• Cisco Systems, Inc. / Oclaro, Inc. v. Oyster Optics, LLCSome claims unpatentable
  PTAB · Jan 24, 2019 · IPR2017-01719 · APJ Rama G Elluru · IPR · Final written decision

  Claims 7, 8, and 12–20 are unpatentable as obvious; claims 1–6 and 9–11 were not shown unpatentable, principally because Nortel was not established as prior art.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “We agree that Petitioner cannot introduce new argument in a reply. Our regulations require the Petition to identify “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3),(4). The Supreme Court also has acknowledged that “petitioner’s contentions [in a petition] . . . define the scope of the litigation all the way from institution through to conclusion.” SAS, 138 S. Ct. at 1357. Furthermore, Petitioner’s Reply is limited to responding to arguments raised in the Patent Owner Response. See 37 C.F.R. § 42.23(b). Petitioner provided the specific explanation of why Bauch satisfies the limitation “the electronic feedback loop being fed back to the electronic input data stream” for the first time in the Reply. In the Petition, Petitioner stated that “Petitioner[] do[es] not believe that construction of any claims is required for, or material to, the resolution of this IPR.” Pet. 22. In contrast, in its Reply, Petitioner provides for the first time an express claim construction, which is the basis of Petitioner’s explanation as to why the limitation at issue is met. Reply 1–2 (“Thus, the proper construction must include . . . .”); id. at 3 (“Even if this claim element were construed to include feeding the feedback loop directly into the input data, it should be construed to also include . . . .”); id. at 3–4 (“[T]he claim language and specification provide that the meaning of Claim 1[b] includes separate inputs of an exclusive-or gate that receive the feedback and the input data stream.”). Petitioner’s Reply, however, does not sufficiently explain why the assertion of this express construction is consistent with its “plain and ordinary” claim construction position in the Petition. See id. at 1–4. Given that an electronic input data stream is neither a location nor a circuit or device, with regard to having the electronic feedback loop “fed back to the electronic input data stream,” Petitioner should have provided its claim construction and corresponding explanation as to why Bauch satisfies the limitation in the Petition. We conclude that in the circumstances here, Petitioner providing its explanation based on its claim construction, for the first time, in its Reply is improper and not acceptable. A reply is not an opportunity to start anew, to fill in gaps or to remedy omissions in a petition.” slip op. at 23

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Our regulations require the Petition to identify “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3),(4). The Supreme Court also has acknowledged that “petitioner’s contentions [in a petition] . . . define the scope of the litigation all the way from institution through to conclusion.” SAS, 138 S. Ct. at 1357. Furthermore, Petitioner’s Reply is limited to responding to arguments raised in the Patent Owner Response. See 37 C.F.R. § 42.23(b).” slip op. at 23

  • Skill levelSkill level board ownOther

    “B. Level of Ordinary Skill in the Art Neither party has proposed an articulation for the level of ordinary skill in the art. We determine that no express finding is necessary, and that the level of ordinary skill in the art, in this case, 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 18

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

    “not sufficiently explain, either in the Petition or the Reply, why Bauch’s disclosure of inputting the electronic feedback and the input data steam to separate inputs of an exclusive-OR gate teaches the claimed “the electronic feedback loop being fed back to the electronic input data stream.” We, therefore, are not persuaded that the limitation “the electronic feedback loop being fed back to the electronic input data stream” is met by Bauch, as proposed by Petitioner. Thus, Petitioner has not shown that Bauch teaches this limitation of claim 1. Petitioner does not rely on the additional references for this limitation of claim 1. Accordingly, we determine that Petitioner has not established by a preponderance of the evidence that claim 1 would have been obvious over Bauch and Heflinger. 3. Summary In sum, we determine that Petitioner has not established by a preponderance of the evidence that claim 1, and for the same reasons dependent claims 4 and 64, would have been obvious over Bauch and Heflinger. Likewise, for the same reasons, with respect to asserted Ground 3, we determine that Petitioner has not established by a preponderance of the evidence that claims 1 and 4–65 would have been obvious over the combination of Bauch, Heflinger, and Nortel.6” slip op. at 27

  Patent outcomesUS 6,469,816 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,469,816
• LG Electronics, Inc. v. Core Wireless Licensing S.A.R.L.Some claims unpatentable
  PTAB · Feb 16, 2017 · IPR2015-01983 · APJ Jameson Lee · IPR · Final written decision

  Claims 1, 3–5, 7–12, 15, and 16 are unpatentable as obvious over both asserted combinations; claim 2 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner asserts: “A person of ordinary skill in the art in the field of the [’]671 patent is a person who has, through formal education or extensive practical experience, the equivalent of a Bachelor’s Degree in Computer Science or Electrical Engineering and 2–3 years of experience in graphical user interfaces.” Pet. 10–11. Patent Owner does not explicitly take a position on the level of ordinary skill and does not dispute Petitioner’s articulation. Petitioner’s assertion is supported by the testimony of Dr. Rhyne. We accept and adopt Petitioner’s statement of the level of ordinary skill in the art. C.” slip op. at 12

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

    “A ‘remote information resource’ contains information of interest to a potentially large number of users and is remotely accessible over a wireless connection. Web and WAP sites are examples of remote information resources. PO Resp. 11 (citing Ex. 1001, 3:15–19). The above-quoted text first provides a definition, and then identifies examples. Petitioner’s witness, Dr. Rhyne, agrees that the above-quoted text in the specification functionally defines a remote information resource and provides examples. Ex. 2004, 21:15–22:12. In accordance with the definition given in the specification, we construe “remote information resource” as: a remotely wirelessly accessible location or object that contains information of interest to a potentially large number of users.3 3 Patent Owner correctly notes that a remote information resource is a container of information and is not the information itself. PO Resp. 13.” slip op. at 8

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

    “Patent Owner argues that in the context of claims 1 and 12, which add the language “an end-user is enabled to” just prior to the phrase “select the remote information resource” (claim 1) and the phrase “select a remote information resource” (claim 12), claims 1 and 12 should be construed to be limited to “direct” selection of the remote information resource. PO Resp. 13–15. The argument is unpersuasive. The presence of the phrase “an end- user is enabled to” in claims 1 and 12 does not restrict the selection by the end-user to the direct approach. The end-user still can make its selection indirectly, such as by selecting a default profile, as is described in the specification and discussed above. We construe “select [a/the] remote information resource” broadly, but reasonably, to mean “select a remote information resource either directly or indirectly.” We also clarify that indirect selection, in that context, means a selection made on the basis of information provided by the user that does not itself identify the remote information resource.” slip op. at 9

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

    “Ex. 1001, 1:28–36. Citing to the first two sentences in the above-quoted text, and without explanation, Petitioner proposes a construction for “idle screen” that is differently worded from that stated above. Pet. 12. It is inappropriate to rephrase the first two sentences in the above-quoted definition provided in the specification. The meaning of “idle screen” is provided in the specification by the entirety of the above-quoted text and needs no further construction.4 4. “mobile communication device” and “mobile device” Independent claims 1 and 12 each recite the term “mobile communication device,” and independent claims 15 and 16 each recite the term “mobile device.” Petitioner asserts that both terms should be construed to include a portable electronic device with communications capabilities. Pet. 11. Patent Owner asserts that the term “mobile communication device” should be construed as wireless mobile communication device, and the term “mobile device” should be construed as wireless mobile device. PO Resp. 12–13. Because the prior art in the involved grounds of unpatentability accounts for a wireless communication capability of a portable device, we discern no need to specify any express construction for either “mobile communication device” or “mobile device.” 5. “a source selected by a user” Claim 2 depends from claim 1 and further recites: “in which the information is from a source selected by the user.” According to Patent Owner, the phrase requires “direct” selection of a source of information. PO Resp. 19. We will address Patent Owner’s position in the context of analysis 4 The last sentence, “Personal computers have no equivalent to an idle screen,” indicates only that the ’671 patent defines “idle screen” to exclude anything on a personal computer, such as a screen saver. It acts as a disclaimer, and does not mean a screen saver on a personal computer is not reasonably pertinent to what the ’671 patent regards as an idle screen. By adopting the definition in the specification, we are not finding that teachings about screen savers on a personal computer may not be relied on to render the claimed invention obvious. of claim 2 below. It is not necessary, however, to provide an express construction of the phrase. Note, however, a “source” is not the same as a “remote information resource.” A “remote information resource” is specially defined in the specification and construed above. B.” slip op. at 10

  Patent outcomesUS 8,498,671 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,498,671
• Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.Some claims unpatentable
  PTAB · Dec 15, 2016 · IPR2015-01457 · APJ Jameson Lee · IPR · Final written decision

  Claims 2–5, 8, 9, 15–18, and 22–24 are unpatentable as obvious over Ejzak and Cisco or Intel; claim 10 was not shown unpatentable over either combination.

  RulingsFinal written decision

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

    “First, the above-reproduced figure does not appear in the Specification of the ’640 patent. Rather, it is a creation of the Patent Owner. The figure creates the impression that a “part” necessarily is a “device.” Patent Owner, however, does not provide adequate support for such a narrow reading of 14 “part.” Although a “device” is a “part” of a telecommunications network, that does not mean a “part” has to be a “device.” Even Dr. Akl, Patent Owner’s expert, testified only that a “device” is a “part” of a telecommunications network and not that a “part” of a telecommunications network has to be a “device.” Ex. 2006 ¶ 56. Second, the figure also creates the impression that neither a domain nor a region would identify a device. But Patent Owner does not provide adequate support for such a narrow reading of “domain” and “region.” In that regard, Dr. Akl, Patent Owner’s expert, testifies only that a “device” is neither a “domain” nor a “region,” not that a “domain” or a “region” would not or could not identify a “device.” Id. By assuming that a “part” of a telecommunications system has to be a “device,” and by assuming that neither “domain” nor “region” would identify one or more devices, Patent Owner sees an alleged contradiction in allowing media connectivity setting to be as we have construed it, and the phrase that immediately follows the claim term—“identifying one or more other devices.” Because of that alleged contradiction, Patent Owner contends that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunication network.”” slip op. at 14

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

    “Claim 10 recites, among other limitations, an additional requirement of determining from said bypass mode data that said media gateway “must” be bypassed in said media path. That is in contrast with the language of claim 9, which also depends from claim 8, and which recites, among other limitations, the additional requirement of determining from said bypass mode data that said media gateway “may” be bypassed in said media path. Neither Petitioner nor Patent Owner proposes an express construction for the word “must.” In the circumstances here, the plain and ordinary meaning of “must” in the English language applies. There is no indication that one with ordinary skill in the art would understand the word as conveying something different. The Specification of the ’640 patent does not set forth a special definition of “must.” Also, consistent with the plain and ordinary meaning of “must,” the Specification of the ’640 patent distinguishes between “must” and “may”: It may be determined from the retrieved bypass mode data that the media gateway may be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication setup request message. It may be determined from the retrieved bypass mode data that the media gateway must be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication session setup request message. Ex. 1101, 12:35–42 (emphasis added). 34 We determine that “must,” when applied to an action, such as bypassing a media gateway as recited in claim 10, eliminates not taking that action as a possibility and precludes the not taking of that action. In that regard, the different language used between claims 9 and 10 further supports the distinction between the absolute nature of “must” as used in claim 10 and the permissive nature of “may” as used in claim 9. In that regard, as is noted by Patent Owner, Petitioner’s witness, Mr. Bress, agrees that the permissive nature of “may” does not meet the absolute requirement of “must.” PO Resp. 43 (citing Ex. 2004, 123:7–124:5).” slip op. at 34

  • Skill levelDecided for patent owner

    “Level of Ordinary Skill in the Art Petitioner asserts: As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the 18 telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and 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). C.” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “49 media gateways. In that connection, we credit the testimony of Petitioner’s witness, Mr. Bress, over the testimony of Patent Owner’s witness, Mr. Akl, in part because Mr. Bress discusses and explains more of the disclosure of Ejzak. Patent Owner’s argument that it is possible to obtain the media connectivity setting of the ensuing device by requesting the ensuing device for such information (PO Resp. 38) is ineffective with respect to claim 4, which does not specify from where the information is retrieved. Retrieving information from the ensuing device nonetheless still is retrieving. With respect to claim 5 which requires retrieving the information from within the given media gateway, not the ensuing device, we have determined that Petitioner has not stablished that Ejzak necessarily discloses retrieving such information from within the storage of the given gateway. Patent Owner’s argument that the claim limitation of “retrieving ensuing device connectivity data for an ensuing device” would not have been regard by one with ordinary skill in the art as an obvious variant of Ejzak’s determining the IP realm for the next segment of the media path is not supported by sufficient reasoning and explanation directed to Ejzak’s disclosure of provisioning IP realms of media gateways as identified and explained by Petitioner. Between the testimony of respective expert witnesses of Petitioner and Patent Owner, we credit the testimony of Mr. Bress, Petitioner’s witness, over that of Mr. Akl, Patent Owner’s witness. Mr. Bress’s testimony, in our view, is more thorough, whereas Mr. Aky’s testimony, in our view, focuses more on what a prior art 50 disclosure literally states without enough explanation as to the understanding by one with ordinary skill in the art of the teachings associated with that language.” slip op. at 49

  Patent outcomesUS 8,687,640 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,687,640
• Apple Inc. / ZTE Corporation And ZTE (USA) Inc. v. E-Watch, Inc.Some claims unpatentable
  PTAB · May 6, 2016 · IPR2015-01366 · APJ Jameson Lee · IPR · Final written decision

  Claims 12–14 are unpatentable as obvious over McNelley and Umezawa; claims 1–8 were not shown unpatentable because the claimed user interface was not established.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “3. Claims 1, 6, and 12 With respect to claims 1 and 6, as explained below, Petitioner has not established the unpatentability of either claim by a preponderance of the evidence. With respect to claim 12, notwithstanding the arguments and evidence presented by Patent Owner, which are discussed below, we are persuaded by the arguments and evidence presented by Petitioners. Claim 12 has been shown as unpatentable by a preponderance of the evidence.” slip op. at 21

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

    “Id. at 8–10. Despite the representations made by Patent Owner regarding the exchanges between the Applicant and the Examiner during prosecution, we agree with Petitioners that Patent Owner’s proposed constructions for these terms are excessively narrow under the rule of broadest reasonable interpretation. The prosecution history recounted by Patent Owner above indicates that the articulated distinction from the Ida reference centers on Ida’s failure to describe displaying an image selected from within the memory. Whether Ida’s memory stores one image or a plurality of images was not of significance. Under this circumstance, it is not justifiable, under the rule of broadest reasonable interpretation, to require a selection from among a plurality of images stored in memory. The claims are broad enough to encompass storing just one image in memory and having that image selected for displaying and for transmission. The fact that the Specification of the ’871 patent discloses embodiments in which more than one images is stored in memory does not justify importing limitations from the Specification into the claims. See SuperGuide Corp., 358 F.3d at 875. We find no express definition in the Specification of the ’871 patent or in any of the prosecution history identified by Patent Owner, for the terms at issue here, much less one set forth with reasonable clarity, deliberateness, and precision. If a patentee desires to be his or her own lexicographer, the purported definition must be set forth in the specification or prosecution history. CCS Fitness, Inc., 288 F.3d at 1366. Such a definition must be set forth with reasonable clarity, deliberateness, and precision. Renishaw PLC, 158 F.3d at 1249; Paulsen, 30 F.3d at 1480. Patent Owner also identifies nothing in the Specification or prosecution history of the ’871 patent that constitutes a disclaimer or disavowal with regard to these terms that is sufficiently specific so as to require the storage of more than one image in the memory.” slip op. at 13

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

    “Patent Owner argues that “alphanumeric” means “consisting of both letters and numbers and often other symbols,” citing a dictionary definition (Ex. 2009). Id. at 26. The Specification of the ’871 patent does not contain any definition for the term “alphanumeric.” Dictionaries are a relevant source of information, but they are not controlling. We also are cognizant that there are numerous dictionaries and their entries for the same term are not necessarily the same. For example, in this instance, Petitioner has submitted two dictionary definitions for “alphanumeric” that are broader than that offered by Patent Owner: (1) “Consisting of letters or digits, or both, and sometimes including control characters, space characters, and other special characters” (Ex. 1015, 3); and (2) “[a]ny letter of the English alphabet, upper or lower case, or any of the decimal digits, 0 to 9” (Ex. 1016, 3). Reply 5. As discussed above, in this proceeding, we apply the broadest reasonable interpretation, to construe the meaning of claim terms. We note further that, as pointed out by Petitioner (Reply 5), even the definition offered by Patent Owner indicates that an alphanumeric character is a character in an alphanumeric system. Ex. 2009. That would mean although a character cannot be both a letter and a numeral, it still can be an alphanumeric character. Applying the rule of broadest reasonable interpretation, we agree with Petitioner that “alphanumeric” is sufficiently broad to encompass each of these three cases: all numerals, all letters, or a combination of numerals and letters. Patent Owner’s argument to the contrary is unpersuasive, and rejected.” slip op. at 33

  • Skill levelSkill level board ownDecided for patent owner

    “does not expressly set forth a definition. Patent Owner asserts: The technical art associated with the ’871 Patent relates to the field of integrating a camera together with a mobile phone to create a device capable of both audio and image communications on cellular networks. A person of ordinary skill in the relevant art (“POSITA”) of the ’871 Patent would have had at least a bachelor’s degree and/or relevant professional experience in electrical engineering, computer science, or a related field, and at least one year of experience related to the design of both cellular communications devices and digital imaging products. PO Resp. 3–4. We are not persuaded that one with ordinary skill in the art necessarily would have had experience in designing cellular communications devices. Based on the Specification of the ’871 patent, we determine that the invention is not about achieving improvements in cellular communication technology. Rather, it is necessary for one with ordinary skill in the art only to be familiar with what a cellular communication network required as an input source and what the expected format and/or protocol would be for sending and receiving information to and from the cellular network. It is noted that even Patent Owner’s stated definition does not require any actual experience in designing cellular communication devices, but just experience “related to” the design of cellular communication devices. Other than the foregoing, we determine that no express finding is necessary, on this record, and 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 16

  Patent outcomesUS 7,365,871 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,365,871
• Apple Inc. / ZTE Corporation et al. v. E-Watch, Inc.Some claims unpatentable
  PTAB · May 6, 2016 · IPR2015-00412 · APJ Jameson Lee · IPR · Final written decision

  Claims 12–14 are unpatentable as obvious over McNelley and Umezawa; claims 1–8 were not shown unpatentable because the required user interface was not established.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “The technical art associated with the ’871 Patent relates to the field of integrating a camera together with a mobile phone to create a device capable of both audio and image communications on cellular networks. A person of ordinary skill in the relevant art (“POSITA”) of the ’871 Patent would have had at least a bachelor’s degree and/or relevant professional experience in electrical engineering, computer science, or a related field, and at least one year of experience related to the design of both cellular communications devices and digital imaging products. PO Resp. 3–4. We are not persuaded that one with ordinary skill in the art necessarily would have had experience in designing cellular communications devices. Based on the Specification of the ’871 patent, we determine that the invention is not about achieving improvements in cellular communication technology. Rather, it is necessary for one with ordinary skill in the art only to be familiar with what a cellular communication network required as an input source and what the expected format and/or protocol would be for sending and receiving information to and from the cellular network. It is noted that even Patent Owner’s stated definition does not require any actual experience in designing cellular communication devices, but just experience “related to” the design of cellular communication devices. Other than the foregoing, we determine that no express finding is necessary, on this record, and 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 16

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

    “The prosecution history recounted by Patent Owner above indicates that the articulated distinction from the Ida reference centers on Ida’s failure to describe displaying an image selected from within the memory. Whether Ida’s memory stores one image or a plurality of images was not of significance. Under this circumstance, it is not justifiable, under the rule of broadest reasonable interpretation, to require a selection from among a plurality of images stored in memory. The claims are broad enough to encompass storing just one image in memory and having that image selected for displaying and for transmission. The fact that the Specification of the ’871 patent discloses embodiments in which more than one images is stored in memory does not justify importing limitations from the Specification into the claims. See SuperGuide Corp., 358 F.3d at 875. We find no express definition in the Specification of the ’871 patent or in any of the prosecution history identified by Patent Owner, for the terms at issue here, much less one set forth with reasonable clarity, deliberateness, and precision. If a patentee desires to be his or her own lexicographer, the purported definition must be set forth in the specification or prosecution history. CCS Fitness, Inc., 288 F.3d at 1366. Such a definition must be set forth with reasonable clarity, deliberateness, and precision. Renishaw PLC, 158 F.3d at 1249; Paulsen, 30 F.3d at 1480. Patent Owner also identifies nothing in the Specification or prosecution history of the ’871 patent that constitutes a disclaimer or disavowal with regard to these terms that is sufficiently specific so as to require the storage of more than one image in the memory.” slip op. at 14

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

    “PO Resp. 34 (emphasis added). We see no reason to disparage the above-referenced reasoning of Petitioners as “boilerplate language” that “does little” to clarify why prior art teachings may be combined. To the contrary, the language conveys substantial meaning. The fact that Petitioners use the same reasoning multiple times does not, somehow, diminish its significance.” slip op. at 51

  • Strike new argumentNew argument disregardedDecided for patent owner

    “purported reasoning, i.e., that a user creating a video message recording for McNelley’s device used as an answering machine obviously would have selected the recorded video greeting for viewing to check if it is satisfactory for actual use, and thus any transmission of the recorded message upon actual use would have been a “subsequent” transmission as is required by claim 6. Tr. 73–75. The argument is inappropriate because it is a new argument raised for the first time at oral argument.4 It would be unjust to Patent Owner to consider it at this late stage, without Patent Owner having had a fair opportunity to respond. See Dell Inc. v. Acceleron, LLC, Nos. 2015-1513, -1514, 2016 WL 1019075, at *6–7 (Fed. Cir. March 15, 2016); CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case IPR2013- 00033, slip op. at 2–3 (PTAB October 23, 2013) (Paper 118) (discussing new argument and demonstrative exhibits at oral hearing). Thus, the argument is not considered. Moreover, the argument does not cure the deficiency that in the answering machine mode, neither dialing controls 186 nor telecamcorder controls 188 is used to cause transmission of the recorded message. During oral argument, counsel for Petitioners presents still another new reasoning, i.e., that if the answering machine answers two calls, then the second transmission would be subsequent to a first display. Tr. 75:16–23. The argument also is belatedly presented, for the first time at oral argument, and thus it is not considered. In any event, like the first new argument mentioned above, this new argument also does not cure the deficiency that in the answering machine mode, neither dialing controls 186 nor telecamcorder controls 188 is used to cause transmission of the recorded message.” slip op. at 40

  Patent outcomesUS 7,365,871 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,365,871
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics, Inc.Some claims unpatentable
  PTAB · Jan 25, 2016 · IPR2014-01204 · APJ Matthew R Clements · IPR · Final written decision

  Claims 51, 56, 57, and 59–61 are unpatentable as obvious; claims 12 and 13 were not shown unpatentable because Broggi did not teach ignoring edges not indicative of objects of interest.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “The premise of Patent Owner’s argument is that evidence that is not based on personal knowledge is not relevant. Personal knowledge is not a necessary condition of relevance. Rather, evidence is relevant if it has any tendency to make a fact more or less probable than it would be without the evidence and the fact is of consequence in determining this case. See FRE 401.” slip op. at 13

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Under the broadest reasonable interpretation, 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 Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In the Decision to Institute we determined that neither “algorithmically processes captured image data to a reduced data set” nor “target zone” required express construction. Dec. to Inst. 14–15. Neither party disputes our determination or proposes additional terms for construction.” slip op. at 22

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “upon a public use or a sale; rather, the ground must be based upon prior art in the form of a patent or a printed publication. 35 U.S.C. § 311(b); 35 U.S.C. § 102. The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Neither distribution nor indexing is a necessary condition for being a “printed publication;” rather, the key inquiry is whether or not a reference has been made “publically accessible.” Id. at 1348.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s expert, Dr. Frahm, provided testimony regarding the level of skill in the art. See Ex. 1013 ¶¶ 43–48. Although the level of skill in the art is not discussed in the Petition, Dr. Frahm acknowledged that obviousness is viewed from the perspective of a person of ordinary skill in the art, and applied that standard to his evaluations. Id. at ¶¶ 28–29. That is, Dr. Frahm’s evaluations of the grounds of unpatentability based on obviousness is based on the perspective of a person of ordinary skill in the art at the time of the claimed invention, and this analysis is cited and explained in the Petition. Patent Owner’s contention is unpersuasive, in part, because it does not address the merits of the level of skill in the art provided. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Patent Owner’s assertion fails to address how the level of skill in the art impacted the obviousness analysis.” slip op. at 35

  Patent outcomesUS 8,386,114 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,386,114
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics, Inc.Some claims unpatentable
  PTAB · Dec 21, 2015 · IPR2014-01208 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 2, 3, 5, 7, 11, 12, 18, 19, 21–23, 25, 26, 28, 32–35, 37, 40, and 44–46 are unpatentable; claim 24 was not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “§ 42.64(c). Patent Owner seeks to expunge (vice exclude) the Broggi Declaration (Ex. 1033) because it was not timely served in response to Patent Owner’s first set of objections. See id. at 12; Opp. Reply 1–2.; Ex. 1036, 2; Ex. 2015; 37 C.F.R. § 42.64(b)(2). As the moving party, Patent Owner bears the burden of proof. See 37 C.F.R. § 42.20(c). We address first Exhibit 1033 and then the remaining exhibits in reverse chronological order of their filing. 1. Broggi Declaration (Ex. 1033) As explained above, the Broggi Declaration is not supplemental evidence because the objection to which it was served in response was not proper. Because the Broggi Declaration is not evidence, supplemental evidence, or supplemental information, we expunge it.” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “4. Summary Broggi is a printed article titled “Multi-Resolution Vehicle Detection using Artificial Vision.” The first page makes reference to the 2004 IEEE Intelligent Vehicles Symposium held at the University of Parma in Parma Italy on June 14–17, 2004, and includes a copyright date of 2004 that is consistent with this information. Broggi is not marked with any limitations regarding dissemination. Dr. Frahm, as a person who has chaired an IEEE conference and regularly attended IEEE conferences, states that it is his experience that IEEE papers, such as Broggi, that are presented are made publically available at that conference as is indicated on the face of the paper. Although he did not attend the Symposium, the Senior Director of Publishing Technologies for IEEE, Mr. Grenier, states that IEEE records indicate that Broggi was published and presented as part of the proceedings on the date of the Symposium. The Office Manager of the Internet Archive, Mr. Butler, provides records that indicate that Broggi was posted to a public website no later than October 12, 2004.” slip op. at 34

  • Skill levelDecided for patent owner

    “Petitioner’s expert, Dr. Frahm, provided testimony regarding the level of skill in the art. See Ex. 1010 ¶¶ 43–48. Although the level of skill in the art is not discussed in the Petition, Dr. Frahm acknowledged that obviousness is viewed from the perspective of a person of ordinary skill in the art, and applied that standard to his evaluations. Id. ¶¶ 28–29. That is, Dr. Frahm’s evaluations of the grounds of unpatentability based on obviousness is based on the perspective of a person of ordinary skill in the art at the time of the claimed invention, and this analysis is cited and explained in the Petition. address the merits of the level of skill in the art provided. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Patent Owner’s assertion fails to address how the level of skill in the art impacted the obviousness analysis.” slip op. at 35

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Patent Owner’s Preliminary Response argued that we should deny the Petition based on 35 U.S.C. § 325(d). See Prelim. Resp. 2, 7–12. We considered this argument and declined to exercise our discretion to deny the Petition. See Dec. 12–15. Patent Owner’s current argument adds nothing to 30 We presume the second citation, which is to “§ 315(d)” is a typographical error and “§ 325(d)” was intended. the Petition on that basis.” slip op. at 36

  Patent outcomesUS 7,991,522 mixed
  § 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,991,522
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics, Inc.Some claims unpatentable
  PTAB · May 28, 2015 · IPR2014-00220 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–5, 8–13, 15–20, 25–32, 39–42, 47, and 48 are unpatentable as obvious under § 103; claim 7 was not shown unpatentable over Nissan.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Arguing that Wang is not prior art under 35 U.S.C. § 102(b) is a challenge to the sufficiency or weight to be given to Wang. Such argument is not proper in a motion to exclude, which is a challenge to the admissibility 7 Although the second Grenier Declaration is filed as an exhibit, it is supplemental evidence and may only be considered with regard to the admissibility of Wang (Ex. 1007). See 37 C.F.R. § 42.64(b)(2). of evidence, not a challenge to sufficiency. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (August 14, 2012) (A motion to exclude may not be used to challenge the sufficiency of the evidence to prove a particular fact.). Patent Owner’s preliminary response and response were opportunities to challenge whether Petitioner has sufficiently demonstrated that Wang is prior art under 35 U.S.C. § 102(b). Patent Owner elected not to make such a challenge. We determine that Patent Owner has not met its burden of proof to establish that Wang is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). A motion to exclude is a challenge to admissibility, and is not the proper venue to challenge Wang’s status as prior art. Patent Owner’s Motion to Exclude is denied.” slip op. at 10

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

    “The ’565 patent does not define the term “image portion.” Patent Owner cites column 7, lines 22 to 25, but that disclosure is not determinative because it states only a preference. Ex. 1001, 7:22–25 (“However, the portion of the image displayed is preferably biased toward the downward portion of the captured image . . . .”) (emphasis added). Patent Owner also cites column 9, lines 3 to 8, but that disclosure does not inform us as to whether the described image portions—right image portion 46’, left image portion 44’, and central image portion 48’—are less than the entire image captured by image capture devices 14, 16. Elsewhere in the ’565 patent, the terms “left image portion 44,” “right image portion 46,” and “center image portion 48” are used while describing Figure 3. Id. at 5:48–50. The ’565 patent states explicitly that “[e]ach image portion 44–48 is reversed from the image as captured by the respective image capture device 14, 16 utilizing conventional techniques.” Id. at 5:50– 53. The ’565 patent does not, however, describe each image portion 44, 46, and 48 as comprising less than the entire image captured by the respective image captures devices 14, 16. Based on our review, there is no such disclosure anywhere in the ’565 patent. Accordingly, we are not persuaded that Patent Owner’s proposed construction is the broadest reasonable interpretation. Regardless of how “image portion” is construed, we note that the independent claim limitations in which “image portion” is recited set a minimum—not a maximum—for what must be included in a displayed image. For example, independent claims 1, 30, 41, and 47 recite “the displayed [composite] image displayed on said single display screen includes an image portion” (emphasis added). The other independent claims recite “image portion” in similar context. See, e.g., Claims 11, 18, and 25 (“the displayed image including an image portion” (emphasis added)). These limitations require that the displayed image include an “image portion,” but do not preclude the displayed image from including more than a portion. The limitations do not, for example, require that the displayed image include no more than an image portion. Patent Owner’s definition that a portion is “an often limited part of a whole” implies that a portion also can include the whole, and we discern nothing in the Specification inconsistent with that ordinary meaning. See Ex. 2006.” slip op. at 13

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

    “We are not persuaded by Petitioner’s arguments. Petitioner cites only page 7, lines 1–4 of Nissan, which teaches that “at fast speeds, the image on the TV monitor is compressed and displayed, and the display region is widened and displayed, thus, more effective images can be obtained.” Pet. 30; Ex. 1004, 7:1–4 (emphases added). This passage describes manipulation of the image being displayed, but teaches nothing about whether the fields of view of the image capture devices are dynamically adjusted. Moreover, Petitioner does not argue that the fields of view of the image capture devices necessarily must be dynamically adjustable in order for Nissan to manipulate the images as described. Accordingly, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that Nissan teaches this limitation.” slip op. at 22

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

    “We are not persuaded by Petitioner’s arguments. Petitioner cites only page 7, lines 1–4 of Nissan, which teaches that “at fast speeds, the image on the TV monitor is compressed and displayed, and the display region is widened and displayed, thus, more effective images can be obtained.” Pet. 30; Ex. 1004, 7:1–4 (emphases added). This passage describes manipulation of the image being displayed, but teaches nothing about whether the fields of view of the image capture devices are dynamically adjusted. Moreover, Petitioner does not argue that the fields of view of the image capture devices necessarily must be dynamically adjustable in order for Nissan to manipulate the images as described. Accordingly, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that Nissan teaches this limitation.” slip op. at 22

  Patent outcomesUS 7,859,565 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 7,859,565
• Apple, Inc. / Domino’S Pizza, Inc. et al. v. Ameranth, Inc.Some claims unpatentable
  PTAB · Mar 20, 2015 · CBM2014-00013 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1, 2, 4, 5, 10, and 12 are unpatentable under § 101; claims 3, 6–9, 11, and 13–16 were not shown unpatentable because the petition did not establish their claimed features were conventional.

  RulingsFinal written decision

  • BurdenMixed

    “We are persuaded by Patent Owner’s argument. Petitioner states that the claimed linking is a “classic example[] of manual tasks that cannot be rendered patent-eligible merely by performing them with a computer.” Reply 15. However, Petitioner fails to provide sufficient evidence to support its statement. See Pet. 49–66; Reply 9–15. Petitioner provides insufficient evidence to establish that a menu having the functionality to perform the claimed linking from a GUI on a hand-held device, was well-known or conventional and merely require a general purpose computer. See id. Upon review, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 3 and 11 recite patent-ineligible subject matter.” slip op. at 37

  • Skill levelOther

    “B. Claim Construction The Board interprets claims of unexpired patents using the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.300(b). 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 Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Prior to construing the relevant claim limitations, we turn to some initial matters raised by Patent Owner. First, Patent Owner argues that we must construe “the entirety of the challenged claims” (PO Resp. 31), and proposes constructions for some, but not all, limitations of the challenged claims (see id. at 34–36). Claim construction, however, “is not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed. Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). Below, we construe the limitations that are relevant to the issues of patent-eligibility discussed below. We determine that all other claim limitations need no explicit construction.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting where the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention. Id. slip op. at 11

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

    “We are persuaded by Petitioner that the broadest reasonable construction in light of the Specification of the term CPU is the computational and control unit of a computer. Petitioner’s construction is consistent with the Specification, which describes that the system of the ’733 patent uses typical hardware elements in the form of a computer workstation and that “a typical workstation platform includes hardware such as a central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1033, col. 6, ll. 52–54; see also id. at col. 6, l. 65 (“a CPU, e.g., Pentium® microprocessor”). Further, Petitioner’s construction is consistent with the Specification, which as discussed above, discloses using a desktop PC to generate and download menus to a connected handheld device (see id. at col. 7, l. 38–col. 10, l. 15), as well as, discloses the use of a central back-office server (e.g., see id. at col. 2, ll. 37–40). Patent Owner’s proposed construction improperly reads into the claims the central back-office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should not be read into the claims). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of CPU is the computational and control unit of a computer.” slip op. at 15

  Patent outcomesUS 6,982,733 mixed
  Claim construction§ 101 eligibilitycites Alice · Mayo
  Patents in suitUS 6,982,733
• Toyota Motor Corp. v. Leroy G. HagenbuchSome claims unpatentable
  PTAB · Mar 3, 2015 · IPR2014-00124 · APJ Jameson Lee · IPR · Final written decision

  Claims 15–20, 23, and 24 are unpatentable as obvious over Aoyanagi, Vollmer, and Steiner; claims 21 and 22 were not shown unpatentable over the four-reference ground.

  RulingsFinal written decision

  • Skill levelOther

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is a legal determination based on underlying factual inquiries including (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed invention, (3) the level of ordinary skill in the art, and (4) secondary considerations of nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The level of ordinary skill in the art need not always be expressly defined. It can be 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 9

  • Prior constructionPrior construction not adoptedDecided for patent owner

    “After institution of trial, neither party disputed the above-noted claim construction. Upon review of the full record, we have no reason to deviate from them, except for the construction of the term “second memory.” We did not intend to suggest that a memory address is the same as a memory. Accordingly, the construction of “second memory” is revised to: “any memory space separate from a first memory space.”” slip op. at 8

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

    “parameters for monitoring and recording. Ex. 1103, 71. Although Aoyanagi states that these parameters “are not always necessary but just illustrative,” (id. at 71) that statement does not take away from or diminish Aoyanagi’s specific disclosure of the 15 vehicle parameters to monitor and record. What Aoyanagi illustrated, as an embodiment, is the monitoring and recording of all 15 vehicle parameters. That Aoyanagi also indicates that all 15 parameters “are not always necessary” merely adds to and expands its disclosure of an embodiment that monitors and records all 15 vehicle parameters. Hagenbuch’s argument is misplaced, that Toyota has not shown that one with ordinary skill in the art would have selected the particular combination of parameters to monitor and record, as required by claim 15, i.e., the ground speed of the vehicle, engine throttle position of the vehicle, braking system on/off status, seat belt status, and information indicative of a change in the velocity of the vehicle, such as acceleration and deceleration. The argument is misplaced, because claim 15 does not limit or restrict the monitoring and recording to only those parameters expressly recited in the claim or prohibit the monitoring and recording of other vehicle parameters. The claim feature relating to what vehicle parameters to monitor and record reads on prior art that monitors and records the identified parameters, whether or not additional vehicle parameters also are monitored and recorded. On the basis of its embodiment that monitors and records all 15 vehicle parameters, Aoyanagi is such prior art. No picking or choosing is involved or necessary.” slip op. at 15

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

    “In an obviousness analysis, it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. KSR, 550 U.S. at 418. A basis to combine teachings need not be stated expressly in any prior art reference. In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006). There need only be an articulated reasoning with rational underpinnings to support a motivation to combine teachings. Id. at 988. Toyota’s stated rationale does have rational underpinnings and are straightforwardly logical. Vollmer teaches that in case of a crash or accident, sending a wireless distress signal to summon help decreases the time before emergency services are notified, and that automatically sending a distress signal avoids the difficulties a person may have, in case of a crash or accident, in manually making a call. Pet. 13. That purpose and objective, as a motivation to incorporate automatically sending a distress signal in response to detection of a collision, is applicable to any onboard device that detects a collision, such as Aoyanagi’s system, regardless of what other functions are performed by the onboard device. In any event, the data monitoring and recording function of Aoyanagi are not unlike those performed by the system of Vollmer. As we have discussed above, Vollmer’s distress signal includes monitored information such as the vehicle’s position, the number of passengers in the vehicle, the seat positions, speed and deceleration measurements, and whether the vehicle was proceeding against traffic.” slip op. at 23

  Patent outcomesUS 8,532,867 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,532,867

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.