• Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00636 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–29 are unpatentable as obvious over the identified reference combinations; the contingent motion to amend substitute claims 30–43 is denied.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Accordingly, we accord Mr. Zatkovich’s testimony little weight. 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.”); Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (indicating the Board is entitled to weigh declaration testimony).” slip op. at 62

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “E. Level of Ordinary Skill In determining whether an invention would have been obvious at the” slip op. at 23

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

    “1. Terms Construed in Prior Proceedings Petitioner suggests that the terms “assisted user” and “hearing user,”” slip op. at 21

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

    “Engelke ’405, and Mukherji would have conveyed to one of ordinary skill in the art the limitations in claims 1–7 and 10–29, our inquiry continues because “[a] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. In other words, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 44

  Patent outcomesUS 8,917,822 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,917,822
• T. Rowe Price Investment Services, Inc. v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · CBM2015-00027 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1, 3, 5, 16, and 29–32 are unpatentable as anticipated by Houser; claims 2 and 4 are unpatentable as obvious over Houser and Yoshiura.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Contrary to Petitioner’s contentions, the proper inquiry is whether one is “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (holding “it is an abuse of discretion to permit a witness to testify as an expert on the issue[s] of . . . invalidity unless that witness is qualified as an expert in the pertinent art.”). The Federal Circuit continues by noting that being one of ordinary skill in the art would not “automatically entitle[] a witness to testify as an expert” as to invalidity issues, but the Federal Circuit clarifies that it does not “suggest[] that Rule 702 requires a witness to possess something more than ordinary skill in the art to testify as an expert.” Id. at 1363. Furthermore, 6 Dr. Katz’s declaration states that his curriculum vitae is included as Attachment A (Ex. 2008 ¶ 6), which is not correct. Petitioner also incorrectly states in its Motion that Dr. Katz’s declaration from IPR2014-00475 (Ex. 2007) was “submitted as Exhibit 1037 in this proceeding.” Mot. 4. Accordingly, for clarity and completeness of the record in this proceeding, we have entered Dr. Katz’s Declaration, filed as Exhibit 2007 (including its Attachment A) in IPR2014-00475, as Exhibit 3001 in the instant proceeding. 21 the Federal Circuit has upheld admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admitting that he was not a person of ordinary skill in the art. Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). In holding that, to testify as an expert under FRE 702, one must be qualified as an expert in the pertinent art, the Federal Circuit has not placed temporal restrictions, such as requiring an expert be qualified in the pertinent art at the time of the invention.” slip op. at 21

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

    “patent shall be given its broadest reasonable construction, in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b); see Versata Dev. Grp., 793 F.3d at 1328 (affirming use of broadest reasonable construction standard in a covered business method patent review); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015 (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, claim terms are presumed to be given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment 27 appearing in the written description should not be read into the claim if the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Furthermore, “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). We construe the terms below and discuss terms relative to prior art disclosures in accordance with these principles.” slip op. at 27

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

    “specifically, “a preferences file.”7 Challenged independent claims 1, 29, and 31 each recites “an authenticity stamp is retrieved from the preferences file,” and independent claim 32 similarly recites “retrieving an authenticity stamp from the preferences file.” Additionally, each of the challenged claims requires that the authentication key either be retrieved to locate a preferences file or to be able to locate a preferences file. The dependent claims do not recite additional features or functions for a file. Thus, the plain language of the claims requires a “file” to be able to store something that can be retrieved.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languagePlain and ordinary meaningDecided for petitioner

    “We decline to read limitations into a claim from these preferred embodiments described in the Specification when the claim language is broader than the embodiment. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d at 1184. Here, the claim language is broader than the preferred embodiments describing the location of the preferences file as obscured or not readily known and, therefore, should not be narrowed by embodiments in the ’191 patent. Furthermore, the ’191 patent does not set forth a special definition for that claim term with reasonable clarity, deliberateness, or precision that would impose a special meaning requiring the location of the preferences file be obscured or hidden. See In re Paulsen, 30 F.3d at 1480. Accordingly, neither the term “to locate a preferences file” in claims 1, 31, and 32, nor the term enabling “location of a preferences file” in claim 29, require the location of the preferences file be obscured or hidden. Nor does “enabl[ing] authentication of the authenticity key . . . to retrieve an” slip op. at 52

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,191
• Directv, LLC v. Qurio Holdings, Inc.Institution denied
  PTAB · Apr 4, 2016 · IPR2015-02006 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on both §103 grounds because the Petition failed to explain the prior-art differences, justify the combinations, and avoid hindsight.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “the differences between” the claimed subject matter and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The legal conclusion of obviousness is resolved on the basis of underlying factual determinations, including: (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). Here, the Petition fails to identify sufficiently the differences between independent claim 1 (and independent claim 17 as similarly recited) of the ’863 patent and the asserted prior art references, Taesombut, Ducharme, and Wijting. Pet. 31–39, 42. Rather than address these differences, the Petition creates a combination of Taesombut, Ducharme, and Wijting—based on six assertions to combine Taesombut, Ducharme, and Wijting. Id. at 31–39, 42. First, the Petition asserts that a person of ordinary skill in the art would have combined Ducharme and Taesombut “as a possible implementation of some of the techniques taught in Taesombut,” then would have applied Wijting’s cross-layer optimization techniques to the Taesombut and Ducharme combination “to improve the wireless delivery of video to clients over WLAN networks.” Id. at 31–32 (citing Decl. of Dr. Tal Lavian, Ex. 1005 ¶¶ 164–175). Second, the Petition asserts that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings with respect to this [preamble] limitation.” Id. at 33–34 (citing Ex. 1005 ¶¶ 185–198). Third, the Petition contends that “because Taesombut and Ducharme describe delivery of video data over a WLAN, one of skill would be motivated to apply Wijting’s cross-layer performance enhancing proxy to similarly improve delivery of video over wireless channels of varying quality.” Id. at 35 (citing Ex. 1005 ¶¶ 164–175). Fourth, the Petition argues that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings on this [Element 1B]10 limitation.” Id. at 36 (citing Ex. 1005 ¶¶ 199–217). Fifth, the Petition argues that “[i]t would be obvious to combine the EMMs of Ducharme with the DRM rules of Taesombut, as both are examples of rules or messages for processing digital rights or content permissions in the gateway to facilitate security.” Id. at 38 (citing Ex. 1005 ¶¶ 164–175). Sixth, the Petition contends that “Ducharme, Taesombut, and Wijting contain similar technical teachings which support the combination.” Id. at 39 (citing Ex. 1005 ¶¶ 164–175). As noted above, the Petition argues in conclusory fashion, that the combination of Taesombut, Ducharme, and Wijting meets each of the limitations of the claims. Id. at 31–39, 42. This analysis—which compares the challenged claims to the combination of Taesombut, Ducharme, and Wijting as well as the knowledge of one of ordinary skill in the art— obscures any comparison of the individual prior art references to the claim limitations. In particular, it does not explain with any particularity which claim limitations are absent from Taesombut, Ducharme, and Wijting. Id. at 33–39, 42. Therefore, the Petition fails to perform an adequate Graham analysis, as required for an obviousness determination. slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “the differences between” the claimed subject matter and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The legal conclusion of obviousness is resolved on the basis of underlying factual determinations, including: (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). Here, the Petition fails to identify sufficiently the differences between independent claim 1 (and independent claim 17 as similarly recited) of the ’863 patent and the asserted prior art references, Taesombut, Ducharme, and Wijting. Pet. 31–39, 42. Rather than address these differences, the Petition creates a combination of Taesombut, Ducharme, and Wijting—based on six assertions to combine Taesombut, Ducharme, and Wijting. Id. at 31–39, 42. First, the Petition asserts that a person of ordinary skill in the art would have combined Ducharme and Taesombut “as a possible implementation of some of the techniques taught in Taesombut,” then would have applied Wijting’s cross-layer optimization techniques to the Taesombut and Ducharme combination “to improve the wireless delivery of video to clients over WLAN networks.” Id. at 31–32 (citing Decl. of Dr. Tal Lavian, Ex. 1005 ¶¶ 164–175). Second, the Petition asserts that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings with respect to this [preamble] limitation.” Id. at 33–34 (citing Ex. 1005 ¶¶ 185–198). Third, the Petition contends that “because Taesombut and Ducharme describe delivery of video data over a WLAN, one of skill would be motivated to apply Wijting’s cross-layer performance enhancing proxy to similarly improve delivery of video over wireless channels of varying quality.” Id. at 35 (citing Ex. 1005 ¶¶ 164–175). Fourth, the Petition argues that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings on this [Element 1B]10 limitation.” Id. at 36 (citing Ex. 1005 ¶¶ 199–217). Fifth, the Petition argues that “[i]t would be obvious to combine the EMMs of Ducharme with the DRM rules of Taesombut, as both are examples of rules or messages for processing digital rights or content permissions in the gateway to facilitate security.” Id. at 38 (citing Ex. 1005 ¶¶ 164–175). Sixth, the Petition contends that “Ducharme, Taesombut, and Wijting contain similar technical teachings which support the combination.” Id. at 39 (citing Ex. 1005 ¶¶ 164–175). As noted above, the Petition argues in conclusory fashion, that the combination of Taesombut, Ducharme, and Wijting meets each of the limitations of the claims. Id. at 31–39, 42. This analysis—which compares the challenged claims to the combination of Taesombut, Ducharme, and Wijting as well as the knowledge of one of ordinary skill in the art— obscures any comparison of the individual prior art references to the claim limitations. In particular, it does not explain with any particularity which claim limitations are absent from Taesombut, Ducharme, and Wijting. Id. at 33–39, 42. Therefore, the Petition fails to perform an adequate Graham analysis, as required for an obviousness determination. slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “provide sufficiently articulated reasoning, with rational underpinning, to combine Taesombut, Ducharme, and Wijting to reach the invention recited in the challenged claims and, instead, is driven by conclusory reasons to combine the references and improper hindsight. As explained supra in Part II.B.1., Petitioner improperly makes six conclusory assertions when attempting to combine Taesombut, Ducharme, and Wijting. In addition, The Supreme Court has explained that an obviousness analysis should “determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. Similarly, the Federal Circuit has made clear that an obviousness determination “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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d at 988). An obviousness analysis, however, must “avoid hindsight reconstruction by using the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011). We find the six rationales to combine proffered in the Petition for the proposed modifications to be conclusory and superficial for the reasons explained supra in Part II.B.1. In all six of the aforementioned examples, the Petition notes, in conclusory fashion, that overlapping technical teachings is a reason to combine the references. Id. at 33–39. Yet the Petition does not provide a persuasive reason to combine Taesombut, Ducharme, and Wijting beyond overlapping technologies. These proposed modifications are supported by little to no reasoning to support a determination that it would have been obvious to combine the elements as proposed in the Petition.” slip op. at 12

  • BurdenDenied

    “The Petition’s practice of citing multiple pages of the Dr. Lavian Declaration to support conclusory statements and to expand its thin analysis violates our rules in two respects. First, this practice amounts to incorporation by reference—which is impermissible under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, slip op. at 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative). This incorporation by reference from the Declaration into the Petition “serves to circumvent the page limits imposed on petitions for inter partes review, while imposing on our time by asking us to sift through over 2[5]0 pages of Dr. [Lavian’s] Declaration . . . to locate the specific [relevant] arguments” and supporting evidence. Cisco Sys., Inc., IPR2014-00454, at 10 (Paper 12). We will not consider arguments and information that are not presented and developed in the Petition, and instead are incorporated by reference to the Dr. Lavian Declaration. Second, the Petition’s consistent citations to large portions of the Dr. Lavian Declaration runs afoul of the particularity and specificity required of supporting evidence under our governing statute and rules. See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). Further, the cited portions of Dr. Lavian’s Declaration relied upon by Petitioner to support its reasons to combine Taesombut, Ducharme, and Wijting provide the same conclusory reasons to combine Taesombut, Ducharme, and Wijting as the Petition. We, therefore, are not persuaded that Dr. Lavian’s testimony remedies Petitioner’s reasons to combine Taesombut, Ducharme, and Wijting because Dr. Lavian’s testimony relies on conclusory statements. 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.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”).” slip op. at 10

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,102,863
• Directv, LLC v. Qurio Holdings, Inc.Institution denied
  PTAB · Apr 4, 2016 · IPR2015-02007 · APJ Kerry Begley · IPR · Institution

  The Board denied institution on both §103 grounds because the petition lacked particularity and adequate support for its combinations and did not show a reasonable likelihood of proving any challenged claim obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing that any of the challenged claims of the ’567 patent are unpatentable. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • BurdenDenied

    “i. Non-Compliance with 35 U.S.C. § 312(a)(3) and 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5) Under 35 U.S.C. § 312(a)(3), a petition “may be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim” (emphases added). Our rules further address the showing required in a petition. In particular, 37 C.F.R. § 42.104(b)(4) provides that “[t]he petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon” (emphasis added), and 37 C.F.R. § 42.104(b)(5) adds that the Petition must “identify[] specific portions of the evidence that support the challenge” (emphasis added). Similarly, 37 C.F.R. § 42.22(a)(2) states that a petition “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence” (emphases added). For the reasons discussed below, we agree with Patent Owner that the Petition fails to comply with the requirements of 37 C.F.R. § 42.104(b)(4)–(5). See Prelim. Resp. 1. We also determine that the Petition does not meet the standards of 35 U.S.C. § 312(a)(3) and 37 C.F.R. § 42.22(a)(2).” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “combining O’Connor’s teachings with Taesombut, Ducharme, and Wijting or reasoning as to why one of ordinary skill in the art would have done so. See id. ¶¶ 197–199, 200–202. Thus, the Petition’s asserted reason to combine O’Connor’s teaching with Taesombut, Ducharme, and Wijting is merely attorney argument, devoid of evidentiary support, and is entitled to no weight. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence.”); Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). Accordingly, the Petition does not support adequately this alleged reason to combine O’Connor’s teachings distinguishing secure and non-secure memory with the other asserted prior art references. In addition, the Petition’s reasoning addresses only an alleged reason to combine O’Connor’s teachings with the other asserted prior art references—without addressing how a person of ordinary skill would have done so and whether such a person would had a reasonable expectation of success in arranging a secure and non-secure data cache in the manner recited in claim 1. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014) (“A party asserting that a patent is obvious must demonstrate . . . that a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.”) (internal citations and quotations omitted). In sum, the Petition does not present adequate reasoning, with rational underpinning, to support combining O’Connor’s teachings of secure and non-secure memory with the other asserted prior art references to reach the “secure data cache associated with the offload engine” and “a non-secure data cache” recited in independent claim 1.” slip op. at 19

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,879,567
• Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentable
  PTAB · Jan 21, 2016 · IPR2014-01282 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–36 are unpatentable as obvious under § 103 on the listed prior-art combinations; the motion to amend claims 15–20 is denied.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In the Decision to Institute, we construed “logic of a call processing system,” which is recited in claim 21. See Dec. to Inst. 8–10. During the course of the trial, neither party challenged our construction of this claim term. PO Resp. 5; Tr. 6:9–10. We see no reason to alter the construction as set forth in the Decision to Institute, and we incorporate our previous analysis for purposes of this decision. Therefore, for the reasons set forth in the Decision to Institute, we find the broadest reasonable construction of “logic of a call processing system” encompasses automated processes performed using logic elements and does not encompass processes performed solely by human action. All other claim terms are given their plain and ordinary meaning. B. Principles of Law To prevail in its challenges to the patentability of the claims, a” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “in the art relevant to the ’222 patent “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in telecommunications/information systems, or comparable industry experience.” Ex. 1004 ¶ 29. Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’222 patent (see generally PO Resp.) and Patent Owner’s declarant, Dr. Akl, uses the level of skill articulated by Dr. Forys (Ex. 2002 ¶ 33). Based on our review of the ’222 patent, the types of problems and solutions described in the ’222 patent and cited prior art, and the testimony of Petitioner’s declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “2. Analysis Petitioner contends the combined disclosure of Pattison, Anders, and Gainsboro, as summarized above, teaches or suggests each limitation of claims 2, 10, 11, 13, 19, 22–24, 27–30, and 36 of the ’222 patent. Pet. 35–45. Petitioner further contends that “[a] person of ordinary skill in the art would have been motivated to combine Pattison, Anders, and Gainsboro because both are in the same field (telephone communications and recording services) and address the same problem—control and management of those communications.” Pet. 35; see Ex. 1004 ¶ 84. Petitioner supports its position with the declaration of Dr. Forys, who testifies that a person of skill in the art would have combined the functions of Gainsboro with the monitoring and event detection systems of Pattison and Anders using known methods, thereby rendering the challenged claims obvious. Ex. 1004 ¶ 87.” slip op. at 25

  Patent outcomesUS 7,860,222 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,860,222
• Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentable
  PTAB · Jan 21, 2016 · IPR2014-01278 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–36 are unpatentable as obvious under the listed § 103 grounds; the motion to amend claims 15–20 is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “in the art relevant to the ’222 patent “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3-5 years of academic or industry experience in telecommunications/information systems, or comparable industry experience.” Ex. 1003 ¶ 19. Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’222 patent (see generally PO Resp.) and Patent Owner’s declarant, Dr. Akl uses the level of skill articulated by Dr. Kaza (Ex. 2002 ¶ 33). Based on our review of the ’222 patent, the types of problems and solutions described in the ’222 patent and cited prior art, and the testimony of Petitioner’s declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “10 Although Petitioner does not cite to specific portions of Dr. Kaza’s testimony Petitioner timely filed the Declaration of Dr. Kaza and lists it as a supporting exhibit. See Paper 4, 2; Ex. 1003. We have considered the testimony and have accorded it the appropriate weigh.” slip op. at 16

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In the Decision to Institute, we construed “logic of a call processing system,” which is recited in claim 21. See Dec. to Inst. 8–10. During the course of the trial, neither party challenged our construction of this claim term. PO Resp. 5; Tr. 6:9–10. We see no reason to alter the construction as set forth in the Decision to Institute, and we incorporate our previous analysis for purposes of this decision. Therefore, for the reasons set forth in the Decision to Institute, we find the broadest reasonable construction of “logic of a call processing system” encompasses automated processes performed using logic elements and does not encompass processes performed solely by human action. All other claim terms are given their plain and ordinary meaning. B. Principles of Law To prevail in its challenges to the patentability of the claims, a” slip op. at 8

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

    “We are not persuaded by Patent Owner’s arguments, because they fail (1) to explain the differences between Brown and Gainsboro, (2) to rebut satisfactorily Petitioner’s explanation of why a person of ordinary skill in the art would have combined the teachings of Brown and Gainsboro, and (3) to consider and rebut Petitioner’s arguments regarding the collective teachings of Brown and Gainsboro from the perspective of one of ordinary skill in the art. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). To the contrary, we agree with Dr. Kaza, and find the fact that Brown and Gainsboro are in the same field (telephone communications and recording services) and address the same problem–control and management of those communications (see Ex. 1003 ¶ 100), weighs in favor of finding that a person of ordinary skill in the art would “fit the teachings” of Brown and Gainsboro together to render the challenged claims obvious. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[T]he test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981))). Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art. Id.” slip op. at 25

  Patent outcomesUS 7,860,222 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,860,222
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00825 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 are unpatentable as obvious; the petition did not prove claims 2, 5, 8, 9, 11, 12, and 14–18 unpatentable.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “Applying these principles to the instant case, in an inter partes review, the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See Dynamic Drinkware, 800 F.3d at 1379. (explaining petitioner “had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 13–36.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “Even if we were to find that Petitioner’s citation to two pages of its declarant’s testimony, without explanation, does not amount to improper incorporation by reference, the testimony of Petitioner’s declarant, Leonard J. Forys, Ph.D., is insufficient to show one of ordinary skill in the art was in possession of the subject matter of the claims at issue. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). First, the testimony of Petitioner’s declarant, Dr. Forys, is conclusory, merely quoting some portions of the ’357 patent without adequately explaining how the quoted portions relate to the subject matter recited by the claims. 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.”). Moreover, during cross-examination Dr. Forys explained his analysis, “I just went through the ’167 patent and just picked a few things out that seem to indicate that they are already there. . . . So it was illustrative. It’s not a detailed analysis. It is just suggestive.” Ex. 2006, 48:1–7.” slip op. at 20

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

    “The ’357 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system of Claim 1 would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is 25 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8 (emphasis omitted). Therefore, in light of the plain language of the claim, the Specification of the ’357 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 25

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony14 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least three years of academic or industry experience in telephony systems.” slip op. at 29

  Patent outcomesUS 7,529,357 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,529,357
• Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentable
  PTAB · Dec 1, 2015 · IPR2014-00780 · APJ William V Saindon · IPR · Final written decision

  Claims 6 and 8 are unpatentable as obvious over Liebermann, Engelke ’405, and Mukherji.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded that the probative value of these Exhibits “is substantially outweighed by a danger” of needlessly presenting cumulative evidence, nor are we persuaded that they are untimely. Patent Owner fails to address the “substantially outweighed” aspect of the Rule. In addition, these Exhibits were presented in response to Patent Owner’s argument that the claims required a certain amount of speed; they tend to show that the prior art was sufficiently speedy. In view of the above, Patent Owner’s Motion to Exclude is denied.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “in this proceeding.” PO Resp. 6–8. Patent Owner alleges the relevant technology is “TRS [(Telephone Relay Systems)] for the deaf and HOH [(Hard of Hearing)].” Id. at 7. We have heard already Patent Owner’s arguments on this issue and ruled against it. See, e.g., CaptionCall, L.L.C., Case IPR2013-00549, Paper 71, 13–14 (upon review of Mr. Occhiogrosso’s qualifications, finding that “he is qualified to testify as to the level of ordinary skill in the art in this proceeding”); see also id. at 8–13 (also discussing the pertinent field and the qualifications for testifying in the pertinent art). As we found in IPR2013-00549: We determine the pertinent art to be telecommunications systems, because any communications technology would be pertinent art to the ’835 patent. While assistive technology may be more pertinent, and assistive technology for the deaf and hearing impaired, using voice-to-text relays, may be most pertinent, anything in the telecommunications technology field would be pertinent to the inventors when considering their problem. Id. at 11–12. This proceeding involves the same patent; the pertinent art is generally the same. Thus, we consider Mr. Occhiogrosso suitably qualified to testify as to the level of ordinary skill in the art, given his background, training, and experience. See Ex. 1010 ¶¶ 10–11 (testifying to experience in “call centers,” “speech recognition algorithms,” “relay services and assistive technologies,” and “captioning of meetings”); see also CaptionCall, L.L.C., Case IPR2013-00549, Paper 71, 8–14 (setting forth in detail why Mr. Occhiogrosso is qualified to testify).” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for petitioner

    “We have construed already several terms in the ’835 patent in a prior decision. CaptionCall, L.L.C., Case IPR2013-00549, Paper 7, 8–12 (PTAB Mar. 5, 2014) (Decision to Institute, discussing “assisted user,” “hearing user,” “directly between,” and the control limitation); id., Paper 71, 7–8 (Final Written Decision, discussing “assisted user,” “hearing user,” “directly between,” and “initiating”). Petitioner submits that those prior constructions should be applied to this proceeding. Pet. 11–13. Patent Owner does not contest our prior constructions. PO Resp. 8. For purposes of this decision, we adopt our prior constructions, which are reproduced below, for convenience. We also address a limitation in claim 8 requiring voice recognition. 1. “assisted user” The individual making use of the transcribed text, regardless of the individual’s actual hearing abilities.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languagePlain and ordinary meaningDecided for petitioner

    “Nothing in the ’835 patent, however, expresses an intention to limit the scope of “using voice recognition software” to only those uses where revoicing is used. It is well settled that claims generally should be construed broadly enough to encompass at least one preferred embodiment but need not be limited to any embodiment, even if there is only one embodiment, absent disclaimer. Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1581 (Fed. Cir. 1996) (claim interpretation that would exclude the inventor’s device is rarely the correct interpretation); Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (discussing cases wherein the court expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment). The claim language is plainly broader than the particular embodiment Patent Owner seeks to incorporate. We recognize that the ’835 patent describes an embodiment utilizing voice recognition for revoicing, but we are not apprised of any disclosure that so limits the claims. Likewise, there is nothing structurally present in the claims that would limit or imply that revoicing is used.” slip op. at 12

  Patent outcomesUS 6,603,835 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,603,835
• Captioncall, LLC v. Ultratec, Inc.Rehearing denied
  PTAB · Dec 1, 2015 · IPR2013-00540 · APJ Barbara A Benoit · IPR · Rehearing

  Denied Patent Owner’s request for rehearing of the Final Written Decision, which held claims 1 and 2 unpatentable, and denied its request for an expanded panel.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Patent Owner, as the party challenging the Final Decision, has the burden of showing the decision should be modified. Id.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Ryan1 did not qualify as prior art because it was not enabled (Paper 30, 15– 24 (“PO Resp.”)), we determined that Ryan was enabled prior to the date of invention of the challenged patent in 1997 and, therefore, qualified as prior art to the challenged claims. Final Dec. 18–23.” slip op. at 3

  • ExcludeDecided for petitioner

    “transcript is inadmissible because it does not satisfy the requirements that all testimony, other than uncompelled direct testimony, must be in the form of a deposition transcript, 37 C.F.R. § 42.53(a), and that the witness shall be sworn, 37 C.F.R. § 42.53(f)(1). Req. 7. Therefore, according to Patent Owner, the Yamamoto transcript was “not taken, sought, or filed in accordance with these regulations [and] is not admissible.” Id. (citing 37 C.F.R. § 42.61(a)). Rule 42.53, however, is titled “Taking Testimony” and applies only to testimony taken “during a testimony period set by the Board” for purposes of a particular review proceeding. 37 C.F.R. § 42.53(b); see also 37 C.F.R. § 42.53(c) (providing time limits set by the Board); id. § 42.53(d) (providing notice requirements). As stated in our Final Decision, Petitioner sought to admit the Yamamoto transcript as supplemental information, not as deposition testimony taken in this inter partes proceeding. Final Dec. 31. And based on the parties’ stipulation in district court, we treated the Yamamoto transcript as sworn deposition testimony taken in the district court. Id. at 33–35 (citing Ex. 1062 ¶ 5). Petitioner filed the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b), establishing that the Yamamoto transcript reasonably could not have been obtained earlier and that its consideration was in the interests of justice. Paper 63, 7–8. Therefore, Petitioner’s filing of the Yamamoto transcript complied with Board rules, and we properly relied on it in determining the public accessibility of Yamamoto. See Final Dec. 30– 35.” slip op. at 6

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

    “Specification’s disclosure of “voice pattern.” Req. 10–11. We disagree that our reliance on the Specification’s “Brief Summary of the Invention,” which indicates “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 7 (quoting Ex. 1021, 2:45-48 (emphasis added)). Rather, in our Final Decision, we contrasted the Specification’s use of “voice pattern of the call assistant” in its “Brief Summary of the Invention” with its use of “a voice recognition software package which is specifically trained to the voice of that particular call assistant” in the context of a particular embodiment of the invention shown in Figure 1. Final Dec. 7 (quoting Ex. 1021, 2:45–48, 5:45–48). Based on the evidence in the Specification (including the Specification’s disclosure of “a voice pattern”), we determined that the Specification did not indicate expressly that the voice recognition software is trained to the voice of only that particular call assistant or otherwise indicate that the voice recognition software is trained for the voice of only one call assistant. Final Dec. 7. We concluded that “we will not limit ‘trained to the voice of the call assistant’ to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant.” Id. at 8 (citing Ex. 1021, 2:41–49 (“Summary of the Invention”)).” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,233,314
• Captioncall, LLC v. Ultratec, Inc.Rehearing denied
  PTAB · Dec 1, 2015 · IPR2013-00550 · APJ William V Saindon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving the finding that claim 1 was anticipated by McLaughlin unchanged.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableDecided for petitioner

    “MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 n.5 (Fed. Cir. 2008), “for the proposition that anticipation can be based on combining characteristics of various distinct embodiments in a prior art reference.” Req. Reh’g 1 (citing to Final Dec. 20). Patent Owner’s argument mischaracterizes our Final Decision. We pointed to Net MoneyIn in support of our finding that McLaughlin “is describing options for a single system, not separate embodiments.” Final Dec. 20 (emphasis added). Further, Patent Owner overstates the importance of the word “embodiment”; the anticipation inquiry is whether there is “a single prior art disclosure of all elements of a claimed invention arranged as in the claim,” i.e., the word “embodiment” is not itself governing. Net MoneyIn, 545 F.3d at 1359. In this case, Patent Owner has attempted repeatedly to get around McLaughlin’s anticipating disclosure by arguing that the various features are in different “embodiments,” essentially because they are under separate headings. But Patent Owner fails to address convincingly Petitioner’s assertions, backed by convincing testimony, that these features are all part of the same single prior art disclosure and arranged as claimed. In our Final Decision, we reviewed the facts and found that Petitioner had established that all of the elements of the claim were found in a single system in McLaughlin. See generally Final Dec. 15–24.” slip op. at 3

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

    “Patent Owner next alleges that we “explained that a captioned telephone device is a single device that has the features in the body of the claim.” Req. Reh’g 2. Patent Owner mischaracterizes our Final Decision; we made no such statement or implication regarding a “single device.” Our Final Decision already explains why a construction including the phrase “single device” is not commensurate with the broadest reasonable interpretation. See Final Dec. 7–9 (setting forth our construction of the “captioned telephone device”). Specifically, we pointed out that the specification of the ’082 patent instructed one of ordinary skill in the art that “the captured telephone device displays text but need not output any audio signals,” or, in other words, there was no requirement for all features of the claims to be found in one housing or a “single device.” Final Dec. 9 (citing, e.g., an example in the ’082 specification where the speaker/microphone portion (telephone) was depicted as a separate device from the text display portion); Ex. 1021, 9:20–32, Figs. 4–6.” slip op. at 4

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “Written Decision “with less than a full panel.” Req. 11–13. Panel composition for an inter partes review is specified in 35 U.S.C. § 6(c), which states “[e]ach . . . inter partes review shall be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be designated by the Director.” The Director’s authority under 35 U.S.C. § 6 to designate panels has been delegated to the Chief Judge. See Patent Trial and Appeal Board Standard Operating Procedure 1 (Rev. 14) (May 8, 2015) (“PTAB SOP 1”). As acknowledged by Patent Owner (Req. 11–12), the Final Decision was decided by three administrative patent judges, who are members of the Board. See 35 U.S.C. § 6(a) (indicating that administrative patent judges, along with various members of the United States Patent and Trademark Office, constitute the Patent Trial and Appeal Board). The three administrative patent judges were designated by the Chief Judge according to PTAB SOP 1, titled “Assignment of Judges to Merits Panels, Interlocutory Panels, and Expanded Panels.” The Board, therefore, complied with the statutory requirements for panel composition. Accordingly, we did not issue the Final Decision with less than a “full panel,” as Patent Owner contends.” slip op. at 5

  Claim construction§ 102 anticipation
  Patents in suitUS 7,003,082

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.