• Unified Patents Inc. v. Qurio Holdings, Inc.Institution denied
  PTAB · Apr 4, 2016 · IPR2015-01991 · APJ Barbara A Benoit · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–5, 7–10, 12, and 14–18 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “A claim is unpatentable as obvious “if the differences between the claimed subject matter sought to be patented 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.” 35 U.S.C. § 103. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., No. 2015-1072, 2016 WL 798192, at *4 (Fed. Cir. March 1, 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”)). Thus, Petitioner must explain how the combination of Lambourne and Elabbady would have rendered the challenged claims unpatentable. For the reasons that follow, we determine that Petitioner has not done so.” slip op. at 8

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

    “claim limitations. Pet. 6–7; Prelim. Resp. 9–15. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 7

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

    “teachings of the references would have suggested to those having ordinary skill in the art.” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, it is axiomatic, that an asserted ground of obviousness must demonstrate articulated reasoning with rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Mere conclusory statements are not sufficient. Id. Furthermore, “[c]are must be taken to 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.’” Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Accordingly, the central issue before us is why one of ordinary skill in the art at the time the invention was made would have combined Elabbady’s media catalog with Lambourne’s system in the manner proposed by Petitioner and required by the claims: by storing Elabbady’s media catalog (the recited “media database”) on Lambourne’s controller (the recited “mobile device”). Petitioner provides insufficient analysis or evidence that one of ordinary skill in the art would have combined Elabbady’s media catalog with the controller of Lambourne.” slip op. at 16

  • Expert testimonyPetitioner expert discountedOther

    “generation techniques with Lambourne’s system does not provide sufficient reasoning for why the combination of Lambourne and Elabbady would have suggested to one of ordinary skill in the art placing Elabbady’s media catalog on the controller of Lambourne. For a purported reason to combine the references, Petitioner states “caching metadata for the music menu would reduce network congestion and improve performance and enhance the ability to remotely control multimedia, as advocated by Elabbady and Lambourne.” Pet. 11 (citing Ex. 1006, 1:44–53; Ex. 1005, 2:5–13; Ex. 1002 ¶ 45). Petitioner’s statement, which merely restates Dr. Weissman’s testimony, is conclusory. Ex. 1002 ¶ 45 (“Given the disclosure of Lambourne, one of ordinary skill would be motivated to include this feature, because caching metadata for the music menu would reduce network communication and therefore improve performance and enhance the ability to remotely control multimedia, as both Elabbady and Lambourne advocate. EX1006 at 1:44-52; EX1005 at 2:5–13.”). Neither Petitioner, nor its declarant, explains sufficiently how the benefits of caching the music menu would have conveyed to one of ordinary skill in the art the idea of storing the media 17 catalog/database on Lambourne’s controller. Thus, we accord Dr. Weissman’s testimony in this regard 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.”).” slip op. at 17

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,787,904
• 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.Institution denied
  PTAB · Dec 16, 2015 · IPR2015-01223 · APJ Barbara A Benoit · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of establishing claims 1–31 unpatentable under the asserted § 103 grounds.

  RulingsInstitution decision

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

    “for inter partes review of claims 1–31 of U.S. Patent No. 7,961,860 B1 (Ex. 1001, “the ’860 patent”). Paper 5 (“Pet.”). Patent Owner, Securus Technologies, Inc., filed a Preliminary Response. Paper 18 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that 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.”” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Patent Owner contends that an inter partes review should not be instituted because Petitioner failed to identify all real parties-in-interest. Prelim. Resp. 4–15. Patent Owner raised this argument, prior to the filing of” slip op. at 6

  • Additional discoveryAdditional discovery, deniedDecided for petitioner

    “instituted because Petitioner failed to identify all real parties-in-interest. Prelim. Resp. 4–15. Patent Owner raised this argument, prior to the filing of” slip op. at 6

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Under that standard, claim terms are presumed to be” slip op. at 5

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,961,860
• 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
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00824 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 19, and 20 are unpatentable over Spadaro and Hodge; claim 13 is unpatentable over Spadaro, Hodge, and Cree. Claims 2, 5, 8, 9, 11, 12, and 14–18 were …

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See id. (explaining petitioner “had the burden of 11 Dynamic Drinkware issued after the time of the trial hearing and post-hearing briefing. 11 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, 19–35.” slip op. at 11

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

    “production under § 103(c)(1), Petitioner contends it carried its burden of production to show that the ’167 patent (grandparent) sufficiently would have conveyed to one of ordinary skill in the art that the Patent Owner had possession of the claimed subject matter and, therefore, the ’260 patent is entitled to the benefit of the filing date of the ’167 patent. Reply 7. As Petitioner recognizes (Reply 6), a claim in an application is entitled, under 35 U.S.C. § 120, to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims in the later application, as required by 35 U.S.C. § 112. 35 U.S.C. § 120; In re Chu, 66 F.3d 292 (Fed. Cir. 1995). Petitioner’s argument consists of a single paragraph identifying claim numbers and locations where the ’167 patent purportedly describes the subject matter of most, but not all, of the claims at issue and a citation to a single paragraph in its declarant’s supplemental declaration supporting Petitioner’s Reply. Reply 7 (listing claims 2, 8, 9, 11, and 14–18, but not listing claims 5 and 12; citing Ex. 1020 ¶ 16).” slip op. at 21

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

    “The ’260 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 26 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 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 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8. Therefore, in light of the plain language of the claim, the Specification of the ’260 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 26

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. We consider the level of ordinary skill in the art to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The prior art references, like the ’260 patent, relate to telephone communication systems. See Ex. 1001, 1:60–62 (indicating the technical field relates to inmate management and call processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field of the invention relates to telephone communication systems). In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony15 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 15 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2112 (6th ed. 2003) (defining telephony as “[t]he transmission of speech to a distant point by means of electric signals”) (Ex. 3001). 30 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” slip op. at 30

  Patent outcomesUS 8,340,260 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,340,260
• 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 · IPR2013-00545 · APJ Barbara A Benoit · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving claims 1 and 2 unpatentable over Ryan and Alshawi.

  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

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable

    “secondary considerations evidence. Req. 5. This is incorrect. We considered the arguments and evidence presented in Patent Owner’s Response. Final Dec. 36–37. We concluded Patent Owner did “not provide sufficient analysis for us to determine whether Patent Owner has provided adequate evidence of secondary considerations and a nexus between any such evidence and the merits of the claimed invention.” Id. In its Request, Patent Owner seems to suggest that we should have reviewed and analyzed the entirety of each of three declarations submitted by Patent Owner in support of its secondary considerations contention (Exs. 2003, 2004, and 2005). Req. 5. This also is incorrect because, in its Patent Owner Response, Patent Owner merely cited each declaration in its entirety without citing with particularity portions of these declarations. PO Resp. 49 (citing “declarations by Brenda Battat (Ex. 2004) and Constance Phelps (Ex. 2005)” and “declaration of Paul Ludwick (Ex. 2003)”). We will not scour the 143 pages of declaration evidence submitted by Patent Owner and generally serve as an advocate for Patent Owner by finding evidence of secondary considerations in the voluminous exhibits submitted. Cf. DeSilva v DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”); Ernst Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d 110, 111–12 (2d Cir. 1999) (“Appellant’s Brief is at best an invitation to the court to scour the record, research any legal theory that comes to mind, and serve generally as an advocate for appellant. We decline the invitation.”). Testimony of Patent Owner’s Declarant” slip op. at 4

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

    “F.3d 1322 (Fed. Cir. 2012) in finding a motivation to combine Ryan1 and Alshawi2 and, therefore, erred in determining that the challenged claims would have been obvious. Req. 7–8 (citing Final Dec. 33). The Final Decision cited Mouttet for the proposition that a “determination of obviousness is not based on bodily incorporation of parts from one disclosed system into another, but what the combined teachings would have suggested to one with one of ordinary skill in the art.” Final Dec. 33 (citing Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Keller, 642 F.2d 412, 425 (CCPA 1981)). We disagree that we misapprehended Mouttet, which states: It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily 1 U.S. Patent No. 5,809,112 (Ex. 1004). 2 U.S. Patent No. 5,815,196 (Ex. 1010). incorporated into the structure of the primary reference....”). In re Mouttet, 686 F.3d at 1332. Thus, we are not persuaded that we misapprehended Mouttet. Nor did we “disregard[] Patent Owner’s counter-evidence that there would be disincentives for a [person of ordinary skill in the art] to combine Ryan and Alshawi,” “given that Alshawi’s features are incompatible with the TDD devices with which Ryan is used.” Req. 8. Rather, in finding a sufficient reason one of ordinary skill in the art would combine the references, we considered the reasons identified by the Petition, weighed the testimony of the respective declarants, and considered Patent Owner’s arguments. Final Dec. 32–35. Claim Construction” slip op. at 7

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

    “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. 8–9 (quoting Ex. 1001, 2:51–54, 6:21–24). 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. 8. 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 9 (citing Ex. 1001, 2:41–49 (“Summary of the Invention”)).” slip op. at 9

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,594,346
• Captioncall, LLC v. Ultratec, Inc.Rehearing denied
  PTAB · Dec 1, 2015 · IPR2013-00541 · APJ Barbara A Benoit · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving claims 1–15 unpatentable based on the prior final written decision.

  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 › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “Ryan1 did not qualify as prior art because it was not enabled (Paper 28, 16– 25 (“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. 23–28.” slip op. at 3

  • ExcludeDecided for petitioner

    “record will be treated as a sworn deposition taken in [the district court proceeding] at which both parties appeared and had the opportunity to question the witness.” Ex. 1062 ¶ 5 (Stipulation Regarding Seiichi Yamamoto). As explained in our Final Decision, we granted Petitioner’s motion to submit the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b) relating to the prior art status of Yamamoto and, after supplemental briefing by the parties, determined the Yamamoto transcript was admissible. Final Dec. 36–41.” 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. 10–12. 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. 8–9 (quoting Ex. 1001, 2:46–48 (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. 8–9 (quoting Ex. 1001, 2:46– 48, 5:44–47). 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. 9. 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 10 (citing Ex. 1001, 2:41–49 (“Summary of the Invention”)).” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,909,482
• The United States Postal Service (Usps) / The United States Of America, As Represented By The Postmaster General v. Return Mail, Inc.All claims unpatentable
  PTAB · Oct 15, 2015 · CBM2014-00116 · APJ Kevin F Turner · CBM · Final written decision

  Claims 39–44 are unpatentable under § 101 because they claim the abstract idea of relaying mailing address data without significantly more; anticipation by 1997 ACS was not shown.

  RulingsFinal written decision

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

    “II. ANALYSIS A. Claim Construction We construe all terms, whether or not expressly discussed here, using the broadest reasonable construction in light of the ’548 Patent specification. See 37 C.F.R. § 42.300(b); see also In re Cuozzo Speed Techs., LLC, 93 F.3d 1268, 1278–80 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). During the pre-trial stage of this proceeding, the parties submitted their constructions for specific claim terms and we adopted constructions consistent with the constructions adopted by the U.S. Court of Federal Claims (Ex. 1011). Dec. 8–10. Return Mail does not dispute the constructions adopted. PO Resp. 16–27. Upon review of the parties’ explanations and supporting evidence before us, we discern no reason to modify our claim constructions set forth in the Decision on Institution with respect to these claim terms. Dec. 8–10. For convenience, our claim constructions are reproduced in the table below:” slip op. at 6

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionIneligibleUnpatentable

    “USPS has shown, by a preponderance of the evidence, that claim 39, as a whole, is directed to the processing of returned mail items, involving decoding information, obtaining an updated address, and electronically transmitting that updated address to a transferee. USPS has shown that the steps are directed to the abstract idea of relaying mailing address data, with the inclusion of an electrical transmission step. Regarding whether claim 39 includes limitations that amount to significantly more than the abstract idea of relaying mailing address data, per our claim construction, USPS has shown that the “decoding” step is “deciphering information into useable form,” but that does not necessarily bring it out of the realm of processes performed in the past by human beings. In fact, all of the claimed steps could be performed in the human mind, with the exception of the transmitting step. Additionally, USPS has shown that what the data might be deemed to represent to the human mind — e.g., “information indicating whether the sender wants a corrected address to be provided for the intended recipient” — does not substantially affect the underlying structure or function of the claim or any machine on which it is carried out. Consistent with USPS’s position, the ’548 Patent disclosure does not describe any particular hardware to perform the steps recited in claim 39, but refers merely in broad terms to generic computer hardware and software.” slip op. at 14

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptIneligibleUnpatentable

    “significantly more than the abstract idea of relaying mailing address data, per our claim construction, USPS has shown that the “decoding” step is “deciphering information into useable form,” but that does not necessarily bring it out of the realm of processes performed in the past by human beings. In fact, all of the claimed steps could be performed in the human mind, with the exception of the transmitting step. Additionally, USPS has shown that what the data might be deemed to represent to the human mind — e.g., “information indicating whether the sender wants a corrected address to be provided for the intended recipient” — does not substantially affect the underlying structure or function of the claim or any machine on which it is carried out. Consistent with USPS’s position, the ’548 Patent disclosure does not describe any particular hardware to perform the steps recited in claim 39, but refers merely in broad terms to generic computer hardware and software.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “deciding between the proffered constructions of “[d]ecipher information into useable form” and “[c]onvert information into useable form,” the court concluded that “using the terms ‘decipher’ and ‘deciphered’ more closely follow the customary meaning of the terms and reflects the claim language. This is because decoding must operate on encoded data,” which is recognized in the term “decipher” but not in “convert.” Ex. 1011, 22–23. USPS contends that “the carrier converts into intelligible form the participant code and endorsement thereby performing the claimed ‘decoding.’” Pet. 45. However, we find no support within 1997 ACS that the carrier decodes or deciphers the participant code or endorsement because the carrier (a person) is merely reading those indicators. The indicator “ADRESS SERVICE REQUESTED” is merely read and there is no disclosure that the carrier decodes the participant code or the keyline. We disagree with Dr. Lubenow that the plain-English endorsements “meet the plain and ordinary meaning of the term ‘code.’” Ex. 1028 ¶ 18. As such, we are not persuaded that the carrier in 1997 ACS acts to decode encoded data on the returned mail items.” slip op. at 24

  Patent outcomesUS 6,826,548 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipationcites Alice · Mayo
  Patents in suitUS 6,826,548

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.