- Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2017-00420 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Milbrandt, Hwang, Chang, and ANSI T1.413 under § 103(a).
RulingsFinal written decision- Skill levelSkill level board ownOther
“Patent Owner’s expert, Dr. Douglas Chrissan, opines that a person of ordinary skill in the art would have had (1) a bachelor’s degree in electrical engineering, and (2) at least three years of experience working with multicarrier communication systems. Ex. 2001 ¶ 34. We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. 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).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“frequency domain received idle channel noise information,” “array,” and “transceiver.” Pet. 8–9. In our Decision to Institute, we interpreted these terms. Dec. 5–8. Neither party has indicated that our interpretations were improper and we do not perceive any reason or evidence that now compels any deviation from our initial interpretations. See, PO Resp. 6 (“Patent Owner does not contest the Board’s express claim constructions.”); Pet. Reply 8 n.2. Accordingly, the following constructions apply to this Decision: Claim Term Construction frequency domain received idle information about the background channel noise information noise present in each of a plurality of frequency subchannels when the subchannels are not in use array an ordered collection of multiple data items of the same type transceiver a device, such as a modem, with a transmitter and receiver slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“ordinary skill would have recognized that Chang measures frequency domain received idle channel noise information (background noise).10 Pet. 31‒32; Ex. 1009, 60‒61. Petitioner concludes that it would have been obvious for Milbrandt to measure and evaluate background channel noise, for the purpose of assessing system interactions from different sources of noises and to address any problems. Pet. 32; Ex. 1009, 35‒37. Notwithstanding Patent Owner’s arguments with respect to the combined teachings of Milbrandt and Chang, which we address below, we are persuaded by Petitioner’s showing, and agree that it would have been obvious to combine Chang with the teachings of Milbrandt for the purpose of assessing interactions from other sources. The record evidence supports the conclusion of obviousness, because combining Chang’s teaching of assessing idle channel noise to Milbrandt’s system would have provided a person of ordinary skill in the art additional information, such as assessing interactions from other sources, enabling a person of ordinary skill in the art to have taken remedial measures to address system interactions. Pet. 16 (citing Ex. 1009, 35‒36).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added). The claims do not foreclose a “truck roll.” For instance, claim 1 recites a transceiver capable of transmitting test information over a communication channel. Claim 1 further recites that the transceiver comprise a “transmitter portion capable of transmitting a message” where “the message comprises one or more data variables that represent the test information” and that at least one data variable “comprises an array representing frequency domain received idle channel noise information.” Thus, claim 1 is directed to a transceiver and the type of message the transceiver is capable of transmitting. There is nothing in claim 1 that specifies how the transceiver message originates or how the test information is measured. While we agree with Patent Owner that the Specification of the ’430 patent describes that dispatching a technician to a remote site to perform testing, e.g., a “truck roll,” is time consuming and expensive (PO Resp. 12 (citing Ex. 1001, 1:21‒23)), we find that there are described embodiments of the invention that include a truck roll. Ex. 1001, 6:31‒38 (“If the CRC checker 210 does not determine a correct CRC at the maximum power level and the diagnostic link mode [cannot] be initiated then other methods for determining diagnostic information are utilized, such as dispatching a technician to the remote site, or the like.”) and 3:12‒14 (“[t]he systems and methods of this invention can enter the diagnostic link mode manually, for example, at the direction of a technician or a user after completing a portion of initialization.”). For these reasons, the claimed invention does not preclude a truck roll. In any event, as discussed above, the claims are not directed to how test information is obtained or measured. Accordingly, even if Patent Owner is correct that Milbrandt discourages a truck roll for its own purposes, we find the combined teachings of Milbrandt and Chang are relevant because the combination remains suitable for the claimed invention.” slip op. at 20
Patent outcomesUS 7,835,430 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,835,430 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2017-00251 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Milbrandt, Hwang, Chang, and ANSI T1.413.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. 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).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“frequency domain received idle channel noise information,” “array,” and “transceiver.” Pet. 8–9. In our Decision to Institute, we interpreted these terms. Dec. 5–8. Neither party has indicated that our interpretations were improper and we do not perceive any reason or evidence that now compels any deviation from our initial interpretations. See, PO Resp. 6 (“Patent Owner does not contest the Board’s express claim constructions.”); Pet. Reply 8 n.2. Accordingly, the following constructions apply to this Decision: slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added). The claims do not foreclose a “truck roll.” For instance, claim 1 recites a transceiver capable of transmitting test information over a communication channel. Claim 1 further recites that the transceiver comprise a “transmitter portion capable of transmitting a message” where “the message comprises one or more data variables that represent the test information” and that at least one data variable “comprises an array representing frequency domain received idle channel noise information.” Thus, claim 1 is directed to a transceiver and the type of message the transceiver is capable of transmitting. There is nothing in claim 1 that specifies how the transceiver message originates or how the test information is measured. While we agree with Patent Owner that the Specification of the ’430 patent describes that dispatching a technician to a remote site to perform testing, e.g., a “truck roll,” is time consuming and expensive (PO Resp. 12 (citing Ex. 1001, 1:21‒23)), we find that there are described embodiments of the invention that include a truck roll. Ex. 1001, 6:31‒38 (“If the CRC checker 210 does not determine a correct CRC at the maximum power level and the diagnostic link mode [cannot] be initiated then other methods for determining diagnostic information are utilized, such as dispatching a technician to the remote site, or the like.”) and 3:12‒14 (“[t]he systems and methods of this invention can enter the diagnostic link mode manually, for example, at the direction of a technician or a user after completing a portion of initialization.”). For these reasons, the claimed invention does not preclude a truck roll. In any event, as discussed above, the claims are not directed to how test information is obtained or measured. Accordingly, even if Patent Owner is correct that Milbrandt discourages a truck roll for its own purposes, we find the combined teachings of Milbrandt and Chang are relevant because the combination remains suitable for the claimed invention.” slip op. at 20
Patent outcomesUS 7,835,430 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,835,430 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2016-01006 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Milbrandt, Hwang, Chang, and ANSI T1.413 under § 103(a).
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary skill in the Art Citing its declarant, Dr. Sayfe Kiaei, Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had (1) a Master’s degree in Electrical and/or Computer Engineering, or equivalent training, and (2) approximately five years of experience working in digital telecommunications. Pet. 10–11; Ex. 1009 ¶ 36. Petitioner also contends that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. at 11. Patent Owner’s expert, Dr. Douglas Chrissan, opines that a person of ordinary skill in the art would have had (1) a bachelor’s degree in electrical engineering, and (2) at least three years of experience working with multicarrier communication systems. Ex. 2001 ¶ 34. We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. 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).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,766. Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See Translogic, 504 F.3d at 1257. Petitioner proposes constructions for the following claim terms: “frequency domain received idle channel noise information,” “array,” and “transceiver.” Pet. 8–9. In our Decision to Institute, we interpreted these terms. Dec. 5–8. Neither party has indicated that our interpretations were improper and we do not perceive any reason or evidence that now compels any deviation from our initial interpretations. See, PO Resp. 6 (“Patent Owner does not contest the Board’s express claim constructions.”); Pet. Reply 8 n.2. Accordingly, the following constructions apply to this Decision:” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“comprises one or more data variables that represent the test information.” For this limitation, Petitioner contends that Milbrandt describes “subscriber line information 28,” that includes power spectrum density per sub-frequency, attenuation information per sub-frequency, and noise information per sub-frequency. Pet. 27 (citing Ex. 1011, 11:31‒43). Petitioner contends, with supporting evidence, and we agree, that it would have been obvious to a person having ordinary skill in the art that the values representing the test information are “one or more data variables.” Pet. 27‒28 (citing Ex. 1009, 51‒53; Ex. 1011, 11:45‒53).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added).” slip op. at 20
Patent outcomesUS 7,835,430 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,835,430 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2017-00255 · APJ Sally C Medley · IPR · Final written decision
Claims 1–30 are unpatentable under § 103 over the combinations of Shively and Stopler with the additional references identified for each ground.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the record before us, we agree with Patent Owner’s proposed construction as far as meaning “adjusting the phases of a plurality of carriers in a single multicarrier symbol.” PO Resp. 14. Patent Owner, however, provides no persuasive reasoning for also adding to that construction “by pseudo-randomly varying amounts.” Id. Rather, Patent Owner merely contends that (1) in a corresponding district court matter, the court construed the phrase to mean “adjusting the phase characteristics of the carrier signals by pseudo-randomly varying amounts;” (2) during prosecution of a child application to the ’158 patent, the applicant explained that a “scrambler” operates by pseudo-randomly selecting bits to invert; and (3) there was no fundamental disagreement between parties that scrambling involves adjusting the phase characteristic of a carrier signal by pseudo-randomly varying amounts. PO Resp. 16–17. Patent Owner’s explanation for why we should add “by pseudo-randomly varying amounts” to its proposed construction is conclusory. Id. at 17. We interpret claims using the broadest reasonable construction in light of the specification of the involved patent. That standard is not the same as the standard used in district court. Patent Owner, however, provides no explanation for why we should apply the district court construction, which is not necessarily the same as used before us, here. Moreover, Patent Owner does not explain why statements made during prosecution of a child application for the term “scrambler” is relevant to how we should interpret the disputed phrase that does not even contain the term “scrambler” in it. Id. at 16. In summary, Patent Owner’s arguments are conclusory. For all of the above reasons, and for purposes of this decision, we determine that “scrambling the phase characteristics of the carrier signals” means “adjusting the phases of a plurality of carriers in a single multicarrier symbol.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We need not determine the exact probability of clipping in Shively’s proposed system because, even assuming Patent Owner’s analysis is accurate, it does not rebut Petitioner’s reason to combine. Petitioner does not allege that Shively’s proposed system causes clipping, or that a person of ordinary skill in the art would have been motivated to reduce PAR only if it caused clipping. Instead, Petitioner alleges that Shively’s proposed system would have an “increased” or “high” PAR:” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“First, the portions cited in the ’158 patent in the Petition and in Dr. Tellado’s declaration come from the “BACKGROUND OF THE INVENTION” section of the patent. That portion of the ’158 patent uses words such as “conventional” indicating that what is described in the “BACKGROUND OF THE INVENTION” section is information that was known at the time of the invention, not just by the inventors, but persons of ordinary skill in the art. Patent Owner does not contend otherwise. In addition, Dr. Tellado testified that a person having ordinary skill in the art would have recognized that the purpose of Stopler’s phase scrambler to randomize data symbols would be to reduce PAR of transmitted signals and that the person would have been familiar with the problems created by a high PAR, including PAR due to phase-aligned carriers. Ex. 1009 ¶¶ 60, 66. Moreover, Patent Owner’s own declarant recognized that PAR was a known problem at the time of the invention. Ex. 2003 ¶ 23 (“Conventional multicarrier systems, therefore, were designed to accommodate PAR.”). The ANSI T1.413-1995 standard also confirms that PAR was known at the time of the invention by describing that “[a] DMT time-domain signal has a high peak-to-average ratio (its amplitude distribution is almost Gaussian), and large values may be clipped by the digital-to-analog converter.” Ex. 1018, 36 (Section 6.5 “Tone ordering”). Based on the record evidence, we find that a person having ordinary skill in the art would have known about the problem of high PAR due to phase-aligned carriers.” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“portions of 1026 and 2013. PO Mot. Exc. Exhibit 1022 is styled “Robert T. Short, ‘Physical Layer,’ in WIMEDIA UWB (2008).” Pet. Reply 5. Patent Owner argues that we should exclude Exhibit 1022 as irrelevant. PO Mot. Exc. 2–4. Exhibit 1022 was not cited or discussed in any way in Petitioner’s Reply. Moreover, we did not rely on Exhibits 1022 in rendering our decision. We did not and need not consider Exhibit 1022. We have determined that Petitioner has demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable, without considering the specific objected to evidence.” slip op. at 42
Patent outcomesUS 8,718,158 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,718,158 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2017-00417 · APJ Sally C Medley · IPR · Final written decision
Claims 1–30 are unpatentable under § 103 over the stated combinations of Shively and Stopler, with Gerszberg, Bremer, or Flammer as applicable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary skill in the Art Citing its declarant, Dr. Jose Tellado, Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had (1) a Master’s degree in Electrical and/or Computer Engineering, or equivalent training, and (2) approximately five years of experience working with multicarrier communications systems. Pet. 10–11; Ex. 1009 ¶ 18. Petitioner also contends that “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 11. Patent Owner’s expert, Dr. Robert Short indicated that for purposes of the proceeding he adopts Dr. Tellado’s definition of a person of ordinary skill in the art. Ex. 2003 ¶ 16. For purposes of this Decision, we adopt Petitioner’s proposed definition, and further find that the level of ordinary skill in the art is reflected by the prior art of record. 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).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“C. Claim Interpretation The Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,766. Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic, 504 F.3d at 1257. Petitioner proposes constructions for the following claim terms: “multicarrier” and “transceiver.” Pet. 8–9. In our Decision to Institute, we interpreted the term “transceiver” to mean “a device, such as a modem, with a transmitter and receiver,” but determined that it was not necessary to interpret the term “multicarrier.” Dec. 6–7. Neither party has indicated that our determinations were improper and we do not perceive any reason or evidence that now compels any deviation from our initial determinations. PO Resp. 13–14; Pet. Reply 7–8. Accordingly, the construction of transceiver to mean “a device, such as a modem, with a transmitter and receiver” applies to this Decision. Dec. 7. For purposes of this decision, we find it necessary to construe “scrambling the phase characteristics of the carrier signals” found in claim 1.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the record before us, we agree with Patent Owner’s proposed construction as far as meaning “adjusting the phases of a plurality of carriers in a single multicarrier symbol.” PO Resp. 14. Patent Owner, however, provides no persuasive reasoning for also adding to that construction “by pseudo-randomly varying amounts.” Id. Rather, Patent Owner merely contends that (1) in a corresponding district court matter, the court construed the phrase to mean “adjusting the phase characteristics of the carrier signals by pseudo-randomly varying amounts;” (2) during prosecution of a child application to the ’158 patent, the applicant explained that a “scrambler” operates by pseudo-randomly selecting bits to invert; and (3) there was no fundamental disagreement between parties that scrambling involves adjusting the phase characteristic of a carrier signal by pseudo-randomly varying amounts. PO Resp. 16–17. Patent Owner’s explanation for why we should add “by pseudo-randomly varying amounts” to its proposed construction is conclusory. Id. at 17. We interpret claims using the broadest reasonable construction in light of the specification of the involved patent. That standard is not the same as the standard used in district court. Patent Owner, however, provides no explanation for why we should apply the district court construction, which is not necessarily the same as used before us, here. Moreover, Patent Owner does not explain why statements made during prosecution of a child application for the term “scrambler” is relevant to how we should interpret the disputed phrase that does not even contain the term “scrambler” in it. Id. at 16. In summary, Patent Owner’s arguments are conclusory. For all of the above reasons, and for purposes of this decision, we determine that “scrambling the phase characteristics of the carrier signals” means “adjusting the phases of a plurality of carriers in a single multicarrier symbol.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“proposed system because, even assuming Patent Owner’s analysis is accurate, it does not rebut Petitioner’s reason to combine. Petitioner does not allege that Shively’s proposed system causes clipping, or that a person of ordinary skill in the art would have been motivated to reduce PAR only if it caused clipping. Instead, Petitioner alleges that Shively’s proposed system would have an “increased” or “high” PAR: A POSITA would have recognized that by transmitting redundant data on multiple carriers, Shively’s transmitter would suffer from an increased peak-to-average power ratio. [Ex. 1009, p. 27.] This increase is due to the fact that the overall transmitted signal in a multicarrier system is essentially the sum of its multiple subcarriers. Id. When N subcarrier signals with the same phase are added together, they have a peak power which is N times greater than their individual maximum powers. Id. Since Shively’s subcarriers use quadrature amplitude modulation (QAM) . . . transmitting the same bits on two different subcarriers causes those subcarriers to have the same phase and amplitude. Id., pp. 27–28. By transmitting the same bits on multiple subcarriers, Shively creates a situation where those multiple subcarriers will be phase-aligned. Having phase-aligned subcarriers causes a high peak-to-average power ratio (PAR), since all of the subcarriers add up coherently at the same time. Id., p. 28. Pet. 14–15 (emphases added). Patent Owner criticizes Petitioner’s declarant for not providing “calculations or data that illustrate to what degree there is an ‘increase’ in PAR with Shively’s transmitter” (PO Resp. 48), but we are not persuaded that such calculations and data are necessary. Petitioner’s reason to combine does not depend on the PAR increase exceeding some specific numeric threshold. There is no dispute that transmitting the same data on multiple carriers increases PAR (Pet. Reply 10 (citing PO Resp. 6–7; Ex. 2003 (Short Decl.) ¶ 22)) or that Shively’s technique, specifically, will increase PAR (PO Resp. 28 (“Shively’s ‘spreading’ technique will contribute a small uptick in clipping probability.”). There also is no dispute that equipment designed to handle a higher PAR can be larger, more expensive, and more power hungry than equipment designed to handle a lower PAR. Pet. Reply 36 (citing Ex. 2003 ¶ 26; Ex. 1027 45:21–46:19). Patent Owner’s declarant, Dr. Short, testified that, given such issues, system designers or engineers would be interested in using techniques that could reduce PAR. Ex. 1027, 46:23–47:3. This is consistent with the reason to combine given in the Petition and supports Petitioner’s position that “numerous problems” other than clipping “would have motivated a [person of ordinary skill in the art] to look for ways to reduce the PAR of Shively’s technique.” Pet. Reply 36. In light of the foregoing, we are persuaded that a person of ordinary” slip op. at 30
Patent outcomesUS 8,718,158 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,718,158 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2016-01021 · APJ Sally C Medley · IPR · Final written decision
Claims 1–30 are unpatentable as obvious: claims 1–30 across five grounds combining Shively and Stopler with Gerszberg, Bremer, and/or Flammer.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Based on the record before us, we agree with Patent Owner’s proposed construction as far as meaning “adjusting the phases of a plurality of carriers in a single multicarrier symbol.” PO Resp. 14. Patent Owner, however, provides no persuasive reasoning for also adding to that construction “by pseudo-randomly varying amounts.” Id. Rather, Patent Owner merely contends that (1) in a corresponding district court matter, the court construed the phrase to mean “adjusting the phase characteristics of the carrier signals by pseudo-randomly varying amounts;” (2) during prosecution of a child application to the ’158 patent, the applicant explained that a “scrambler” operates by pseudo-randomly selecting bits to invert; and (3) there was no fundamental disagreement between parties that scrambling involves adjusting the phase characteristic of a carrier signal by pseudo-randomly varying amounts. PO Resp. 16–17. Patent Owner’s explanation for why we should add “by pseudo-randomly varying amounts” to its proposed construction is conclusory. Id. at 17. We interpret claims using the broadest reasonable construction in light of the specification of the involved patent. That standard is not the same as the standard used in district court. Patent Owner, however, provides no explanation for why we should apply the district court construction, which is not necessarily the same as used before us, here. Moreover, Patent Owner does not explain why statements made during prosecution of a child application for the term “scrambler” is relevant to how we should interpret the disputed phrase that does not even contain the term “scrambler” in it. Id. at 16. In summary, Patent Owner’s arguments are conclusory. For all of the above reasons, and for purposes of this decision, we determine that “scrambling the phase characteristics of the carrier signals” means “adjusting the phases of a plurality of carriers in a single multicarrier symbol.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The phrase “scrambling the phase characteristics of the carrier signals” is recited in the preamble of claim 1. Although neither party explicitly explains why the preamble of claim 1 is limiting, both parties implicitly contend that the preamble is limiting. For purposes of this decision, we determine that the preamble is limiting. We further find it helpful to our decision and analysis to interpret the phrase in order to understand the parties’ positions with respect to how the prior art reference Stopler meets the phrase.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We need not determine the exact probability of clipping in Shively’s proposed system because, even assuming Patent Owner’s analysis is accurate, it does not rebut Petitioner’s reason to combine. Petitioner does not allege that Shively’s proposed system causes clipping, or that a person of ordinary skill in the art would have been motivated to reduce PAR only if it caused clipping. Instead, Petitioner alleges that Shively’s proposed system would have an “increased” or “high” PAR: A POSITA would have recognized that by transmitting redundant data on multiple carriers, Shively’s transmitter would suffer from an increased peak-to-average power ratio. [Ex. 1009, p. 27.] This increase is due to the fact that the overall transmitted signal in a multicarrier system is essentially the sum of its multiple subcarriers. Id. When N subcarrier signals with the same phase are added together, they have a peak power which is N times greater than their individual maximum powers. Id. Since Shively’s subcarriers use quadrature amplitude modulation (QAM) . . . transmitting the same bits on two different subcarriers causes those subcarriers to have the same phase and amplitude. Id., pp. 27–28. By transmitting the same bits on multiple subcarriers, Shively creates a situation where those multiple subcarriers will be phase-aligned. Having phase-aligned subcarriers causes a high peak-to-average power ratio (PAR), since all of the subcarriers add up coherently at the same time. Id., p. 28. Pet. 14–15 (emphases added). Patent Owner criticizes Petitioner’s declarant for not providing “calculations or data that illustrate to what degree there is an ‘increase’ in PAR with Shively’s transmitter” (PO Resp. 48), but we are not persuaded that such calculations and data are necessary. Petitioner’s reason to combine does not depend on the PAR increase exceeding some specific numeric threshold. There is no dispute that transmitting the same data on multiple carriers increases PAR (Pet. Reply 10 (citing PO Resp. 6–7; Ex. 2003 (Short Decl.) ¶ 22)) or that Shively’s technique, specifically, will increase PAR (PO Resp. 28 (“Shively’s ‘spreading’ technique will contribute a small uptick in clipping probability.”). There also is no dispute that equipment designed to handle a higher PAR can be larger, more expensive, and more power hungry than equipment designed to handle a lower PAR. Pet. Reply 36 (citing Ex. 2003 ¶ 26; Ex. 1027 45:21–46:19). Patent Owner’s declarant, Dr. Short, testified that, given such issues, system designers or engineers would be interested in using techniques that could reduce PAR. Ex. 1027, 46:23–47:3. This is consistent with the reason to combine given in the Petition and supports Petitioner’s position that “numerous problems” other than clipping “would have motivated a [person of ordinary skill in the art] to look for ways to reduce the PAR of Shively’s technique.” Pet. Reply 36.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“First, the portions cited in the ’158 patent in the Petition and in Dr. Tellado’s declaration come from the “BACKGROUND OF THE INVENTION” section of the patent. That portion of the ’158 patent uses words such as “conventional” indicating that what is described in the “BACKGROUND OF THE INVENTION” section is information that was known at the time of the invention, not just by the inventors, but persons of ordinary skill in the art. Patent Owner does not contend otherwise. In addition, Dr. Tellado testified that a person having ordinary skill in the art would have recognized that the purpose of Stopler’s phase scrambler to randomize data symbols would be to reduce PAR of transmitted signals and that the person would have been familiar with the problems created by a high PAR, including PAR due to phase-aligned carriers. Ex. 1009 ¶¶ 60, 66. Moreover, Patent Owner’s own declarant recognized that PAR was a known problem at the time of the invention. Ex. 2003 ¶ 23 (“Conventional multicarrier systems, therefore, were designed to accommodate PAR.”). The ANSI T1.413-1995 standard also confirms that PAR was known at the time of the invention by describing that “[a] DMT time-domain signal has a high peak-to-average ratio (its amplitude distribution is almost Gaussian), and large values may be clipped by the digital-to-analog converter.” Ex. 1018, 36 (Section 6.5 “Tone ordering”). Based on the record evidence, we find that a person having ordinary skill in the art would have known about the problem of high PAR due to phase-aligned carriers.” slip op. at 32
Patent outcomesUS 8,718,158 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,718,158 - Radware, Inc. v. F5 Networks, Inc.Institution deniedPTAB · Oct 23, 2017 · IPR2017-01249 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Radware, Inc. did not identify Radware, Ltd. as a real party in interest.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“review, “the party against whom a presumption is directed has the burden of producing evidence to rebut the presumption. But this rule does not shift the burden of persuasion, which remains on the party who had it originally.” Fed. R. Evid. 301; see 37 C.F.R 42.62(a). Accordingly, when a patent owner provides sufficient evidence prior to institution that reasonably brings into question the accuracy of a petitioner’s identification of real parties-in-interest, the overall burden remains with the petitioner to establish that it has complied with the statutory requirement to identify all real parties-in-interest. Zerto at 7. The allocation of the burdens of production and persuasion for identification of all real parties in interest appropriately accounts for the fact that a petitioner is far more likely to be in possession of, or have access to, evidence relevant to the issue than is a patent owner. Id.” slip op. at 5
Discretionary denialPatents in suitUS 6,311,278 - Fieldpiece Instruments, Inc. v. Twin Rivers Engineering, Inc.Rehearing deniedPTAB · Sep 25, 2017 · IPR2017-00362 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied Fieldpiece’s rehearing request, leaving institution denied because the Petition did not sufficiently show that the prior art taught or suggested the negative limitation in claims 2, 3, 6, 7, and 9.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Pet. 44 (for claims 2 and 9); see also id. at 58 (substantially similar argument for claim 6), 68 (for claim 7, referring to argument for claim 6). In its Rehearing Request, Petitioner cites numerous portions of the Laub Declaration in support of its contention. Reh’g. Req. 5, 6, 8–10, 12, 13 (citing Ex. 1003, 29, 30, 32–34, 36, 49, 50, 73, 74). None of these portions of the Laub Declaration were cited in the Petition in connection with the negative limitation. In fact, as noted in our Decision, Petitioner did not cite to the Laub Declaration at all in connection with the negative limitation. See Dec. 14 n.2. The Rehearing Request “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d) (emphasis added). As Petitioner did not cite to the Laub Declaration at all in connection with the negative limitation in its Petition, we could not have “misapprehended or overlooked” this evidence in connection with that limitation. Moreover, the portions of the Petition cited in the Rehearing Request relate only to overviews of the references. See Reh’g. Req. 5–13 (citing Pet. 13, 14, 21, 22, 26, 29, 33, 34, 46, 47). In our Decision, we stated that the burden of persuasion remains on a petitioner in inter partes review proceedings. See Dec. 13 (citing DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner does not meet its burden because none of these overviews explain why the ordinarily skilled artisan would have understood the references to teach or suggest the negative limitation. Similarly, even having considered the portions of the Laub Declaration first cited in the Request for Rehearing, we still are not persuaded Petitioner explains sufficiently why the negative limitation is taught or suggested by the references.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“person of ordinary skill in the art would have nonetheless expected the limitation ‘without…a secondary tracer’ to have been known in the art.” Reh’g. Req. 2, 14. The Petition, however, does not mention the level of the ordinary skill in the art in connection with the negative limitation, let alone explain why the limitation would have been taught or suggested to one of ordinary skill in the art at the time of the invention. Petitioner further asserts that our Decision “misapprehends the disclosure in the prior art and is based on authority regarding [the] written description requirement of a negative limitation – not the standard required to show disclosure of a negative limitation in the prior art.” Id. at 4 (emphasis added); see also id. at 13–14 (expanding upon argument). We clarify that we relied on the case law cited in our Decision, not to indicate the minimum that a petitioner is required to show regarding a negative limitation, but simply to emphasize that the negative limitation inquiry is focused on what a person of ordinary skill in the art would understand the prior art to teach or suggest. Petitioner does not disagree with this legal point. See, e.g., id. at 15 (“Petitioner contends that the prior art, when viewed from the perspective of a person of ordinary skill in the art, sufficiently discloses the negative limitation . . .”). Nonetheless, as noted above, Petitioner neither points out an express teaching nor provides any other explanation as to why the negative limitation would have been taught or suggested to one of ordinary skill in the art at the time of the invention. Based on our construction of the negative limitation and our reading of the prior art, we concluded that a person of ordinary skill would not have understood the prior art to disclose the negative limitation. And Petitioner did not provide any evidence to the contrary. See, e.g., Pet. 44, 58, 68 (citing “generally” to prior art exhibits, but not citing to Laub Declaration). Thus, we are not persuaded that we erred in determining that Petitioner did not meet its burden to show a reasonable likelihood of prevailing on this issue.” slip op. at 6
- BurdenDecided for patent owner
“Moreover, the portions of the Petition cited in the Rehearing Request relate only to overviews of the references. See Reh’g. Req. 5–13 (citing Pet. 13, 14, 21, 22, 26, 29, 33, 34, 46, 47). In our Decision, we stated that the burden of persuasion remains on a petitioner in inter partes review proceedings. See Dec. 13 (citing DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner does not meet its burden because none of these overviews explain why the ordinarily skilled artisan would have understood the references to teach or suggest the negative limitation. Similarly, even having considered the portions of the Laub Declaration first cited in the Request for Rehearing, we still are not persuaded Petitioner explains sufficiently why the negative limitation is taught or suggested by the references.” slip op. at 4
NonePatents in suitUS 7,022,993 - Autodesk, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg, S.A.All claims unpatentablePTAB · Sep 11, 2017 · CBM2016-00043 · APJ Christopher M Kaiser · CBM · Final written decision
Claims 1, 2, 4–7, and 12–19 are unpatentable under § 101; claims 3, 8–11, and 20 are subject to adverse judgment after disclaimer.
RulingsFinal written decision- Adverse judgmentAdverse judgmentGranted
“B. Statutory Disclaimer During the pendency of this proceeding, Patent Owner filed a disclaimer pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2014. According to this disclaimer, Patent Owner disclaims claims 3, 8–11, and 20 of the ’820 patent. Id.; see also Resp. 1 (“Contemporaneously with the filing of this Response, Patent Owner is disclaiming claims 3, 8, 9, 10, 11, and 20 of the ’820 Patent.”). Our rules provide for entry of adverse judgment against a Patent Owner who disclaims “a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Although Patent Owner does not disclaim all the challenged claims, and although Patent Owner therefore has some claims remaining in this trial, we construe the disclaimer of claims 3, 8–11, and 20 as a request for the entry of adverse judgment solely with respect to those claims. We grant the request and enter adverse judgment with respect to claims 3, 8–11, and 20.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“1. Add-On Computer Software Code Both parties propose construing “add-on computer software code,” a term that appears in every challenged claim. Ex. 1001, 78:43–82:36. Petitioner argues that this term should be interpreted as a “set of computer code that cannot be run independently from a parent program.” Pet. 22. Patent Owner argues that the term should be interpreted as “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.” Resp. 42–43. We agree with Patent Owner. Patent Owner’s construction is taken directly from the written description of the ’820 patent, which provides a reasonably clear, deliberate, and precise definition of the term. See Paulsen, 30 F.3d at 1480; Ex. 1001, 61:42–51 (“The plug-in (add-on) computer software code is . . . .”). To the extent that Petitioner’s proposed construction seeks to limit add-on software code further by requiring that the software code be incapable of running independently from a parent program, as opposed merely to being designed to run within the parent program as an internal component, this further limitation is inconsistent with the lexicography undertaken by the patentee of the ’820 patent. Accordingly, we construe “add-on computer software code” as a “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.”” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“As discussed above, the ’820 patent describes solving problems with the generation of cost estimates of construction projects, including that the process takes significant time and effort, that the estimates produced are difficult to revise, and that the estimates can be inaccurate, leading to cost overruns and difficulties obtaining construction loans. Ex. 1001, 1:15–62. The claims recite a computer readable medium or system for automating the process of generating a price schedule, which is used to develop the overall project cost estimate. Id. at 78:43–82:36. In so doing, the claims do not recite any “specific asserted improvement in computer capabilities,” such as the “self-referential table for a computer database” in Enfish, 822 F.3d at 1336. Instead, the claims of the ’820 patent “invoke[]” known aspects of computer technology, including “[a] non-transitory computer readable medium,” “a computer that includes a processor and a memory,” “an add-on computer software code,” “a software design tool,” and “a database,” “merely as a tool” for solving the problem of improving the known process of generating construction project cost estimates. Id.; Ex. 1001, 78:43–60. Accordingly, the claims of the ’820 patent are not like those considered in Enfish, where the claims were determined at the first step of the Alice framework not to be directed to abstract ideas because they were directed to “[a] specific asserted improvement in computer capabilities.” 822 F.3d at 1336. Instead, Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent are focused “on a process that qualifies as an ‘abstract idea.’” Id. The ’820 patent makes clear that the heart of the claimed subject matter is generating prices for construction projects, a process that can be accomplished without automation technology. Ex. 1001, 1:15–62. The claims themselves recite “[a] non-transitory computer readable medium [that] causes [a] computer to generate a price schedule” and “[a] system for creating a pricing schedule.” Id. at 78:43–51, 82:4. As discussed above, the computer technology recited in the claims is used merely as a tool to automate the process of determining the price of a construction project. Determining a price is an abstract idea. See Versata Dev. Grp., 793 F.3d at 1333–34 (Fed. Cir. 2015). Thus, on the current record, Petitioner has made a sufficient showing that the claims of the ’820 patent are directed to an abstract idea under the first step of the Alice analysis.” slip op. at 20
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“application of an abstract idea. Mayo, 566 U.S. at 78. Petitioner argues that the challenged claims have no such elements, because “the challenged claims add nothing more than well-understood, routine, conventional activity to the abstract idea of calculating a price.” Pet. 32–48. Patent Owner argues that the presence of the add-on computer software code limitations in the challenged claims transforms those claims into patent-eligible applications. Resp. 49–50. We are persuaded that Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355.” slip op. at 23
Patent outcomesUS 8,515,820 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · EnfishPatents in suitUS 8,515,820 - Qualcomm Incorporated v. Bandspeed, Inc.Some claims unpatentablePTAB · Aug 23, 2017 · IPR2016-00623 · APJ James B Arpin · IPR · Final written decision
Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyOther
“of a “clear” channel is “a channel that is not already in use by a non-frequency hopping communications system” and that the broadest reasonable interpretation of an “occupied” channel is “a channel that already is in use by a non-frequency hopping communications system.”” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art. slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Id. Thus, Petitioner argues that, because multiple tests must be applied to determine the continued presence of interference regardless of the source, limiting “occupied” to NFH communications systems is overly narrow. Nevertheless, the words chosen by the patentee to describe its invention have significance. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not the PTO’s.”). As noted above, “occupied” is only used in the Specification with respect to NFH communications systems, and neither claims 4 and 19 nor their base claims nor the intervening claims specify a single or multiple tests. Therefore, we find Petitioner’s arguments, which attempt to incorporate the teachings of “bad” and “good” channels from elsewhere in the Specification into the interpretation of these claim limitations, unpersuasive. See Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (“[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. Other Claim Terms For purposes of this Decision, we discern no other claim terms that require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting to allow us to construe the terms “occupied” and “clear,” we relied less on Dr. Ding’s testimony regarding how a person of ordinary skill in the art would understand these terms. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”). Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see PO Resp. 7.” slip op. at 21
Patent outcomesUS 8,873,500 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,873,500
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.