• Ecobee Technologies Ulc / Google LLC v. Ecofactor, Inc.All claims unpatentable
  PTAB · Nov 13, 2023 · IPR2022-00969 · APJ Paul J Korniczky · IPR · Final written decision

  Claims 17–23 are unpatentable as obvious over Ehlers and Wruck; the Board dismissed the collateral estoppel motion as moot.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner states a person of ordinary skill in the art would have had “a (1) Bachelor’s degree in engineering, computer science, or a comparable field of study, and (2) at least five years of (i) professional experience in building energy management and controls, or (ii) relevant industry experience. Additional relevant industry experience may compensate for lack of formal education or vice versa.” Pet. 20 (citing Ex. 1002 ¶¶ 23–25). Patent Owner states a person of ordinary skill in the art would have had “a bachelor’s degree in engineering, computer science, or a comparable field, with 2-3 years’ experience in temperature controls, embedded control systems, electronic thermostats, or HVAC controls, or similarly relevant industry experience, with relevant experience substituting for education and vice versa.” PO Resp. 6 (citing Ex. 2006 ¶ 26). The ’550 patent is directed to a thermostat controller. See Ex. 1001, 9:26–10:17 (claim 1). This aligns more closely with the level of skill proposed by Patent Owner — which focuses on thermostats and HVAC control systems — than the one proposed by Petitioner –– which focuses on energy management and controls. Compare Ex. 2006 ¶ 26, with Ex. 1002 ¶¶ 23–25. Accordingly, we adopt Patent Owner’s proposed definition. However, we consider the parties’ positions on the level of ordinary skill in the art to be substantially similar and our decision would be the same under either definition.” slip op. at 20

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

    “Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 21

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

    “III. ANALYSIS Legal Standards Petitioner bears the burden of persuasion to prove unpatentability, by a preponderance of the evidence, of the claims challenged in the Petition. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). As mentioned above, Petitioner’s challenge is based on obviousness. Pet. 10–11. A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in the record, objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 19

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

    “Patent Owner argues that a person of ordinary skill in the art would not have been motivated to combine Ehlers and Wruck because (1) Wruck does not explain what Table 28’s “Delta value” is or how it is obtained (PO Resp. 22–23 (citing Ex. 2006 ¶¶ 53, 57–59)), (2) “nothing in Wruck requires that ‘Delta value’ be the difference between two different temperature setpoints (id. at 22), and (3) Wruck does not disclose “calculating a setpoint” (id. (citing Ex. 2006 ¶ 58)). We do not agree with Patent Owner’s arguments for the reasons discussed above in connection with limitation 17j. We determine that Petitioner has proven, by a preponderance of the evidence, that a person of ordinary skill in the art would have motivated to combine the teachings of Ehlers and Wruck.” slip op. at 40

  Patent outcomesUS 8,596,550 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,596,550
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Staton Techiya LLCAll claims unpatentable
  PTAB · Nov 13, 2023 · IPR2022-01078 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–9 and 11–13 are unpatentable as obvious: claims 1–6, 8, 9, and 11–13 over Pedersen, Visser, and Alves; claims 6 and 7 over Pedersen, Visser, Alves, and Huang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of earphones and associated signal processing. The [person having ordinary skill in the art] could have also obtained similar knowledge and experience through other means.” Pet. 13 (citing Ex. 1002 ¶ 17). Patent Owner “applies the level of ordinary skill in the art that is proposed in the Petition.” PO Resp. 12 (citing Pet. 13). Because Petitioner’s formulation of the level of ordinary skill in the art is consistent with the ’701 patent and is not challenged by Patent Owner, we adopt it and apply it in our analysis below.” slip op. at 10

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

    “Petitioner argues “that no express constructions of the claims are necessary” and the terms “should be given their plain and ordinary meaning.” Pet. 13–14. electronic signal” and “the external gain.” PO Resp. 12–13. For all other terms, Patent Owner argues that they should be given their “plain and ordinary meaning as understood by a person of ordinary skill in the art at the time of the purported invention of the ʼ701 patent.” PO Resp. 13. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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))).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “At first glance, the testimony appears contradictory, with Mr. Struck first testifying that signal processing can be used to achieve acoustical separation and then testifying to the opposite. The parties treated it as such in their briefing, focusing on the testimony that was favorable to them and ignoring the contrary testimony. Compare Pet. Reply 8 (quoting Ex. 1028, 140:11–141:16), with PO Sur-reply 1–2 (quoting Ex. 1028, 141:21–142:6). But the testimony is not necessarily inconsistent. See Tr. 10:10–26 (Petitioner explaining why testimony is not inconsistent). In the first question, Mr. Struck was asked a broad question, and he provided a broad answer with no qualifications. That is, he identified three known ways of achieving acoustical separation including signal processing. In the second question, he was asked a narrower (and potentially leading) question. But, importantly, his answer was qualified. That is, his answer was limited to “within the context of just this paragraph alone, no.” Ex. 1028, 142:4–6. The specific paragraph he is referring to is not identified in the question or the answer. But, the last paragraph he was asked a question about was Pedersen paragraph 45. See id. at 140:11–142:6; see also Tr. 10:10–26. Even if, as Mr. Struck testified to, a person having ordinary skill in the art looking at “just [Pedersen paragraph 45] alone” might not understand that signal processing could be used for acoustical separation, that is not the issue before us. Instead, the issue before us is whether a person having ordinary skill in the art, considering both Pedersen and Visser, would understand that acoustical separation could be achieved question is yes. See Ex. 1028, 141:9–20.” slip op. at 25

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

    “Given the small space of the user’s ear, a person having ordinary skill in the art would have recognized that it would be difficult to achieve acoustical separation by physical means. Ex. 1002 ¶ 83. That is, a person having ordinary skill in the art would have recognized that given the small space, the microphone would likely pickup echo of the user’s speech. Id. ¶¶ 81–84. A person having ordinary skill in the art would have known that echo was not desired. See Ex. 1008 ¶ 45 (discussing the need for acoustical separation); Ex. 1002 ¶ 96. Accordingly, a person having ordinary skill would have looked for echo reducing circuitry so that the person wearing the earpiece would not hear any echo of his own voice. Ex. 1002 ¶ 96; see also Ex. 1028, 141:9–16 (Mr. Struck testifying that a signal processing solution could be used to acoustically isolate a loudspeaker and a microphone). An example of such a system is Visser, which has two microphones and will generate an echo. See Ex. 1009 Figs. 1, 2, ¶ 41; Ex. 1002 ¶¶ 98– 107. Visser further describes an algorithm for reducing echo. See Ex. 1002 ¶¶ 108–119. A person having ordinary skill in the art would have used Visser’s echo reducing algorithm to acoustically isolate the microphone and loudspeaker in Pedersen’s Figure 5 embodiment earplug. Ex. 1002 ¶ 120. This combination would result in the reduction of echo produced by the microphone and loudspeaker in the ear canal. Ex. 1002 ¶ 121. That echo reduced signal is shown as speech signal 181. Ex. 1002 ¶¶ 108–119.” slip op. at 20

  Patent outcomesUS 11,057,701 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,057,701
• Microsoft Corp. v. Surfcast, Inc.All claims unpatentable
  PTAB · Oct 2, 2023 · IPR2022-00592 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–8 are unpatentable as obvious over MSIE Kit and RFC2068; claims 9–13 are unpatentable as anticipated by MSIE Kit.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that a person or ordinary skill in the art “would have had a Master’s degree in software engineering or computer science (or equivalent experience working in industry) and several years of experience 7 Patent Owner has not submitted such objective evidence here. designing, writing or implementing software products, either at the application or operating system level.” Pet. 11. Petitioner submits further that skilled artisans “would have been familiar with various technological concepts, including those relating to user interfaces, operating systems and software applications, basic computer functionality, networking and data processing.” Id. Patent Owner does not challenge or otherwise address Petitioner’s definition (see generally PO Resp.), and we adopt it here because it reflects the level of skill in the prior art.” slip op. at 7

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In IPR2013-00292, the Board construed a number of terms in the ’403 patent,8 which is the “ultimate parent” of the ’338 patent through a chain of continuations and continuations in part. IPR2013-00292, Paper 93 (Ex. 1017, the “403 FWD”).9 See Pet. 1. Because the ’403 patent is the 8 U.S. Patent No. 6,724,403 (Ex. 1019). 9 The Federal Circuit affirmed the 403 FWD’s unpatentability determinations. SurfCast, Inc. v. Microsoft Corp., 639 F. App’x 651 (Fed. Cir. 2016). ’338 patent’s “ultimate parent,” Petitioner submits that the 403 FWD constructions drive the proper constructions here. Id. at 12–19; Pet. Reply 1– 13. Moreover, Petitioner argues, collateral estoppel bars Patent Owner from contesting constructions of the same terms in the ’434 patent.10 Pet. Reply 1 (citing XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294–95 (Fed. Cir. 2018)). Patent Owner argues that because the 403 FWD applied the “broadest reasonable interpretations,” it does not have preclusive effect here, where we construe claims using the Phillips standard. PO Sur-Reply 1 (citing SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373, 1376 (Fed. Cir. 2016)). We need not resolve that dispute, because we conclude that, to the extent the 403 FWD construed terms applicable in this proceeding, those constructions comport with the Phillips standard.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “While, as described above, the specification purports to distinguish tiles from windows, it does so with permissive terms rather than a restrictive definition. See Ex. 1001, 11:11–32. During the hearing, Patent Owner was unable to describe particular restrictions that would embody the limited representation. For example, Patent Owner asserted that degraded resolution would satisfy its proposed construction (Tr. 64:24–65:11) but that does not comport with a distinction from a window. A window may depict content at a variety of zooms, some of which would show an image with degraded resolution. See Tr. 68:6–15 (Patent owner discussing how pixels can be lost on a zoomed image). Patent Owner asserts that a window with zoom functionality lacks “a fundamentally or different in nature likeness or image.” Tr. 68:11–15. But that assertion is detached from Patent Owner’s proposed construction and unsupported by the specification. We conclude that the specification does not sufficiently distinguish a tile from a window to support Patent Owner’s proposed construction. In fact, Patent Owner admits that the specification does not have a clear definition but insists that it nonetheless defines a tile “as something other than either an icon or a window.” Tr. 48:20–25. We do not agree. When identifying features that the specification describes to distinguish tiles from windows, Patent Owner points to other claim limitations, such as “[s]electability to provide access to the underlying information.” Tr. 49:7– 10; see also id. at 50:3–8 (asserting a tile must be refreshable). Although such limitations may capture aspects that the specification uses to distinguish tiles from other graphical interface elements, they do not support further construing “tile” narrowly as Patent Owner asserts. Stated otherwise, the specification’s distinctions for tiles over icons or windows already appear as claim limitations and do not counsel in favor of further limiting “tile.” Further, Patent Owner’s construction is unclear whether a tile must provide a graphical representation of its associated information source or of the information underlying that source. The proposed construction first requires a tile represent the source but then additional requires it “provid[e] a representation of the underlying information,” seemingly allowing no room for a tile that represents only the information source. PO Resp. 6–7. Those competing requirements would not comport with the specification. The exemplary tiles do not necessarily represent a source’s underlying information, but instead may relate to the source itself. See Ex. 1001, Fig. 4 (tile 410, displaying the name of a broadcast signal; tile 408, displaying an icon indicating “New Mail!”), 11:56–65 (describing tile 408), 11:66–12:12 (describing tile 410). Patent Owner, at oral hearing, stated that tile 410 is an example of the claimed tile, thus confirming that the claimed “tile” encompasses at least one such exemplary tile. Tr. 50:5–22. Thus, Patent Owner’s proposed addition regarding the nature of a tile’s representation would create an internal inconsistency in the meaning of a tile. We do not adopt Patent Owner’s proposed restriction on the nature of a tile’s representation.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that there is no need to construe “assign” here, beyond holding that Patent Owner’s proposed construction is unwarranted. The specification uses “assign” in various ways, without indicating the special meaning Patent Owner seeks. For example, it states that the software “is able to recognize the type or format of the information source and assign properties to tiles according to the type.” Ex. 1001, 7:54– 56. It explains that, when assigning “a refresh rate to a tile according to an identifier presented with each source of information, the nature of the identifier may vary according to the type of date or the protocol that is employed for its transmission.” Id. at 9:55–59; accord id. at 9:40–10:24 (explaining the ability to assign tile update rates depending on a variety of identifiers). Moreover, the specification makes clear that “assign” is not used in a deterministic fashion. When discussing automatically assigning an update rate, it states that “in the absence of initial preferences specified by the user, the present technology is able to assign a rate at which the display of a tile is refreshed according to” a number of factors. Ex. 1001, 9:40–46. That assignment does not “deterministically impose a specific refresh rate” as Patent Owner would have us construe “assign,” because it depends on multiple factors and may be overridden by a user’s preferences. We are also not persuaded that the specification’s description of “grid generator 2404” supports Patent Owner’s proposed construction. That portion of the specification describes a manner of creating a grid of tiles on a server and delivering that grid to a client. Ex. 1001, 27:51–28:67. In the described embodiment, although “tile creator 2408-1” can assign a priority to a tile and tile refresh rates are preferably “allocated according to the priorities associated with each tile,” a user may nonetheless manually update a tile ((id. at 27:64–28:2, 28:49–56), showing that even an assigned update rate is not “deterministic” as Patent Owner contends. We conclude that the specification does not provide a sufficient basis” slip op. at 18

  Patent outcomesUS 9,363,338 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,363,338
• Microsoft Corp. v. Surfcast, Inc.All claims unpatentable
  PTAB · Oct 2, 2023 · IPR2022-00591 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1, 2, 4–10, 12–18, and 20–24 are anticipated by MSIE Kit; claims 3, 11, and 19 are obvious over MSIE Kit.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that a person or ordinary skill in the art “would have had a Master’s degree in software engineering or computer science (or equivalent experience working in industry) and several years of experience designing, writing or implementing software products, either at the application or operating system level.” Pet. 11. Petitioner submits further that skilled artisans “would have been familiar with various technological concepts, including those relating to user interfaces, operating systems and software applications, basic computer functionality, networking and data processing.” Id. Patent Owner adopts Petitioner’s definition (PO Resp. 10), as do we, because it reflects the level of skill in the prior art.” slip op. at 7

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

    “Next, Patent Owner argues that a tile must provide “a representation of the underlying information that is more limited than the representation provided by a window.” PO Resp. 11, 14–19; see also Tr. 53:10–54:8. We do not agree. While, as described above, the specification purports to distinguish tiles from windows, it does so with permissive terms rather than a restrictive definition. See Ex. 1001, 11:29–34. During the hearing, Patent Owner was unable to describe particular restrictions that would embody the limited representation. For example, Patent Owner asserted that degraded resolution would satisfy its proposed construction (Tr. 64:24–65:11) but that does not comport with a distinction from a window. A window may depict content at a variety of zooms, some of which would show an image with degraded resolution. See Tr. 68:6–15 (Patent Owner discussing how pixels can be lost on a zoomed image). Patent Owner asserts that a window with zoom functionality lacks “a fundamentally or different in nature likeness or image.” Tr. 68:11–15. But that assertion is detached from Patent Owner’s proposed construction and unsupported by the specification. We conclude that the specification does not sufficiently distinguish a tile from a window to support Patent Owner’s proposed construction.” slip op. at 11

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

    “MSIE Kit discloses a grid of non-overlapping tiles with its default arrangement of a “3 by 2 grid.” Ex. 1010, 183. As Petitioner’s expert states, “the fact that Active Desktop items may be arbitrarily positioned by the user does not change the fact that MSIE Kit also discloses a default grid layout that discloses ‘dividing some or all of a display into multiple tiles displayed in an orderly fashion.’” Ex. 1065 ¶ 8. Patent Owner argues also that MSIE Kit’s default layout does not satisfy the claim language because it explicitly includes gaps between items, whereas the claimed grid does not permit gaps. PO Resp. 43–44. We do not construe “grid” to exclude space between tiles (nor did Patent Owner argue for such a construction), and Patent Owner’s argument is therefore not persuasive. Thus, MSIE Kit’s default configuration discloses a grid (a regular arrangement of rows and columns). And MSIE Kit discloses an exemplary configuration for a 640 × 480 pixel desktop using items with a “maximum size of no more than 200 × 200 pixels” so that the layout “allow[s] for reasonable spacing between items.” Id. Thus, MSIE Kit discloses a specific example of nonoverlapping items on a grid. Although Patent Owner points to an example in MSIE Kit where Active Desktop items are located in an” slip op. at 20

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

    “We do not agree with Patent Owner that MSIE Kit’s disclosures show that claim 3’s limitation was not obvious. See PO Resp. 51. Petitioner relies on MSIE Kit’s disclosures that suggest organizing favorite web links by content (Ex. 1010, 113–14) and grouping Active Channels by content (id. at 212–13). Pet. 43. We agree that MSIE Kit suggested theme-based organization, as recited by claim 3. We further agree that using multiple grids to group items by theme “would make it easier for a user to find an item she was looking for.” Pet. 43–44 (citing Ex. 1003 ¶ 231). Patent Owner takes issue with Petitioner’s contention that adding additional grids to MSIE Kit’s default would have been a predictable variation. PO Resp. 51 (citing Pet. 43). According to Patent Owner, that statement is conclusory. Id. We do not agree. Nothing about MSIE Kit’s disclosures suggest that using multiple grids would be anything other than predictable. The record contains no evidence that undermines Petitioner’s expert, who views multiple grids as a predictable variation of MSIE Kit’s default grid. Ex. 1003 ¶ 230. Although Patent Owner accurately points out that MSIE Kit discloses overloading a grid such that items overlap, that does not preclude using multiple grids, and we conclude that Petitioner’s stated reasons for doing so are logical. Patent Owner’s position is that a display partitioned into multiple grids would have to impose the desired organization for tiles in the grid. See PO Resp. 52. We do not agree. As discussed above, a grid need only provide for an arrangement of tiles and need not continuously enforce a particular arrangement. See supra at 15 (§ II.B.2). Claim 3 requires only that each of two grids “is associated with a separate theme,” not that the grid imposes or controls the theme. Thus, we agree with Petitioner’s contentions that when a user arranges multiple grids to contain items with a common theme for each grid, that satisfies claim 3. In light of MSIE Kit’s suggestion to organize links and Active” slip op. at 26

  Patent outcomesUS 9,946,434 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,946,434
• Microsoft Corp. v. Surfcast, Inc.All claims unpatentable
  PTAB · Oct 2, 2023 · IPR2022-00590 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–4 are unpatentable because Microsoft showed they are anticipated by MSIE Kit.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97.” slip op. at 7

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

    “The specification discusses “Tile Objects” at some length. Ex. 1001, 10:28–14:7. It states that “[a] tile presents content from any information source.” Ex. 1001, 10:31–32. Further, “[t]iles are selectable and live” and the specification explains that “tiles are live in that each contains real-time or near real-time information” and, when selected, “the tile instantly provides the user with access to the underlying information.” Ex. 1001, 12:3–11. The specification frames tiles as contrasting with two other graphical user interface elements—icons and windows. Ex. 1001, 10:33–11:8. It presents tiles as “a third graphical representation of programs and files” and explains that “each tile is a viewer of a single information source.” Ex. 1001, 10:62–11:2. To distinguish tiles, the specification states that, unlike icons, a tile “contains continually refreshed content” and compared to windows, “a tile will typically be smaller in size than a window, allowing the user to view multiple tiles simultaneously if desired.” Ex. 1001, 11:3–8. Significantly, that comparison to windows uses exemplary characteristics without defining aspects applicable to all tiles. The specification asserts that “many tiles may be displayed simultaneously without overlapping with one another in the way that windows must necessarily do.” Ex. 1001, 11:13–16.” slip op. at 10

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

    “Pane are displayed as a grid within an Internet Explorer window on the video display. Ex. 1010, xxxvi; Ex. 1003 ¶ 122. That grid is an orderly arrangement of tiles with multiple tiles (Active Channel elements) in the first column and one tile (the Browser Pane) in the second column. Ex. 1010, xxxvi; Ex. 1003 ¶ 130. Both columns of tiles have the same height. Ex. 1010, xxxvi; Ex. 1003 ¶ 130. This is similar with what is shown in Figure 9 of the ’712 patent. That is, Figure 9 shows elements 802-1-1, 802- 2-1, and 802-1-2 arranged as a grid of multiple columns each having the height and with one column having multiple tiles and the second column having a single tile. Ex. 1001, Fig. 9; see also Ex. 1001, 16:18–37 (stating that not all tiles need to be the same size). Accordingly, MSIE Kit discloses this limitation.” slip op. at 31

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “We do not agree with the conclusions of Patent Owner or Mr. Weadock. The claim does not require that the content of the first tile is used to generate the content of the second tile. Instead, the claim simply requires that the “content of a second tile . . . depends upon content of a first tile.” Because the content of the Browser Pane (second tile) depends on what the user selects for the Active Channel element, MSIE Kit discloses the limitation. It does not matter that the content of the browser pane comes directly from a website and not the Active Channel element. Nothing in the claim requires it to do so.” slip op. at 36

  Patent outcomesUS 9,043,712 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 9,043,712
• Microsoft Corp. v. Surfcast, Inc.All claims unpatentable
  PTAB · Oct 2, 2023 · IPR2022-00423 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–19 are unpatentable as anticipated by MSIE Kit; the Board did not reach the alternative obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person having ordinary skill in the art would have had “a Master’s degree in software engineering or computer science (or equivalent experience working in industry) and several years of experience designing, writing or implementing software products, either at the application or operating system level.” Pet. 11 (quoting Ex. 1003 ¶ 66). Petitioner further argues that a person having ordinary skill in the art “would have been familiar with various technological concepts, including those relating to user interfaces, operating systems and software applications, basic computer functionality, networking and data processing.” Pet. 11 (citing Ex. 1003 ¶ 66). Patent Owner does not address the level of skill or Petitioner’s description of what a person having ordinary skill in the art would have been familiar with. See PO Resp. Because Petitioner’s formulation of the level of ordinary skill in the art is consistent with the ’317 patent and the asserted prior art, and is not challenged by Patent Owner, we adopt it and apply it in our analysis below.” slip op. at 9

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

    “While, as described above, the specification purports to distinguish tiles from windows, it does so with permissive terms rather than a restrictive definition. See Ex. 1001, 11:5–8. During the hearing, Patent Owner was unable to describe particular restrictions that would embody the limited representation. For example, Patent Owner asserted that degraded resolution would satisfy its proposed construction (Tr. 64:24–65:11) but that does not comport with a distinction from a window. A window may depict content at a variety of zooms, some of which would show an image with degraded resolution. See Tr. 68:6–15 (Patent owner discussing how pixels can be lost on a zoomed image). Patent Owner asserts that a window with zoom functionality lacks “a fundamentally or different in nature likeness or image.” Tr. 68:11–15. But that assertion is detached from Patent Owner’s proposed construction and unsupported by the specification. We conclude that the specification does not sufficiently distinguish a tile from a window to support Patent Owner’s proposed construction. In fact, Patent Owner admits that the specification does not have a clear definition but insists that it nonetheless defines a tile “as something other than either an icon or a window.” Tr. 48:20–25. We do not agree. When identifying features that the specification describes to distinguish tiles from windows, Patent Owner points to other claim limitations, such as “[s]electability to provide access to the underlying information.” Tr. 49:7– 10; see also Tr. 50:3–8 (asserting a tile must be refreshable). Although such limitations may capture aspects that the specification uses to distinguish tiles from other graphical interface elements, they do not support further construing “tile” narrowly as Patent Owner asserts. Stated otherwise, the specification’s distinctions for tiles over icons or windows already appear as claim limitations and do not counsel in favor of further limiting “tile.”” slip op. at 14

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

    “We do not agree with Patent Owner’s argument. Although Patent Owner has identified an outlier case in which the system incorrectly determines an update, Patent Owner does not address the situation where there is no clock error. In other words, at best, Patent Owner has shown that MSIE Kit may not always practice the claim limitation. However, so long as the prior art sometimes practices the claimed invention, that is enough for anticipation. “[A] prior art reference may anticipate or render obvious an apparatus claim—depending on the claim language—if the reference discloses an apparatus that is reasonably capable of operating so as to meet the claim limitations, even if it does not meet the claim limitations in all modes of operation.” ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018) For example, the Federal Circuit held that it was sufficient to show that a reference anticipated in “the process of startup,” even if the reference did not show anticipation during “normal operation,” reasoning that “[n]othing in the claims requires that the current threshold increase during the power supply’s normal operation.” Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., 843 F.3d 1315, 1336 (Fed. Cir. 2016); see also Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“Just as ‘an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes,’ a prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.” (quoting Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 622–623 (Fed. Cir. 1995))). Because there is no dispute that MSIE Kit discloses a system that sometimes practices the claim limitation, it discloses that limitation.” slip op. at 41

  Patent outcomesUS 9,032,317 unpatentable
  Claim construction§ 102 anticipationcites Phillips · KSR · Graham
  Patents in suitUS 9,032,317
• Guangdong Oppo Mobile Telecommunications Corp., Ltd. v. Nokia Solutions And Networks OYAll claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00632 · APJ Jason M Repko · IPR · Final written decision

  Claims 1, 3–7, 9, 11–13, 15, and 17–22 are unpatentable as obvious over Zheng and Jiang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the time of the alleged invention would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two to three years of experience in the design or development of telecommunication systems, or the equivalent.” Pet. 10 (citing Ex. 1003 ¶ 19). Patent Owner adopted this definition in its Response. PO Resp. 6. We determine that Petitioner’s definition is supported by the Akl Declaration, and it is consistent with the asserted prior art and the ’588 patent. See Ex. 1003 ¶¶ 18–20. Thus, in this decision, we apply Petitioner’s proposed definition. Pet. 10.” slip op. at 7

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

    “content of the information.” See PO Resp. 19–20. The plain language does not require a particular number of fields. See Ex. 1001, 20:56–59 (claim 1); see also id. at 22:15–19 (claim 17). Rather, claims 3 and 17 merely recite “content” and “information.” See id. Nor do the claims specify how the content of the information indicates the segment offset. Id. Thus, we see nothing in the claims themselves that limit the indication to a single field. Next, we turn to the specification. The specification is the “single best guide” to a disputed term’s meaning. Phillips, 415 F.3d at 1315. It “may reveal a special definition given to a claim term.” Id. at 1316. Or it may reveal “an intentional disclaimer, or disavowal, of claim scope.” Id. “The patentee’s lexicography must, of course, appear ‘with reasonable clarity, deliberateness, and precision’ before it can affect the claim.’” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The patentee can disavow claim scope with language in the specification or the prosecution history. Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016). “In either case, the standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.” Id. We disagree that the “content of the information” should be limited to the specific embodiments that Patent Owner identifies. See PO Resp. 20 (citing Ex. 1001, 18:24–26), 21 (citing Ex. 1001, 15:25–28). One of the embodiments describes a situation in which the “method does not require OFFSET value to be indicated.” Ex. 1001, 18:21–22. But the claims recite the opposite: “the content of the information indicates segment offset.” Id. at 20:58–59. We disagree that the advantages of the disclosed embodiment that does not require the segment offset also apply to the claimed embodiment unequivocal evidence that the claimed “content of the information” is limited to a single field, as Patent Owner argues. Patent Owner cites two embodiments among several. See id. at 20–21 (citing Ex. 1001, 15:25–28, 18:24–26).7 Yet the ’588 patent explains that those embodiments are “non-limiting examples.” Ex. 1001, 20:24–26. Also, the ’588 patent does not otherwise define “content of the information” with the reasonable clarity, deliberateness, and precision required of a patentee’s lexicography. In fact, as noted by Patent Owner, the phrase “content of the information” also appears in claim 2, and it indicates SDU length. Sur-reply 26. So Patent Owner appears to acknowledge that the phrase “content of the information” does not have a special definition itself. See id. This is consistent with the understanding that the “content of the information” can indicate different things in different situations or multiple things in one situation. Giving the disputed claim terms their ordinary and customary meaning as would have been understood by one with ordinary skill in the art, we determine that the “content of the information” is not limited to a single field and need only indicate the segment offset. In this way, we agree with Petitioner that the claims broadly encompass several ways to indicate segment offset. See Reply 21. slip op. at 35

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

    “We disagree that Petitioner’s rationale is insufficient. The evidence supports Petitioner’s assertion that the teachings of Zheng and Jiang would have led a person of ordinary skill to not include the ELI field in the header in some cases. Pet. 47–49. Both Zheng and Jiang recognize that transmission efficiency can be improved by reducing PDU-header bits. See Ex. 1006, 10:30–34, 14:5; Ex. 1007 ¶¶ 21, 26. Also, Zheng’s solution already proposes an ELI field that can take several forms based on the SDU segments. See, e.g., Ex. 1006, 11:14–29. Because Dr. Min does not give sufficient weight to these parts of Zheng and Jiang, we credit Dr. Akl’s testimony (Ex. 1003 ¶¶ 179–183) over Dr. Min’s (Ex. 2004 ¶¶ 75, 82) on this particular issue.” slip op. at 16

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

    “end SDU segment when that segment fills up the entire PDU. Pet. 53. In this case, the end segment’s end byte corresponds to the PDU’s end byte. Id. (citing Ex. 1003 ¶ 190); see Ex. 1007, Fig. 1. Petitioner shows that Zheng’s receive entity will still be able to calculate the SDU segment’s length using the PDU length for at least the reason that the receiver knows the PDU length in both AM and UM modes—either as a fixed length or variable. See Pet. 53–54 (citing Ex. 1006, 8:26–28, 8:30–32). We credit Dr. Akl’s testimony on this particular issue (Ex. 1003 ¶¶ 189–193) over Dr. Min’s (Ex. 2004 ¶¶ 101–103) because Dr. Akl’s testimony is consistent with Zheng. In sum, although not every end SDU segment terminates at the end of a PDU, Petitioner articulates sufficient reasoning with rational underpinnings as to why one of ordinary skill in the art would have omitted the ELI field when that happens. Pet. 49–53. Thus, Petitioner shows—and we find—that the Zheng-Jiang combination teaches or suggests the second determining step. See id.” slip op. at 31

  Patent outcomesUS 10,701,588 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,701,588
• Google LLC v. Ecofactor, Inc.All claims unpatentable
  PTAB · Aug 7, 2023 · IPR2022-00475 · APJ Paul J Korniczky · IPR · Final written decision

  Claims 1–16 are unpatentable as obvious over Ehlers and McLellan.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner states that a person of ordinary skill in the art would have “a bachelor’s degree in engineering, computer science, or a comparable field, with 2-3 years’ experience in temperature controls, embedded control systems, electronic thermostats, or HVAC controls, or similarly relevant industry experience, with relevant experience substituting for education and vice versa.” PO Resp. 7 (citing Ex. 2009 ¶ 27). The ’100 patent is directed to a system for controlling an HVAC system. See Ex. 1001, 9:61–10:17 (claim 1). This aligns more closely with the level of skill proposed by Patent Owner — which focuses on thermostats and HVAC control systems — than the one proposed by Petitioner –– which focuses on energy management and controls. Compare Ex. 2009 ¶ 27, with Ex. 1002 ¶¶ 26–28. Accordingly, we adopt Patent Owner’s proposed definition. However, we consider the parties’ positions on the level of ordinary skill in the art to be substantially similar and note that both parties agreed that the level of skill is not determinative to the outcome of the case. 473Tr. 24:21–25:3 (Petitioner), 26:1–7 (Patent Owner).” slip op. at 9

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We decline to find Dr. Palmer less credible based solely on the relative experience of the witnesses. There is no dispute that both of the witnesses are at least as skilled as a person having ordinary skill in the art. See Ex. 1002 ¶ 28; Ex. 1003 (Mr. Shah’s curriculum vitae); Ex. 2009 ¶ 27; Ex. 2010 (Dr. Palmer’s curriculum vitae). Therefore, both Mr. Shah and Dr. Palmer may give expert testimony. See Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.”). We see nothing in Mr. Shah’s greater experience that would give him greater insight as to what a person having ordinary skill in the art — as opposed to someone with significantly more experience — would find obvious. Petitioner does not identify a single patent case in which a court has discounted the testimony of an expert based on the relative experience of the two experts. Although Petitioner directs us to Illumina (see Reply 7), the issue in that non-precedential decision was whether the PTAB committed reversible error by not resolving the dispute as to the level of ordinary skill in the art, not the relative weight to be given to qualified experts. See Illumina, 620 F. App’x at 921–22. Instead, in judging the credibility of experts, we focus on whether the witness offers corroboration for his opinions, whether the witness provides opinions that are consistent with the prior art, and the witness’ cross-examination testimony.” slip op. at 11

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

    “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Because an express construction is not needed to resolve any of the disputes in this proceeding, we do not expressly construe any claim terms. See id. slip op. at 10

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

    “h) Conclusion After our review of all arguments and evidence provided by both Petitioner and Patent Owner, we determine that Petitioner has proven, by a preponderance of the evidence, that Ehlers and McLellan render obvious independent claim 1.” slip op. at 42

  Patent outcomesUS 8,740,100 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,740,100
• Google LLC / Ecobee Technologies Ulc v. Ecofactor, Inc.All claims unpatentable
  PTAB · Aug 1, 2023 · IPR2022-01461 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–24 are unpatentable as obvious over Ehlers and Wruck because their combination teaches or suggests the claimed thermostat programming and manual-change detection.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ positions on the level of ordinary skill in the art are substantially similar and both parties agree that the level of skill is not determinative to the outcome of the case. Tr. 7:3–7 (Petitioner), 30:8–12 (Patent Owner). The ’597 patent is directed to systems and methods involving thermostatic controllers. See Ex. 1001, 8:8–9 (claim 1), 9:40–41 (claim 17). The parties’ listed experience for one of skill in the art (“building energy management and controls” or “temperature controls, embedded control systems, electronic thermostats, or HVAC controls”) appear equally relevant and interchangeable when considering the ’597 patent. Further, the parties do not identify any difference in skill sets between 2–3 years’ or at least 5 years’ experience. For consistency’s sake, we adopt Patent Owner’s level of skill. See Ex. 2011 (In re Certain Smart Thermostat Sys., Smart HVAC Sys., Smart HVAC Control Sys., and Components Thereof, 337-TA-1258, Order No. 18, 8 (ITC Sept. 1, 2021) (noting with regard to a related patent that “Professional experience in a more specialized area, even if for a shorter time (as Complainant contends), seems more appropriate than a more general area of experience having no direct connection to the relevant technology . . . . Therefore, a person of ordinary skill in the art at the time of the invention would have had 2–3 years’ experience in temperature controls, embedded control systems, electronic thermostats, or HVAC controls, or similarly relevant industry experience . . . .”). However, as previously stated, the level of skill is not determinative to the outcome of the case.” slip op. at 10

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We decline to find Dr. Palmer less credible based solely on the relative experience of the witnesses. There is no dispute that both of the witnesses are at least as skilled as a person having ordinary skill in the art. See Ex. 1002 ¶ 28; Ex. 1003 (CV of Mr. Shah); Ex. 2008 ¶ 26; Ex. 2009 (CV of Dr. Palmer). Therefore, both Mr. Shah and Dr. Palmer may give expert testimony. See Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.”). We see nothing in Mr. Shah’s greater experience that would give him greater insight as to what a person having ordinary skill in the art—as opposed to someone with significantly more experience—would find obvious. Petitioner does not identify a single patent case in which a court has discounted the testimony of an expert based on the relative experience of the two experts. Although Petitioner directs us to Illumina (see Pet. 8), the issue in that non-precedential decision was whether the PTAB committed reversible error by not resolving the dispute as to the level of ordinary skill in the art, not the relative weight to be given to qualified experts. See Illumina, 620 F. App’x at 921–22. Instead, in judging the credibility of experts, we focus on whether the witness offers corroboration for his opinions, provides opinions that are consistent with the prior art, and the witness’ cross-examination testimony.” slip op. at 12

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

    “Patent Owner argues that “[t]he claim terms of the ’597 patent should be given their plain and ordinary meaning.” PO Resp. 8 (citing Ex. 2008 ¶ 32). We determine that no terms need to be construed. 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)).” slip op. at 12

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

    “j) Conclusion After our review, we determine that Petitioner has proven, by a preponderance of the evidence, that the combination of Ehlers and Wruck suggests independent claim 1. 5. Claim 9 Claims 1 and 9 are very similar. Thus, the Petition primarily relies on the reasoning and discussion from independent claim 1 for related aspects of independent claim 9 with additional explanation and support for the differences. Pet. 60–67. Patent Owner argues that the Petition does not identify any automated setpoints with respect to the arguments surrounding the limitations of claim 1 discussed in sections d and e above. PO Resp. 31– 33. However, the Petition only discusses setpoints with respect to the limitations of claim 1 discussed in section e and Patent Owner only relies on these arguments fully discussed above. After our review, we determine that Petitioner has proven, by a preponderance of the evidence, that the combination of Ehlers and Wruck suggests independent claim 9. 6. Claims 2–8, 10–24 Claims 1 and 17 are very similar. Thus, the Petition primarily relies on the reasoning and discussion from independent claim 1 for related aspects of independent claim 17 with additional explanation and support for the differences. Pet. 67–71. The Petition further directs us to where Ehlers and Wruck teach or suggest each of the limitations recited in dependent claims 2–8, 10–16, and 18–24. See id. at 56–60, 67, 71–72.” slip op. at 37

  Patent outcomesUS 9,194,597 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,194,597
• Google LLC / Ecobee Technologies Ulc v. Ecofactor, Inc.All claims unpatentable
  PTAB · Aug 1, 2023 · IPR2022-00538 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–24 are unpatentable as obvious over Ehlers and Wruck because their combination teaches or suggests the challenged claim limitations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “thermostatic controllers. See Ex. 1001, 8:8–9 (claim 1), 9:40–41 (claim 17). The parties’ listed experience for one of skill in the art (“building energy management and controls” or “temperature controls, embedded control systems, electronic thermostats, or HVAC controls”) appear equally relevant and interchangeable when considering the ’597 patent. Further, the parties do not identify any difference in skill sets between 2–3 years’ or at least 5 years’ experience. For consistency’s sake, we adopt Patent Owner’s level of skill. See Ex. 2011 (In re Certain Smart Thermostat Sys., Smart HVAC Sys., Smart HVAC Control Sys., and Components Thereof, 337-TA-1258, Order No. 18, 8 (ITC Sept. 1, 2021) (noting with regard to a related patent that “Professional experience in a more specialized area, even if for a shorter time (as Complainant contends), seems more appropriate than a more general area of experience having no direct connection to the relevant technology . . . . Therefore, a person of ordinary skill in the art at the time of the invention would have had 2–3 years’ experience in temperature controls, embedded control systems, electronic thermostats, or HVAC controls, or similarly relevant industry experience . . . .”). However, as previously stated, the level of skill is not determinative to the outcome of the case.” slip op. at 10

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Patent Owner argues that “the phrase ‘thermal gain rate’ is well understood by a [person having ordinary skill in the art] to be the rate at which energy is absorbed.” PO Resp. 11 (citing Ex. 2008 ¶ 37). But the only evidence Patent Owner cites is the conclusory statement of Dr. Palmer repeating the Response without any citation. See Ex. 2008 ¶ 37. Because Dr. Palmer’s testimony does not provide any evidentiary support, we find it not credible and give it no weight. See Xerox Corp. et al. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) (precedential) (holding that a conclusory declaration is entitled to little weight when it is a substantial restatement of the party’s arguments without any additional supporting evidence or reasoning); 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.”). Moreover, it is inconsistent with the use of “thermal gain rate” discussed in paragraph 255, which clearly uses the phrase to refer to the rate of temperature change over time. Patent Owner also argues that its understanding of thermal gain rate in Ehlers is consistent with Ehlers Figures 3D, 3E, and 3G. See PO Resp. 11– 18; PO Sur-reply 5–7. We agree that there is some support of Patent Owner’s understanding in Figures 3E and 3G. However, we cannot look at Figures 3E and 3G in isolation. Instead, we must also consider whether Patent Owner’s interpretation is consistent with Ehlers Figure 3D. And, for the reasons discussed above, it is not. Instead, as Petitioner and Mr. Shah persuasively argue, Figure 3D clearly demonstrates that thermal gain rate in Figure 3D refers to the rate of change of the internal temperature.” slip op. at 20

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

    “Patent Owner argues that “[t]he claim terms of the ’597 patent should be given their plain and ordinary meaning.” PO Resp. 8 (citing Ex. 2008 ¶ 32). We determine that no terms need to be construed. 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)).” slip op. at 12

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

    “Patent Owner also argues that Ehlers teaches away from the claimed limitation “in favor of a different one that only tracks user changes to other user-programmed manual setpoints—not comparing any user setpoint to any computer-calculated setpoint.” PO Resp. 29 (citing Ex. 2008 ¶ 73). Though couched as a teaching away argument, this is more accurately described as an argument against obviousness. See In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“Teaching away requires ‘clear discouragement’ from implementing a technical feature.”). At the same time, Petitioner has the better argument as there is nothing in Ehlers that would suggest to one of skill in the art that the teachings should be so limited. See Reply 27–29. As identified by Petitioner, Ehlers teaches more generally “learning the user’s individual preferences” (id. (citing Ex. 1004 ¶¶ 242–243, 308–309)) and this would apply whether the user adjusts a temperature setpoint that was manually set or automatically set. Based on the cited evidence and arguments, we determine that Petitioner has proven, by a preponderance of the evidence, that the combination of Ehlers and Wruck teaches or suggests this element of claim 1.” slip op. at 35

  Patent outcomesUS 9,194,597 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,194,597

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.