• Guangdong Oppo Mobile Telecommunications Corp., Ltd. v. Nokia Solutions And Networks OYAll claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00632 · APJ Jason M Repko · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 10,701,588 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,701,588
• Microsoft Corporation v. Throughputer, Inc.All claims unpatentable
  PTAB · Sep 18, 2023 · IPR2022-00528 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 1–7 and 9–15 are unpatentable under § 103(a) over Chen and Agrawal, Chen, Agrawal, and Compton, or Chen, Agrawal, and Brent.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “field, and 2–3 years of practical computer programming or engineering experience, including experience designing or researching parallel processing systems.” Pet. 19 (citing Ex. 1003 ¶ 18). Petitioner adds that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. at 20. Patent Owner does not dispute or otherwise address the level of ordinary skill in the art. See generally PO Resp.; PO Sur-reply. We adopt Petitioner’s definition of the level of ordinary skill in the art and we apply it in our obviousness evaluations below. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’090 patent and the asserted prior art.” slip op. at 9

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

    “Petitioner submits that the term “an array of processor cores of configurable types” (independent claims 1 and 9) should be construed to mean “an indexed set of discrete, reconfigurable hardware elements for processing.” Pet. 20 (citing Ex. 1003 ¶¶ 62–66). Patent Owner does not comment on Petitioner’s proposed construction, or otherwise address claim construction. See generally PO Resp.; PO Sur-reply. We determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “Pet. 36 (emphasis added). And, relying on the declaration testimony of Dr. Chase, Petitioner asserts that one of ordinary skill in the art “would have been motivated to combine the mapping of tasks to regions (cores) of Chen with the scheduling quanta of Agrawal to realize the benefits of selecting and using an appropriate scheduling quantum length.” Id. at 36–37 (emphasis added) (citing Ex. 1003 ¶ 102; Ex. 1005, 2). In addition, relying on the declaration testimony of Dr. Chase, Petitioner asserts that one of ordinary skill in the art “would have been motivated to combine the mapping of tasks to regions (cores) of Chen with the scheduling quanta of Agrawal to realize the benefits of selecting and using an appropriate scheduling quantum length.” Pet. 36–37 (citing Ex. 1003 ¶ 102; Ex. 1005, 2). Also relying on the declaration testimony of Dr. Chase, Petitioner asserts that one of ordinary skill in the art “would have recognized that, like Chen, Agrawal is directed to a space-sharing system for scheduling tasks to hardware by means of its greedy task scheduler. Id. at 37 (citing Ex. 1003 ¶ 103; Ex. 1005, 3). Based on the fully developed trial record, Petitioner shows persuasively that Agrawal’s task scheduler schedules, i.e., selects, tasks for execution, and we credit Dr. Chase’s declaration testimony that one of ordinary skill in the art “would have been motivated to modify Chen’s method with Agrawal’s use of scheduling quanta for making favorable choices for space allocation across the array.” Id. (citing Ex. 1003 ¶ 103). Petitioner provides several persuasive reasons why one of ordinary skill in the art would have been motivated to combine Chen and Agrawal, with a reasonable expectation of success. See Pet. 26–31 (citing Ex. 1003 ¶¶ 96–102).11 Thus, Patent Owner’s arguments that the Petitioner relies on Chen, and Chen alone to address limitation [1.b] are unavailing.” slip op. at 21

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

    “Having reviewed all of Petitioner’s assertions regarding these limitations, as well as all supporting evidence, we determine on this complete record presented that Petitioner has persuasively shown that the combination of Chen and Agrawal teaches “‘selecting’ and ‘assigning’ more than one task at a time for execution during the ‘next’ core allocation period” (PO Resp. 1), as called for by limitations [1.b] and [1.c]. a) Conclusion for Claim 1 Petitioner has persuasively shown that the combination of Chen and Agrawal teaches all limitations of claim 1. Petitioner also has put forth persuasive reasons for combining these references. See Pet. 26–31 (citing Ex. 1003 ¶¶ 101–104). Thus, regarding claim 1, we determine that Petitioner has shown, by a preponderance of the evidence, that the claimed invention as a whole would have been obvious over the combination of Chen and Agrawal.” slip op. at 26

  Patent outcomesUS 9,424,090 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,424,090
• Microsoft Corporation v. Throughputer, Inc.All claims unpatentable
  PTAB · Sep 18, 2023 · IPR2022-00527 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 10, 13–15, 17–22, 24, 25, 27, 29, 32–34, and 37 are unpatentable under § 103(a) over Agrawal and Brent, with Feitelson added for claims 10, 13, 14, 19–22, 24, 25, 27, 29, 32, and …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “view what a person of ordinary skill in the art would have understood at the time of invention. Graham, 383 U.S. at 17. Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have had a Master’s degree in computer science, computer engineering, or a related field, and 2–3 years of practical computer programming or engineering experience, including experience designing or researching parallel processing systems.” Pet. 10–11 (citing Ex. 1003 ¶¶ 18–20). Petitioner adds that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. at 11. Patent Owner does not dispute or otherwise address the level of ordinary skill in the art. See generally PO Resp.; PO Sur-reply. We adopt Petitioner’s definition of the level of ordinary skill in the art and we apply it in our obviousness evaluations below. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’833 patent and the asserted prior art.” slip op. at 10

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

    “Petitioner asserts that “[a]ll claim terms should be construed according to the Phillips standard. Pet. 11. In addition, Petitioner submits that the term “instance” should be construed to mean “a program ‘task,’” and that in the case of the plural “instances,” “there is no requirement in the claims for the ‘instances’ to be instances of the same ‘task.’” Id. at 11–13 (citing Ex. 1003 ¶¶ 48–50). Patent Owner does not comment on Petitioner’s proposed construction, or otherwise address claim construction. See generally PO Resp.; PO Sur-reply. We determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “However, just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Here, Dr. Chase opines that [t]hese tradeoffs would have led [one of ordinary skill in the art] to select one scheme or the other (or both) for use in a given system depending on applicable processing demands and design constraints, and the competing advantages and disadvantages between A-GREEDY and instantaneous parallelism certainly would not have precluded use of the latter under appropriate conditions. Ex. 1032 ¶ 16. We find Dr. Chase’s opinion credible and supported by the record. For example, Agrawal teaches that it was well-known in the art at the time of the invention to use instantaneous parallelism in a two-level scheduler. Ex. 1004, 2. In addition, Dr. Chase points out that, for certain scenarios, “Agrawal specifically acknowledges that instantaneous parallelism feedback yields no wasted processor cycles for unit quanta, and explains that ‘[i]f the task scheduler can communicate with the job scheduler before every vector operation, then using instantaneous parallelism feedback works fine.’” Ex. 1032 ¶ 21 (citing Ex. 1004, 3). In contrast, we find Dr. Smith’s supporting declaration testimony that one of ordinary skill in the art would have been “actively discouraged” (see Ex. 2003 ¶ 57) to be predicated on the notion that Petitioner’s asserted grounds involved modifying Agrawal’s system to implement instantaneous parallelism feedback as a substitute for parallelism feedback based on A-GREEDY. However, as we explain above and below, Petitioner has persuasively shown that Agrawal discloses that instantaneous parallelism as a workable alternative, with certain tradeoffs, when compared against Agrawal’s A-GREEDY algorithm. Therefore, we find the record demonstrates persuasively that one of ordinary skill in the art would have been motivated to select instantaneous parallelism as the feedback mechanism to a job scheduler under certain operating conditions. Ex. 1004, 1–2; Ex. 1032 ¶¶ 14–15.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “improvements to the type of feedback used by a job scheduler, i.e., A- GREEDY, but nonetheless find that Agrawal teaches that it was well-known in the art at the time of the invention to use instantaneous parallelism in a two-level scheduler. See Pet. 15 (citing Ex. 1004, 2). For example, Agrawal identifies that “[v]arious researchers . . . ha[d] used the notion of instantaneous parallelism,[] the number of processors the job can effectively use at the current moment, as the parallelism feedback to the job scheduler.” Ex. 1004, 2. Agrawal also identifies that related work on adaptive task scheduling demonstrates that “instantaneous parallelism feedback is 4-competitive with respect to makespan for batched jobs with multiple phases, where the parallelism of the job remains constant during the phase and the phases are relatively long compared with the length of a scheduling quantum.” Id. at 8. Based on these disclosures, Dr. Chase testifies—and we agree—that “Agrawal repeatedly identifies instantaneous parallelism feedback as a suitable solution for some systems—particularly systems that run what I referred to as ‘long-task jobs.’” Ex. 1032 ¶ 14 (citing Ex. 1003 ¶¶ 56–57). Although Agrawal and Sen describe some drawbacks to using instantaneous parallelism, we credit Dr. Chase’s declaration testimony, which is consistent with the disclosure of Agrawal itself, that the use of instantaneous parallelism is still a workable alternative to the historical-based feedback used in Agrawal’s A-GREEDY algorithm. For example, Dr. Chase testifies that Agrawal undoubtedly advocates for A-GREEDY and describes some comparative advantages of A-GREEDY over instantaneous parallelism for some use cases, but as described further below, Agrawal never suggests that A-GREEDY always outperforms instantaneous parallelism, that A-GREEDY is the only acceptable solution for all systems, or that instantaneous parallelism would not have been known and obvious for [one of ordinary skill in the art] to use long before the ’833 [p]atent. Ex. 1032 ¶ 14; see, e.g., Ex. 1004, 3 (“[E]ven without up-to-date information on instantaneous parallelism, A-GREEDY operates nearly as efficiently.”), 7 (“If the task scheduler can communicate with the job scheduler before every vector operation, then using instantaneous parallelism as feedback works fine.”). In fact, Agrawal concludes, in light of Sen, that “it is not apparent which strategy is superior.” Ex. 1004, 8 (“These studies use different strategies for parallelism feedback, and all report better system performance with parallelism feedback than without, but it is not apparent which strategy is superior.”), 7 (“A-GREEDY-like adaptive strategy for parallelism feedback should outperform a strategy based on instantaneous parallelism.” (emphasis added)). Thus, Agrawal supports Dr. Chase’s testimony. Based on the evidence of record, we are not persuaded by Patent Owner’s contention that “Petitioner proposed a modification to Agrawal or suggested a ‘design choice’ based on Agrawal.” PO Sur-reply 22. Instead, as we explain above, we credit the declaration testimony of Dr. Chase who testifies that “it was not necessary to describe a modification to Agrawal’s system to use instantaneous parallelism feedback because it was already part of certain systems described in Agrawal.” Ex. 1032 ¶ 14. See In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.”); see also Merck & Co. Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that all the prior art’s disclosures must be considered in a § 103(a) inquiry).” slip op. at 23

  Patent outcomesUS 9,632,833 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,632,833
• Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentable
  PTAB · Sep 1, 2023 · IPR2022-00650 · APJ Brian D Range · IPR · Final written decision

  Claims 1–3, 5–8, 11–14, and 16 are unpatentable over the asserted anticipation and obviousness grounds.

  RulingsFinal written decision

  • Additional discoveryAdditional discovery, deniedDenied

    “To succeed, a motion to submit supplemental information pursuant to 37 C.F.R. § 42.123(b) must meet two requirements. First, the motion must show why the supplemental information reasonably could not have been obtained earlier. 37 C.F.R. § 42.123(b). Second, the motion must show that consideration of the supplemental information would be in the interest of justice. Id. As we explain below, Patent Owner’s motion fails to meet either requirement.” slip op. at 10

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

    “B. Patent Owner’s Objections to Petitioner’s Demonstrative Slides Patent Owner objects to a number of Petitioner’s demonstratives for oral argument because, for example, the demonstratives constitute evidence that Petitioner did not reference or discuss in a prior paper. See, e.g., Paper 29 passim. We have considered the objections. Demonstratives for oral argument, however, are not evidence. Paper 24, 2 (Order Setting Oral Argument); see also Consolidated Trial Practice Guide 84, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). We do not rely on demonstratives as evidence in our decision making; instead, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record. Because demonstratives do not affect our decision making, Patent Owner’s objections to the demonstratives likewise do not affect our decision making. We dismiss Patent Owner’s objections as moot.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennas used in RFID devices versus developing antennas used in RFID devices for inductive coupling). The specification of the ’304 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be used by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Id. Thus, we are not persuaded that the level of ordinary skill should be confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.9” slip op. at 18

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “F. Dr. van der Weide’s Testimony Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. PO Resp. 45–51. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. Id. at 45–46 (citing Ex. 2003 ¶ 96). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 45. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 25–27 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 19

  Patent outcomesUS 9,633,304 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,633,304
• Dji Europe B.V. v. Textron Innovations Inc.All claims unpatentable
  PTAB · Aug 1, 2023 · IPR2022-00453 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–7 and 9–18 are unpatentable as obvious over Duggan; the Board did not reach anticipation over Duggan or obviousness over Duggan and Pate.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner indicates that it does not necessarily agree with Petitioner’s proposed level of ordinary skill in the art, but states that “Patent Owner does not believe any differences would impact the conclusions in this inter partes review.” PO Resp. 5 (citing Ex. 2016 ¶¶ 32–36. Because there is no express dispute as to Petitioner’s suggested level of ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’395 patent and asserted prior art, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “It is well settled that limitations that do not use the word “means” create a rebuttable presumption that 35 U.S.C. § 112(6) does not apply. See Williamson, 792 F.3d at 1348 (Fed. Cir. 2015) (The Federal Circuit explaining that “the failure to use the word “means” also creates a rebuttable presumption—this time that § 112, para. 6 does not apply.”). We initially consider a plain reading of claims 1 and 14, which as Patent Owner points out, in addition to “controller,” includes specific “means for receiving” and “means for determining” limitations. Ex. 1001, 9:31–38, 11:5–12, see also Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (When construing claims, our “focus must begin and remain centered on the language of the claims themselves.”). Even a cursory review of the claims indicates that the claim drafter clearly understood how to craft a limitation in terms of mean-plus-function language, in that this convention was used for instance in limitations [1a] and [1b]. Id. The claim drafter made a conscious decision however, in limitation [1c], not to use the same convention, but to recite specifically “a controller.” Id. Given this explicit change of convention, we do not discern persuasive evidence in the claim language itself that suggests the drafter intended to use “controller” as simply a nonce word to signify a means-plus-function limitation. In fact, because the drafter expressly did not use “means for” language, it more likely reveals that the drafter did not intend to define “controller” as a means-plus-function limitation, but as a specific structural element of the claimed flight control system. Also, based on the antecedent basis of “a controller,” the claims subsequently recite “the controller.” Id. at 9:39–42. A reasonable reading of the claims is that “the controller” is not a nonce word, but references structure, namely a flight control computer, which physically receives signals and, based on those signals, actively controls other flight control devices on the aircraft. For instance, claim one recites “the controller also being configured to receive the command signals and the location signal.” Id. Claim 1 further recites the requirement that “the controller uses the command signals and location signal to operate the flight control devices to control the flight of the aircraft. Id. at 42–44. Indeed, the Microsoft Computer Dictionary defines “controller” as “[a] device that other devices rely on for access to a computer subsystem.” Ex. 3001, Microsoft Computer Dictionary, Microsoft Press, 2002. It may be, as Dr. Singhose points out, that a controller can be, technologically speaking, “electrical,” “mechanical,” “electromechanical,” “chemical,” or “biological,” but this does not mean that a person of ordinary skill in the art would not understand a “controller” as a structural article or physical device, i.e., a flight control computer, “to operate the flight control devices to control the flight of the aircraft” as called for in claims 1 and 14. See Samsung Elecs. Am., Inc. v. Prisua Eng'g Corp., 948 F.3d 1342, 1354 (Fed. Cir. 2020) (“The question whether the term ‘digital processing unit’ invokes section 112, paragraph 6, depends on whether persons skilled in the art would understand the claim language to refer to structure, assessed in light of the presumption that flows from the drafter's choice not to employ the word ‘means.’”).” slip op. at 15

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

    “Dr. Singhose testifies that, even if we accept Patent Owner’s argument that “waypoint speed” is not expressly commensurate with the “commanded value of a circle velocity . . . it would have at least been obvious for a [person of ordinary skill in the art] to use the ‘Waypoint Speed’ parameter to define the speed of the aircraft during the circular flight.” Ex. 1004 ¶ 112. Dr. Singhose reasons that “[t]he ‘Waypoint Speed’ is already used for controlling the speed of the aircraft, and as Table 1 of Duggan describes, those parameters (including the ‘Waypoint Speed’) are defined for various orbit patterns, including circle, racetrack, and ellipse.” Id. Dr. Singhose testifies, persuasively, that for an orbit pattern “commanding the aircraft using the ‘Waypoint Speed’ parameter would have been a simple use or combination of familiar elements according to known methods to yield predictable results.” Id. Dr. Singhose bases his testimony also on Duggan’s written description which explains that an operator can “[g]raphically edit the existing route on the mission situation display by adding a waypoint or orbit pattern.” Ex. 1005 ¶ 407. Relying on Duggan’s explanations, Dr. Singhose testifies further that in the VACS system, for either a waypoint or orbit pattern, the operator can “then ‘[p]rogram in a fixed heading, altitude, and speed using the control options provided in the route tab of the selection pane [of GUI display].’” Ex. 1004 ¶ 108 (quoting Ex. 1005 ¶ 411). Although it may not be uniquely satisfying when an expert such as Dr. Singhose contends that a prior art modification is predictable, in cases where the modification is not a great leap in technology or logic, predictability based on evidentiary underpinnings as it is here, still answers the question why. See KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”), see also B/E Aerospace, Inc. v. C&D Zodiac, Inc, 962 F.3d 1373, 1379 (Fed. Cir. 2020) (The Court affirming the Board where “[t]he prior art yields a predictable result, the ‘second recess,’ because a person of skill in the art would have applied a variation of the first recess and would have seen the benefit of doing so.”). Overall, when reasonably interpreting Duggan’s Table 1, there are sufficient reasons why a person of ordinary skill in the art would have known to use the commanded “Waypoint Speed” for a waypoint, and also for an aircraft conducting a loiter pattern centered around a waypoint acting as a loiter pattern center. See Ex. 1005, ¶ 188, Table 1. From a purely logical perspective, any in-flight function, autonomous, semi-autonomous, or manual or pre-programmed maneuver, an aircraft would require a “commanded” velocity or speed, otherwise the aircraft would simply not fly or alternatively disastrous consequences would result. Dr. Singhose explains that “[t]he’Waypoint Speed’ is already used for controlling the speed of the aircraft, and as Table 1 of Duggan describes, those parameters (including the “Waypoint Speed”) are defined for various orbit patterns, including circle, racetrack, and ellipse.” Ex. 1004 ¶ 112. Dr. Singhose testifies persuasively, that “commanding the aircraft using the ‘Waypoint Speed’ parameter would have been a simple use or combination of familiar elements according to known methods to yield predictable results.” Id. Dr. Singhose has provided sufficient reasoning supported by underlying evidence that a person of ordinary skill in the art would have understood Duggan’s “Waypoint Speed” as corresponding to the claimed “commanded value of a circle velocity,” and consequently that Duggan teaches, if not outright discloses, setting a speed, i.e. a velocity for an aircraft along a waypoint leg as well as a racetrack loiter program about an “orbit pattern center.” Ex. 1004 ¶¶ 108–112. Based on Dr. Singhose’s reasoning and the underlying evidence in Duggan on the record before us, Petitioner has shown sufficiently that the limitations of claim 2, and also of claim 17 which contains the same limitations, namely, “a commanded value of a circle velocity,” would have been obvious over Duggan. This is because we see no reason why Petitioner’s asserted modification, such as it is, is anything more than the predictable use of speed setting at a waypoint occurring in the context of an orbit center, and according to the established velocity function for controlling the speed of an aircraft.” slip op. at 43

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Ex. 1004 ¶ 108. Considering Table 1, Dr. Singhose further testifies that “[t]he list includes ‘Waypoint Speed,’ which corresponds to the claimed ‘commanded value of a circle velocity’ because the circular flightpath corresponds to a waypoint.” Id. Dr. Singhose does not, in our opinion, come to these conclusions without facts. Dr. Singhose points to additional evidence in Duggan for instance, that the disclosed VACS system performs various autonomous and semi-autonomous functions, and “[e]xamples of such functions include implementation of inertial trajectories, pre-programmed maneuvers such as racetrack loiter patterns.” Id. (quoting Ex. 1005 ¶ 64). Dr. Singhose further explains that as shown in Duggan’s annotated Figure 39, reproduced below with highlighting by the Board, the VACS architecture supports a mission control path including within the “programmed maneuver” at block 3942, sub-functions including “set speed” function. Id. ¶ 109. Duggan’s Figure 39 illustrates “potential control paths through a mission,” including manual programming of a maneuver having set vertical profile, set heading and set speed (highlighted yellow). Ex. 1005, Fig. 39. Dr. Singhose concludes that that Duggan’s disclosure for setting a speed for a loiter pattern, including a circular pattern, thus corresponds to the claimed “commanded value of a circle velocity.” Ex. 1004 ¶ 109. And based on Duggan’s disclosures, Dr. Singhose testifies persuasively that a person of ordinary skill in the art “would [have understood] that, to perform a pre-programmed maneuver (such as loiter pattern), Duggan’s VACS allows the operator to set a desired speed for the loiter/circle mode.” Id.” slip op. at 37

  Patent outcomesUS 8,078,395 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,078,395
• Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentable
  PTAB · Jul 6, 2023 · IPR2022-00417 · APJ Brian D Range · IPR · Final written decision

  Claims 1, 2, 4–8, 10–12, and 18 are unpatentable as obvious over Takeda-322.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The Specification of the ’250 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The Specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.5” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. PO Resp. 27–38 (citing Ex. 2003 ¶ 71). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 22–23 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed

    “appears in independent claims 1 and 18) should be construed as “a component in a booster antenna for coupling with a module antenna connected to an integrated circuit.” PO Resp. 15–16. We determine that it is unnecessary to construe this claim term for purposes of this Decision. See, e.g., Nidec Motor Corp., 868 F.3d at 1017 (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). As we explain herein, the preponderance of the evidence supports that Takeda-322 renders the recited “coupler coil” obvious even under Patent Owner’s proposed construction. See Section III(G)(2)(b), infra.” slip op. at 13

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

    “to the extent Takeda-322 does not expressly teach a single wire implementation, such an implementation would have been obvious because it was a known, conventional, technique and because it would lead to obvious and predictable results while avoiding drawbacks of multiple wires. Id. at 11–12 (citing Ex. 1003 ¶¶ 59–63; Ex. 1012, 3:54–60, 4:26–36, 5:35– 60 (Ayala suggesting use of single wire)). Petitioner further argues, with supporting evidence, that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving this implementation. Id. The preponderance of the evidence supports Petitioner’s argument that a person of ordinary skill in the art would have had both reason and a reasonable expectation of success in achieving this implementation, and Patent Owner does not dispute the argument. We, thus, determine that a single-wire embodiment of Takeda-322 would have been obvious.” slip op. at 26

  Patent outcomesUS 9,033,250 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,033,250
• Amazon.Com, Inc. / Amazon Web Services, Inc. v. Swarm Technology LLCAll claims unpatentable
  PTAB · Jun 20, 2023 · IPR2022-00283 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–12 are unpatentable over the stated §103 grounds; substitute claims 13 and 14 are denied because they add new matter and are patent ineligible under §101.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 10

  • BurdenUnpatentable

    “IV. CONCLUSION33 For the foregoing reasons, we conclude that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of claims 1–12 of the ’004 patent. Specifically, Petitioner has demonstrated by a preponderance of the evidence that (1) claim 1 would have been obvious under 35 U.S.C. § 103(a) in light of Lurie; (2) claims 2, 3, and 6–11 would 32 Patent Owner also addresses Petitioner’s argument based on the “[b]ag-of-[t]asks.” MTA Reply 11–12. Because we do not rely on Petitioner’s arguments relating to the bag of tasks, Patent Owner’s counter-arguments are moot. 33 Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2). Specification; (3) claims 4 and 5 would have been obvious under 35 U.S.C. § 103(a) in light of Lurie, Ethernet Specification, and Sander; and (4) claim 12 would have been obvious under 35 U.S.C. § 103(a) in light of Lurie, Ethernet Specification, and Chow. Additionally, we deny Patent Owner’s Contingent Motion to Amend because proposed substitute claims 13 and 14 recite new matter and are not patent eligible under 35 U.S.C. § 101.” slip op. at 103

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

    “Accordingly, Petitioner sufficiently shows that, under its first theory,” slip op. at 28

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

    “11 There is no dispute that Lurie teaches a processing system. Accordingly, we need not decide whether the preamble is limiting. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 24

  Patent outcomesUS 9,852,004 unpatentable
  Claim construction§ 103 obviousnesscites Mayo · Bilski · Berkheimer · Phillips · KSR · Graham
  Patents in suitUS 9,852,004
• Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentable
  PTAB · Jun 12, 2023 · IPR2022-00235 · APJ Stacey G White · IPR · Final written decision

  Claims 1–7 are unpatentable: claims 1–7 over Takeda-322 under §§ 102 and 103, claims 1–6 over Murayama under § 102, and claim 7 over Murayama under §§ 102 and 103.

  RulingsFinal written decision

  • Adverse judgmentDecided for patent owner

    “Under the circumstances of this case, we do not agree that adverse judgment with respect to the disclaimed claims is appropriate. Our Rules, provide that a party may request judgment against itself. 37 C.F.R. § 42.73(b). Here, Patent Owner is not requesting adverse judgment against itself. While it is true that 37 C.F.R. § 42.73(b) provides that “[a]ctions construed to be a request for adverse judgment include . . . (2) [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (emphasis added), we decline to construe Patent Owner’s statutory disclaimer as a request for adverse judgment in this proceeding because Patent Owner does not disclaim all challenged claims and the majority of the challenged claims remain in this trial.” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). Petitioner points out that “the claims are not limited to a [Booster Antenna (BA)] operating at any particular frequency range.” Reply 25. In addition, Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” Pet. 87.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony of Petitioner’s declarant, Dr. van der Weide, because he “he lacks relevant experience, his testimony runs counter to fundamental principles of the RFID technology disclosed in the ’932 patent, and his testimony evidences a lack of candor.” PO Resp. 46. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent 7 We further note that our final determination, on the merits, would be the same even under Patent Owner’s definition of the level of ordinary skill in the art. Owner’s articulation of the level of ordinary skill in the art. Reply 25–27. Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11

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

    “Petitioner asserts that “[n]o claim term requires an exact outer boundary construction, because the prior art relied upon herein meets the claim terms under any reasonable interpretation.” Pet. 9. Patent Owner proposes constructions for the claim terms “booster antenna,” “card antenna component,” “coupler coil component,” and “extension antenna component.” PO Resp. 25–45. According to Patent Owner, Petitioner also has proposed its own constructions for these terms, despite stating that no claim term requires construction. Id. at 25–26. We address “booster antenna” and “extension antenna” below.8 It is unnecessary to construe “card antenna component” or “coupler coil component” in this Decision 8 Patent Owner also argues that Petitioner belated construes “card body” in Petitioner’s Reply. Sur-Reply 16–18. We do not construe “card body” because this construction is not necessary to resolve this matter. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). because none of the parties’ disputes turn on the meaning of either term. See, e.g., Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 13

  Patent outcomesUS 9,195,932 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,195,932
• PNC Bank, N.A. v. United Services Automobile AssociationAll claims unpatentable
  PTAB · Jun 9, 2023 · IPR2022-00075 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious under §103 over the listed combinations of prior art.

  RulingsFinal written decision

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

    “consumer digital camera” and to “specifically exclude specialized equipment as may be purchased by a business or other commercial enterprise, for example, for the specialized purpose of high-speed, high-volume check deposits.” PO Resp. 12–13. Petitioner contends that Patent Owner attempts to construe the claim to suggest that a person of ordinary skill would not have been able to deposit checks successfully using images captured from a mobile phone. Reply 3. Petitioner emphasizes that any such technical difficulties are irrelevant because the claims do not address them, i.e., none of the claims describes specific algorithms or image resolution requirements for any kind of customer device. Id. at 3–4. Claim 1 recites a system comprising a processor and a memory. Ex. 1001, 14:9– 12. The memory stores processor-executable instructions. Id. at 14:12. The stored instructions cause the processor to perform OCR on a check image captured by a camera to determine the routing number of the check. Ex. 1001 14:12–17. Claim 1 is directed to the system and does not recite any specific limitations on the camera. Patent Owner’s claim construction proposal exclude from “camera” specialized equipment and is limited to consumer digital cameras. PO Resp. 12–13 (citing Ex. 3:66–4:6; Ex. 2017, Transcript of Deposition of Dr. Brian Noble of Sept. 23, 2022 (“Noble Depo. Tr.”) 110:8–13). The subject matter of the ’136 patent at column 3, line 66 through column 4, line 6 concerns the meaning of “general purpose computer” as “excluding specialized equipment purchased [ ] by a business,” and distinguishes “equipment as embodiments of the invention that “operate in conjunction with electronics that today’s consumers might actually own or can easily acquire, such as a general purpose computer, a scanner, and a digital camera.” Ex. 1001 4:2–6. The ’136 patent describes an “image capture device” as a scanner or digital camera. See Ex. 1001, 4:61–5:5. Exemplary claim 1 recites a system in which a processor executes instructions to receive account information, an indication of the amount of the check, and an image of the check captured by a camera. Id. at 14:9–15. Claim 1 also recites performing OCR on the check image to determine the routing number, validating the routing number of the check image, and initiating a check deposit. Id. at 14:15–19. Claim 1 does not recite limit the camera to any particular grade or resolution and does not limit the camera to any particular type of camera device. Consistent with the Decision to Institute, for purposes of this Decision, we apply the plain and ordinary meaning to the term “camera” and do not read into the claim a limitation on the type of camera. slip op. at 8

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

    “(claim 14) to mean “the amount of the check, the routing number of the payor bank, and the account number into which the check is deposited.” PO Resp. 13. Patent Owner notes that “deposit information” does not include the date of the check. Id. at 16. The Specification does not explicitly define “deposit information.” The Specification’s sole use of the term “deposit information” is in the context of OCR and does not mention the amount of the check. See Ex. 1001, 9:46–53 (comparing embodiments in which OCR is conducted in real time “to validate some initial deposit information immediately” to filter transactions subject to error if OCR is Specification states that upon receipt of check images, the OCR process may be invoked to determine “information about the check.” Ex. 1001, 9:37–39, see also id. at 9:39–42 (“OCR may be performed on the check’s MICR line location 305 to determine information such as payor bank routing number, account number, and check number.”). Petitioner does not comment on Patent Owner’s proposed construction. We agree with the parties that “deposit information” includes at least the payor bank routing number, the account number into which the funds are to be deposited and the amount of the check. As the amount of the check need not be the subject of OCR, all parties agree that not all deposit information is obtained using OCR. We do not perceive any need to further construe this term. C. Initiate a check deposit for the check image/system for deposit a check Patent Owner notes that “[t]he district court construed [these] terms as requiring ‘a transaction involving provision of a check to a depository in a form sufficient to allow money to be credited to an account.’” PO Resp. 16 (citing Ex. 2019, 20). Patent Owner notes that this same construction is applied in the Petition. Id. (citing Pet. 42). We do not perceive a need to construe this term.” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In construing the term “signature identification procedure,” the court states that word “mark” is broader than the word “signature” and the use of the word “further” indicates that determining the presence of a signature is a type of signature identification procedure. Ex. 2019, 15–17. As the word “mark” is broader than the word “signature” an endorsement in the form of a “signature” is a type of “mark.” Construing the claim to exclude marks that happen to be signatures would render the claim inoperative, as many checks, especially those photographed by consumers with cameras, are endorsed with the payee’s signature. Determining the presence of a mark, does not simply means that once a mark of some kind is determined to be present, no further procedure is performed to determine whether that mark is a signature. The claim language before us positively recites “determining that a mark is present at an endorsement location on the back side of the check.” As the claim does not limit how the presence of the mark is determined, the presence of the mark can be determined by any suitable means or procedure. The claim recites that the determination is made “without further performing a signature identification procedure.” Applying the district court’s construction, we construe the language of the claim before us to mean that the presence of mark is determined by any suitable means without further performing a procedure (1) to determine the presence of a signature on the check or (2) to determine that a signature on the check matches a particular known signature.” slip op. at 11

  • Skill levelOther

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Except in limited circumstances not present here, the burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).” slip op. at 12

  Patent outcomesUS 9,224,136 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,224,136
• Dji Europe B.V. v. Textron Innovations Inc.All claims unpatentable
  PTAB · May 31, 2023 · IPR2022-00162 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1–7, 10, and 12 are unpatentable: Harding anticipates and renders claims 1–7 and 12 obvious; the listed combinations render claims 3, 4, 10, and 12 obvious.

  RulingsFinal written decision

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

    “1. “detent position” In its Petition, DJI argued that the claim term “detent position,” as recited in independent claim 1 of the ’752 patent, should be construed to mean “zero-force position.” Pet. 9. In its Patent Owner Response, Textron cited documentation from the parallel district court case that the parties “agree to construe ‘detent position’ to have its plain and ordinary meaning,” and stated that “there is no dispute between the parties as to the meaning of the term and . . . no explicit construction is necessary.” PO Resp. 8–9 (citing Ex. 2016, 5). Based on the fully developed trial record, there is no readily discernible controversy between the parties that requires us to construe this claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “Based on the fully developed trial record, we agree with DJI that the claim phrase “engaging . . . when both the longitudinal controller and the lateral controller are released” should not be limited to controllers on two separate control sticks. That is, we adopt the plain and ordinary meaning for the phrase “when both the longitudinal controller and the lateral controller are released” and construe this term as encompassing either single control stick or multi-stick control configurations. We begin with a review of the specification of the ’752 patent. See Phillips, 415 F.3d at 1315 (stating that “the specification is ‘the single best guide to the meaning of a disputed term’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The “single stick” aspect of our construction finds support in the specification, which consistently reinforces that the lateral and longitudinal controllers may be embodied by a single control stick. Ex. 1001, 2:55–61, 3:18–29, 5:21–27, 8:27–30, 8:49–57, 9:6–10, 10:44–47. As two examples, the specification refers to when the “pilot moves the control stick,” and in another, the specification references where, “[i]n the preferred embodiment, the first 0.1– 0.2 inch of aircraft stick movement is used to determine whether the stick is in the detent position.” Ex. 1001, 8:49–57, 10:44–47 (emphases added). Textron does not identify explicitly, nor could we find a single instance, where the specification of the ’752 patent references using two control sticks. Furthermore, we agree with DJI that the word “both” recited in dependent claims 6 and 7 does not require two separate control sticks, but rather refers to releasing both the longitudinal and lateral controllers. The crux of Textron’s argument appears to be that, because dependent claims 6 and 7, unlike independent claim 1, require releasing both the longitudinal and lateral controllers to activate a state, they cannot be embodied by a single stick, stating “if the controllers were not separate, how could they be independently released?” PO Resp. 10. Textron’s argument, however, conflates “controllers” and “sticks.” As we discuss above, the specification of the ’752 patent repeatedly teaches having both the longitudinal and lateral controllers be actuated by a single control stick. Textron does not support its argument with evidence from the specification, nor does it support its position that, when dependent claim 6 and 7 refer to “the longitudinal controller” and “the lateral controller,” they are referring to the separate control sticks to actuate these two different controllers. Instead, dependent claims 6 and 7 are agnostic as to whether the longitudinal and lateral controllers are set up to actuate on a single control stick or on multiple control sticks. In summary, we accord the claim phrase “engaging . . . when both the” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 11–12 (citing Ex. 1002 ¶¶ 61–62). In its Patent Owner Response, Textron agrees with the level of skill in the art as proposed by DJI, arguing the following: a person of ordinary skill in the art . . . at the time of the invention of the ’752 Patent would have been someone with at least the equivalent of a Bachelor’s degree in mechanical engineering, aerospace engineering, electrical engineering, robotics or similar discipline covering principles of the design or operation of flight controls for helicopters, drones, or other rotary aircraft, as well as one year of experience working on the design, development, implementation, or operation of such technologies. [Textron] also agrees that significant experience could substitute for formal education, and significant education could substitute for work experience. PO. Resp. 4–5. Based on the fully developed record, the level of ordinary skill in the art is not disputed and is consistent with our review of the technology and descriptions in the ’752 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”). For purposes of this Final Written decision, we adopt DJI’s proposed level skill in the art and apply it in our anticipation/obviousness analysis below.” slip op. at 18

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

    “h. Summary In summary, we have reviewed DJI’s arguments and supporting evidence as to how the teachings of Harding account for all the limitations of independent claim 1, and we agree with and adopt DJI’s analysis. See Pet. 16–28. Accordingly, DJI has demonstrated by a preponderance of the evidence that the subject matter of claim 1 is anticipated by and would have been obvious over the teachings of Harding. 5. Claims 2–5 and 12 DJI also contends that dependent claims 2–5 and 12 of the ’752 patent are unpatentable under §§ 102(b) or 103(a) as anticipated by or rendered obvious over the teachings of Harding. Pet. 28–38. DJI explains how the teachings of Harding account for the subject matter of each dependent claim, and provides reasoning as to why a person of ordinary skill in the art would have been prompted to modify the teachings of this reference. Id. During trial, Textron does not address separately DJI’s arguments and supporting evidence as to how the teachings of Harding account for the additional limitations of dependent claims 2–5 and 12. See PO Resp. 10–32. As one example, claim 2 directly depends from independent claim 1, and further recites “maneuvering the rotary aircraft within the first envelope with a translational rate command, the translational rate command being adapted to control longitudinal flight of the rotary aircraft with movement of the longitudinal controller and lateral flight of the rotary aircraft with movement of the lateral controller.” Ex. 1001, 11:47–53. DJI contends that Harding teaches this limitation because it discloses a translational rate command where ground speed follows the cyclic stick, and that while in TRC, longitudinal movement of the cyclic stick controls longitudinal ground speed and lateral movement of the cyclic stick controls lateral ground speed. Pet. 28–30. DJI cites Harding’s Figure 6, reproduced below.” slip op. at 31

  Patent outcomesUS 9,162,752 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,162,752

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