- Toshiba Corp. / Samsung Display Co., Ltd. v. Gold Charm LimitedAll claims unpatentablePTAB · Dec 23, 2016 · IPR2015-01497 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–4, 8, 9, 13, and 14 are unpatentable as obvious over the ’512 Publication and APA because their combined teachings render the claimed subject matter obvious.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Based on the record before us, we are persuaded that Petitioner explains sufficiently how the ’512 Publication and the APA together teach each limitation of each of the challenged claims (see Pet. 29–59 and evidence cited therein), as well as the reasons that a person of ordinary skill in the art would have combined those teachings (see id. at 33, 41–42, 48, 51–52, 57 (citing, e.g., Ex. 1002 ¶¶ 90, 101, 111, 118, 129, 130)), so as to meet its burden to demonstrate by a preponderance of the evidence that the subject matter of the claims would have been obvious over the proffered combination. Patent Owner’s arguments to the contrary are not persuasive.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Petition, Petitioner proposed two alternate constructions for the claim 1 term “a drive means for driving the display,” depending on whether that term is properly construed as a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph. Pet. 26–28. Patent Owner responds that neither of Petitioner’s proposed constructions is proper, but that, “for purposes of this proceeding only,” Patent Owner relies upon those constructions. PO Resp. 22–23. According to Patent Owner, “even if one of Petitioners’ proposed constructions were adopted by the Board, the Petition nevertheless fails to a [sic] establish a prima facie case of obviousness.” PO Resp. 23. In our Decision on Institution, we concluded on the record then before us that it was not necessary for our determination of whether to institute an inter partes review to construe expressly any terms of the challenged claims. Dec. on Inst. 8. Because this Final Written Decision does not turn on the construction of “a drive means for driving the display” or of any other specific claim term, we again conclude that it is unnecessary to construe expressly any term of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner’s declarant, Dr. Silzars, testifies that one of ordinary skill in the art as of the July 28, 1994, the earliest claimed priority date of the ’092 patent, “would generally have had at least a Bachelor’s of Science degree in electrical engineering or physics, or equivalent, and several years of relevant experience relating to the design and fabrication of liquid crystal displays,” or, “[a]bsent a formal degree, a person of ordinary skill in the art would have additional years of work experience.” Ex. 1002 ¶¶ 13, 33; see Pet. 24 (citing Ex. 1002 ¶ 13). Patent Owner’s declarant, Dr. den Boer, essentially agrees, opining that one of ordinary skill in the art as of July 28, 1994, would have been “someone with at least a Bachelor’s of Science degree in a relevant field, such as electrical engineering, and with several years of experience in the field of design, development and fabrication of liquid crystal displays,” and stating “[i]n this specific regard, I agree with Dr. Silzars.” Ex. 2024 ¶ 9; see PO Resp. 9 (citing Ex. 2024 ¶ 9). Dr. Silzars and Dr. den Boer also agree that the person of ordinary skill in the art would understand the prior art as discussed herein. Ex. 1002 ¶ 13; Ex. 2024 ¶ 9. We determine that the differences in the declarants’ assertions are negligible and that both assessments are consistent with the ’092 patent and the referenced prior art. For the purposes of the analysis below, we adopt Dr. den Boer’s assessment.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Digest paper “concluded that only the dot mode polarity inversion method addresses and solves both the flicker and cross-talk problems,” “a person of ordinary skill in the art and familiar with the prior art of [the] ’092 [patent] and the SID92 Digest paper would employ dot mode polarity inversion over column inversion and row inversion, because it provides the best image quality.” Ex. 2024 ¶¶ 26–27. Irrespective of whether dot mode reversion would provide a still better image, however, we are persuaded that a person of ordinary skill in the art would have had reason, based on the APA, to add column polarity reversion to the ’512 Publication technique, in order to improve that technique in the same manner that the APA taught dot mode reversion provided an improvement over row polarity reversion. As the Supreme Court explained in KSR, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” 550 U.S. at 417. As cited above, the APA taught that row polarity reversion eliminated crosstalk, but still suffered from flicker, whereas dot mode reversion, which effectively combines row polarity reversion with column polarity reversion, eliminated both crosstalk and flicker. We are persuaded, therefore, that a person of ordinary skill in the art would have had reason to add column polarity reversion of the APA to the double row polarity reversion of the ’512 Publication, to result in the driving method claimed in the ’092 patent. We further agree with Petitioner (see Tr. 7:7–14) that Patent Owner’s arguments that “adopting portions of the APA techniques as suggested would likely have little, if any positive effect on the power consumption by the ’512 Publication display” (PO Resp. 3) and that “power consumption may actually be exacerbated by this combination” (id.) focus on the wrong comparison and do not address our finding in the Decision on Institution that one of ordinary skill in the art would have had reason to pursue a combination of the ’512 Publication’s teachings with the APA in an attempt to solve the problem of excessive power dissipation by the APA’s dot mode polarity reversion (see Dec. on Inst. 17–18). Whereas Patent Owner’s argument focuses on a comparison of power consumption between the ’512 Publication display and a display having column inversion added to the ’512 Publication (Tr. 19:25–20:2), we agree with Petitioner (see Pet. Reply 20) that the relevant comparison is instead between the combination and the dot mode polarity reversion scheme of the APA. Nonetheless, because we are persuaded by Petitioner’s arguments and evidence, for the reasons set forth above, that a person of ordinary skill in the art would have had reason to combine the teachings of the APA with those of the ’512 Publication in the manner proposed by Petitioner rather than adopting dot mode polarity reversion in its entirety, and that such a combination would have rendered the subject matter of each of claims 1–4, 8, 9, 13, and 14 of the ’092 patent obvious, we need not reach Petitioner’s further argument that a desire to reduce power consumption would have provided additional reason to make that combination.” slip op. at 25
Patent outcomesUS 5,790,092 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 5,790,092 - Sandisk Corp. v. Netlist, Inc.All claims unpatentablePTAB · Sep 28, 2016 · IPR2015-01021 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 16, 17, 24, 30, and 31 are unpatentable as obvious over Takeda, JEDEC, and Connolly.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“1. “Rank” In the Decision to Institute, we construed the term “rank” as “a block or area that is created using some or all of the memory chips on a memory module.” Dec. to Inst. 8–9. In their papers, neither party challenged our constructions of these claim terms. Thus, for the term “rank,” we see no reason to alter the construction of this claim term as set forth in the Decision to Institute as recited above, and we incorporate our previous analysis for purposes of this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. All Other Claim Terms We determine that no explicit construction is necessary for any other terms in the challenged claims. B.” slip op. at 8
- Skill levelSkill level board ownOther
“would understand basic memory and data communication concepts, with a bachelor’s degree in any of electrical engineering, computer engineering, computer science, or related field. Course work for one of ordinary skill in the art would have included a course on computer organization, principles of digital design, or computer architecture. One of ordinary skill in the art would also have around one year of experience related to computer memory systems. For example, such experience may include experience in DRAM memory technology and related industry standards such as JEDEC standards for DRAM memories and memory modules. Ex. 1002 ¶ 53. Patent Owner’s Declarant, Carl Sechen, Ph.D. (“Dr. Sechen”), testifies that one of ordinary skill in the art at the time of the ’536 Patent would have had an undergraduate degree in electrical engineering or computer engineering, at least two years of professional experience in the design of memory systems, familiarity with the latest JEDEC standard specifications for memory devices and modules, and familiarity with the latest DRAM (dynamic random access memory) memory devices widely available in the market. Ex. 2001 ¶ 14. Dr. Sechen further testifies that a person of ordinary skill in the art would have design proficiency in memory modules comprising DDR memory technology, such as memory modules with JEDEC standard DDR SDRAM (synchronous DRAM) devices. Id. ¶ 15. Based on our review of the ’536 Patent and the types of problems and solutions described in the ’536 Patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’536 Patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that Dr. Jagannathan is qualified sufficiently to testify about memory systems and memory modules. E.” slip op. at 12
Patent outcomesUS 8,081,536 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,081,536 - Sandisk Corp. v. Netlist, Inc.Some claims unpatentablePTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision
Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9
- Skill levelSkill level board ownOther
“Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24
Patent outcomesUS 7,881,150 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,881,150 - Sony Computer Entertainment America LLC v. Aplix IP Holdings CorporationAll claims unpatentablePTAB · Jul 20, 2016 · IPR2015-00729 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–14, 16–19, 21–32, and 34–38 are unpatentable: obvious over Mollinari and Nishiumi, Mollinari, Nishiumi, and Tu, or Kerr and Lum; claims 5, 9, 19, and 30 are anticipated by Shima.
RulingsFinal written decision- Skill levelSkill level board ownOther
“II. ANALYSIS A. Level of Skill of Person in the Art We find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construe any terms. Dec. 4–5. Patent Owner subsequently proposed a construction for the claim 1 term an “input controller configured to generate an input signal . . . to control execution of the one or more functions of the software application” to be defined as an “‘input controller’ that can interpret input data and convert it to an input signal ready to be mapped to control functions of a software application.” PO Resp. 27–29. Patent Owner argues that the aforementioned “input signal” must be more than raw, unstructured input data. Id. (citing Ex. 1001, 11:10–17, 13:3–5, 15:42–48). Moreover, Patent Owner argues raw, unstructured input data must undergo at least some additional interpretation before it can be mapped to an application function and used to control the function’s execution. Id. at 28 (citing Ex. 2009 ¶¶ 68–70). We are not persuaded to import this narrowing construction from the Specification based on the examples argued, because the Specification of the ’097 patent does not include a special definition or any disavowal. Rather, we agree with Petitioner’s argument that the plain language of claim 1, in light of the Specification of the ’097 patent, does not require the scope of the aforementioned claim 1 limitation to require the input controller to interpret or pre-map input signals to software functions. Reply 12–13 (citing Ex. 1001, 11:41–46). We, therefore, decline to adopt Patent Owner’s narrow construction. We, instead, decline to construe the aforementioned term.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“The test for determining whether a prior art reference constitutes analogous art to the claimed invention is: (1) whether the prior art is from the same field of endeavor, regardless of the problem addressed, or (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).” slip op. at 11
Patent outcomesUS 7,280,097 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,280,097 - Mastercard International Inc. v. Leon StamblerAll claims unpatentablePTAB · Jul 6, 2016 · CBM2015-00044 · APJ Peter P Chen · CBM · Final written decision
Claims 51 and 53 are unpatentable as anticipated by Davies; claims 51, 53, 55, and 56 are unpatentable as obvious over Davies and Meyer; claim 55 over Davies and Nechvatal; and claim 56 over Davies, …
RulingsFinal written decision- Skill levelSkill level board ownOther
“F. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in computer programming and two years’ experience as a programmer or developer in the field of computer science, with a working understanding of cryptographic operations for transforming original input into a coded output using a known algorithm.” Pet. 14–15. Patent Owner has proposed similarly, that one of ordinary skill in the art would possess “(1) undergraduate education in mathematics, physics, computer science, electrical engineering or similar technical subject; and (2) either postgraduate education in networking, cryptography, or other discipline encompassing information theory, or equivalent experience with applications involving communication of financial, military, medical or similarly sensitive data over secure and non-secure networks.” Prelim. Resp. 30–31. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“1. “variable authentication number (VAN)” In the Decision to Institute, we construed the term “variable authentication number” or “VAN” as “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.” Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 8–9 (PTAB Oct. 31, 2014) (Paper 10). Patent Owner “does not challenge this construction.” PO Resp. 16–17. Patent Owner asserts additional construction of the term is necessary for CBM standing issues, but does not elaborate further. PO Resp. 1. Patent Owner also argues we incorrectly applied the broadest reasonable interpretation to the term in the Decision to Institute. PO Resp. 9. The Decision to Institute noted that our review of the claims of the expired ’302 patent is similar to that of a district court’s review, In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005), but inadvertently mentioned the broadest reasonable interpretation standard in construing this term. Dec. to Inst. 7–8. We reaffirm our agreement with Patent Owner that the Phillips framework is applied to the expired ’302 patent. Our construction of “VAN” is the same under either claim construction standard. We reject Patent Owner’s undeveloped argument regarding standing, and maintain the construction of VAN from the Decision to Institute, as the ordinary and customary meaning of the term: “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“2. Sequence of method steps: receiving, generating In the Decision to Institute, we agreed with Patent Owner and construed the sequence of method steps in independent claim 51 to mean that at least a portion of the receiving step must precede the generating step. Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 11–14 (PTAB Oct. 31, 2014) (Paper 10). We maintain that construction as the ordinary and customary meaning of the sequence of the receiving and generating method steps.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“intended use of an invention is generally not treated as limiting the scope of the claim. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). However, “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). “The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). When the limitations in the body of the claim rely upon or derive essential structure from the preamble elements, e.g., the preamble serves as an antecedent basis for limitations in the claim, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). In this case, the preamble of independent claim 51 recites “a credential being previously issued,” and the limitations of the claim include “determining whether the at least a portion of the received funds transfer information is authentic by using the VAN and the credential information.” Ex. 1001, 33:18–19, 33:29–31. Thus, the preamble’s recitation of “a credential” is an antecedent basis for the recited “the credential information” in the “determining” step, and we determine that the preamble limits the scope of the challenged independent claim 51 and dependent claims 53, 55, and 56.” slip op. at 11
Patent outcomesUS 5,793,302 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 5,793,302 - Sony Computer Entertainment America LLC v. Aplix IP Holdings CorporationAll claims unpatentablePTAB · Jun 29, 2016 · IPR2015-00730 · APJ Jason J Chung · IPR · Final written decision
Claims 1–11 are unpatentable under § 103(a): claims 1–4, 6–7 over Mollinari and Nishiumi; claim 5 over Mollinari, Nishiumi, and Tu; claims 8–10 over Kerr and Lum; and claim 11 over Mollinari and Jacobi.
RulingsFinal written decision- Skill levelSkill level board ownOther
“II. ANALYSIS A. Level of Skill of Person in the Art We find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“35 U.S.C. § 103 based on Mollinari and Nishiumi. Pet. 6–19. To support its contentions, Petitioner provides a detailed showing, mapping limitations of claims 1–4, 6, and 7 to structures taught by Mollinari and Nishiumi. Id. Petitioner also relies upon the Declaration of Dr. Gregory F. Welch (Ex. 1010) to support its position.7” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“construe any terms. Dec. 4–5. Patent Owner subsequently proposed a construction for the claim 1 term an “input controller configured to generate an input signal . . . to control execution of the one or more functions of the software application” to be defined as an “input controller that can interpret input data and convert it to an input signal ready to be mapped to control functions of a software application.” PO Resp. 24–27. Patent Owner argues that the aforementioned term must be more than raw, unstructured input data. Id. (citing Ex. 1001, 14:47–54, 13:3–5, 15:42– 48). Moreover, Patent Owner argues raw, unstructured input data must undergo at least some additional interpretation before it can be mapped to an application function and used to control execution of it. Id. at 27 (citing Ex. 2009 ¶ 64–65). We are not persuaded to import this narrowing limitation from the specification based on the examples argued because the Specification of the ’892 patent does not include a special definition, nor a disavowal. Rather, we agree with Petitioner’s argument that the plain language of claim 1 and Specification of the ’892 patent permit a scope of the aforementioned claim 1 limitation to include also an electrical signal that is generated in response to a user pressing a button that controls one or more functions of a software application. Reply 19–20 (citing Ex. 1001, 14:53– 15:6). We, therefore, decline to adopt Patent Owner’s narrow construction. We, instead, decline to construe the aforementioned claim 1 term.” slip op. at 5
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“The test for determining whether a prior art reference constitutes analogous art to the claimed invention is: (1) whether the prior art is from the same field of endeavor, regardless of the problem addressed, or (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).” slip op. at 8
Patent outcomesUS 7,932,892 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,932,892 - Sony Computer Entertainment America LLC v. Aplix IP Holdings CorporationAll claims unpatentablePTAB · Jun 20, 2016 · IPR2015-00533 · APJ Jason J Chung · IPR · Final written decision
Claims 15, 16, 20, 37–42, and 44–51 are unpatentable under § 103 over the stated combinations of prior art.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“II. ANALYSIS A. Level of Skill of Person in the Art We find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“Petitioner proposes a construction for the terms “substantially optimize a biomechanical effect of the human user’s hand,” (claims 15 and 37) “delineated active areas,” (claim 37) “a game function that is substantially optimized for actuation by the human user’s thumb,” (claim 44) and “a game function that is substantially optimized for actuation by one or more of the human user’s fingers” (claim 46). Pet. 7–13. In our Decision to Institute, we determined that it was not necessary to construe “delineated active area” (claims 3, 5, and 13) and agreed with Petitioner’s construction for “substantially optimize a biomechanical effect of the human user’s hand,” (claims 15 and 37) “a game function that is substantially optimized for actuation by the human user’s thumb,” (claim 44) “a game function that is substantially optimized for actuation by one or more of the human user’s fingers” (claim 46). Dec. 5–7. Neither party has indicated that our determination in that regard was improper and we do not perceive any reason or evidence that now compels any deviation from our initial determination. Accordingly, the following constructions apply to this Decision: Claim Term Construction substantially optimize a includes any configuration designed biomechanical effect of the human to take advantage of any user’s hand biomechanical effect” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“combined for various reasons. PO Resp. 17–28. First, Patent Owner argues that Pallakoff teaches away from implementing modifier buttons on the back of the hand held device because Pallakoff does not describe the side buttons as being on the back. Id. at 19–21. A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, we note that Pallakoff teaches that the positioning of face-keys or sidebuttons can vary and one place to position the keys or buttons is on the back of the device. Reply 9–10 (citing Ex. 1004 ¶¶ 196, 200, 323). We have considered Patent Owner’s arguments and evidence to which we are directed and determine that Patent Owner has not shown sufficiently that Pallakoff criticizes, discredits, or otherwise discourages implementing the modifier buttons on any surface of the handheld device, including the back surface.” slip op. at 10
Patent outcomesUS 7,218,313 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,218,313 - Sony Computer Entertainment America LLC v. Aplix IP Holdings CorporationAll claims unpatentablePTAB · Jun 20, 2016 · IPR2015-00476 · APJ Bryan F Moore · IPR · Final written decision
Claims 21–24, 26–29, 52–56, and 58–60 were held unpatentable under § 103 over Pallakoff with Liebenow, Armstrong, or Hedberg.
RulingsFinal written decision- Skill levelOther
“II. ANALYSIS A. Level of Skill of Person in the Art We find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“conclusory fashion that Pallakoff and Liebenow should not be combined. PO Resp. 15–17. Patent Owner argues that its declarants were more judicious in determining which combinations should be combined and that Petitioner’s declarant Dr. Welch took extreme positions and could not remember many things. PO Resp. 16. We have considered this argument. We find Dr. Welch to be credible, thus, Patent Owner’s argument is not persuasive.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the following claim terms: “a plurality of delineated active areas” (claims 24 and 56) and “substantially optimize a biomechanical effect of the human user’s hand” (claims 21 and 52). Pet. 6–10. In our Decision to Institute, we determined that it was not necessary to construe “a plurality of delineated active areas” and “substantially optimize a biomechanical effect of the human user’s hand.” Dec. 6–7. Neither party has indicated that our determination in that regard was improper and we do not perceive any reason or evidence that now compels any deviation from our initial determination. Additionally, no other terms need to be construed explicitly for the purpose of this Decision.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“keypad for typing on the front surface and Liebenow is a large device with a full size keyboard on the read surface. PO Resp. 18. Additionally, Patent Owner points out that Pallakoff’s buttons are on the side and designed to be used in combination, while Liebenow’s modifier buttons are on a different surface than the touch pad (the touch pad is only on the rear not the side) and are not used in combination with the touch pad. Id. at 18, 21. Patent Owner argues that the “[P]etition’s proposed combination would require a person of ordinary skill in the art to take Pallakoff and Liebenow, with all these differences, and make a complicated combination to teach ’313 claims 24 and 56. PO Resp. 19. Patent Owner also argues that Pallakoff teaches away from implementing modifier buttons on the back of the hand held device for the reasons stated above. Id. at 20–21. A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We have considered Patent Owner’s arguments and evidence to which we are directed and determine that Patent Owner has not shown sufficiently that Pallakoff criticizes, discredits, or otherwise discourages implementing the modifier buttons on any surface of the handheld device, including the back surface. Moreover, Pallakoff teaches that the location of the face-keys and side-buttons may be arranged in different locations, including on the sides or back of the handheld device. Ex. 1004 ¶¶ 196, 200, 323.” slip op. at 15
Patent outcomesUS 7,218,313 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,218,313 - Sony Computer Entertainment America LLC v. Aplix IP Holdings CorporationAll claims unpatentablePTAB · Jun 3, 2016 · IPR2015-00396 · APJ Sally C Medley · IPR · Final written decision
Claims 1 and 3–14 are unpatentable under § 103 over the five stated combinations of Pallakoff, Ishihara, and the respective additional references.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“8 Patent Owner argues that the Board should give Dr. Welch’s testimony little weight. PO Resp. 18–20. We are not persuaded by the arguments. The evidence to which we are directed does not support the conclusion that Dr. Welch is not a credible witness. See id.” slip op. at 6
- Skill levelSkill level board ownOther
“II. ANALYSIS A. Level of Skill of Person in the Art We find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner proposes constructions for the following claim terms: “a plurality of delineated active areas” (claim 1) and “substantially optimize a biomechanical effect of the human user’s hand” (claim 1). Pet. 6–10. In our Decision to Institute, we determined that it was not necessary to construe “a plurality of delineated active areas” (claim 1) and agreed with Petitioner’s construction for “substantially optimize a biomechanical effect of the human user’s hand” (claim 1). Dec. 6–7. Neither party has indicated that our determinations in that regard were improper and we do not perceive any reason or evidence that now compels any deviation from our initial determinations. Accordingly, the following construction applies to this Decision:” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner proposes constructions for the following claim terms: “a plurality of delineated active areas” (claim 1) and “substantially optimize a biomechanical effect of the human user’s hand” (claim 1). Pet. 6–10. In our Decision to Institute, we determined that it was not necessary to construe “a plurality of delineated active areas” (claim 1) and agreed with Petitioner’s construction for “substantially optimize a biomechanical effect of the human user’s hand” (claim 1). Dec. 6–7. Neither party has indicated that our determinations in that regard were improper and we do not perceive any reason or evidence that now compels any deviation from our initial determinations. Accordingly, the following construction applies to this Decision: Claim Term Construction substantially optimize a includes any configuration designed biomechanical effect of the human to take advantage of any” slip op. at 5
Patent outcomesUS 7,218,313 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,218,313 - Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentablePTAB · May 31, 2016 · IPR2015-00372 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1 and 3–8 are unpatentable as obvious over Bace and Russinovich; claims 9 and 10 were not shown unpatentable because the evidence did not establish the claimed likelihood of observing a feature.
RulingsFinal written decision- BurdenMixed
“We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 3–8 would have been obvious over Bace and Russinovich. We determine that Petitioner has not shown by a preponderance of the evidence that claims 9 and 10 would have been obvious over Bace and Russinovich.” slip op. at 7
- Skill levelSkill level board ownDecided for patent owner
“2. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Michael T. Goodrich, testifies that a person of ordinary skill in the art at the time of the ’084 patent would have had “a Master’s degree in computer science or a related field with two to three years of experience in the field of software security systems.” Ex. 1003 ¶ 20. Patent Owner’s declarant, Dr. George Cybenko, testifies that a person of ordinary skill in the art at the time of the ’084 patent would have had “an undergraduate degree in computer science or mathematics, and one or two years of experience in the field of computer security.” Ex. 2019 ¶ 28. Thus, Petitioner’s declarant, Dr. Goodrich, defines the level of ordinary skill in the art slightly higher in both education and experience. Patent Owner points out this difference, but does not argue that it materially impacts either party’s analysis. PO Resp. 18–19. In fact, Petitioner’s declarant, Dr. Goodrich, testifies that his analysis would not change under the slightly lower level of ordinary skill in the art set forth by Patent Owner. Ex 1029 ¶¶ 13–14; Ex. 2018, 78:2-23. In other words, the minor distinctions between the parties’ proposed levels of ordinary skill in the art are not material. As a result, we determine that both parties define the level of ordinary skill in the art appropriately in this case.” slip op. at 9
- Expert testimonyOther
“Patent Owner’s Motion for Observations E. Patent Owner filed a Motion for Observations on the cross examination of Dr. Michael T. Goodrich (Paper 47), to which Petitioner filed a Response (Paper 50). We have considered Patent Owner’s observations and Petitioner’s responses, and we have given Dr. Goodrich’s testimony the appropriate weight in making our determination in this case.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“determining the likelihood of observing an event, but does not identify evidence indicating that Bace teaches determining the likelihood of observing a feature, as recited in claim 9. Pet. 39–41; Pet. Reply 23–24; Tr. 30:2–15, 31:6–12. Petitioner instead argues that an event is the “same thing” as a feature. Tr. 30:20–24, 32:9–13. Petitioner, however, improperly presented this argument for the first time at the oral hearing. Id. at 30:13– 15; Pet. 39–41; Pet. Reply 23–24; see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Moreover, Petitioner does not identify any evidence from the ’084 patent (or otherwise) to support its argument that an event is the same thing as a feature. Tr. 31:1–5; see Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381–82 (Fed. Cir. 2008) (“Our precedent instructs that different claim terms are presumed to have different meanings.”). Therefore, we determine that Petitioner has not shown by a preponderance of the evidence that claim 9 would have been obvious over Bace and Russinovich. Claim 10 6. Claim 10 depends from claim 9, and recites “wherein determining a likelihood of observing a feature comprises determining a conditional probability of observing a first feature in the records of processes that access the operating system registry given an occurrence of a second feature in the records.” Ex. 1001, col. 23, ll. 8–12. Because claim 10 depends from claim 9, and Petitioner has not shown that claim 9 would have been obvious over Bace and Russinovich, we determine that Petitioner also has not shown by a preponderance of the evidence that claim 10 would have been obvious over Bace and Russinovich. See supra Section II.B.5.” slip op. at 25
Patent outcomesUS 7,448,084 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,448,084
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.