- Qualcomm Incorporated v. Bandspeed, Inc.Some claims unpatentablePTAB · Aug 23, 2017 · IPR2016-00623 · APJ James B Arpin · IPR · Final written decision
Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyOther
“of a “clear” channel is “a channel that is not already in use by a non-frequency hopping communications system” and that the broadest reasonable interpretation of an “occupied” channel is “a channel that already is in use by a non-frequency hopping communications system.”” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art. slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Id. Thus, Petitioner argues that, because multiple tests must be applied to determine the continued presence of interference regardless of the source, limiting “occupied” to NFH communications systems is overly narrow. Nevertheless, the words chosen by the patentee to describe its invention have significance. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not the PTO’s.”). As noted above, “occupied” is only used in the Specification with respect to NFH communications systems, and neither claims 4 and 19 nor their base claims nor the intervening claims specify a single or multiple tests. Therefore, we find Petitioner’s arguments, which attempt to incorporate the teachings of “bad” and “good” channels from elsewhere in the Specification into the interpretation of these claim limitations, unpersuasive. See Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (“[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. Other Claim Terms For purposes of this Decision, we discern no other claim terms that require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting to allow us to construe the terms “occupied” and “clear,” we relied less on Dr. Ding’s testimony regarding how a person of ordinary skill in the art would understand these terms. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”). Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see PO Resp. 7.” slip op. at 21
Patent outcomesUS 8,873,500 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,873,500 - Qualcomm IncorporatedSome claims unpatentablePTAB · Aug 23, 2017 · IPR2016-00620 · APJ James B Arpin · IPR · Final written decision
Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“F. Assessment of Person of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the relevant art “would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “hopping sequence” (Claims 1, 14, 16, and 29 and others) In the institution decisions, we determined that, in light of the Specification of the ’500 patent, the broadest reasonable interpretation of the phrase “hopping sequence” is “the order in which the communications network hops among the set of frequencies.” E.g., 620 Dec. on Inst. 10–11 (citing 620 Pet. 11–12). Patent Owner does not contest this construction. PO Resp. 6–7. For the reasons set forth in the Decision on Institution in Case IPR2016-00620, we remain persuaded that Petitioner’s proposed construction is the broadest reasonable interpretation of the phrase “hopping sequence.”” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner also provides a persuasive rationale for combining the teachings of Dabak and Kockmann. Id. at 39–40. Petitioner asserts that they are both references directed to the same problem, namely, “to communication performance improvements through adapted frequency hopping to avoid channels disturbed by interference.” Id. at 40 (citing Dabak, Abstract; Kockmann, 2:49–3:20; 620 Ex. 1002 ¶ 113). In addition, according to Petitioner, a person of ordinary skill in the art would have had reason to modify the teachings of Dabak regarding the MSD technique in view of the teachings of Kockmann “to utilize multiple channels to communicate with the slave device over the subset of communication channels according to an adapted hopping sequence” in order to accomplish the shared goals of these references. Id. at 40 (citing 620 Ex. 1002 ¶ 113); see In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.”). According to Petitioner, the combination of these teachings “is a simple use of known teachings to yield predictable results.” Id. (citing KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)). Based on our review of Petitioner’s arguments and evidence, we find that Petitioner demonstrates that combined teachings of Dabak and Kockmann teach or suggest all of the limitations of independent claims 1 and 16 and find that a person of ordinary skill in the art would have had reason to combine the teachings of Dabak and Kockmann to achieve the methods of claim 1 and the devices of claim 16. See 620 Pet. 17–20, 33–35, 38–40, 48–49. We conclude that Petitioner has shown by a preponderance of the evidence that independent claim 1 would have been obvious over the combined teachings of Dabak and Kockmann. Moreover, because Petitioner’s arguments for the obviousness of independent claim 16 over Dabak and Kockmann rely on the arguments and evidence presented with respect to independent claim 1, we also conclude that Petitioner has shown by a preponderance of the evidence that independent claim 16 would have been obvious over the combined teachings of Dabak and Kockmann, as well as on its related challenges to dependent claims 2, 3, 5, 8, 9, 12, 14, 15, 17, 18, 20, 23, 24, 27, and 29–31. See 620 Pet. 25–26, 40 (claim 2; citing Dabak, 7:57–60, 8:1–2, Fig. 1; 620 Ex. 1002 ¶ 51, 52), 26–27, 40 (claim 3; citing Dabak, 2:39–40, 3:1–5, 3:50–54, 3:60–62; 620 Ex. 1002 ¶¶ 54, 55), 27–28, 42 (claim 5; citing Dabak, 7:57–67; 620 Ex. 1002 ¶ 57), 28, 44 (claim 8; citing Dabak, 2:58–59; 620 Ex. 1002 ¶ 59), 44–47 (claim 9; citing Kockmann, 7:44–47, 8:39–48; 620 Ex. 1002 ¶¶ 136, 137), 31, 47 (claim 12; citing Dabak, Fig. 3B; 620 Ex. 1002 ¶ 65), 31–32, 47 (claim 14; citing 620 Ex. 1002 ¶¶ 69–75, 152), 32–33, 48 (claim 15; citing Dabak, 3:1–5, 7:57–” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner contends, however, that the combined teachings of Dabak and Kockmann fail to teach or suggest all of the limitations of claim 4. In particular, Patent Owner contends that, “[a]s described in Kockmann, ‘disturbed’ does not in fact mean ‘occupied,’ but rather it only means that ‘[a] disturbed carrier frequency is thus a carrier frequency onto which a signal is modulated that exceeds a specific threshold.’” PO Resp. 14 (citing Kockmann, 6:43–49). Patent Owner contends that determining whether a channel is “occupied” “requires analysis beyond the measurements called for by Kockmann (i.e.[,] determining more than just the mere presence of a modulated signal ‘that exceeds a specific threshold,’ but rather whether its source was FH or NFH).” Id. at 15; see 620 Ex. 2001 ¶¶ 33–37. Initially, Petitioner again states that Kockmann discloses that “[d]isturbance thereby means that either a disturbance in the actual sense or an occupancy by some other transmitter is present.” Kockmann, 6:41–43 (emphasis added). Patent Owner contends, however, “that a channel ‘occupied’ by an NFH system and a channel ‘disturbed’ by another transmitter are somehow different because an occupancy determination requires additional ‘analysis.’” Reply 10. Nevertheless, we agree with Petitioner that Patent Owner does not show where the claims recite one type of analysis or prohibit another. Id. Thus, we find that the combined teachings of Dabak and Kockmann teach or suggest all of the limitations of claim 4. Petitioner’s arguments with respect to claim 4 apply equally to claim 19. Based on our review of the arguments and evidence, we conclude that Petitioner has established by a preponderance of the evidence that claims 4 and 19 would have been obvious over the combined teachings of Dabak and Kockmann.” slip op. at 34
Patent outcomesUS 8,873,500 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,873,500 - Kingston Technology Company, Inc. v. Spex Technologies, Inc.Institution deniedPTAB · Aug 17, 2017 · IPR2017-00825 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all asserted grounds because Petitioner did not show a reasonable likelihood of prevailing on claims 55 or 57.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Our Rules require that a petition for inter partes review identify “[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is 3 Petitioner proposes a definition for a person of ordinary skill in the art. Pet. 13; see Ex. 1010 ¶ 20. Patent Owner does not challenge this definition. For purposes of this Decision and to the extent necessary, we adopt Petitioner’s definition. found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. “security module” and “target module” The terms “security module” and “target module” both are recited in each challenged claim. Petitioner identifies a dispute between itself and Patent Owner in related district court litigation as to whether those terms require only “functional (not necessarily physically distinct) modules.” Pet. 15. Specifically, Petitioner points to a statement in an infringement claim chart that appears to have been attached as an exhibit to Patent Owner’s complaint in the litigation that the accused device “has at least two modules, a security module (e.g., cryptographic functionality) and a target module (e.g., storage functionality).” Id. (citing Ex. 1008, 2). Petitioner states that it “expressly disagrees with Patent Owner’s broad construction of the ‘modules’ language as covering structures that are not physically distinct.” Id. Petitioner contends that the proper construction of “module” “requires a structure that performs as a ‘security’ module and another separate (potentially connected) structure that performs as a ‘target’ (e.g., memory module, second security module, etc.).” Id. at 18.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,003,135 - Kingston Technology Company, Inc. v. Spex Technologies, Inc.Institution deniedPTAB · Aug 17, 2017 · IPR2017-00824 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Kingston did not show a reasonable likelihood that claims 1–3, 6–8, 11–15, 23–28, and 36–39 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we are not persuaded, on this record, that Petitioner has established a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims on the asserted grounds. Accordingly, we deny the Petition and decline to institute an inter partes review of claims 1–3, 6–8, 11–15, 23–28, and 36–39 of the ’802 patent.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“A claim limitation using the phrase “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.2 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Section 112 ¶ 6 provides that: An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Construing a means-plus-function claim term is a two-step process, wherein we first identify the claimed function and then determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351; Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Moreover, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004); Cardiac Pacemakers, 296 F.3d at 1113. This analysis applies similarly under both the broadest reasonable construction and district court-type claim construction standards. See Williamson, 792 F.3d at 1348 (affirming application of § 112 ¶ 6 in district court litigation); In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)” slip op. at 8
- BurdenNot shown unpatentable
“[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d at 1193). slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d at 1193). slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,088,802 - Apple Inc. / HTC Corp. et al. v. Parthenon Unified Memory Architecture LLCAll claims unpatentablePTAB · Aug 4, 2017 · IPR2016-00923 · APJ Michael R Zecher · IPR · Final written decision
Claims 1, 3, 5, 11, and 13 are unpatentable as anticipated by Lambrecht; claims 4 and 6 are unpatentable as obvious over Lambrecht with Artieri and Moore, respectively.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). The words of a claim generally are given their ordinary and customary meaning, and that is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent, including the specification. See Phillips, 415 F.3d at 1312–13. Claims are not interpreted in a vacuum, but are a part of, and are read in light of, the specification. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). Although it is improper to read a limitation from the specification into the claims, the claims still must be read in view of the specification of which they are a part. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2004). slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the knowledge level of a person of ordinary skill in the art. Relying on the testimony of its declarant, Dr. Stone, Petitioners assert that a person of ordinary skill in the art at the time of the invention of the ’789 patent would be an individual who possesses (1) an accredited Bachelor’s degree in electrical engineering, computer science, or computer engineering; and (2) at least three years of experience in the fields of data compression and overall computer system architecture. Pet. 10 (citing Ex. 1030 ¶¶ 74–77). Patent Owner’s declarant, Dr. Thornton, testifies that a person of ordinary skill in the art at the time of the invention of the ’789 patent would be an individual who possesses (1) an accredited Bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree; and (2) at least two to three years of experience in signal/image processing and computer architecture at both the systems and micro-architecture levels. Ex. 2003 ¶ 27. In lieu of the two to three years of experience, Dr. Thornton testifies that a person of ordinary skill in the art at the time of the invention of the ’789 patent may hold a Master’s or other graduate degree in electrical or computer engineering with a focus in computer architecture and signal/image processing, along with one year of relevant experience. Id. Putting aside the subtle distinctions in the assessments of the level of skill in the art put forth by both declarants, Dr. Thornton testifies that, if he were to apply Dr. Stone’s assessment of the level of skill in the art, his “analysis and conclusions would remain unchanged.” Ex. 2003 ¶ 28. Because Dr. Stone’s assessment of the level of skill in the art is consistent with the ’789 patent and the asserted prior art, we adopt it and apply it to our evaluation below, but note that our conclusions would remain the same under Dr. Thornton’s assessment.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Lambrecht together with the knowledge of one of ordinary skill in the art, we agree with Petitioners that, when Lambrecht’s PCI bus 120 is placed in multimedia mode, it allows real time, multimedia data transfers between multimedia device 144D (which Petitioners identify as the decoder (Pet. 15)) and main memory 110. See Pet. 13–14, 17–19; Pet. Reply 3–7. Lambrecht discloses that “multimedia devices 142D–146D communicate with each other and with CPU 102 and main memory 110 via the PCI bus 120, as is well known in the art.” Ex. 1032, 27:57–59. Lambrecht further discloses that “multimedia devices 142D–146D also communicate data between using the PCI bus signal lines 120 when the PCI bus 120 is in the multimedia mode.” Id. at 27:59–62; see also id. at Fig. 21 (illustrating how PCI bus 120 is coupled to multimedia devices 142D–146D and PCI bridge chipset 106, which, in turn, interfaces with main memory 110). Based on these disclosures, one of ordinary skill in the art would have understood that, in Figure 21 of Lambrecht, multimedia devices 142D–146D have access to main memory 110 in multimedia mode because Lambrecht discloses that multimedia devices 142D–146D communicate both with each other and main memory 110 via PCI bus 120, and also communicate data using the same PCI bus signal lines 120 when PCI bus 120 is in multimedia mode. See Ex. 1030 ¶ 78 (addressing the limitations recited in independent claim 1). In addition, upon considering these cited disclosures in Lambrecht, Petitioners’ declarant, Dr. Stone, testifies that one of ordinary skill in the art would have understood that, when PCI bus 120 in Figure 21 is placed in multimedia mode, it “provides for real-time[,] multimedia data transfers.” Ex. 1044 ¶ 4. We credit Dr. Stone’s testimony in this regard because it is consistent with Lambrecht’s description of Figure 21. See id. (citing Ex. 1032, 26:53–56, 27:57–62). Moreover, there is nothing in reference to Figure 21 and its corresponding description suggesting that, when PCI bus 120 is placed in multimedia mode, multimedia device 144D is precluded from accessing main memory 110 and operating in real time.” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
Patent outcomesUS 5,812,789 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 5,812,789 - Unified Patents Inc. v. Nonend Inventions N.V.Rehearing deniedPTAB · Jul 25, 2017 · IPR2016-00174 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied rehearing, leaving intact its findings that claims 1–6 and 8–18 were anticipated by Shastri and claims 1–20 were unpatentable over Goldszmidt-based grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision—here, Patent Owner. 37 C.F.R. § 42.71(d). “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.” Id.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“by our rules. Patent Owner’s argument that it received insufficient notice that its preliminary arguments regarding real party in interest (Paper 7, 4–13) would be waived fails to identify an argument we overlooked or misapprehended. Instead, Patent Owner’s argument challenges the propriety of our cautionary order that such arguments not raised in its Response will be waived. Arguments that are not raised in Patent Owner’s Response could not have been overlooked or misapprehended.” slip op. at 4
- BurdenDecided for petitioner
“to Patent Owner. As we observed in our Decision, Patent Owner complied with its burden to produce evidence supporting its position that the patent at issue antedates Shastri. Dec. 18–19 (“We find that Patent Owner has met that burden by producing the Declarations of the inventors of the ’862 patent (Exs. 2018, 2019) and corroborating evidence (Exs. 2020–2027, 2029) that allegedly show conception prior to Shastri, and reasonable diligence through filing of a patent application (constructive reduction to practice) to antedate the filing of Shastri. PO Resp. 11–13.”). As an initial matter, we disagree with Patent Owner’s argument that it provided the only evidence relating to antedating Shastri. Petitioner did provide cross-examination testimony of Patent Owner’s declarants—the inventors of the ’862 patent—concerning this issue, which is “evidence.” Even putting that aside, however, what Patent Owner is actually asserting is that the evidence Patent Owner provided supports only its position, and that, relatedly, Petitioner cannot use that same evidence to support Petitioner’s position. That assertion has no merit. While certainly a party would be expected to present evidence that, on balance, would favor their position, the evidence itself is merely objective information that can be used by any party, as appropriate. To that end, a party submitting evidence submits it at their own peril. In that vein, Petitioner had every right to, and indeed did, reply to Patent Owner’s proffered evidence (inventor Declarations and related documents) by arguing that Patent Owner’s evidence on this issue was not persuasive. Pet. Reply 6–8 (citing Exs. 1014 and 1015). As we discussed in our Decision, we weighed Petitioner’s proffered testimony against Patent Owner’s proffered evidence. Dec. 20–26. We determined that Patent Owner’s proffered evidence in support of its claim to antedate Shastri was not persuasive when viewed in the context of the entire record, including the cross-examination testimony of Patent Owner’s Declarants. Thus, our Decision did not overlook or misapprehend Patent Owner’s arguments to antedate Shastri, nor did we “discard” the “only” evidence on the issue.” slip op. at 5
- Expert testimonyDecided for petitioner
“to Patent Owner. As we observed in our Decision, Patent Owner complied with its burden to produce evidence supporting its position that the patent at issue antedates Shastri. Dec. 18–19 (“We find that Patent Owner has met that burden by producing the Declarations of the inventors of the ’862 patent (Exs. 2018, 2019) and corroborating evidence (Exs. 2020–2027, 2029) that allegedly show conception prior to Shastri, and reasonable diligence through filing of a patent application (constructive reduction to practice) to antedate the filing of Shastri. PO Resp. 11–13.”). As an initial matter, we disagree with Patent Owner’s argument that it provided the only evidence relating to antedating Shastri. Petitioner did provide cross-examination testimony of Patent Owner’s declarants—the inventors of the ’862 patent—concerning this issue, which is “evidence.” Even putting that aside, however, what Patent Owner is actually asserting is that the evidence Patent Owner provided supports only its position, and that, relatedly, Petitioner cannot use that same evidence to support Petitioner’s position. That assertion has no merit. While certainly a party would be expected to present evidence that, on balance, would favor their position, the evidence itself is merely objective information that can be used by any party, as appropriate. To that end, a party submitting evidence submits it at their own peril. In that vein, Petitioner had every right to, and indeed did, reply to Patent Owner’s proffered evidence (inventor Declarations and related documents) by arguing that Patent Owner’s evidence on this issue was not persuasive. Pet. Reply 6–8 (citing Exs. 1014 and 1015). As we discussed in our Decision, we weighed Petitioner’s proffered testimony against Patent Owner’s proffered evidence. Dec. 20–26. We determined that Patent Owner’s proffered evidence in support of its claim to antedate Shastri was not persuasive when viewed in the context of the entire record, including the cross-examination testimony of Patent Owner’s Declarants. Thus, our Decision did not overlook or misapprehend Patent Owner’s arguments to antedate Shastri, nor did we “discard” the “only” evidence on the issue.” slip op. at 5
NonePatents in suitUS 8,090,862 - Apple Inc. v. Valencell, Inc.Rehearing deniedPTAB · Jul 20, 2017 · IPR2017-00316 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied Apple's rehearing request, leaving institution denied because the Petition did not sufficiently show that Haahr teaches the substantially parallel limitation of claims 1 and 11.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As we discuss in the Decision, however, the Petition fails to demonstrate a reasonable likelihood of prevailing on its assertion that the challenged claims are obvious because it failed to sufficiently demonstrate that Haahr teaches the limitation of “substantially parallel.” Dec. 10–14. In the Decision, we considered the understanding of the prior art relating to this claim term from the point of view of one of ordinary skill in the art, as represented by Dr. Anthony. See id. at 10–11. For the alleged general understanding of the “ordinary manner” of operation, which we considered, or the more specific representations made in the Petition concerning teachings of “substantially parallel,” we found that Dr. Anthony failed to provide evidence or persuasive explanation in support of his views on the disputed claim limitation. See id. at 12. Testimony that is not supported by sufficient underlying facts fails to persuade. 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.”); see also Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). Here, Petitioner points to Exhibits 1013, 1014, and 1015, as evidence that was overlooked that serves to support Dr. Anthony’s testimony. We considered those references (see Dec. 10–11), and agree that they disclose LED and photosensor locations on the body surface, which is similar to Haahr’s configuration, and detection of backscattered light detection on that plane. However, these references fail to explain or provide evidence supporting the contention that the light delivered and collected are in directions that are “substantially parallel” to each other, which is the operative claim limitation at issue. As such, we did not credit Dr. Anthony’s opinions on this issue. See Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). 2. Alleged Misapprehension of Petitioner’s “Orthogonal” Example and That the” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“reasonable likelihood of prevailing on its assertion that the challenged claims are obvious because it failed to sufficiently demonstrate that Haahr teaches the limitation of “substantially parallel.” Dec. 10–14. In the Decision, we considered the understanding of the prior art relating to this claim term from the point of view of one of ordinary skill in the art, as represented by Dr. Anthony. See id. at 10–11. For the alleged general understanding of the “ordinary manner” of operation, which we considered, or the more specific representations made in the Petition concerning teachings of “substantially parallel,” we found that Dr. Anthony failed to provide evidence or persuasive explanation in support of his views on the disputed claim limitation. See id. at 12. Testimony that is not supported by sufficient underlying facts fails to persuade. 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.”); see also Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). Here, Petitioner points to Exhibits 1013, 1014, and 1015, as evidence that was overlooked that serves to support Dr. Anthony’s testimony. We considered those references (see Dec. 10–11), and agree that they disclose LED and photosensor locations on the body surface, which is similar to Haahr’s configuration, and detection of backscattered light detection on that plane. However, these references fail to explain or provide evidence supporting the contention that the light delivered and collected are in directions that are “substantially parallel” to each other, which is the operative claim limitation at issue. As such, we did not credit Dr. Anthony’s opinions on this issue. See Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). 2. Alleged Misapprehension of Petitioner’s “Orthogonal” Example and That the” slip op. at 3
- BurdenDecided for patent owner
“Additionally, Petitioner bears the burden of providing a petition that supports the ground that there is a reasonable likelihood of unpatentability of one or more claims. See 37 C.F.R. § 42.108(c). We review and assess the weight of the evidence provided, and as discussed above, we are not required to take every statement by a Petitioner’s declarant as established fact, but rather view statements in light of the underlying facts or data on which the opinion is based. After consideration of Petitioner’s arguments, we remain persuaded that the evidence and supporting explanations provided in the Petition are insufficient for institution.” slip op. at 6
NonePatents in suitUS 8,989,830 - Adidas AG v. Nike, Inc.Rehearing deniedPTAB · Jul 20, 2017 · IPR2017-00264 · APJ James B Arpin · IPR · Rehearing
The Board denied adidas’s rehearing requests and maintained its denial of institution because the petitions relied on the same or substantially the same prior art previously presented to the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The request must identify, with specificity, all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Nevertheless, [a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Board’s finding that the art and arguments presented in the [Petitions of the above captioned cases] are substantially the same as those in the ‘920 IPR petition. To the contrary, the arguments are materially different with respect to the primary references and the obviousness combinations presented.” ’263 Req. 8 (emphasis added); ’264 Req. 8. Nevertheless, our invocation of § 325(d) did not require that we determine that the same or substantially the same prior art and arguments presented in the instant Petitions previously were presented to the Office, but rather that the same or substantially the same prior art or arguments previously were presented to the Office. Thus, our exercise of discretion in denying of institution under 35 U.S.C. § 325(d) is warranted by our finding that the same or substantially the same prior art had previously been presented to the Office. b. The Same or Substantially the Same Prior Art and Arguments Petitioner’s identification of “primary” and “secondary” references and its application of the teachings of these references to the challenged claims are arguments. In particular, Petitioner argues that “by beginning with Reed as the primary reference instead of Nishida, the [person of ordinary skill in the art’s (POSA’s)] motivation to combine the references is presented differently.” ’263 Req. 11 (emphasis added); ’264 Req. 10. As noted above, it was not necessary for us to determine whether those arguments also were the same or substantially the same as arguments previously presented to the Office. Nevertheless, to the extent that Petitioner contends that these arguments are not the same or substantially the same as its previous arguments because Petitioner relied on a different primary reference, the Board previously has held that the order in which art is applied in a utility application is not necessarily material. See In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“where a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the applicant, we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary.”).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“[we] may not authorize an inter partes review to be instituted unless [we] determine[] that the information presented in the petition filed under section 311 and any response filed under section 313 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. 35 U.S.C. § 314(a). Thus, we evaluate Petitioner’s reasonable likelihood of prevailing in showing the unpatentability of challenged claims on a claim– by-claim basis, upon consideration of the arguments and evidence presented in the Petitions. A petitioner’s arguments and evidence presented in other petitions with respect to other challenged claims of other patents is largely irrelevant to the institution decision in a different petition presenting different arguments and evidence for similar limitations in different challenged claims of a different patent.” slip op. at 8
Discretionary denialPatents in suitUS 8,042,288 - Adidas AG v. Nike, Inc.Rehearing deniedPTAB · Jul 20, 2017 · IPR2017-00263 · APJ James B Arpin · IPR · Rehearing
The Board denied adidas’s rehearing requests and maintained its denial of institution under § 325(d) because the petitions presented the same or substantially the same prior art and arguments previously presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The request must identify, with specificity, all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Nevertheless, [a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Board’s finding that the art and arguments presented in the [Petitions of the above captioned cases] are substantially the same as those in the ‘920 IPR petition. To the contrary, the arguments are materially different with respect to the primary references and the obviousness combinations presented.” ’263 Req. 8 (emphasis added); ’264 Req. 8. Nevertheless, our invocation of § 325(d) did not require that we determine that the same or substantially the same prior art and arguments presented in the instant Petitions previously were presented to the Office, but rather that the same or substantially the same prior art or arguments previously were presented to the Office. Thus, our exercise of discretion in denying of institution under 35 U.S.C. § 325(d) is warranted by our finding that the same or substantially the same prior art had previously been presented to the Office.” slip op. at 4
Discretionary denialPatents in suitUS 8,042,288 - Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing grantedPTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing
Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedMixed
“a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,079,086
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.