- Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Dec 9, 2015 · IPR2014-01149 · APJ William A Capp · IPR · Final written decision
Claims 18–22 and 43–44, 46–49 are unpatentable as obvious; claims 25–26, 55–59, and 62–63 were not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“The complete exclusion of Dr. Cimini’s testimony is not warranted or necessary here. Intellectual Ventures argues that the instant dispute concerning Dr. Cimini’s testimony should not affect the admissibility of his opinion, but merely the weight the Board accords his opinion. Paper 49, 12. This is the path we choose to follow. By shielding Dr. Cimini from the Robertson CMS reference so that he did not address it in his declaration and was unprepared to testify about it at this deposition, Intellectual Ventures deprived itself of an opportunity to respond to Ericsson’s case. Accordingly, we DENY Ericsson’s motion to exclude 60–65, 79, 80, and 93 of Dr. Cimini’s declaration testimony (Ex. 2009), but discount the weight to be given such testimony in light of the foregoing discussion.” slip op. at 9
- Adverse judgmentDenied
“Under 37 C.F.R. § 42.73, a party may obtain termination of a proceeding by requesting entry of adverse judgment. However, we do not interpret Ericsson’s request as a request for entry of adverse judgment. To the contrary, we view Ericsson’s motion as an effort to prevent entry of an adverse judgment under circumstances where Ericsson reserves the right to challenge the patentability of claims 55–59, in this or another forum. Finally, Ericsson relies on our extraordinary and discretionary powers under 37 C.F.R. § 42.5(a) as a basis for grant of the relief sought. In denying Ericsson’s previous motion to correct the petition, we considered whether it was an appropriate exercise of our extraordinary powers to allow Ericsson to correct its petition. Paper 31, 14–15. We concluded that it was not. Id. Many of the same considerations that informed our decision to deny Ericsson’s motion to correct its petition also militate against a grant of relief in the instant situation.” slip op. at 20
- BurdenFwd mixedNot shown unpatentable
“Ericsson concedes that the mistake in its Petition with respect to claims 55–59 is a “fatal flaw” and, consequently, it wants to remove those claims from the proceeding. Tr. 74:3–8, a copy/paste error that originated in Mr. Lanning’s Declaration resulted in a deficient analysis of independent claims 55 and its dependent claims 56–59 . . . [a]t this point in the trial, both Patent Owner and Petitioner agree that the Petition is defective with respect to claim 55–59. Paper 52, 5–6. In view of the foregoing, we find that Ericsson has failed to carry its burden of proof with respect to the unpatentability of independent claim 55 and claims 56–59 that depend therefrom.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In our Decision to Institute, we construed “systematic convolutional encoder” on a preliminary basis, as an encoder that may output both encoded data and also original data (or its equivalent). In the Decision to Institute, we criticized Ericsson’s proposed construction because it focused on what it means for a coding system to be systematic to the exclusion of how the adjective “convolutional” also modifies the word “encoder.” DI 8–9. Similarly, we criticized Intellectual Ventures’s proposed construction because it focused on what it means for a coding system to be “convolutional,” to the exclusion of what it means to be “systematic.” Id. at 9. In the Decision to Institute, we admonished the parties to give 18 Claim 18 claims a “systematic recursive convolutional encoder.” Ex. 1001, 25:49. 19 Claim 43 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 29:57. 20 Claim 55 is a method claim that claims “systematic convolutional encoded intermediate output elements.” Ex. 1001, 30:61–62. 21 Claim 62 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 31:60–61. attention to our points of criticism in their respective Patent Owner’s Response and Petitioner’s Reply. Id. We instituted a trial on less than all challenged claims. DI. In particular, we did not institute a trial on claim 6. DI 14. In its Patent Owner’s Response, Intellectual Ventures indicated that the Board need not construe this term to resolve the instituted grounds. PO Resp. 13. In its Petitioner’s Reply, Ericsson simply states that it agrees with the Board’s claim construction in the Decision to Institute. Reply 6. The parties’ respective positions, as developed in Intellectual Ventures’s Patent Owner’s Response and Ericsson’s Reply do not rely on competing constructions of this term. Accordingly, we do not modify the construction of this term as set forth in our Decision to Institute. 2. “coded output elements” - “encoded output elements” (Claims 18, 19,” slip op. at 24
Patent outcomesUS 6,023,783 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,023,783 - Toshiba Corporation / Toshiba America, Inc. et al. v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Jul 9, 2015 · IPR2014-00310 · APJ Kevin F Turner · IPR · Final written decision
Claims 1 and 3–6 are unpatentable: claims 1, 3, 5, and 6 as anticipated by Levine, and claim 4 as obvious over Levine and Whetsel; claims 2 and 7–10 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“The parties do not disagree with our preliminary constructions for claim terms recited in the instant claims. See PO Resp. passim; Dec. 6–10. On the full record, we maintain our constructions for the construed claim terms. We repeat those specifically construed terms here for completeness:” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“be accessible by other mean such as addresses in I/O space.” Ex. 1004, 9:39–40, 51–53 (emphasis added). Levine also provides that “[t]hese special purpose registers are accessible for read or write,” such that they could be considered a buffer memory, per claim 1. Id. at 9:45–46. At oral hearing, Patent Owner’s counsel stated: “[a]nd there are technical reasons why these MMCR registers cannot be the buffer memory” (Tr. 48:22–23), but we have been unable to find a portion of Patent Owner’s Response, its expert’s testimony, or the oral hearing transcript where those technical reasons are elucidated. As such, we are not persuaded by Patent Owner’s arguments.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“First, although Levine does not disclose circuits that produce analog signals, we are persuaded that the evaluation of analog signals would have been seen as useful in light of Whetsel. See Pet. 36. Additionally, we are persuaded that both provide embedded circuits that capture and analyze signals, which is sufficient rationale to consider the combination of Levine and Whetsel. One of ordinary skill in the art need not consider circuit testing and software performance monitoring to be equivalent to consider the utility of applying Whetsel’s analog probes into the system of Levine. Lastly, we disagree with Patent Owner that “the temperature and voltage signals do not provide any useful information to improve the performance of processor execution and storage control.” PO Resp. 29. We are persuaded that measurements of temperature could be useful in determining processor performance. We have considered the evidence presented by Petitioner and Patent Owner. On the full record, Petitioner has shown by a preponderance of the evidence that Levine and Whetsel render claim 4 obvious.” slip op. at 15
Patent outcomesUS 7,836,371 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,836,371 - Toshiba Samsung Storage Technology Korea Corporation v. LG Electronics, IncorporatedSome claims unpatentablePTAB · Apr 1, 2015 · IPR2014-00205 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 3–5, 7–10, 13, 17, and 18 are unpatentable; claims 2, 6, 14, 15, and 19–22 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“We agree with Patent Owner that Kulakowski does not disclose determining whether the target area has been initialized. See PO Resp. 50– 51. As discussed above, Kulakowski discloses erasing the target area whenever an update write operation is received. See Ex. 13:10–13. Petitioner does not point us to disclosure in Kulakowski or other evidence that describes consulting the VTOC whenever an update write command is received. See Tr. 40:18 (“It’s not explicitly stated [in Kulakowski], no.”), 40:21–22 (“I don’t believe our expert testimony went into this detail on the VTOC.”). Rather, Petitioner merely asserts, “That’s just well known in the art.” Tr. 38:17–24; accord Tr. 39:23–40:23. As Petitioner does not provide any evidence supporting its position, we are not persuaded that Kulakowski discloses “determining whether the recording area has been initialized,” as recited in claim 19. For the foregoing reasons, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that Kulakowski anticipates claim 19.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“reasonable interpretation in light of the specification. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667, at *5–8 (Fed. Cir. Feb. 4, 2015). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). On the other hand, a “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer” and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We disagree with Petitioner. “If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is ‘inherent’ in its disclosure.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.’” Id. (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Petitioner acknowledges that there is no evidence in the record regarding whether keeping the table on a full-track basis is always (or necessarily) convenient. See Tr. 30:13–15. In fact, Petitioner asserts, “It can be a convenient basis.” Tr. 30:16–17 (emphasis added). Accordingly, based on the record before us, we are not persuaded that the “other basis” in Seamons necessarily corresponds to a “predetermined physical unit” that “is one rotation unit region,” as recited in claims 2, 6, and 14. For the foregoing reasons, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that Seamons anticipates claims 2, 6, and 14.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“We disagree with Petitioner. “If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is ‘inherent’ in its disclosure.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.’” Id. (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Petitioner acknowledges that there is no evidence in the record regarding whether keeping the table on a full-track basis is always (or necessarily) convenient. See Tr. 30:13–15. In fact, Petitioner asserts, “It can be a convenient basis.” Tr. 30:16–17 (emphasis added). Accordingly, based on the record before us, we are not persuaded that the “other basis” in Seamons necessarily corresponds to a “predetermined physical unit” that “is one rotation unit region,” as recited in claims 2, 6, and 14.” slip op. at 17
Patent outcomesUS 6,101,162 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,101,162
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.