s contributions to technical work that involves the Martin reference, such as contemporary papers and the ’931 patent. See, e.g., Ex. 1174, 2002. In sum, the testimony and contemporary evidence supports Dr. Moran’s testimony that his conception and contribution to the Martin reference, the facilitator, was technical and not merely administrative. Ex. 1007 ¶ 39.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We disagree with Patent Owner’s contention. Rather, we find that the Petition persuasively explains how Martin discloses a facilitator agent arranged to coordinate cooperative task completion within a distributed computing environment having autonomous service-providing electronic agents. Pet. 39; Ex. 1002 ¶ 100. Further, Petitioner persuasively demonstrates that Farley discloses how agent functionality can be distributed across multiple processes. Pet. 39–40; Ex. 1002 ¶¶ 101–102. Finally, Petitioner also provides persuasive reasons as to why one of ordinary skill in the art would have been motivated to combine Martin and Farley, including reasons expressly provided by Farley. Pet. 40; Ex. 1002 ¶¶ 103–104.” slip op. at 28
- ExcludeMotion to exclude, deniedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 26–30. We maintain these determinations on remand.” slip op. at 29
Patent outcomesUS 7,069,560 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,069,560 - Google LLC v. Ipa Technologies Inc.All claims unpatentablePTAB · Jun 1, 2023 · IPR2019-00728 · APJ Trevor M Jefferson · IPR · Remand
On remand, the Board held claim 63 unpatentable under § 103(a) over Martin and Kohn, finding Martin was prior art because Moran was a joint inventor.
RulingsRemand decision- RemandDecided for petitioner
“Petitioner relies upon is sufficient to establish the degree to which the reliedon portions of the Martin reference were conceived by Dr. Moran, and the significance of those contributions to the overall anticipating disclosure of the Martin reference. See Google, 34 F.4th at 1086–88; Duncan Parking, 914 F.3d at 1358. Contrary to Patent Owner’s contentions, Petitioner is not merely relying on Dr. Moran’s authorship to establish inventorship. PO Remand 8 (citing In re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982)). Instead, Dr. Moran’s testimony establishes how his background led to his contributions to the multiple facilitator architectures disclosed in Martin and in the ’115 patent specification. Google, 34 F.4th at 1087; Ex. 1007 ¶¶ 23– 34 (OAA project), 35–39 (OAA paper). In view of Dr. Moran’s testimony, we do not agree with Patent Owner that evidence analogous to that in Duncan Parking is required in this case or for Petitioner to meet its burden by stating which specific aspects of the Facilitator were conceived by Dr. Moran. PO Remand 3–4. As the Federal Circuit stated, the facilitator described in Section 4.5 of the Martin reference plays a central role in the OAA disclosed in the specification of the ’115 patent. Google, 34 F.4th at 1087; see Ex. 1011, 23–24 (Section 4.5); Ex. 1001, 18:56–19:36. In addition, Patent Owner admits that “large portions of the ’115 application and the Martin reference are identical or almost identical.” PO Resp. 1. We find that Petitioner and Dr. Moran have sufficiently identified the facilitator in the Martin reference as his work, and persuasively asserted that Dr. Moran’s background and experience with OAA and distributed software systems support his contribution to the conception of the facilitator in the distributed agent approach of Sections 4.1–4.5. Ex. 1007 ¶¶ 23–39. Dr. Moran’s testimony provides sufficient and persuasive detail to support his contribution claim to the facilitator of Section 4.5. Id. Based on the record, the Federal Circuit’s remand squarely asks whether Dr. Moran’s stated contributions to the conception of the facilitator should be credited over Cheyer and Martin’s conflicting testimony regarding his lack of technical contribution. Google, 34 F.4th at 1088 (stating that “[t]he testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google in, and relevant to, the challenge to particular claims”). When Dr. Moran’s testimony is viewed in combination with the supporting evidence,7 we find that incorporation of the facilitator in general, which is also found in the specification and claims, persuasively supports Dr. Moran’s testimony regarding his inventive contribution to the Martin reference. Specifically, we find Dr. Moran’s testimony persuasively supported and credible over the conflicting testimony and evidence offered by Mr. Cheyer and Mr. Martin. See Pet. Reply 12–13; Ex. 2038, 116:2–8, 117:7–119:10 (Cheyer admission that Dr. Moran made technical contributions to OAA); Ex. 2037, 34:1–20, 64:16–20, 102:2–4.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Upon weighing the parties’ testimony and evidence, we agree with Petitioner that sufficient evidence supports the technical contributions of Dr. Moran to OAA, including admissions by Mr. Martin that Dr. Moran made such contributions (see Ex. 2038, 116:2–116:8, 117:7–119:10; see also id. at 73:3–73:15); contemporaneous papers showing Dr. Moran’s contribution to the OAA including a facilitator (see Ex. 1170; Ex. 1174, 1– 2), and the ’931 patent (Ex. 2002). See Pet. Reply 5–7, 8, 12–13; Pet. Remand 11. In particular, Dr. Moran’s testimony establishes that he contributed to Section 4.5, the facilitator that plays an essential role in the OAA, that differs from prior art agents, and that is found in the ’115 specification. We find Dr. Moran’s contributions to be significant when measured against the full anticipating Martin reference, and to render him a joint inventor of the Martin reference. Google, 34 F.4th at 1085 (quoting Duncan Parking, 914 F.3d at 1358). 5. Conclusion Based on the full record, we find that Petitioner has provided persuasive evidence by a preponderance of the evidence that Dr. Moran is an inventive entity to the Martin reference. Accordingly, we find that Petitioner has established that Martin is “by another” and is prior art under § 102(a) to the ’115 patent. We next turn to the sole remaining ground based on the Martin reference to determine the patentability of the remaining challenged claim.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“combination of Martin and Kohn. Petitioner’s expert, Dr. Olsen, provides persuasive testimony and evidence that Martin teaches compound goals and a skilled artisan would have been motivated in view of Kohn to modify Martin’s facilitator agent to interpret a compound goal that includes both local and global constraints. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. Dr. Olsen’s testimony does not evince hindsight, but instead supports the finding that an ordinarily skilled artisan could use compound goals required in Martin and apply the type of constraints (global and local) disclosed in Kohn. Ex. 2024, 159:4–160:16. In addition, Dr. Olsen testified, the proposed implementation “would have been a mere combination of known components and technologies . . . , according to known methods, to produce predictable results.” Ex. 1002 ¶ 87. We do not agree that this case presents the same technical issues raised in G.B.T. Inc. v. Walletex Microelectronics Ltd., IPR2018-00326, Paper 60 at 16–17 (PTAB June 25, 2019), where the petitioner’s declarant failed to show how the combination would have achieved desired results and features from the combination of the circuits. Here, Dr. Olsen identified known compound goals in Martin to which Kohn’s local and global constraints are applicable. Pet. 32–34; Ex. 1002 ¶¶ 49, 77–88. In view of the level of skill in the art and the testimony of Dr. Olsen (Ex. 1002 ¶¶ 49, 77–88; Ex. 2024, 159:4–160:16), we find that Petitioner establishes persuasive motivation to combine the software teachings of Kohn’s constraints into the goals of Martin and how the references would have been combined by a preponderance of the evidence.” slip op. at 29
- ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed
“III. MOTION TO EXCLUDE In our prior Final Written Decision, we denied Patent Owner’s Motion to Exclude (1) portions of Exhibit 1153; (2) Exhibits 1170, 1171, and 1172; (3) Exhibit 1174; and (4) portions of Exhibits 2037 and 2038; and we dismissed as moot Patent Owner’s Motion to Exclude (1) Exhibits 1158 and 1159 and (2) Exhibits 1175, 1176, and 1181. Final Dec. 25–28. We maintain these determinations on remand.” slip op. at 30
Patent outcomesUS 6,851,115 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,851,115 - T-Mobile USA, Inc. v. Traxcell Technologies, LLCAll claims unpatentablePTAB · May 15, 2023 · IPR2022-00669 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–30 are unpatentable under § 103(a) over the six asserted combinations of Bruce and Hancock with Meadows, Knockeart, and/or Moles.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). 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, although the conclusions reached in the decision would be the same even if Patent Owner’s proposal was adopted.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim terms need only be construed 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 states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner does not propose any claim constructions. PO Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“not a communications device is a mobile wireless communications device, the reference states that the system can be used with a “landline or a mobile cellular telephone subscriber.” Ex. 1006, 3:49; see also Ex. 1006, 5:58–60 (“[t]elephone calls are primarily originated from either traditional fixed location landline telephones or mobile wireless telephones”); Ex. 1006, 5:66–6:3 (“[t]o identify the geographical location of the caller . . . several 6 Patent Owner argues that Hancock does not teach this claim requirement, and we have previously found that Hancock does not so teach. PO Resp. 15 (citing Van Essen Decl. ¶ 56); Google LLC v. Traxcell Techs., LLC, IPR2021-01004, Paper 7 at 18 (PTAB Dec. 7, 2021). techniques can be used depending on the particular telephone (i.e., landline or mobile telephone) originating the call”). The same system is used in Bruce for both fixed and mobile devices, and the same telephone number (411) is used whether fixed or mobile. Reply 7 (citing Ex. 1006, Fig. 1, 3:63–66, 5:56–58, 5:63–67; Braasch Decl. ¶ 60). We are persuaded by Petitioner’s reliance on a patent to Karp, et al. as background art, to confirm that it was well known that the phone number of a caller is used to identify whether or not a call is on a mobile phone, and that the use of Automatic Number Identification (ANI) is not limited to fixed landlines. Pet. 24 (citing Ex. 1009, Fig. 11B, 12:20–22; Braasch Decl. ¶ 70); Reply 8–9 (citing Ex. 1009, 1:39–44, 12:24–27).7 The record further includes support for Petitioner’s contention in the form of declarant testimony that explains, “[a] POSITA would have recognized that to select an appropriate location system 17 for a communication received over a landline or wireless network, the switch 16 or the location system 17 would first identify whether a request was made from a landline or a wireless device.” Braasch Decl. ¶ 70 (cited in the Petition at page 24); see also id. ¶ 71 (explaining that the determination would be made even if the incoming call uses a landline or a modem). We are persuaded by this evidence and credit the Braasch testimony in this regard.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We have considered Petitioner’s arguments and evidence summarized above (which we adopt) and determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combination of Bruce and Hancock, and the preponderance of the evidence establishes that a person of ordinary skill would have been motivated to make that combination.” slip op. at 15
Patent outcomesUS 9,918,196 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - T-Mobile USA, Inc. v. Traxcell Technologies, LLCAll claims unpatentablePTAB · May 15, 2023 · IPR2021-01552 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–30 are unpatentable under § 103(a) over the six combinations of references listed in the decision.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). 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, although the conclusions reached in the decision would be the same even if Patent Owner’s proposal was adopted.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim terms need only be construed 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 states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner does not propose any claim constructions. PO Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“3. The Combination of Bruce and Hancock Petitioner argues that one of ordinary skill would have been motivated to combine the geographic location-based systems of Bruce and Hancock, resulting in a combination that would have rendered obvious, for example, independent claim 1. Pet. 14–19. Petitioner first argues that one of ordinary skill would have been motivated to add to the Bruce system, the capability of accessing routing information via the Internet, as disclosed in Hancock. Pet. 15–17. Petitioner cites the fact that one embodiment of Bruce uses a computer with a modem to allow a user to obtain directions from the system, and that providing such access via the Internet, as disclosed in Hancock, would have provided well-known advantages of higher data rates, storage capacity, and additional Internet services. Id. (citing Ex. 1005, 1:38–40; Ex. 1008, 42:38–42; Ex. 1011, 24:16–19, 25:1–7, 27:39–67, 32:32–41; Braasch Decl. ¶¶ 46–49). Petitioner also argues that one of ordinary skill would have been motivated to improve Bruce by providing more flexibility and variety in the ways for entering a destination, for which directions are requested, as disclosed in Hancock. Pet. 17–18. For example, Hancock discloses the ability to enter the names of businesses, to specify specific distances to destinations, and to use menus of possible destination locations. Id. (citing Ex. 1006, 2:40–43, 8:2–3; Ex. 1011, 8:66–9:3, 13:7–15, 28:49–29:1, 30:12– 14; Braasch Decl. ¶¶ 50–51). Petitioner further argues that one of ordinary skill would have been motivated to improve Bruce by using Hancock’s improved methods of formatting requests for directions via the use of data packets. Pet. 18–19 (citing Ex. 1011, 27:27–39, 27:64–67, 28:58–65; Braasch Decl. ¶¶ 52–54). Patent Owner does not specifically respond to these arguments. See generally PO Resp. We have considered Petitioner’s arguments and evidence summarized” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As to the above claims, Patent Owner repeats its arguments with respect to claim 1 (which, as discussed above, are not persuasive), and submits additional arguments directed to claims 5, 10, and 11. PO Resp. 21–23. In regard to claim 5, Patent Owner argues that “PSTN” in the claims means “a plurality of PSTNs which service to provide location of fixed location phones,” and that Bruce provides only one PSTN. Id. at 22 (citing Van Essen Decl. ¶ 83). This argument is unpersuasive as not commensurate with the scope of the claim. Reply 15. For claims 10 and 11, Patent Owner argues that the disclosure in Bruce providing for searches for establishments “in the proximity of the caller” is not a teaching of searches for nearby businesses because “[t]he caller is distinct from ‘business.’” Id. at 23 (citing Van Essen Decl. ¶¶ 85–86) (emphasis omitted). We are unpersuaded by this argument, because a nearby business is within the proximity of a caller. Reply 16. We have considered Petitioner’s arguments and evidence summarized above (which we adopt) and we determine that Petitioner has proved by a preponderance of the evidence that claims 4, 5, 7, 8, 10, and 11 are unpatentable under 35 U.S.C. § 103(a) over the combination of Bruce and Hancock.” slip op. at 25
Patent outcomesUS 9,918,196 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - Laltitude LLC, Dba Picasso Tiles v. Altus Holdings, Inc.All claims unpatentablePTAB · May 10, 2023 · IPR2022-00155 · APJ Bart A Gerstenblith · IPR · Final written decision
The sole challenged claim was held unpatentable as anticipated by Zhao US and Zhao CN; the Board did not reach the three obviousness grounds.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“same as that used for infringement, except that for anticipation, the patented design is compared with the alleged anticipatory reference rather than an accused design. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238, 1240 (Fed. Cir. 2009). The ordinary observer test for design patent infringement was first enunciated by the Supreme Court in Gorham Co. v. White, 81 U.S. 511 (1871), as follows: [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. Id. at 528. The ordinary observer test requires the fact finder to consider all of the ornamental features illustrated in the figures that are visible at any time in the “normal use” lifetime of the accused product, i.e., “from the completion of manufacture or assembly until the ultimate destruction, loss, or disappearance of the article.” Int’l Seaway, 589 F.3d at 1241. Further, while the ordinary observer test requires consideration of the overall prior art and claimed designs, [t]he mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as “minor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement” . . . so too minor differences cannot prevent a finding of anticipation. Id. at 1243 (citation omitted) (quoting Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (1984)).” slip op. at 8
Patent outcomesUS D719,138 unpatentable§ 102 anticipation - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentablePTAB · Apr 17, 2023 · IPR2022-00013 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–17 are unpatentable under § 103(a), principally over Iwata and Bower, with additional references applied to dependent claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in electrical engineering or a similar discipline, and three years of design experience with power electronics, including experience designing power converters.” Pet. 21 (citing Ex. 1002 ¶¶ 20–23). Patent Owner neither expressly addresses Petitioner’s proposal nor proffers its own articulation of the level of ordinary skill in the art. But Patent Owner’s expert, Dr. Foty, states that he “do[es] not dispute the Petitioner’s proposed level of ordinary skill in the art.” Ex. 2006 ¶ 43. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Baker, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11
- Expert testimonyDecided for petitioner
“We have considered Patent Owner’s reiterated argument, and note that the only specific example Patent Owner identifies relates to whether Iwata’s series-connected inverters include transformers. See PO Resp. 9–10. Below, we discuss the propriety of Petitioner’s reliance on Dr. Baker’s testimony within the specific context of that example. See infra § II.E.2.a. More generally, we disagree with Patent Owner’s broader implication that there must be perfect alignment between a petition and a supporting expert declaration because “[m]erely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument enhanced probative value.” Kinetic Techs, Inc. v. Skyworks Solutions, Inc., IPR2014- 00529, Paper 8 at 15 (PTAB Sept. 23, 2014); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s arguments without additional supporting evidence or reasoning). Indeed, expert discussion of evidence with technical reasoning to support conclusions is a valuable and important part of expert testimony that our regulations expect to be included in a declaration. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)); Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms herein should be given their ordinary and customary meaning to a [person of ordinary skill in the art], consistent with the prosecution history, as they would be given in a civil action.” Pet. 21 (citing 37 C.F.R. § 42.100(b)). Patent Owner states that it “does not believe any explicit claim construction is required to resolve the issues presented in the Petition.” PO Resp. 2. We agree with the parties and do not find it necessary expressly to construe any term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).6” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We find Petitioner’s reasoning sufficient. In particular, Dr. Baker’s testimony provides rational underpinning for Petitioner’s reasoning to combine the teachings of Iwata and Bower as proposed. Patent Owner disputes limited aspects of Petitioner’s analysis, which we consider below.” slip op. at 30
Patent outcomesUS 10,784,710 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,784,710 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentablePTAB · Apr 17, 2023 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–13 and 20 are unpatentable: claims 1–3 and 8–10 over Tracy, claims 4 and 11 over Tracy and Fujimoto, claims 6 and 20 over Tracy and De, claim 7 over Tracy and Bond, and …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“IV. CLAIM CONSTRUCTION In the Decision to Institute we declined to treat any of the claim terms as mean-plus-function terms because the terms have an ordinary and customary meaning. Dec. to Inst. 14–15. Neither party has proposed any other claim constructions. We apply the plain and ordinary meaning in this Decision.” slip op. at 7
- Expert testimonyPetitioner expert creditedOther
“Dr. Baker’s testimony is persuasive evidence that Tracy discloses the claimed floating DC power source, as Tracy’s terminals are not permanently connected to the neutral.” slip op. at 24
- Skill levelOther
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner unrealistically reads this definition to mean there can never be a connection to ground or neutral, because Patent Owner ignores the disclosure in the ’822 patent of temporarily connecting one or the other of the floating DC sources to neutral, as discussed above. Id. at 9–10 (citing Ex. 1001, 3:52–60, 4:27–40, 10:44–47, 11:1–7, 11:25–28, 23:47–52; Ex. 1074, Baker Reply Decl. ¶¶ 12–13).” slip op. at 20
Patent outcomesUS 8,937,822 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,937,822 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentablePTAB · Apr 17, 2023 · IPR2022-00010 · APJ Thu A Dang · IPR · Final written decision
Claims 14–19 are unpatentable under § 103 based on combinations of Suzui, Boniface, and Gilmore, with additional references for claims 16, 17, and 19.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “a bachelor’s degree in electrical engineering or similar discipline,” and “three years of design experience with power electronics, including experience designing power converters.” Pet. 21–22 (citing Ex. 1402 ¶¶ 20–23). Patent Owner does not propose any definition for a POSITA, and Dr. Foty states that he “does not dispute the Petitioner’s proposed level of ordinary skill in the art.” See generally PO Resp.; Ex. 2006 ¶ 42. We adopt and apply Petitioner’s definition of a POSITA at the time of the claimed invention because, based on the record, this proposal is consistent with the ’822 patent, the asserted prior art, and is supported by the testimony of Dr. Baker.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We determine that it is unnecessary to construe any claim term expressly to resolve the disputed issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As Petitioner contends that Suzui discloses this limitation (Pet. 42–43), we do not ignore this limitation but address the limitation based on the parties’ explicit arguments with respect to Suzui.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We are not persuaded by Patent Owner’s argument that the claimed detector must look for “a specific unusual current with specific characteristics, i.e., ‘with said common mode waveform at said characteristic frequency.’” PO Resp. 15. In particular, claim 14 recites “creating” a common-mode AC probe signal waveform “from said DC to AC converter at a characteristic repetition frequency that is in phase on both said DC positive and negative input conductors,” and the claimed detector is adapted to “detect with said” common mode waveform at said characteristic repetition frequency. See Ex. 1401, 43:21–37 (emphasis added). That is, contrary to Patent Owner’s contention that the claimed detector “must look for” the unusual current with the common mode waveform, claim 14 recites that the common mode wave form is created from the DC to AC converter at the characteristic frequency, and the detector then detects the unusual current with said created common mode waveform at the characteristic frequency. Id. As pointed out by Petitioner during oral argument, “the existence of a common [mode] waveform in Suzui is not in dispute.” Tr. 9:23–24. We find persuasive Petitioner’s reliance on Suzui to disclose “creating a common mode AC probe signal waveform from a DC to AC converter at a characteristic repetition frequency” as recited in claim 14. Pet. 37. As Dr. Baker testified, “[f]rom the DC input voltage output by solar battery 1, Suzui’s inverter generates an output AC waveform—specifically a 60 Hz, sine-shaped alternating current” which “corresponds to the claimed ‘AC output having an output waveform with an output repetition frequency,” which is then “received by Suzui’s single-phase three-wire commercial power system 3.” See Ex. 1402 ¶ 192 (citing Ex. 1406, 3:26–30, 4:60–65, 5:15–24, 5:32–40, 5:51–67, 7:43–52, Fig. 2). Further, we are also persuaded by Petitioner’s contention that Suzui and Gilmore teach “detecting an imbalance current generated by the common-mode voltage.” Pet. Reply 17 (citing Pet. 37–42; Ex. 1474 45–46). In particular, we are persuaded by Petitioner’s contention, supported by Dr. Baker’s declaration, that Suzui’s current detector 10 “detects an imbalance between the currents flowing in the positive and negative DC conductors (zero-phase current) of the inverter (the claimed ‘a detector adapted to detect an unusual current’),” which “is generated by the 120 Hz AC voltage to ground (the claimed ‘with said common mode waveform at said characteristic repetition frequency’).” Pet. 37; see also Ex. 1402 ¶ 205. That is, we are persuaded by Dr. Baker’s testimony that, “because Suzui’s current detector 10 detects an imbalance in the zero-phase current of the DC circuit of the inverter,” a POSITA would understand Suzui to disclose “a detector adapted to detect an unusual current,” wherein “because this ‘unusual current’ is generated by the AC voltage to ground that has a frequency of 120 Hz,” the POSITA would also understand Suzui to disclose the claimed “with said common mode waveform at said characteristic repetition frequency.” Ex. 1402 ¶ 205 (citing Ex. 1406, 5:47–51, 7:46–61, Fig. 2).” slip op. at 29
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“10. Instead, we are persuaded by Dr. Baker’s testimony that Suzui’s solar battery 1 “is formed as a solar battery string by connecting a plurality of solar battery modules 1M1 to 1Mx in series such that an appropriate voltage can be output as the input voltage to the system interconnection inverter 2.” Ex. 1402 ¶ 186 (citing Ex. 1406, 4:66–5:2). We find persuasive Dr. Baker’s testimony that Suzui’s solar battery modules 1M1 to 1Mx are “arranged in an array,” wherein a POSITA “would understand that they are composed of photovoltaic cells.” Id. at ¶ 187 (citing Ex. 1406, 4:59–5:6, Figs. 2, 8).” slip op. at 20
Patent outcomesUS 8,937,822 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,937,822 - Unified Patents, LLC v. Divx, LLCAll claims unpatentablePTAB · Jan 20, 2023 · IPR2021-01476 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1 and 10 are unpatentable as obvious over Biderman and Gigliotti; the Board did not reach the alternative Sood-based ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as computer science, and two years of work experience with streaming media applications or related fields (e.g., network applications),” where a “lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4-5 years).” Pet. 8 (citing Ex. 1003 ¶¶ 47–51). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. consistent with the ’987 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt Petitioner’s proposed level in deciding the patentability of the challenged claims.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2021). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Phillips, 415 F.3d at 1315–17. Additionally, only terms that are in controversy need to be construed, and these terms need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and 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) (citing Vivid Techs. in the context of an inter partes review). construction. Pet. 10; see generally PO Resp. We need not expressly construe any claim terms to decide the issues in this proceeding.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for patent owner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“artisan would have had reason to combine the teachings of Biderman and Gigliotti in the manner proposed by Petitioner. Pet. 23–28. Petitioner persuasively argues that a person of ordinary skill in the art would have been motivated to combine Biderman’s teachings of switching from one stream to another with Gigliotti’s teachings of ensuring the buffer is sufficiently full before switching because a person of ordinary skill in the art “would have recognized that, without a technique for measuring the amount of content in the buffer, Biderman’s client might switch to the second playlist content without sufficient content stored in the buffer, which might result in an Ex. 1019 ¶ 11; Ex. 1020 ¶ 13; Ex. 1003 ¶¶ 122–125). Petitioner’s contention that there would be a reasonable likelihood of success in doing so is supported by Dr. Reddy’s testimony. See Ex. 1003 ¶¶ 125–126 (citing Ex. 1009, 5).” slip op. at 40
Patent outcomesUS 10,326,987 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,326,987 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Equo IP LLCAll claims unpatentablePTAB · Nov 28, 2022 · IPR2021-00943 · APJ Jason M Repko · IPR · Final written decision
Claims 1, 5–9, 11, 12, 16–20, and 22 are unpatentable as obvious over the 300 reference, the 321 reference, and Ericsson.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“Generally, Patent Owner’s arguments and Dr. Cooklev’s corresponding testimony do not give sufficient weight to the 300 reference. See id. at 49–52. Rather, they are heavily focused on what the 321 reference alone expressly teaches or suggests. See id.; Cooklev Decl. ¶¶ 140–148, 180–181. Because Petitioner relies on the 300 reference together with the 321 reference in its obviousness rationale, we disagree with these arguments (PO Resp. 49–52), and we give little weight to Dr. Cooklev’s corresponding testimony on this issue (Cooklev Decl. ¶¶ 140–148, 180– 181). c) Experts versus a POSITA Patent Owner notes that “both parties agree that the members of the 3GPP Working Groups were experts in the field—with more expertise and understanding than a POSITA.” PO Resp. 49 (emphasis added). Dr. Cooklev testified, “I disagree that a POSITA—who under all accounts would have less expertise than the members of the 3GPP Working Groups—would recognize a problem and believe that the solution was obvious when the Working Group members themselves struggled with the same issue.” Cooklev Decl. ¶ 194, cited in PO Resp. 49. Patent Owner argues that Petitioner’s obviousness analysis relies on the skill level of an expert, not a POSITA. PO Resp. 56. Patent Owner, though, provides insufficient evidence to support the assertion that the Working Group members struggled with this issue. See id. at 49. To the contrary, the background knowledge, reflected in the 300 reference, demonstrates that, in the RAP, the UE must receive a RAR before it transmits Message 3. See, Pet. 33–34 (citing Min Decl. ¶ 102; Ex. 1002, as “correction” (category F), instead of an “addition of feature” (category B) or a “functional modification of feature” (category C). Ex. 1011, 1. The “reason for change” in Qualcomm’s change request also lacks any indication of a struggle: According to the original intention, it is clarified that the transmission of the RACH Msg3 performed only in response to an uplink grant in the Random Access Response. The current specification also allows transmission of Msg3 in response to UL grant on PDCCH.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“PO Resp. 44–45. Patent Owner claims that its definition is better than Petitioner’s because (1) it is not “based on a rigid formula that does not credit significant industry or research experience, which may substitute for formal academic work” and (2) it references additional degrees and coursework. Id. at 45. Patent Owner, though, does not explain how those differences affect the obviousness analysis in this case. See id. Instead, Patent Owner argues that, “even under Samsung’s proposal, the level of ordinary skill in the art does not comport with Samsung’s assertion of obviousness” because the members of the 3GGP working groups were experts, not persons having ordinary skill. PO Resp. 56. That is, Patent Owner’s argument does not depend on the specific differences between the proposed definitions. See id. Rather, Patent Owner argues that Petitioner implicitly applies a level of skill that exceeds the ones proposed by either party. See id. We disagree with Patent Owner’s argument for the reasons discussed in Section II.C of this Decision. We see no differences between the parties’ proposed definitions that would affect our analysis. Considering the full record developed during trial, including our review of the ’120 patent and the types of problems and solutions described there and in the cited prior art, we apply Petitioner’s definition in this Decision. Pet. 12. But our conclusion would be the same under Patent Owner’s.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner asserts, The Board should construe these two related terms [in claims 1 and 12] such that this “transmitting” feature requires transmitting the Msg3 data only when the three claimed conditions are met: (1) the UL Grant is received on the specific message, (2) the specific message is the random access response message, and (3) there is data stored in a Msg3 buffer of the user equipment. Pet. 12–13 (citing Ex. 1016 ¶¶ 56–57). In Petitioner’s view, the plain language supports the “only when” construction because “the only time after the UL Grant is received on the specific message that the user equipment transmits Msg3 buffer data is only when the specific message is the random access response message and there is data stored in a Msg3 buffer of the user equipment.” Id. at 13. Patent Owner argues for a broader construction. PO Resp. 40; Sur- reply 1–7. In Patent Owner’s view, narrowing the claim by adding the word in other IPRs involving a related patent (U.S. Patent No. 7,881,236),7 the word “only” clarified when the system transmits Message 3 data, but this is not needed here because the claim recites four transmitting limitations that cover all possible scenarios. PO Resp. 40. Patent Owner argues that Petitioner’s narrow construction is “an effort to introduce a potential non-infringement position” in this IPR. Sur-reply 5. In Patent Owner’s view, “No word or phrase from the challenged claims requires construction for resolution of this IPR.” PO Resp. 36; Sur-reply 4. During the oral hearing, both parties agreed that we need not construe the claims to reach the unpatentability issues. See Tr. 43:14–17 (Patent Owner’s counsel); 64:18–22 (Petitioner’s counsel). We need not resolve the dispute because Petitioner has shown that the” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“properly considers the 300 reference together with the 321 reference because the 300 reference describes a process not clearly documented by the 321 reference. Pet. 6. In particular, the 321 reference, individually, does not clearly describe whether a UE transmits Message 3 when it receives an uplink grant on a message other than an RAR. See id. But together the references show that (1) the Message 3 transmission occurs only if the RAP is ongoing and the Message 3 buffer has a MAC PDU and (2) Message 3 transmission requires a prior UL Grant received in an RAR. See id. at 34–35; Min. Decl. ¶ 104. Specifically, the 321 reference states, “If the UE receives both a grant for its RA-RNTI and a grant for its C-RNTI, the UE may choose to continue with either the grant for its RA-RNTI or the grant for its C-RNTI.” Ex. 1003 § 5.4.1, quoted in Pet. 32. The 321 reference calls the RA-RNTI grant an UL Grant in an RAR and calls the C-RNTI grant the UL Grant in a PDCCH. See, e.g., id. §§ 3.1 (“UE shall monitor the PDCCH after the uplink message containing the C-RNTI MAC”), 4.5.2 (“RA-RNTI for Random Access Response on DL-SCH”), cited in Min Decl. ¶ 99. Dr. Min testifies that, in the 321 reference, the UE chooses either the UL Grant received in an RAR or the UL Grant received in a PDCCH. Min Decl. ¶ 95. But, according to Dr. Min, the 321 reference clearly indicates that UL Grant received in the RAR is the correct one to use during the RAP. Id. ¶ 96. Dr. Min explains that the 321 reference teaches that the UE processes the received UL Grant value after successfully receiving RARs, but the 321 reference is silent about looking for a grant in a PDCCH during the RAP. Id. (citing Ex. 1003 § 5.1.4; Ex. 1045, TS 36.213 v8.3.0, § 6.1). Dr. Min testifies that a UL Grant received in a PDCCH during a RAP “would be highly unreliable” and should be discarded. Id. ¶¶ 96–97. So the 321 reference alone provides strong evidence supporting Petitioner’s assertion that it would have been obvious to transmit Message 3 only when (1) Message 3 data was available to transmit and (2) the UE had received an UL Grant in an RAR. See Pet. 35. To the extent that the language of the 321 reference is ambiguous on” slip op. at 15
Patent outcomesUS 10,517,120 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,517,120
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.