• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.No claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01832 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board found claims 1, 18, 81–84, 86, 88–91, 93, 94, 251–254, 256, 258–261, 263, and 264 not proven unpatentable under either asserted obviousness ground.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “ordinary meaning of “bias signal” is “a signal having a steady predetermined level.” Resp. 28; Reply 6–7. The parties also agree that at least some information signals may be considered “bias signals.” The crux of the parties’ disagreement is which type of information signal. The ’940 patent defines “information signal” as “[t]he signal that contains the information that is to be transmitted. As used herein, it refers to the original baseband signal at the source.” Ex. 1001, 8:48–50 (emphasis added). Thus, the ’940 patent clearly defines “information signal” as “the original baseband signal at the source.” The ’940 patent defines “baseband signal” as: Any generic information signal desired for transmission and/or reception. As used herein, it refers to both the information signal that is generated at a source prior to any transmission (also referred to as the modulating baseband signal), and to the signal that is to be used by the recipient after transmission (also referred to as the demodulated baseband signal). Ex. 1001, 7:41–47. The ’940 patent clearly gives a broad meaning to “baseband signal” such that it encompasses any signal desired for transmission and/or reception, but the definition of “information signal,” as quoted above, does not refer to any baseband signal. Rather, it refers to “the original baseband signal at the source.” Ex. 1001, 8:48–54. By including the terms “original” and “at the source,” the meaning of information signal, as defined by the ’940 patent, is more limited than the definition of a baseband signal. Thus, Petitioner’s contention that the meaning of “information signal,” and, hence, “bias signal” should be expanded to include any “baseband signal” (Reply 4) improperly takes “information signal” out of context. Petitioner’s contention eliminates the terms “original” and “at the source” from the ’940 patent’s definition of “information signal,” without providing any reason why those terms should not be considered. Accordingly, we agree with Patent Owner and construe “bias signal” to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.”” slip op. at 11

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

    “Further, Patent Owner explains that “[t]he parties agree on the portion of the ‘to gate’ construction that is material to this IPR, i.e., that ‘to gate,’ the switch module must change between connecting and disconnecting the bias signal from the switch module’s output.” Id. at 37 (citing Pet. 13–14). Patent Owner’s proposed construction is consistent with the construction proposed by Petitioner. See Dec. 11 (discussing Petitioner’s construction of “to gate [a signal]” as “to change . . . between (i) connecting a signal at an input to an output such that the input and output have an equal voltage, and (ii) disconnecting the signal from the output” (quoting Pet. 14)). In light of the consistency between the proposed constructions, and in light of the lack of an actual controversy between the parties with respect to the impact of the minor differences in the proposed meanings of this term, we need not construe expressly the term further.4 Petitioner’s Reply does not challenge Patent Owner’s arguments regarding these claim terms. Accordingly, we adopt the construction of “switch module,” as reproduced above, for the reasons explained in our Decision to Institute. See Dec. 8–11. Additionally, we decline to construe expressly the terms “summer” and “to gate,” for the reasons discussed above.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3. Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 11 (citing Ex. 1002 ¶¶ 24–29). Petitioner’s argument is supported by Dr. Larson’s testimony. Ex. 1002 ¶¶ 24–29. Patent Owner does not contest Petitioner’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “High Level Radio Frequency (“RF”) Source 10. The RF signal contains the information that television watchers see and hear.” Pet. 29 (citing Ex. 1023, 1:14–17). Petitioner asserts that Dobrovolny’s “RF Source signals are information signals that constitute ‘bias signals’ as that term is defined by the ‘940 patent.” Id. (citing Ex. 1002 ¶¶ 154, 210). Petitioner’s position is based on its claim construction of “bias signals” as “encompassing information signals.” Id. Notably, in the Petition,5 Petitioner does not assert that the recited “bias signal[s]” would have been obvious to one of ordinary skill in the art in light of Dobrovolny’s RF Source signals; rather, Petitioner’s position is that “bias signal[s]” are disclosed expressly. See id. (“RF Source signals . . . constitute ‘bias signals’”) (emphasis added).6 Patent Owner’s primary argument is as follows: [E]ven accepting [Petitioner’s] assertion that the ’940 patent expanded the ordinary meaning of ‘bias signal’ to include ‘information signal’ as defined in the patent . . . . [Petitioner] does not even allege, much less prove, that the purported ‘bias signal’—Dobrovolny’s high frequency Radio Frequency (RF) television signal—meets either of these definitions. Resp. 38–39. Patent Owner reiterates that Petitioner’s “only attempt to prove that the Dobrovolny RF television signal satisfies the claimed first and second bias signals is its assertion that Dobrovolny’s ‘RF signal contains the information that television watchers see and hear.’” Id. at 39 (quoting 5 As discussed infra, see Section III.C., Petitioner’s additional argument that bias signals would have been obvious in light of Dobrovolny’s RF Source signals constitutes a new argument, set forth only in Petitioner’s Reply, and we do not consider it here for the reasons explained below. 6 With respect to independent claim 18, Petitioner relies upon its arguments directed to the similar claim limitations of claim 1. See Pet. 44–45 (referring to Petitioner’s arguments directed to claim 1). Pet. 29). Patent Owner contends, however, that “an ‘information signal’ is not just any signal containing information . . . as [Petitioner’s] argument implicitly presumes. Rather, as defined in the ’940 patent, an information signal is restricted to ‘the original baseband signal at the source.’” Id. (quoting Ex. 1001, 8:48–54). Petitioner’s argument in its Reply is based on its incorrect claim construction of “bias signal” as encompassing any information signal. See, e.g., Reply 7 (asserting that the “bias signal” is met by Dobrovolny’s disclosure because it teaches “an information carrying High Level RF Source for reception”) (citing Ex. 1023, 1:14–17; Ex. 1002 ¶¶ 154, 210). As explained above, “bias signal” is understood to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.” See supra Section II.A. Petitioner does not argue, and has not established, that Dobrovolny’s RF Source signal is either at a steady, predetermined level or is the original baseband signal at the source. Thus, Petitioner has not shown that Dobrovolny discloses the “bias signal” limitations recited in claims 1 and 18, and the claims that depend from each.7 Accordingly, Petitioner has not shown, by a preponderance of the” slip op. at 19

  Patent outcomesUS 6,091,940 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,091,940
• Broad Ocean Technologies, LLC v. Nidec Motor CorporationNo claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 7–13 were not shown unpatentable because Beifus did not disclose the claimed torque table with alternate torque settings.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Beifus states that Figure 6 “is a chart illustrating an induction motor speed-torque curve that is programmed into a memory of an ECM.” Ex. 1007 ¶ 11. Because “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference,” the dispositive issue in this proceeding is well defined: does Figure 6 (and related disclosure) of Beifus teach “selecting a torque table associated with the adjustment factor, the torque table including alternate torque settings,” as recited in independent claim 7? See Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “reasoning of Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015). Petitioner contends that “[u]pon reading Beifus, a person of ordinary skill would immediately recognize that the ECM control circuit could handle the torque values in two ways – storing a set of torque values in a memory or by calculating the torque values ‘on the fly.’” Reply 18. Kennametal explains that “a reference can anticipate a claim even if it ‘do[es] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal at 1381 (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). Petitioner did not raise the Kennametal theory of anticipation in its Petition, and the argument based on it in the Reply is, therefore, improper. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”) (emphasis added); CBS Interactive, Inc. v. Helferich Pat. Lic., LLC, Case IPR2013-00033, slip op. at 3 (PTAB Aug. 9, 2013) (Paper 79) (“Should there be improper arguments or evidence presented with a reply, the Board, exercising its discretion, may exclude the reply and related evidence in their entirety, or alternatively, decline to consider the improper arguments and/or related evidence.”). Although Patent Owner addressed this theory in its Response (PO Resp. 21–24), Patent Owner appears to have done so only prophylactically after the theory was raised by Petitioner in redirect examination of Dr. Sidman. See PO Resp. 21 (“During Dr. Sidman’s redirect examination by [Petitioner’s] counsel, he was asked the following leading question . . . .”) (“The Board should disregard any of this new evidence and argument if [Petitioner] intends to rely on it.”). Because this is a new argument, not raised in the Petition, we do not consider it.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “the ambiguity when Figure 6 is actually described in detail in the specification.” Id. at 16. As Patent Owner asserts, “Beifus makes it clear that Figure 6 is a plot of values derived from key characteristics which are motor parameters of the emulated motor.” Id. (citing Ex. 1007 ¶ 36; Ex. 2002 ¶¶ 15–16, 31). This understanding of Beifus is confirmed by testimony of Patent Owner’s expert, Mark N. Horenstein, Ph.D. Ex. 2002 ¶¶ 15–16. Dr. Horenstein explains that a person of ordinary skill in the art would understand that the parameters stored in the ECM are key parameters used with the formula reproduced above to describe the torque-speed curve of the induction motor being emulated, namely the no-load speed, breakdown speed, and shape description number n. Id. ¶ 15. Dr. Horenstein further testifies that, “although square and diamond symbols appear along the curves in Figure 6, nowhere does Beifus describe the storing of these individual points.” Id. ¶ 16. Rather, Dr. Horenstein expresses his opinion that “a person of skill would understand these symbols to be included simply to identify which curve applies to Option 1 and which to Option 2 [i.e., different options for the induction motor breakdown speed], as indicated by the legend to the right of the plots.” Id. Petitioner challenged Dr. Horenstein’s opinion at his deposition, in part by comparing a drawing from one of Dr. Horenstein’s own patents that included a series of curves with data marked by different symbols: Q. So if a person of ordinary skill in the art looking at Figure 6 of the Beifus patent sees diamonds and squares, wouldn’t they come to an understanding that those are data points? A. I don’t think so. And the reason is that a formula is given that explains how the curves are computed. Figure 19 of [Dr. Horenstein’s patent], those are discretely measured points performed by experiment, and there really is no formula that applies to those curves per se, they’re just data points that have some scatter relative to each other and they happen to be connected by lines, but those lines do not represent a formula. Ex. 1013, 54:2–16. We disagree with Petitioner’s characterization of this testimony as explaining that “the reason a person of ordinary skill in the art would understand that the diamonds and squares appearing in Figure 19 of [Dr. Horenstein’s] patent are data points, as opposed to mere curve identifiers, is because the diamonds and squares are connected by lines.” Reply 15. Rather, Dr. Horenstein’s testimony makes clear that his opinion is grounded in Beifus’s disclosure of a formula that allows calculation of the illustrated points and that connection of data points measured by experiment with lines is incidental. Dr. Horenstein’s testimony is more persuasive than the testimony of Petitioner’s expert, Michael D. Sidman, Ph.D., on the identification of “key characteristic points” disclosed by Beifus. For example, Dr. Sidman appeared to suggest at his deposition that the entire speed-torque curve of Beifus’s Figure 6 is itself a “key characteristic point,” but qualified that position when challenged by Patent Owner. See Ex. 2001, 23:22–25:15. Nevertheless, Dr. Sidman agrees that (1) a curve can be generated from a mathematical formula and graphed (Ex. 2001, 30:8–11); (2) Beifus’s two formulas correspond to the formulas for “Option 1” and “Option 2” shown in Figure 6 (id. at 33:12–36:19); (3) operating speed, breakdown speed, no load speed, and shape-description number n are variables used in the formula disclosed by Beifus (id. at 22:23–23:10); (4) the calculation disclosed by Beifus could be performed on the fly in a motor controller (id. at 47:6–14); and (5) Beifus does not explicitly disclose that any precalculations are performed (id. at 43:1–23). These aspects of Dr. Sidman’s testimony are consistent with Patent Owner’s reading of Beifus.” slip op. at 13

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

    “We see no compelling reason to modify these constructions based on the positions of the parties as developed during the trial, and adopt them for this Decision. With respect to the construction of “torque table,” Patent Owner asserts: If the Board’s construction means that the table need not be in any particular format in the memory, but the table must still store the alternative torque values required by the claim “in a memory connected to the motor,” then Patent Owner accepts this interpretation for the purposes of this proceeding. However, if the Board’s construction including reference to “a torque curve graphically representing a set of torque values” does not require the torque values shown on the curve to be stored in memory, it is erroneous. PO Resp. 9. We agree with Patent Owner’s position, namely that “[t]he broadest reasonable interpretation of ‘table’ still must require the torque values to be stored in the table.” Id. As Patent Owner points out, “[t]he only intrinsic evidence available in this proceeding demonstrates a ‘torque table’ stores alternative torque settings.” Id. In particular, the ’092 patent consistently uses “table” to refer to discrete data that are stored in a memory, such as in the “speed tables” described as alternatives to “torque tables.” See Ex. 1001, col. 11, ll. 5–24, col. 16, ll. 63–66 (“Instead of adjusting the torque as described above, the motor controller 18 could store a plurality of different torque or speed tables and select one of the torque/speed tables based on an input provided by the torque adjustment mechanism.”). This aspect of the construction of “torque table” is reflected in its reference to including a graphical representation of “a set” of torque values in a memory connected to a motor.” slip op. at 7

  Patent outcomesUS 7,990,092 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,990,092
• Sipnet Eu S.R.O. v. Straight Path IP Group, Inc.No claims unpatentable
  PTAB · May 23, 2016 · IPR2013-00246 · APJ Kalyan K Deshpande · IPR · Remand

  On remand, the Board held claims 1–7 and 32–42 not shown unpatentable because WINS and NetBIOS do not disclose the claimed current-connection status.

  RulingsRemand decision

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

    “party-in-interest. Whether a non-party is a “real party-in-interest” or “privy” for purposes of an inter partes review proceeding is a “highly fact-dependent question” that takes into account how courts generally have used the terms to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,759. Whether parties are real parties-in-interest or in privity, for instance, depends on whether the relationship between the party and its alleged real party-in-interest or privy is “sufficiently close such that both should be bound by the trial outcome and related estoppels.” Id. A number of factors may be relevant to the analysis, including whether the non-party “exercised or could have exercised control over a party’s participation in a proceeding,” and whether the non-party is responsible for funding and directing the proceeding. Id. “The concept of control generally means that ‘it should be enough that the nonparty has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties.’” Id. (quoting 18A C. Wright, A. Miller & E. Cooper, Federal Practice & Procedure § 4451 (2d ed. 2011)). Patent Owner has not demonstrated that Stalker Software exercised or could have exercised control over Petitioner’s participation in this proceeding. The evidence of record establishes only that Stalker Software provided the WINS reference, at the request of Petitioner. Pet. Reply 1; Tr. 28:3–9. This alone is insufficient to demonstrate that Stalker Software exercised, or could have exercised, control over Petitioner’s participation in this proceeding. Patent Owner’s evidence of the existence of a vendor-reseller relationship between Stalker Software does not demonstrate Stalker Software exercised, or could have exercised, any control. When a patent holder sues a dealer, seller, or distributor of an accused product, the mere payment of counsel fees and minor participation by the vendor in the trial are insufficient to establish privity between the vendor and reseller. Bros, Inc. v. W.E. Grace Mfg. Co., 261 F.2d 428, 430 (5th Cir. 1958); see generally Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, Case IPR2013-00601, slip op. at 7, 8 (PTAB Jan. 24, 2014) (Paper 23). Patent Owner’s assertions regarding witnesses with connections to both Stalker Software and Petitioner, and Petitioner’s alleged lack of presence in the U.S. market, are statements of counsel unsupported by any record evidence, and, in any event, are not indicative of any control of this proceeding by Stalker Software. Considering the lack of probative evidence submitted by Patent Owner, we disagree that Stalker Software is a real partyin-interest. Accordingly, we are not persuaded that Petitioner is barred from initiating this proceeding, or that sanctions should be imposed on Petitioner.” slip op. at 10

  • BurdenNot shown unpatentable

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 31–46. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1004, 62–63, 75, 84, 130. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 73. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 148. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. See id. at 73, 148. Accordingly, a query as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1004, 84, 166. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” “currently connected to the Internet,” and “connected to the computer network,” as construed herein.” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Petitioner provides the testimony of Mr. Kolesnikov that WINS was publically available and a CD version (Ex. 1019) was received by Mr. Kolesnikov in 1994. Pet. Reply 13–14; Tr. 19:5–19; see Ex. 1017. Mr. Kolesnikov testifies that he saw several Microsoft Windows NT 3.5 Server packages that included a print copy of WINS. Ex. 1017 ¶ 7. Petitioner further provides the testimony of Ms. Ehrlich to establish that the differences between WINS and the CD version are differences mostly as to formatting. Pet. Reply 13–14; see Ex. 1018. Ms. Ehrlich testifies that WINS and the CD version are substantially similar, noting differences in the glossaries and formatting. Ex. 1018 ¶ 6; Ex. 2044, 16:17–24. We are persuaded that Petitioner has established WINS as prior art. We are persuaded that WINS was publically available in 1994. Mr. Kolesnikov testifies to seeing printed copies of WINS and the CD version in 1994. Ex. 1017 ¶ 7. Mr. Kolesnikov further testifies he recalls seeing printed copies of WINS during installations he did for clients in 1994, and is certain that it was 1994 because he switched jobs in 1995. Ex. 2043, 29:1–10, 32:21–22. Additionally, we are persuaded that the portions of WINS relied upon by Petitioner are different from the CD version due to formatting only. Tr. 23:1–25:8. Patent Owner’s argument consists of alleging that Petitioner has failed to establish that WINS was publically available and does not offer any evidence contrary to that presented by Petitioner. Based on the evidence discussed above, we are persuaded that Petitioner has established that WINS was publicly available in 1994, and, therefore, qualifies as prior art under 35 U.S.C. § 102(a).” slip op. at 14

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

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 31–46. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1004, 62–63, 75, 84, 130. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 73. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 148. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. See id. at 73, 148. Accordingly, a query as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1004, 84, 166. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” “currently connected to the Internet,” and “connected to the computer network,” as construed herein.” slip op. at 15

  Patent outcomesUS 6,108,704 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,108,704
• Masterimage 3d, Inc. / Masterimage 3d Asia, LLC v. Reald Inc.No claims unpatentable
  PTAB · Apr 20, 2016 · IPR2015-00035 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board denied cancellation of claims 1–23 because Petitioner did not show Schuck was entitled to the provisional filing date, so it was not prior art.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

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

    “It is only “confidential information” that may be protected from disclosure, 35 U.S.C. § 316(a)(7), and, even then, there is a public interest in “maintaining a complete and understandable file history” of the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “for multiple reasons. First, Petitioner acknowledges that what it refers to as “the Milburn doctrine” was codified in 35 U.S.C. § 102(e), and Petitioner does not show persuasively that we should read Milburn as requiring anything beyond application of that statutory section in light of the facts presented here. Supp. Reply 6. Second, Milburn did not address directly the question of whether an issued patent is entitled to claim priority to a provisional patent application, and, specifically, what must be shown in order to do so. Third, Schuck claims priority to not one, but three provisional applications, which was not the case in Milburn. Fourth, in Giacomini, the Federal Circuit expressly considered Milburn and stated: “An important limitation [on 35 U.S.C. § 119(e)(1)] is that the provisional application must provide written description support for the claimed invention.” Giacomini, 612 F.2d at 1383 (emphasis added). Although the Federal Circuit did not address the application of the argument—that the reference patent’s provisional application fails to provide written description support for the claimed subject matter—in Giacomini, because the appellant had waived it, the Federal Circuit’s decision acknowledges that there was an argument that could have been raised. Id. Finally, Dynamic Drinkware is directly on point and clearly establishes that Petitioner is required to show that the claimed invention of Schuck finds written description support in the ’657 provisional in order to rely on the ’657 provisional’s filing date. Dynamic Drinkware, 800 F.3d at 1381. It is undisputed that Petitioner has not done so. We find that Petitioner has not shown that claim 1 or any other claim of Schuck is supported by the ’657 provisional, and, thus, Petitioner has not shown that Schuck is entitled to claim priority to the ’657 provisional’s filing date. See Apple, Case IPR2015-00969, slip op. at 12–13. The result of our finding is that Schuck does not qualify as prior art, under § 102(e), to the ’455 patent, and, therefore, is not a reference which may be relied upon to establish the unpatentability of claims in an inter partes review. See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” (emphasis added)). Accordingly, Petitioner has not demonstrated, by a preponderance of the evidence, that: (1) claims 1–8, 10–14, and 16–22 are unpatentable as anticipated by Schuck and (2) claims 9, 15, and 23 are unpatentable as obvious over Schuck and APA.” slip op. at 16

  Patent outcomesUS 7,857,455 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,857,455
• Securus Technologies, Inc. v. Global Tel*link CorporationNo claims unpatentable
  PTAB · Apr 7, 2016 · IPR2015-00155 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under §103(a) over Susen and Gainsboro because Susen did not disclose steps within the construed access-attempt scope and the combination rationale was insufficient.

  RulingsFinal written decision

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

    “Petitioner does not proffer an explicit construction of any term, contending that “no construction is necessary of the ’243 patent claim terms,” but responds in its Reply to constructions proposed by Patent Owner for “public telephone network” and “access attempt to said public telephone network.” Pet. 8; Reply 4–7. 1. “public telephone network” Patent Owner contends that “public telephone network,” as recited in the phrase “access attempt to said public telephone network,” should be construed interchangeably with the term “public switched telephone network” as “a network of telephone communication links and switches, not associated with any particular person or facility, that carries telephone signals of the general public.” PO Resp. 10–13. Petitioner responds that the term “is well understood” without explicit construction and that Patent Owner’s proposed construction “unnecessarily and improperly limits the meaning” of the term. Reply 5. We agree with Petitioner that no express construction is necessary. Patent Owner’s expert testified at his deposition that a person of ordinary skill would understand what is meant by “public telephone network” and that the ’243 patent does not apply any definition of the term outside of its normally understood definition. Ex. 1009, 110:5–111:9.” slip op. at 6

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

    “We agree with Petitioner that “access attempt to said public telephone network” is not appropriately construed as a “period of time.” Nevertheless, disagreement between the parties over the scope of the fuller phrase, “during each access attempt to said public telephone network by said potential caller,” requires resolution—specifically, which of the steps that follow recitation of the “during” phrase must be performed “during each access attempt.” A grammatically rigid reading of the claim, which includes two colons and two instances of the word “and,” suggests an illogical construction in which the scope of “during each access attempt” includes the “prompting,” first “recording,” “matching,” “comparing,” “granting,” “monitoring,” and second “recording” limitations. The parties agree that such a construction is inappropriate, and we find it inconsistent with the Specification of the ’243 patent because at least the “monitoring” and second “recording” limitations logically require a connection established within the public telephone network before they can be performed. See PO Resp. 15– 16; Reply 19–20; Tr. 39:18–40:3 (Patent Owner acknowledging “sloppy draftsmanship”). Petitioner contends that, because “during each access attempt . . . ” is followed by a colon without further punctuation or indentation, “[t]he broadest reasonable interpretation of the claims would apply this limitation to only the first step following the colon: ‘prompting.’” Reply 19. Patent Owner contends instead that the “granting” limitation provides a logical conclusion to the “access attempt” so that each of the “prompting,” first “recording,” “matching,” “comparing,” and “granting” limitations are within the scope of “during each access attempt.” PO Resp. 15–16; see Tr. 38:7–20 (confirming Patent Owner’s position that the “granting” limitation is within scope). Patent Owner supports its position with testimony by Leonard J. Forys, Ph. D., who testifies as follows: Simply put, it is my opinion that an “access attempt” is defined by a starting point (e.g., the beginning of the attempt) and the point at which the “attempt” either succeeds or fails. In this case, because the claim recites an “access attempt to said public telephone network”, the “attempt” will succeed or fail (and thus conclude) when the caller is granted access to, or ultimately denied access from, the public telephone network. The period in between these two events comprises some calling procedure in which the caller may be asked to provide certain information, dial the outgoing number, authenticate himself/herself, etc. The above construction is thus supported by this common sense approach. Ex. 2004 ¶ 47. We credit this testimony, and afford it greater weight on this point than the testimony of Petitioner’s witness, Robert Akl, Ph. D., who declined at his deposition to provide meaningful details explaining how he arrived at his opinion that the scope of the recited “during each access attempt . . . ” is more limited. See Ex. 2003, 46:24–48:22. We also agree with Patent Owner that a construction that affords greater scope to “during each access attempt” is consistent with the Specification of the ’243 patent. See PO Resp. 14–15. Accordingly, we construe the scope of “during each access attempt to” slip op. at 7

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

    “The key to supporting a conclusion of unpatentability under 35 U.S.C. § 103(a) is the clear articulation of reasons why the claimed invention would have been obvious. The Supreme Court has clarified the requirements that must be met to establish a prima facie case of obviousness, emphasizing that the “analysis should be made explicit.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Although the reasoning may draw from numerous intrinsic and extrinsic sources, conclusions of obviousness “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.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 15

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Petitioner supports its statements with testimony by Dr. Akl, but that testimony repeats the statements made in the Petition with only minimal surface changes. See Ex. 1005 ¶¶ 60, 75, 94.4 As Patent Owner contends, these statements are also made within the context of a broad characterization of the art, namely “managing institutional calls.” See PO Resp. 21–22. The cursory assertion that the prior-art references are drawn from the same 4 With respect to the third statement, addressing claim 6, Dr. Akl provides the additional conclusory assertion that “One skilled in the art would understand that combining these references would be obvious and beneficial in that it would enhance the security of the system.” Ex. 1005 ¶ 94. broadly characterized field provides insufficient analysis concerning why and how a person of ordinary skill in the art would have modified or combined the prior art in the manner asserted, and inadequately articulates “reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine elements in the way the claimed new invention does.”). Furthermore, Petitioner’s perfunctory analysis is effectively rebutted by Dr. Forys, who testifies that “Susen and Gainsboro are directed to unrelated concepts” and “directed to very different architectures that are not easily combined.” Ex. 2004 ¶¶ 53, 56. We credit the testimony of Dr. Forys more strongly than that of Dr. Akl because Dr. Forys provides explicit reasoning to support his opinion that Susen and Gainsboro are concerned with different implementation settings, rely on different architecture structures, have technical incompatibilities, and are drawn from different fields. See id. ¶¶ 52–61; 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 16

  Patent outcomesUS 7,853,243 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,853,243
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00552 · APJ Thomas L Giannetti · IPR · Final written decision

  Petitioner failed to prove claims 1–23 unpatentable because Webster was disqualified as prior art under § 103(c).

  RulingsFinal written decision

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

    “In an inter partes review, the burden of proof is on the Petitioner to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). This burden never shifts to the Patent Owner. Id. However, the burden of production, a separate burden, does shift once the Petitioner comes forward with evidence establishing prior art. Id. at 1379–80. Thus, to prevail on this dispositive issue, Patent Owner must overcome Webster by establishing that § 103(c) applies to the fact of this case.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “We agree with Patent Owner and are persuaded that the W–2 form and pay stub should not be excluded. Petitioner’s argument based on alleged inconsistencies goes to the weight, not the admissibility, of the evidence. As to the hearsay objections, we agree with the reasoning of Snow, supra, that the EIN and other information are not assertions subject to the hearsay rule. To the same effect are United States v. Koch, 625 F.3d 470, 480 (8th Cir. 2010) (computer flash drive with manufacturer’s label “China” not inadmissible hearsay to prove place of manufacture); United States v. Bowling, 32 F.3d 326, 328 (8th Cir. 1994) (manufacturer’s name stamped on firearm not hearsay). We are persuaded that the EIN and other identifying information on the W-2 and pay stub, like the examples in those cases, are circumstantial evidence of Seals’employment and not assertions by Intersil. We agree that the pay stub is not hearsay and should be admitted.14 Although Petitioner challenges this evidence as untrustworthy, we are mindful of the fact that Petitioner had a chance to cross-examine Mr. Seals on its content.” slip op. at 22

  Patent outcomesUS 6,754,195 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 6,754,195
• Homeland Housewares, LLC v. Whirlpool CorporationNo claims unpatentable
  PTAB · Oct 21, 2015 · IPR2014-00877 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–16 were not shown unpatentable: Kolar did not anticipate them, Kolar did not render them obvious, and Wulf did not anticipate them.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “As Petitioner observes, the Board has found the rule of Harza inapplicable where duplicating components would have rendered the claimed subject matter unsuitable for its intended purpose. PO Resp. 43 (citing Ex parte Efremova, No. 2010-003842, 2011 WL 1131352, at *3 (BPAI Mar. 28, 2011)). We agree with the reasoning of the panel in Efremova. Mr. Faerber testifies that “it would not have been obvious to repeat the drink program of Figure 6, in whole or in part” because “[r]epeating a program would risk overmixing the blender contents, and would defeat the purpose of having a set program to produce consistent and complete results.” Ex. 2001 ¶ 89. We credit the testimony of Mr. Faerber, which is uncontroverted.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “3. “to effect a pulsing” Patent Owner proposes that “to effect a pulsing,” which is recited in each of the independent claims, should be construed to mean “to effect a series of repeated pulses.” PO Resp. 14–20. Patent Owner contends that the specification supports a distinction between “pulsing” and “pulses,” and that it would be unreasonable to construe “pulsing” to include only one pulse. Id. Patent Owner supports its position with uncontroverted testimony by Mr. Faerber. Ex. 2001 ¶¶ 46–53. Petitioner responds in its Reply that “a ‘pulsing that includes only one pulse is still a reasonable interpretation which the Board should adopt.” Reply 6. But Petitioner recanted that position in its argument at oral hearing: JUDGE BOUCHER: . . . You seem to indicate that a “pulsing” implie[s] that there would be multiple pulses. Is that a correct understanding of Petitioner’s position? MR. TROJAN: That’s correct, that -- right. Tr. 7:12–16. We adopt Patent Owner’s proposed construction of “to effect a pulsing” as “to effect a series of repeated pulses.”” slip op. at 7

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

    “Petitioner responds that “[i]t is noteworthy that the limitation . . . is at the very end of claim 1,” contending that “what happen[s] after the blade reaches the operating speed is not covered by the claims.” Reply 6. We are not persuaded by this contention because the “pulsing” recited in the independent claims requires multiple pulses, each of which has the recited “constant speed phase,” “deceleration phase,” and “acceleration phase.” We also are unpersuaded by Petitioner’s argument that the cutter assembly may have multiple operating speeds. See id. at 7–8. Even acknowledging that the recitation of “a predetermined operating speed” in the “constant speed phase” allows for the possibility that the cutter assembly may have more than one predetermined operating speed, the relevant limitation refers to increasing the speed of the cutter assembly “to the operating speed” (emphasis added). Petitioner’s argument is not supported by the claim language nor by any evidence presented by Petitioner. We adopt Patent Owner’s construction of “to the operating speed” as “up to, but not past, the operating speed.”” slip op. at 8

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

    “We agree with Patent Owner that Kolar does not disclose “automatically controlling a rotational speed of the cutter assembly to effect a pulsing,” wherein each pulse comprises the recited “constant speed phase,” “deceleration phase,” and “acceleration phase.” See PO Resp. 26–31. First, Patent Owner observes that the “pulse blend” routine identified by Petitioner executes separately from automatically controlled user drink programs as a manual pulse in which the blender motor runs only as long as the user is pushing the pulse button. Id. at 27–28. Patent Owner supports its position with unrebutted testimony by Mr. Faerber. Ex. 2001 ¶ 74. Thus, the “pulse blend” routine described by Kolar does not “automatically” control a rotational speed of the cutter assembly to effect a pulsing as required by the independent claims. Second, as Mr. Faerber testifies, Figure 6 of Kolar “depicts a set of different, non-repeating steps. No part of the drink program is repeated.” Ex. 2001 ¶ 75. The illustrated sequence, for example, has only a single deceleration phase, and, therefore, does not disclose “effect[ing] a pulsing” by effecting a series of repeated pulses that each have a constant speed phase, a deceleration phase, and an acceleration phase. See PO Resp. 31. We also agree with Patent Owner that Kolar does not disclose an acceleration phase, where the speed of the cutter assembly is “increased from the settling speed to the operating speed,” as recited in each of the independent claims. See id. at 32–33. Patent Owner supports its position with unrebutted testimony by Mr. Faerber. Ex. 2001 ¶¶ 77–83. The acceleration phase identified by Petitioner between t4 and t5 in Figure 6 of Kolar does not increase “to the operating speed,” as we have construed the phrase, but instead increases to a speed greater than the operating speed. For these reasons, we conclude that Petitioner has not shown, by a preponderance of the evidence, that any claim of the ’688 patent is anticipated by Kolar.” slip op. at 9

  Patent outcomesUS 7,581,688 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,581,688
• Canon Inc. v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Oct 2, 2015 · IPR2014-00757 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted references did not disclose received scan control signals that contain no timing control signals.

  RulingsFinal written decision

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

    “considerations are relevant. First, the Specification of the ’285 patent explains that the “flat cable transmits scanning control signals . . . instead of timing control signals.” Ex. 1001, col. 4, ll. 26–28 (emphasis added). In the related proceeding, we observed that this portion of the Specification “suggests a distinction between scanning control signals and timing control signals,” but “does not support unambiguously Patent Owner’s position of complete independence between scan control signals and timing control signals.” Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00535, slip op. at 8 (PTAB Sept. 23, 2015) (Paper 37). We note that a construction of “scan control signals” and “timing control signals” that effected such complete independence would render the negative limitation that “the received scan control signals do not comprise any timing control signals” superfluous in the claims of the ’285 patent. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (citing Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000)); see Gen. Am. Transp. Corp. v. Cryo- Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting district-court claim construction that rendered claim requirement superfluous). Second, we disagree with Petitioner’s contention that Patent Owner’s” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “3. Means-Plus-Function Limitations Claims 1–6 include several terms recited as “means for” performing identified functions. In the Institution Decision, we construed these recitations under 35 U.S.C. § 112, ¶ 6, as follows. Dec. 7–8. We see no reason to alter those constructions based on the positions of the parties as developed during the trial, and accordingly adopt them herein.” slip op. at 9

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

    “generation of timing control signals in response to receipt of scan control signals, “wherein the [received] scan control signals do not comprise any timing control signals.” Petitioner contends that all limitations of the independent claims, including this recitation, are disclosed by Hayashi. Pet. 17–25. Specifically, Petitioner contends that the set of signals WR*, A<0>, and CDATA<7, . . . ,0> are “scan control signals” and that the signals output by driving clock generating circuit 112 are “timing control signals.” Id. at 17–19. Petitioner identifies a distinction in the functionality of signals WR*, A<0>, and CDATA<7, . . . ,0>, and the functionality of signals output by driving clock generating circuit 112. Because the signals output by the driving clock generating circuit are produced in response to a data value carried by CDATA<7, . . . ,0>, Petitioner contends that CDATA<7, . . . , 0> is not itself a timing control signal. Id. at 19. According to Petitioner, only signals output by Hayashi’s driving clock generating circuit are timing control signals, not signals traveling to the driving clock generating circuit. Id. Petitioner supports its argument with testimony by Richard Carley, Ph.D. Ex. 1002 ¶¶ 52–60, 121–128, 196–203.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Petitioner thus contends that all limitations of the independent claims, including the requirement that “the [received] scan control signals do not comprise any timing control signals,” are disclosed by Tsuboi and Wada. Pet. 41–54. Patent Owner responds that “[p]eople of ordinary skill in the art would readily recognize Tsuboi’s primary scanning synchronization signal and Wada’s synchronization signal TR are timing control signals.” PO Resp. 25. Similar to its argument directed at the Hayashi-based grounds, Patent Owner relies on testimony by Dr. Zech that a “CPU is understood by one of ordinary skill in the art to control a timing generator.” Id. at 25–26 (citing Ex. 2004 ¶ 69). Patent Owner observes that “Tsuboi’s primary scanning synchronization signal is generated . . . by CPU 21” and that “Wada’s synchronization signal TR is also generated by a timing generator, namely control signal generating circuit 27.” Id. (citing Ex. 1005 ¶ 39; Ex. 1006 ¶ 18). Patent Owner further notes that Petitioner’s expert, Dr. Carley, acknowledged during his deposition that the primary scanning synchronization signal “is used to align the reading out of the CCD in time, meaning it starts it up.” Id. at 26 (citing Ex. 2006, 72:14–16). Under the claim construction we have adopted, we are persuaded by Patent Owner’s analysis. Based on the evidence before us, we find that Petitioner has not demonstrated that Tsuboi or Wada discloses “wherein the received scan control signals do not comprise any timing control signals,” as recited in each independent claim. Patent Owner’s analysis thus applies to all claims of the ’285 patent. Accordingly, we conclude that Petitioner has not established, by a preponderance of the evidence, that any claim of the ’285 patent is unpatentable over Tsuboi and Wada together or in combination with other art.” slip op. at 17

  Patent outcomesUS 8,300,285 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,300,285

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.