- LG Display Co, Ltd. v. Innovative Display Technologies LLCNo claims unpatentablePTAB · Jul 15, 2016 · IPR2015-01717 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1, 3, 5, 10, 13, 16, 17, 25–29, and 33–35 were not shown unpatentable under §103 over Oe and Etsuo because the proposed combinations lacked sufficient reasoned support.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“persuaded Petitioner has provided sufficient articulated reasoning with rational underpinning explaining why one with ordinary skill in the art would have modified the teachings of the applied references to address the noted differences. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). We consider Petitioner’s first reason to combine Oe and Etsuo “because they are in the same field of backlighting for liquid crystal display devices.” Pet. 36. The mere fact that both Oe and Etsuo are in the same field of endeavor falls short of an adequate rationale. The same field of endeavor analysis is merely the jumping-off point in reaching the determination of whether a claimed invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). Next, we consider Petitioner’s second reason to combine because “both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.” Pet. 36 (citing Ex. 1004 ¶ 165). Although Petitioner relies on the testimony of Dr. Escuti, he does not proffer any persuasive facts, data, or analysis to support his opinion. See Ex. 1004 ¶ 165 (“Also, both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.”). Merely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument probative value. Dr. Escuti’s opinion lacks sufficient support. For this reason, we do not credit the testimony of Dr. Escuti on this issue. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Petitioner’s second reason is also unavailing because it does not address the entirety of Petitioner’s proposed modification. As discussed above, Petitioner relies on the disclosure in Etsuo for both the position of the plurality of light sources adjacent a single input edge claim element, as well as the output distribution having a greater width component than height component claim element. Petitioner’s reasoning, directed only to the use of light sources at the edge of the light guide, does not explain sufficiently why one of skill in the art would have replaced a single light source positioned adjacent one input edge of Oe, with the plurality of light sources disclosed by Etsuo that have an output distribution defined by a greater width component than height component.” slip op. at 20
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“We have reviewed the testimony from both Dr. Escuti, and Patent Owner’s expert, Mr. Werner (Ex. 2021). We find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.5 However, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Escuti, and Mr. Werner. See, e.g., 5 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). We, therefore, are not persuaded by Patent Owner’s contention that Dr. Escuti’s testimony be disregarded in its entirety. Instead, we have accorded the testimony of both Dr. Escuti and Mr. Werner the weight that is appropriate in view of the arguments and evidence of record in this trial. 4. Overview of Oe (Ex. 1024)” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“taken into account. In making this determination, we were aided by expert testimony. According to Dr. Escuti, “a person of ordinary skill in the art relevant to the ’660 Patent would have at least an undergraduate degree in physics, optics, engineering, or applied mathematics AND 3 years of work experience (or a graduate degree) in a field related to optical technology.” Ex. 1004 ¶ 23. Mr. Werner does not take issue with this testimony, and in fact proposes a similar standard: a person of ordinary skill in the art of the ’660 patent would hold an undergraduate degree in physics, material science, electrical engineering, or mathematics and have one or both of the following: (1) three or more years of work experience in a field related to optical technology; or (2) a graduate degree in a field related to optical technology. Ex. 2021 ¶ 76. We find that Mr. Werner’s definition is too limited in that it does not include a person with an undergraduate degree in optics. We, therefore, do not accept his standard and adopt instead Dr. Escuti’s more complete definition.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“disclosure in the specification of the ’600 patent to support Patent Owner’s proposed claim construction of “height” and “width.” Indeed, our review of the specification of the ’660 patent reveals that these terms are not defined explicitly or implicitly. For example, the specification states that “the deformities may vary in shape and/or size along the length and/or width of the panel members.” Ex. 1001, 5:43–44 (emphasis added). With respect to the planar optical conductor, claims 1 and 33 each recite, in relevant part, that the input edge has “at least one input edge with a greater cross-sectional width than thickness.” Ex. 1001, 9:11–12, 10:65–67 (emphasis added). Both claims 1 and 33 recite that the output distribution generated by the plurality of light sources is “defined by a greater width component than height component.”4 Id. at 9:15–16, 11:5–6 (emphasis added). Claim 33 recites that the plurality of LED light sources each have “a greater width than height.” Id. at 11:1–2 (emphasis added). Because the terms “width” and “height” are commonly understood, we also consult a general purpose dictionary. “Width” is defined as “the horizontal measurement taken at right angles to the length.” See Merriam- Webster.com, http://www.merriam-webster.com/dictionary/width, (last viewed July 10, 2015). The dictionary definition of height is “the distance from the bottom to the top of something standing upright.” See Merriam-” slip op. at 10
Patent outcomesUS 7,404,660 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,404,660 - LG Display Co, Ltd. v. Innovative Display Technologies LLCNo claims unpatentablePTAB · Jul 15, 2016 · IPR2015-01717 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1, 3, 5, 10, 13, 16, 17, 25–29, and 33–35 were held not unpatentable under § 103 over Oe and Etsuo because the combination lacked an adequately supported reason to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“taken into account. In making this determination, we were aided by expert testimony. According to Dr. Escuti, “a person of ordinary skill in the art relevant to the ’660 Patent would have at least an undergraduate degree in physics, optics, engineering, or applied mathematics AND 3 years of work experience (or a graduate degree) in a field related to optical technology.” Ex. 1004 ¶ 23. Mr. Werner does not take issue with this testimony, and in fact proposes a similar standard: a person of ordinary skill in the art of the ’660 patent would hold an undergraduate degree in physics, material science, electrical engineering, or mathematics and have one or both of the following: (1) three or more years of work experience in a field related to optical technology; or (2) a graduate degree in a field related to optical technology. Ex. 2021 ¶ 76. We find that Mr. Werner’s definition is too limited in that it does not include a person with an undergraduate degree in optics. We, therefore, do not accept his standard and adopt instead Dr. Escuti’s more complete definition.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“Owner’s expert, Mr. Werner (Ex. 2021). We find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.4 However, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Escuti, and Mr. Werner. See, e.g., 4 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). We, therefore, are not persuaded by Patent Owner’s contention that Dr. Escuti’s testimony be disregarded in its entirety. Instead, we have accorded the testimony of both Dr. Escuti and Mr. Werner the weight that is appropriate in view of the arguments and evidence of record in this trial. 4. Overview of Oe (Ex. 1024)” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Because the terms “width” and “height” are commonly understood, we also consult a general purpose dictionary. “Width” is defined as “the horizontal measurement taken at right angles to the length.” See Merriam- Webster.com, http://www.merriam-webster.com/dictionary/width, (last viewed July 10, 2015). The dictionary definition of height is “the distance from the bottom to the top of something standing upright.” See Merriam- 3 In a related district court proceeding, the claim term “output distribution defined by a greater width component than height component” was determined to have its plain meaning. Ex. 2008, 47. See TR. 21:24–22:8. Webster.com, http://www.merriam-webster.com/dictionary/height, (last viewed July 10, 2015). Within the context of the claims, we are not persuaded by Patent Owner’s contentions that the term “width” is used other than according to its ordinary and customary meaning with respect to the shape of the input edge of the optical conductor, the output distribution of the light source, and the shape of the LED light source. Along this vein, we are not persuaded by Patent Owner’s contentions that the term “height” is used other than according to its ordinary and customary meaning with respect to the light output distribution. Based on this usage in the claims, no express construction is necessary.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“persuaded Petitioner has provided sufficient articulated reasoning with rational underpinning explaining why one with ordinary skill in the art would have modified the teachings of the applied references to address the noted differences. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). We consider Petitioner’s first reason to combine Oe and Etsuo “because they are in the same field of backlighting for liquid crystal display devices.” Pet. 36. The mere fact that both Oe and Etsuo are in the same field of endeavor falls short of an adequate rationale. The same field of endeavor analysis is merely the jumping-off point in reaching the determination of whether a claimed invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). Next, we consider Petitioner’s second reason to combine because “both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.” Pet. 36 (citing Ex. 1004 ¶ 165). Although Petitioner relies on the testimony of Dr. Escuti, he does not proffer any persuasive facts, data, or analysis to support his opinion. See Ex. 1004 ¶ 165 (“Also, both Oe and Etsuo relate to backlight devices that use light sources located at edges of a light guide.”). Merely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument probative value. Dr. Escuti’s opinion lacks sufficient support. For this reason, we do not credit the testimony of Dr. Escuti on this issue. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Petitioner’s second reason is also unavailing because it does not address the entirety of Petitioner’s proposed modification. As discussed above, Petitioner relies on the disclosure in Etsuo for both the position of the plurality of light sources adjacent a single input edge claim element, as well as the output distribution having a greater width component than height component claim element. Petitioner’s reasoning, directed only to the use of light sources at the edge of the light guide, does not explain sufficiently why one of skill in the art would have replaced a single light source positioned adjacent one input edge of Oe, with the plurality of light sources disclosed by Etsuo that have an output distribution defined by a greater width component than height component. We also consider Petitioner’s argument in the Reply that, in addition to Etsuo, Petitioner also relies on Oe’s explicit disclosure of “a plurality of point-like sources of light.” Reply 16–17. Petitioner directs us to the passage of Oe cited in its claim chart (Pet. 40), describing how the light source could be “a plurality of point-like sources of light arranged along the incident surface” (Ex. 1024, 7:30–31). Id. at 16. But Petitioner’s arguments in this regard do not address specifically its proffered reason to combine Oe and Etsuo. Indeed, Petitioner does not explain the relevance of the point-like sources of light to the claim element in question. See 37 C.F.R. § 42.22(a)(2) (requiring a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent). Patent Owner contends that “Petitioner never argues that ‘point-like sources’ are equivalent to LEDs.” PO Resp. 10. We agree. Petitioner’s argument that “Oe discloses a plurality of light sources 4 adjacent to the input edges” (Pet. 35 (citing Ex. 1024, 6:5–13; Ex. 1004 ¶ 161)) makes no mention of the specific passage in Oe concerning the point-like sources of light. Indeed, the cited passage states that:” slip op. at 20
Patent outcomesUS 7,404,660 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,404,660 - Hulu, LLC / Netflix, Inc. et al. v. CRFD Research, Inc.No claims unpatentablePTAB · Jun 1, 2016 · IPR2015-00259 · APJ Justin T Arbes · IPR · Final written decision
Claims 1–6, 8–11, 13–15, 17–20, 23–25, 29–31, 34–36, and 38–41 were not shown unpatentable because the prior art did not teach transmitting session history after discontinuing the session.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Claim Term Interpretation “modality” a preferred mode of interaction “device profile” information pertaining to the operation of a device, such as the data format or modality of the device “in response to . . . in response to the second device being made activation of said active, such as by a user logging on to the second device” second device “session” a series of information transactions between communicating devices during a particular time period “discontinuing” terminating or otherwise stopping, with the ability to be resumed “discontinued” terminated or otherwise stopped, with the ability to be resumed “session transfer computer hardware and/or software that module” participates in the transfer of a session See Dec. on Inst. 6–9; DISH Network Corp. v. CRFD Research, Inc., Case IPR2015-00627, slip op. at 6–9 (PTAB June 3, 2015) (Paper 9); Unified Patents Inc. v. CRFD Research, Inc., Case IPR2015-00157, slip op. at 6–9 (PTAB Apr. 30, 2015) (Paper 8); Iron Dome LLC v. CRFD Research, Inc., Case IPR2015-00055, slip op. at 6–10 (PTAB Apr. 27, 2015) (Paper 10). The parties do not dispute these interpretations in their Patent Owner Response and Reply. We do not perceive any reason or evidence that compels any deviation from these interpretations. Accordingly, we adopt our previous analysis for purposes of this Decision.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Having reviewed all of the parties’ arguments and supporting evidence, we conclude that Petitioner has not shown, by a preponderance of the evidence, that Bates expressly or inherently discloses transmitting the session history “after said session is discontinued on said first device.” See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). We begin by noting that there is nothing in Bates explicitly disclosing when the alleged “session” ends. Petitioner acknowledged this at the hearing. Tr. 42:5–8. Bates, however, does disclose what occurs during a “session.” The term “session” in the claims means a series of information transactions between communicating devices during a particular time period. See supra Section II.A. Bates uses the slightly different term “browsing session,” which it defines as the “period of time when the browser 240 is executing on a client computer 106 and a network connection exists between the client 106 and the network 104 allowing a user to traverse network addresses corresponding to the servers 108.” Ex. 1004, col. 4, ll. 61–67. Thus, the “browsing session” in Bates is the period of time when the browser program is “executing” on the client computer and the client computer has an open connection to the network servers with which it is communicating. During this time, the client computer in Bates generates browser information in response to user input (e.g., by creating a history of websites visited by the user). See id. at Abstract (“A first browser executing on a first computer generates browser information in response to user input.”), col. 9, ll. 17–46 (describing the generation and storage of browser information in buffer 242), col. 2, ll. 2–10 (reciting “generating the user-configured browser information during execution of a first network browser on a first computer in response to user-input commands”), claim 1 (same). Accordingly, the alleged “session” in Bates (i.e., the series of information transactions between communicating devices) occurs during the time period of what Bates refers to as the “browsing session.”” slip op. at 13
- Strike new argumentNew argument disregardedOther
“that are procedurally improper and not entitled to consideration. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding . . . patent owner response.” See also Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., – F.3d –, 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Apple Inc. v. e-Watch, Inc., Case IPR2015-00412, slip op. at 44 (PTAB May 6, 2016) (Paper 50) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may rely upon appropriate evidence to support the positions asserted. Reply evidence, however, must be responsive and not merely new evidence that could have been presented earlier to support the movant’s motion.”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.”). First, Petitioner provides a lengthy explanation as to how a person of ordinary skill in the art would have understood Bates to operate based on the alleged timing of Microsoft Windows shutdown signals and the interaction between a browser application and email software. Reply 6–9. Petitioner’s explanation amounts to a new theory for why Bates allegedly discloses transmitting the session history “after said session is discontinued on said first device” that was not discussed in the Petition. See Pet. 20–24 (citing only Bates’s disclosure of the events “upon user request,” “at shutdown,” and “at idle period”); Tr. 9:1–4 (acknowledging that shutdown signals are not discussed in the Petition). Indeed, Petitioner does not cite in its Reply any testimony from Dr. Claypool’s declaration or other evidence submitted with the Petition, but rather relies solely on the cross-examination testimony of Patent Owner’s declarant, Dr. Mohapatra. See Pet. 20–24 (citing Ex. 1003); Reply 6–9 (citing Ex. 1018); Tr. 13:18–21.” slip op. at 18
- Skill levelSkill level board ownDecided for patent owner
“KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Petitioner argues that a person of ordinary skill in the art would have had “a Bachelor of Science in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field as well as at least two years of academic or industry experience in the software field,” citing the testimony of Dr. Claypool. Pet. 8 (citing Ex. 1003 ¶¶ 55–58). Dr. Mohapatra similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science or computer engineering with approximately 2 years of practical work experience or post-graduate research in a field such as computer networking and/or distributed systems.” Ex. 2001 ¶ 11. Based on our review of the ’233 patent, the types of problems and solutions described in the ’233 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s degree in computer science or computer engineering (or its equivalent), and at least two years of experience with computer networking, distributed systems, or similar fields. See, e.g., Ex. 1001, col. 1, ll. 5–67 (disclosing that “[t]he invention generally relates to session management in a distributed computer network,” and describing issues in the prior art when a user has “several communication-enabled devices” and wants to switch between them). We apply this level of ordinary skill in the art for purposes of this Decision.” slip op. at 21
Patent outcomesUS 7,191,233 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,191,233 - Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCNo claims unpatentablePTAB · Nov 30, 2015 · IPR2014-00552 · APJ Thomas L Giannetti · IPR · Final written decision
Petitioner failed to prove claims 1–23 unpatentable because Webster was disqualified as prior art under § 103(c).
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“In an inter partes review, the burden of proof is on the Petitioner to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). This burden never shifts to the Patent Owner. Id. However, the burden of production, a separate burden, does shift once the Petitioner comes forward with evidence establishing prior art. Id. at 1379–80. Thus, to prevail on this dispositive issue, Patent Owner must overcome Webster by establishing that § 103(c) applies to the fact of this case.” slip op. at 7
- ExcludeMotion to exclude, deniedMixed
“We agree with Patent Owner and are persuaded that the W–2 form and pay stub should not be excluded. Petitioner’s argument based on alleged inconsistencies goes to the weight, not the admissibility, of the evidence. As to the hearsay objections, we agree with the reasoning of Snow, supra, that the EIN and other information are not assertions subject to the hearsay rule. To the same effect are United States v. Koch, 625 F.3d 470, 480 (8th Cir. 2010) (computer flash drive with manufacturer’s label “China” not inadmissible hearsay to prove place of manufacture); United States v. Bowling, 32 F.3d 326, 328 (8th Cir. 1994) (manufacturer’s name stamped on firearm not hearsay). We are persuaded that the EIN and other identifying information on the W-2 and pay stub, like the examples in those cases, are circumstantial evidence of Seals’employment and not assertions by Intersil. We agree that the pay stub is not hearsay and should be admitted.14 Although Petitioner challenges this evidence as untrustworthy, we are mindful of the fact that Petitioner had a chance to cross-examine Mr. Seals on its content.” slip op. at 22
Patent outcomesUS 6,754,195 not shown unpatentable§ 103 obviousnessPatents in suitUS 6,754,195 - Canon Inc. v. Intellectual Ventures I LLCNo claims unpatentablePTAB · Oct 2, 2015 · IPR2014-00757 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–20 were not shown unpatentable because the asserted references did not disclose received scan control signals that contain no timing control signals.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“considerations are relevant. First, the Specification of the ’285 patent explains that the “flat cable transmits scanning control signals . . . instead of timing control signals.” Ex. 1001, col. 4, ll. 26–28 (emphasis added). In the related proceeding, we observed that this portion of the Specification “suggests a distinction between scanning control signals and timing control signals,” but “does not support unambiguously Patent Owner’s position of complete independence between scan control signals and timing control signals.” Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00535, slip op. at 8 (PTAB Sept. 23, 2015) (Paper 37). We note that a construction of “scan control signals” and “timing control signals” that effected such complete independence would render the negative limitation that “the received scan control signals do not comprise any timing control signals” superfluous in the claims of the ’285 patent. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (citing Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000)); see Gen. Am. Transp. Corp. v. Cryo- Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting district-court claim construction that rendered claim requirement superfluous). Second, we disagree with Petitioner’s contention that Patent Owner’s” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“3. Means-Plus-Function Limitations Claims 1–6 include several terms recited as “means for” performing identified functions. In the Institution Decision, we construed these recitations under 35 U.S.C. § 112, ¶ 6, as follows. Dec. 7–8. We see no reason to alter those constructions based on the positions of the parties as developed during the trial, and accordingly adopt them herein.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“generation of timing control signals in response to receipt of scan control signals, “wherein the [received] scan control signals do not comprise any timing control signals.” Petitioner contends that all limitations of the independent claims, including this recitation, are disclosed by Hayashi. Pet. 17–25. Specifically, Petitioner contends that the set of signals WR*, A<0>, and CDATA<7, . . . ,0> are “scan control signals” and that the signals output by driving clock generating circuit 112 are “timing control signals.” Id. at 17–19. Petitioner identifies a distinction in the functionality of signals WR*, A<0>, and CDATA<7, . . . ,0>, and the functionality of signals output by driving clock generating circuit 112. Because the signals output by the driving clock generating circuit are produced in response to a data value carried by CDATA<7, . . . ,0>, Petitioner contends that CDATA<7, . . . , 0> is not itself a timing control signal. Id. at 19. According to Petitioner, only signals output by Hayashi’s driving clock generating circuit are timing control signals, not signals traveling to the driving clock generating circuit. Id. Petitioner supports its argument with testimony by Richard Carley, Ph.D. Ex. 1002 ¶¶ 52–60, 121–128, 196–203.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Petitioner thus contends that all limitations of the independent claims, including the requirement that “the [received] scan control signals do not comprise any timing control signals,” are disclosed by Tsuboi and Wada. Pet. 41–54. Patent Owner responds that “[p]eople of ordinary skill in the art would readily recognize Tsuboi’s primary scanning synchronization signal and Wada’s synchronization signal TR are timing control signals.” PO Resp. 25. Similar to its argument directed at the Hayashi-based grounds, Patent Owner relies on testimony by Dr. Zech that a “CPU is understood by one of ordinary skill in the art to control a timing generator.” Id. at 25–26 (citing Ex. 2004 ¶ 69). Patent Owner observes that “Tsuboi’s primary scanning synchronization signal is generated . . . by CPU 21” and that “Wada’s synchronization signal TR is also generated by a timing generator, namely control signal generating circuit 27.” Id. (citing Ex. 1005 ¶ 39; Ex. 1006 ¶ 18). Patent Owner further notes that Petitioner’s expert, Dr. Carley, acknowledged during his deposition that the primary scanning synchronization signal “is used to align the reading out of the CCD in time, meaning it starts it up.” Id. at 26 (citing Ex. 2006, 72:14–16). Under the claim construction we have adopted, we are persuaded by Patent Owner’s analysis. Based on the evidence before us, we find that Petitioner has not demonstrated that Tsuboi or Wada discloses “wherein the received scan control signals do not comprise any timing control signals,” as recited in each independent claim. Patent Owner’s analysis thus applies to all claims of the ’285 patent. Accordingly, we conclude that Petitioner has not established, by a preponderance of the evidence, that any claim of the ’285 patent is unpatentable over Tsuboi and Wada together or in combination with other art.” slip op. at 17
Patent outcomesUS 8,300,285 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,300,285 - Dynamic Drinkware LLC v. National Graphics, Inc.No claims unpatentablePTAB · Sep 12, 2014 · IPR2013-00131 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1 and 12 were not shown unpatentable because Patent Owner proved reduction to practice before Raymond’s effective prior art date.
RulingsFinal written decision- BurdenDecided for patent owner
“preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner
“preponderance of the evidence that Raymond is entitled to the benefit of the earlier provisional filing date. To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We conclude, therefore, that Patent Owner has shown by a preponderance of the evidence that by March 28, 2000, a sample product was produced for Patent Owner demonstrating that the Rexam process was suitable for its intended purpose. The testimony establishes that the Rexam process was successful in injection molding a plastic product with a lenticular image that would be acceptable to the intended end user. Walker Decl. ¶ 11; Krause Decl. ¶ 7.” slip op. at 18
Patent outcomesUS 6,635,196 not shown unpatentable§ 102 anticipationPatents in suitUS 6,635,196 - ABB, Inc. v. Roy-G-Biv CorporationNo claims unpatentablePTAB · May 16, 2014 · IPR2013-00063 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1-5 were not shown unpatentable as obvious over Gertz, Stewart, and Morrow because the evidence did not establish the claimed component function and component code.
RulingsFinal written decision- BurdenNot shown unpatentable
“As discussed in the ’062 Decision, we give significant weight to the testimony of Patent Owner’s expert, Dr. Stewart, that actions in Gertz are not the same as the claimed component functions and that Gertz does not describe any code (i.e., the claimed component code) that associates component functions with driver functions, as claimed. ʼ062 Decision 22- 25. Petitioner does not provide sufficient evidence to rebut this testimony. Thus, as described below, we are not persuaded that Petitioner has established, by a preponderance of the evidence, that the combination of Gertz, Stewart, and Morrow renders claims 1-5 unpatentable under 35 U.S.C. § 103(a).” slip op. at 11
- Skill levelOther
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“1. “component function” The parties present the same opposing views on the construction of this term as those discussed in the ’062 Decision at page 14. See PO Resp. 19; Pet. Reply 8. For the reasons set forth in the ’062 Decision at pages 14- 15, we conclude that the broadest reasonable interpretation of the term “component function” requires an action carried out by a program or routine, regardless of whether the action is defined by executable code. This is consistent with the Specification of the ’058 patent, which explains that “[t]he application program 26 comprises a sequence of component functions arranged to define the motion control operations necessary to control a motion control device to move an object in a desired manner.” Ex. 1001, col. 7, ll. 54-58. 2. “component code” The parties have the same disagreement on the construction of this term as that discussed in the ’062 Decision at page 15. See PO Resp. 20; Pet. Reply 8. For the reasons discussed in the ’062 Decision at pages 15-16, we determine that the term “component code” requires program instructions. This is consistent with the Specification of the ’058 patent, which explains that “the software system designer writes component code that associates at least some of the component functions with at least some of the driver functions.” Ex. 1001, col. 7, ll. 17-20.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“IPR2013-00062. Petitioner relies on Gertz’s “actions” to meet this claim limitation. Pet. 26; Transcript 17:21-24. Patent Owner contends that Gertz’s “actions” are not component functions. PO Resp. 19, 27 (citing Stewart’s Declaration, Ex. 2013 ¶ 40). For the reasons set forth in the ’062 Decision, we agree with Patent Owner and determine that Petitioner has not persuasively explained why information regarding the arrangement of control tasks defines an “action carried out by a program or routine,” as required by a component function. ʼ062 Decision 23. Thus, Petitioner has not established, by a preponderance of the evidence, that Gertz teaches the claimed component functions.” slip op. at 12
Patent outcomesUS 6,513,058 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,513,058 - ABB Inc. v. Roy-G-Biv CorporationNo claims unpatentablePTAB · Apr 11, 2014 · IPR2013-00074 · APJ Thomas L Giannetti · IPR · Final written decision
The Board held claims 16-30 and 46-59 not shown unpatentable under the two §103 grounds because Gertz did not teach the claimed component function and component code.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner
“2. Discussion For the reasons discussed in the ’062 Decision, we determine that the testimony and documents offered by Patent Owner are not sufficient to establish that the invention date of claims 16-25, 27, and 28 is prior to the publication date of Gertz and Morrow. We conclude, therefore, that Patent Owner has not antedated Gertz and Morrow; therefore, these references are prior art under 35 U.S.C. § 102(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“component function” as those discussed in the ’062 Decision. See Ex. 2021, 36-37; Pet. Reply 9-10 (citing Ex. 1130 ¶¶ 39, 42-46); Transcript 41- 42. For the reasons set forth in the ’062 Decision, we conclude that the broadest reasonable interpretation of the term “component function” requires an action carried out by a program or routine, regardless of whether the action is defined by executable code. This is consistent with the specification of the ’557 patent, which explains that “[t]he application program 26 comprises a sequence of component functions arranged to define the motion control operations necessary to control a motion control device to move an object in a desired manner.” Ex. 1001, col. 9, ll. 15-19. slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed in the ’062 Decision, we give significant weight to the testimony of Patent Owner’s expert, Dr. Stewart, that actions in Gertz are not the same as the claimed component functions, and that Gertz does not describe any code (i.e., the claimed component code) that associates component functions with driver functions as claimed. Petitioner does not provide sufficient evidence to rebut this testimony. Thus, as described below, we are not persuaded that Petitioner has established, by a preponderance of the evidence, that the combination of Gertz, Stewart, and Morrow renders claims 16-25, 27, and 28 unpatentable under 35 U.S.C. § 103(a). Similar to Petitioner’s challenge to the patentability of claim 1 in IPR2013-00062/282, Petitioner’s challenge here relies on Gertz alone for the claimed component function and component code features. Pet. 30-31, 45, 51-52; Pet. Reply 12-13. Stewart and Morrow are relied upon for additional features of the claims. Because Petitioner’s challenge fails with respect to the component function and component code features of the claims, we do not need to address issues regarding Stewart and Morrow. Therefore, the discussion below focuses on Gertz.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“As discussed in the ’062 Decision, we give significant weight to the testimony of Patent Owner’s expert, Dr. Stewart, that actions in Gertz are not the same as the claimed component functions, and that Gertz does not describe any code (i.e., the claimed component code) that associates component functions with driver functions as claimed. Petitioner does not provide sufficient evidence to rebut this testimony. Thus, as described below, we are not persuaded that Petitioner has established, by a preponderance of the evidence, that the combination of Gertz, Stewart, and Morrow renders claims 16-25, 27, and 28 unpatentable under 35 U.S.C. § 103(a).” slip op. at 10
Patent outcomesUS 8,073,557 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,073,557 - ABB Inc. v. Roy-G-Biv CorporationNo claims unpatentablePTAB · Apr 11, 2014 · IPR2013-00062 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–10 were not proven unpatentable under the three §103 grounds because the cited art did not teach the claimed component function and component code.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We have reviewed Dr. Stewart’s testimony and supporting evidence, and the rebuttal evidence presented by Petitioner (discussed further below), and conclude that this testimony is persuasive insofar as it relates to deficiencies in the prior art relied on by Petitioner. Petitioner identifies the Gertz reference’s “actions” as component functions. Pet. 22; Transcript 15. However, as Dr. Stewart points out, these actions are represented by configuration files, which are groupings of control tasks within Chimera. Ex. 2011 ¶ 40. Similarly, Dr. Stewart testifies that the Gertz reference’s Onika only contains configuration information, and does not contain component code, as contended by Petitioner. Id. ¶ 44.” slip op. at 19
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“Corroboration evidence must be independent of the inventor. Independent corroboration may consist of testimony of a witness, other than the inventor, or it may consist of evidence of surrounding facts and circumstances, independent of information received from the inventor. Reese v. Hurst, 661 F.2d 1222, 1225 (CCPA 1981); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. Cir. 2006) (“The requirement of independent knowledge remains key to the corroboration inquiry.”). As Patent Owner recognizes, corroboration is determined under a “rule of reason” analysis. Price, 988 F.2d at 1195. “An evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor’s story may be reached.” Id. However, “[t]he rule of reason . . . does not dispense with the requirement for some evidence of independent corroboration.” Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“For purposes of this decision, we expressly construe only the terms “component function” and “component code,” as these terms are determinative. We, therefore, do not reach the dispute over “primitive operations.” See Transcript 37-38. Nor do we need to resolve the dispute over “function.” Transcript 41-46. At the oral hearing, Patent Owner agreed that its application of the prior art to the claims does not depend on which definition of the term “function” is applied, as discussed below. Transcript 37, 41-42. 1. “component function” The parties present opposing views on the construction of “component function.” Patent Owner proposes that the term “function” in “component function” requires code that can be executed within a program. Ex. 2018, 36-37. Petitioner argues that executable code is not required. Pet. Reply 9. Instead, Petitioner proposes that the term “function” includes “‘in-line’ functions, constructs in scripting languages, interpreted languages, and also visual programming constructs, regardless of how the program is stored or executed.” Id. at 10 (citing Ex. 1130 ¶¶ 39, 42-46). Neither party points to a special meaning in the patent specification. Patent Owner cites to the MICROSOFT COMPUTER DICTIONARY for the plain meaning of “function.” Transcript 41-42; Ex. 2018, 36 (citing Ex. 2016, 212).5 The MICROSOFT COMPUTER DICTIONARY provides two definitions for the term “function”: “1. The purpose of, or the action carried out by, a program or routine”; and “2. A general term for subroutine.” Ex 2016, 4. Neither definition requires executable code. However, the first, broader definition requires an “action carried out by[] a program or routine.” Thus, we conclude that the broadest reasonable interpretation of the term “component function” requires an action carried out by a program or routine, 5 Exhibit 2016 includes portions of the MICROSOFT COMPUTER DICTIONARY (3rd ed.), which was published in 1997. This is close enough in time to the May 30, 1995, effective filing date of the ’236 patent to provide guidance for the terms used in the ’236 patent.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“1. “component function” Petitioner relies on Gertz’s “actions” to meet this claim limitation. Pet. 22; Transcript 15. Patent Owner contends that Gertz’s “actions” are not component functions. PO Resp. 26 (citing Ex. 2011 ¶ 40). We agree with Patent Owner. Gertz’s “actions” are configuration files for use by a program or routine regarding the arrangement of control tasks. Ex. 2011 ¶ 40. They are not “actions carried out by a program or routine,” as required by our construction of “component function.” Dr. Stewart testifies that “configuration files . . . abstract a grouping of control tasks.” Id. The configuration files define how the control tasks (i.e., the control modules that actually carry out the activity) are arranged. Petitioner does not point to anything in Gertz, the testimony of Dr. Voyles, or the testimony of Dr. Papanikolopoulos to rebut Dr. Stewart’s testimony regarding the configuration files that form the actions in Gertz, or explain why the configuration files in Gertz define an “action carried out by a program or routine.” For these reasons, Petitioner has not explained persuasively why information regarding the arrangement of control tasks defines an “action carried out by a program or routine,” as required by a component function. Thus, Petitioner has not established, by a preponderance of the evidence, that Gertz teaches the claimed component functions. 2. “component code” Petitioner does not point to any specific element or feature disclosed in Gertz as teaching the claimed component code. Instead, Petitioner explains that “ordinary artisans would recognize . . . that the configuration files that [Gertz] creates comprise software code that binds various components together into a programming sequence (including Turing equivalents) that have been the basis of computer programming for over a century.” Pet. Reply 13 (citing Ex. 1030 ¶¶ 37-39, 42-46).6 We are not convinced that this argument is supported by the record. Dr. Voyles asserts that Gertz discloses the claimed component code because “the ‘visual programs’ created by Onika would be considered examples of both ‘computer code’ and ‘software code.’” Ex. 1130 ¶ 39. However, Dr. Voyles offers no explanation as to why the visual programs in Gertz are anything more than configuration files.7 Instead, Dr. Voyles asserts (without any evidentiary support) that one of ordinary skill in the art would see no distinction “between ‘software code’ and ‘downloaded configuration files.’” Id. ¶ 44. Patent Owner responds that Gertz’s configuration files do not connect the control tasks and configurations to actions using code. PO Resp. 28-29 (citing Ex. 2011 ¶ 44). We find this argument persuasive. We credit Dr. Stewart’s testimony explaining that “there is no ‘code’ in Onika relating ‘actions’ to ‘configurations’ and ‘control tasks’” because “Onika only 6 It appears that Petitioner’s citation should be to Exhibit 1130 rather than Exhibit 1030. 7 Neither the Petition nor the Reply relies on any testimony of Dr. Papanikolopoulos with respect to Gertz’s alleged teaching of component code. produces configuration information.” Ex. 2011 ¶ 44. Dr. Stewart testifies that configuration information is not software code. Id. We have determined that “code” requires program instructions. The MICROSOFT COMPUTER DICTIONARY defines “instruction” as “[a]n action statement in any computer language, most often in machine or assembly language.” Ex. 2016, 5. Petitioner cites Dr. Voyles’s opinion that the visual programs created in Onika are an example of code. Pet. Reply 13 (citing Ex. 1030 ¶¶ 37-39, 42-46).8 We are not persuaded by this testimony. Neither Petitioner nor Petitioner’s experts persuasively rebut Dr. Stewart’s testimony, or explain why the configuration information in Gertz includes any kind of “action statement in a computer language,” as required by our construction of component code. Petitioner points to nothing in Gertz that teaches or suggests that the claimed component code would have been obvious. See Transcript 59-60. In view of the testimony of Dr. Stewart, and based on our review of Gertz, we are not persuaded that the configuration information in Gertz includes an “action statement in a computer language.” Thus, Petitioner has not established, by a preponderance of the evidence, that Gertz teaches or suggests the claimed component code.” slip op. at 23
Patent outcomesUS 6,516,236 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,516,236 - ABB Inc. v. Roy-G-Biv CorporationNo claims unpatentablePTAB · Apr 11, 2014 · IPR2013-00286 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 16–30 and 46–59 were not shown unpatentable under the two § 103 grounds because the cited combinations did not teach the claimed component function and component code.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“C. Summary of Expert Testimony As in IPR2013-00062/282, three experts—Drs. Stewart, Voyles, and Papanikolopoulos—testified in this case. These declarations are similar to those submitted in IPR2013-00062/282, which are discussed in the ’062 Decision. As the issues raised here relative to the component function and component code limitations are the same, we rely on that analysis for the purposes of this decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“For purposes of this decision, we expressly construe only the terms “component function” and “component code” because these terms are determinative for the same reasons explained in the ’062 Decision. 1. “component function” The parties present the same opposing views on the construction of “component function” as those discussed in the ’062 Decision. See Ex. 2021, 36-37; Pet. Reply 9-10 (citing Ex. 1130 ¶¶ 39, 42-46); Transcript 41- 42. For the reasons set forth in the ’062 Decision, we conclude that the broadest reasonable interpretation of the term “component function” requires an action carried out by a program or routine, regardless of whether the action is defined by executable code. This is consistent with the specification of the ’557 patent, which explains that “[t]he application program 26 comprises a sequence of component functions arranged to define the motion control operations necessary to control a motion control device to move an object in a desired manner.” Ex. 1001, col. 9, ll. 15-19. 2. “component code” The parties have the same disagreement on the construction of “component code” as that discussed in the ’062 Decision. See Pet. Reply 9; PO Resp. 21. For the reasons discussed in the ’062 Decision, we determine that the term “component code” requires program instructions. This is consistent with the specification of the ’557 patent, which explains that “the software system designer writes component code that associates at least some of the component functions with at least some of the driver functions.” Ex. 1001, col. 8, ll. 45-48.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“As discussed in the ’062 Decision, we give significant weight to the testimony of Patent Owner’s expert, Dr. Stewart, that actions in Gertz are not the same as the claimed component functions, and that Gertz does not describe any code (i.e., the claimed component code) that associates component functions with driver functions as claimed. Petitioner does not provide sufficient evidence to rebut this testimony. Thus, as described below, we are not persuaded that Petitioner has established, by a preponderance of the evidence, that the combination of Gertz, Stewart, and Morrow renders claims 16-25, 27, and 28 unpatentable under 35 U.S.C. § 103(a). Similar to Petitioner’s challenge to the patentability of claim 1 in IPR2013-00062/282, Petitioner’s challenge here relies on Gertz alone for the claimed component function and component code features. Pet. 30-31, 45, 51-52; Pet. Reply 12-13. Stewart and Morrow are relied upon for additional features of the claims. Because Petitioner’s challenge fails with respect to the component function and component code features of the claims, we do not need to address issues regarding Stewart and Morrow. Therefore, the discussion below focuses on Gertz.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For the reasons set forth in the ’062 Decision, we agree with Patent Owner, and determine that Petitioner has not explained persuasively why information regarding the arrangement of control tasks defines an “action carried out by a program or routine,” as required by a component function. Thus, Petitioner has not established, by a preponderance of the evidence, that Gertz teaches the claimed component functions.” slip op. at 11
Patent outcomesUS 8,073,557 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,073,557
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.