• Deere & Company v. Richard GrammAll claims unpatentable
  PTAB · Sep 22, 2016 · IPR2015-00898 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–11 and 27–34 are unpatentable as obvious over the three instituted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “significantly different, and the differences between their proposed levels of ordinary skill would not affect the outcome of this proceeding.5 In light of our review of the record, including the ’395 patent, the competing expert testimony, and the issues discussed during the oral argument, we agree with different aspects of the parties’ proposals. First, as Petitioner notes in its Reply, a mechanical engineer having familiarity with hydraulic systems and sensors, as Patent Owner proposes, does not have experience necessarily with agricultural equipment or combines. Reply 2, n.1. Thus, Patent Owner’s educational prong is overly broad. Second, Petitioner’s educational prong, on the other hand, is too narrow, requiring “design” of combines or agricultural equipment. Third, we find that Petitioner’s experience prong also is too narrow, because it requires experience specifically in the “design” of agricultural equipment or combines. Accordingly, we find that the level of ordinary skill in the art is “a mechanical engineer having familiarity6 with agricultural equipment, such as combines, and hydraulic systems and 5 Indeed, neither party argues that any difference between the proposed levels of ordinary skill would affect the outcome of this proceeding. 6 The familiarity may have been gained, as proposed by Petitioner, by “approximately three years of experience in combine or agricultural equipment design, including components thereof, such as headers and header height control systems” (Pet. 5 (citation omitted)), but also may have been gained through other experience. sensors” or “a person having 10 or more years of experience7 working with combines.”8” slip op. at 11

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

    “We agree with Petitioner that under either party’s proposed construction, Cleveland’s sensor arm, including spring 38, is flexible. See infra pages 41–42 (Section III.B.5.a.ii.b)2.b.). Accordingly, we need not choose between either party’s proposed constructions. 2. Other Claim Terms The parties propose constructions for several additional claim terms, including “pre-loaded,” “angular deflection sensing means,” “control means,” “biasing means,” “first stop means,” “second stop means,” “guard means,” and “flange.” Pet. 11–15; Resp. 19–23. Although the parties have some disagreement as to the meaning of several of these terms, there is no dispute that the references upon which we instituted review disclose these elements of the claims.4 Accordingly, there is no controversy as to these terms that requires our resolution in order to ascertain whether the claims would have been obvious to one of ordinary skill in the art as of the time of the invention in light of the references and arguments before us.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingMixed

    “a “header” or a “combine” per se; rather, it is a header height control apparatus—an “apparatus for detecting and controlling the height above the soil of an agricultural machine as it traverses a field.” Ex. 1001, 1:11–13. Nonetheless, there is no prohibition on a patentee drafting his or her claim in a manner that further limits the invention if additional structure is recited in the claim. As argued by Patent Owner, the recitation of “a non-cut crop header” and “a combine” in the preamble of claim 1, provide antecedent basis for at least two terms recited in the body of the claim—“the header” and “said combine.” The body of the claim reflects that the patentee chose to claim the header control apparatus in terms not limited to said apparatus standing alone, but rather the apparatus as attached (coupled) to the header of a combine. See, e.g., Ex. 1001, 7:33–34 (“a pre-loaded, generally linear flexible arm coupled to a forward portion of the header” (emphasis added)); 7:44–45 (“control means coupled to said header” (emphasis added)); 7:48– 51 (“wherein said flexible arm and angular deflection sensing means are attached to a head housing disposed on a forward portion of said combine” (emphases added)); 7:54–56 (“wherein said mounting bracket further couples said flexible arm to a forward end of said head housing” (emphasis added)). The prosecution history reflects that the patentee at first desired the recitation of “header” in the claim to be limited to “non-cut crop” headers, in an attempt to distinguish cut crop headers. Ex. 1002, 142 (Amendment filed June 19, 2000). The examiner, however, did not accept such argument (id. at 152–53 (Office Action mailed Aug. 24, 2000)), and the patentee did not reiterate or maintain the argument in amending the claims following the August 24, 2000, final rejection. Id. at 158–63 (Amendment filed Nov. 22, 2000). Nonetheless, the prosecution history is informative on this issue. In light of our discussion above regarding the claim language, specification, and the prosecution history, we do not construe the entire preamble as limiting. In particular, the preamble recites an apparatus for maintaining, and is presented clearly as reciting an intended use. That being said, we agree with the Patent Owner that the phrase “non-cut crop header” limits the terms “the header” and “said header” recited in the body of claim 1 such that “the header” and “said header” recited in the body of claim 1 are the same “non-cut crop header” recited in the preamble of the claim.13” slip op. at 23

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

    “e. Conclusion of Obviousness We have considered Petitioner’s evidence and argument and determine that the combination of DPC, Chmielewski, Cleveland, and DA meets the limitations of claims 1–7, 10, 27, 28, and 34, and that one of ordinary skill in the art would have had reason, with rational underpinning, for combining the teachings of these references. We have considered Patent Owner’s arguments to the contrary and determine that they are unpersuasive. The parties do not introduce or rely on objective indicia of nonobviousness. After weighing the evidence, we conclude that Petitioner has shown, by a preponderance of the evidence, that claims 1–7, 10, 27, 28, and 34 would have been obvious over DPC, Chmielewski, Cleveland, and DA.” slip op. at 61

  Patent outcomesUS 6,202,395 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,202,395
• Qualcomm Inc. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-01577 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, 4, 13, 14, 16, 25, 26, 28, and 29 are unpatentable; claims 3, 15, and 27 were not shown unpatentable, with the specified-vote limitation not established.

  RulingsFinal written decision

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

    “sequence.” Petitioner’s declarant, Dr. Zhi Ding, attests that the phrase is “a well-understood term of art.” Ding Decl. ¶ 35 (citing Ex. 1016, 127–33). Consistent with Dr. Ding’s testimony, we applied a preliminary construction of “hopping sequence” in the Institution Decision as “the order in which the communications network hops among the set of frequencies.” Dec. 7. That construction is not contested by Patent Owner, and we adopt it for this Final Written Decision.” slip op. at 8

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

    “as disclosed by Gerten’s description of modified frequency hopping schemes. Id. at 14. In doing so, Petitioner notes that Gerten discloses periodic updating of the modified frequency hopping scheme, supporting a conclusion that Gerten discloses selection at different times. Id. at 14, 15– 16. Petitioner highlights this periodic updating to identify distinct “period[s] of time” during which different “set[s] of two or more communications channels [are] used to transmit and receive.” Id. at 15–16 (italics omitted). In addressing independent claim 1’s specific requirement that different sets of channels be used with the second and third communications devices, Petitioner reasons that the process summarized above may be applied by the master device to each of the slave devices separately: “the master device of Gerten performs a service discovery request to determine if each slave device has interference avoidance capabilities.” Id. at 18 (emphasis added) (citing Ding Decl. ¶ 53; Ex. 1003, col. 4, ll. 38–51). Thus, Petitioner argues, if one slave has such interference avoidance capabilities, communications with that slave may take place using a modified frequency hopping scheme; if another (legacy) slave lacks such interference avoidance capabilities, communications take place using a normal mode with default communications channels that are not changed based on channel performance. Id. at 18 (citing Ding Decl. ¶ 55); see id. at 16–17. Thus, Petitioner concludes, the recited transmissions and receptions from the third communications device over default communications channels occur “while” transmitting to and receiving from the second communications device over the first and second sets of communications channels, as we have construed the term “while.” Petitioner supports this reasoning with testimony by Dr. Ding, which we credit. Id. at 18 (citing Ding Decl. ¶¶ 53– 55).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “Petitioner further provides persuasive reasoning why a person of ordinary skill in the art would have combined the relevant teachings of Gerten and Cuffaro, including that “Cuffaro and Gerten are in the same field of endeavor” of selecting channels to avoid interference in a communications system; that measuring interference signal strength at a slave device such as described by Cuffaro provides a more accurate determination of the impact of the receiver unit from the interference on a given channel, and, therefore, would provide more accurate identification of bad channels in Gerten; and that Gerten suggests such a modification by describing that both a master and a slave can participate in identifying channels to avoid. Pet. 30–31. Petitioner supports this reasoning with declaration testimony by Dr. Ding. Ding Decl. ¶¶ 128, 129.” slip op. at 24

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). Patent Owner understates the degree to which Petitioner addresses the analogousness of the art by focusing on Petitioner’s contention that Gerten and Cuffaro are in the same field of endeavor. PO Resp. 40 (citing Pet. 30). Petitioner also addresses the second prong of the Clay test by providing reasons why a person of skill in the art would use the transmitted performance data of Cuffaro in the selection process of Gerten, including improved accuracy in determining the impact on the receiver unit from the interference on a given channel. See Pet. 31. We agree with Petitioner’s reasoning and find that Cuffaro and Gerten are analogous art to the claimed invention at least because they are reasonably pertinent to the particular problem with which the inventor was involved. We conclude that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 14, and 26 are unpatentable under 35 U.S.C. § 103(a) over Gerten and Cuffaro.” slip op. at 26

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• Kingston Technology Company, Inc. v. Catr Co. Ltd.Some claims unpatentable
  PTAB · May 10, 2016 · IPR2015-00559 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 9, 14, 17, 19, and 21–23 are unpatentable as obvious over Matsumiya and Deng and over Wu and Hoogesteger; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “1. Level of Ordinary Skill in the Art In our Final Written Decision in IPR 149, we found “that one of ordinary skill in the art would have had a degree in mechanical engineering or industrial design, but also a general understanding of the use of electrical components, which may be incorporated in mechanical designs.” IPR 149 Decision 23. The parties present the same arguments here, with respect to their views of the level of ordinary skill in the art, as they did in IPR 149. Accordingly, for the reasons discussed in our Final Written Decision in IPR 149 we adopt the same level of skill here. Id. at 22–23.” slip op. at 17

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Second, Dr. Wolfe testified that Matsumiya discloses “a shaft” that protrudes from each side of the case. Ex. 1016 ¶ 97. On cross-examination, however, Dr. Wolfe admitted that while Matsumiya could disclose a “split axle,” “normally, you’d presume that it’s a through axle.” Ex. 2012, 85:9– 18. Dr. Wolfe did not explain in his direct testimony how either an axle or split axle would be integrated with or attached to at least one side of the case. Third, Petitioner relied on the express disclosure of Matsumiya, not a modification of Matsumiya, as teaching this element of the claims. See Pet. 16 (relying only on Matsumiya’s disclosure). In its Reply, Petitioner asserts, for the first time, that Matsumiya “could also use a snap hinge,” pointing to Professor Visser’s cross-examination testimony. Reply 13 (citing Ex. 1050, 127:9–11). Professor Visser’s testimony, however, does not support Petitioner’s argument. Professor Visser testified that Matsumiya does not show a snap-on hinge, and that a snap-on hinge would not have the same functionality as an axle. Ex. 1050, 127:18–21. He also testified that the two concentric rings on the arms of Matsumiya are inconsistent with a snap-on hinge. Id. at 128:17–20. Thus, the issue before us is not whether it would have been obvious to modify Matsumiya to include a snap-on hinge or hinge protuberance on the side of the case because that was not the basis set forth in the Petition and upon which we instituted review; rather, the issue is whether Petitioner has shown that Matsumiya discloses a hinge element or hinge protuberance integrated with or attached to at least one side of the case. In light of the record before us, and as detailed in the discussion above, we conclude that Petitioner has not shown that Matsumiya discloses a hinge element or a hinge protuberance “formed on at least one side of the case.” We find that Petitioner has failed to present sufficient evidence to show that Matsumiya discloses this element of the claims, and we find Patent Owner’s evidence in the form of Dr. Wolfe’s cross-examination testimony and Professor Visser’s testimony more persuasive.” slip op. at 22

  • Obviousness (§103) › Analogous artNon analogous artDecided for patent owner

    “Id. at 1:14–23. Accordingly, we find that Kindig’s field of endeavor is hinged enclosures to house appliances that make noise when operated. The ’544 patent states that “[t]he present invention relates to a flash memory apparatus, and more particularly to a flash memory apparatus, wherein a cover is not completely separated from the main body upon being in use so that lost [sic] of the cover is prevented.” Ex. 1001, 1:8–11. The ’544 patent is largely directed to a cover that rotates with respect to a case (as is evident from the parties’, and consequently our, extensive discussion of the hinged connection (i.e., hinge protuberances and hinge holes)), but is not readily disconnected. In fact, the ’544 patent discloses the recited “hooking groove” and “hooking threshold” specifically to prevent the hinge hole from being easily detached from the hinge protuberance. Id. at 3:36–43 (“Furthermore, a hooking groove 34 is preferably formed on the lower periphery of the hinge protuberance 33. A hooking threshold 45 is hooked on the hooking groove 34 and is preferably formed on a rim confining the hinge hole 41 in order to prevent the hinge hole 41 from being easily detached from the hinge protuberance 33 after joining of the hinge hole 41 and the hinge protuberance 33.”). Thus, we find that the ’544 patent’s field of endeavor is hinge assemblies for a flash memory apparatus.” slip op. at 32

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

    “Second, Petitioner asserts that Kindig’s hinge connection “would advantageously help to retain connection between the cover of Matsumiya and the memory card,” id. at 25, but Petitioner has not shown that Matsumiya fails to retain the connection between case and cover or has difficulty doing so. Rather, from our review the record supports that Matsumiya’s cover is securely attached to the case. Additionally, we are unaware of any teaching in Matsumiya of disconnecting the cover from the case. Similarly, the ’544 patent aims to avoid disconnecting the cover from the case, as discussed above. Kindig, however, is directed to an easily detachable cover. Accordingly, Petitioner’s reason—as to why one of ordinary skill in the art would have been prompted to modify Matsumiya by adding the elements of claim 13 from Kindig—lacks a rational underpinning. 3. Conclusion of Obviousness For the foregoing reasons, after consideration of the entire record, we” slip op. at 35

  Patent outcomesUS 6,926,544 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,926,544
• LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentable
  PTAB · May 9, 2016 · IPR2015-01406 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1, 2, and 5 of the ’469 patent and claim 3 of the ’121 patent are unpatentable as obvious; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Patent Owner’s argument is not persuasive. We agree with Petitioner that 35 U.S.C. § 315(b) applies only to civil actions for patent infringement, and not to an administrative proceeding, including an ITC investigation. See Amkor, Paper 98, slip op. at 6–18; Brinkman Corp. v. A&J Mfg., LLC, Case IPR2015-00056, slip op. at 7–8 (PTAB Mar. 23, 2015) (Paper 10). Although Amkor and Brinkman Corp. are not precedential, we find them instructive and directly on point. In Amkor, the Board determined that “had Congress intended for arbitration, ITC, or other non-judicial proceedings to trigger the time bar of section 315(b), it would have used more encompassing language than ‘Patent Owner’s Action’ and ‘served with a complaint,’ which are harmonious with a civil action.” Amkor, Paper 98, slip op. at 11 (determining that the time bar is limited to being triggered by the service of a complaint in a civil action). A similar decision by the Board in Brinkman Corp. reaches the same result and specifically is directed toward an ITC investigation. Accordingly, we are not persuaded by Patent Owner that Petitioner is barred under 35 U.S.C. § 315(b).” slip op. at 18

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

    “running instance of a computer program or application.” PO Resp. 26‒31. Petitioner accepts Patent Owner’s proposed construction. Pet. Reply 6; Tr. 20:1–4. Petitioner and Patent Owner, however, disagree as to whether a computer with an operating system is a computer program, and, therefore, a “process.” PO Resp. 26–36; Pet. Reply 7–10. In Ancora Technologies, the Federal Circuit explained that “[t]he ordinary meaning of the word ‘program’ in the computer context encompasses both operating systems and the applications that run on them (as well as other types of computer programs)” and “‘to a computer programmer’ a program is merely a ‘set of instructions’ for a computer.” Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 734 (Fed. Cir. 2014). Applying this guidance to the case before us, we agree with Petitioner and construe the term “process” to mean “a running instance of a computer program or application,” where a “computer program” is a set of instructions for a computer that encompasses both operating systems and the applications that run on them. We further note that the ʼ704, ʼ469, and ʼ121 patent specifications interchange the terms “process” and “processing unit.” For example, the specifications explain that a first “processing unit” is “established in the database [] as an active on-line party.” Ex. 1001, 5:29–34. The claims recite the term “process.” Accordingly, our construction is also consistent with the specifications, such that a “process” includes a “processing unit” that is running a program (operating system) or application.” slip op. at 15

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

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. 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. 1003, 62–63, 68–69. 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 68. 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 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to 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 above (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. 1003, 68, 150. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein.” slip op. at 23

  • ExcludeOther

    “Exhibits 2021, 2028, 2031, 2033, 2034, 2035, 2036, and 2039. Mot. 1. Petitioner specifically argues that Exhibits 2021, 2028, 2031, 2033, 2034, 2035, and 2036 should be excluded because these Exhibits are irrelevant under Federal Rule of Evidence 401. Id. at 1‒5. Petitioner also argues that Exhibits 2028 and 2033 have not been authenticated under Federal Rules of Evidence 901(b)(1). Id. at 1‒3. Petitioner additionally argues that Exhibits 2028, 2033, and 2039 should be excluded as hearsay under Federal Rules of Evidence 802. Id. Because our decision does not rely on any of the challenged Exhibits, we dismiss Petitioner’s Motion to Exclude as moot.” slip op. at 34

  Patent outcomesUS 6,108,704 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,108,704
• LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentable
  PTAB · May 9, 2016 · IPR2015-01407 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1, 2, and 5 of the ’469 patent and claim 3 of the ’121 patent are unpatentable over prior art; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Patent Owner’s argument is not persuasive. We agree with Petitioner that 35 U.S.C. § 315(b) applies only to civil actions for patent infringement, and not to an administrative proceeding, including an ITC investigation. See Amkor, Paper 98, slip op. at 6–18; Brinkman Corp. v. A&J Mfg., LLC, Case IPR2015-00056, slip op. at 7–8 (PTAB Mar. 23, 2015) (Paper 10). Although Amkor and Brinkman Corp. are not precedential, we find them instructive and directly on point. In Amkor, the Board determined that “had Congress intended for arbitration, ITC, or other non-judicial proceedings to trigger the time bar of section 315(b), it would have used more encompassing language than ‘Patent Owner’s Action’ and ‘served with a complaint,’ which are harmonious with a civil action.” Amkor, Paper 98, slip op. at 11 (determining that the time bar is limited to being triggered by the service of a complaint in a civil action). A similar decision by the Board in Brinkman Corp. reaches the same result and specifically is directed toward an ITC investigation. Accordingly, we are not persuaded by Patent Owner that Petitioner is barred under 35 U.S.C. § 315(b).” slip op. at 18

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

    “connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query 11 Petitioner argues that the relevant specifications do not include an embodiment that “guarantee[s]” that an entry in its database is online, and, therefore, Patent Owner’s argument does not distinguish the ’704, ’469, and ’121 patents over the prior art. Addʼl Br. 6‒7. However, such an argument goes towards whether there is written description and enablement support for the claims. In Straight Path, the Federal Circuit did not offer a view as to the sufficiency of the written description or enablement based on the 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.” Id. The Federal Circuit further explained that “[i]t 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.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time that the query is transmitted to the server.” Id. at 1363.” slip op. at 12

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

    “Petitioner further contends that WINS discloses that NetBIOS is incorporated into the WINS system and expressly discloses that WINS should be combined with NetBIOS. Id. at 37–38 (citing 198 Ex. 1002 ¶ 81; Ex. 1003, 65). Accordingly, Petitioner concludes that one of ordinary skill in the art would have known about and been motivated to combine the references. Id. Petitioner further contends that a person with ordinary skill in the art would have been motivated similarly to combine WINS and NetBIOS with Pinard because Pinard discloses a telephony application with a graphical user interface that allows a user to establish and manage telephone calls. Id. at 38–39. Petitioner specifically argues that Pinard references Windows 3.1 and WINS references Windows 3.11 and Windows NT, and, therefore, a person with ordinary skill in the art would have known how to adapt the graphical user interfaces in Pinard to the system in WINS. Id. We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by WINS, and Pinard’s program is compatible with a Windows operating system, and, therefore, a person with ordinary skill in the art would have readily combined the disclosures of WINS, NetBIOS, and Pinard.” slip op. at 30

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

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. 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. 1003, 62–63, 68–69. 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 68. 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 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to 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 above (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. 1003, 68, 150. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1004, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to WINS, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of WINS and NetBIOS fails to teach or” slip op. at 23

  Patent outcomesUS 6,131,121 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,131,121
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Straight Path IP Group, Inc.Some claims unpatentable
  PTAB · Mar 4, 2016 · IPR2015-01007 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1, 2, 5, and 10 of the ’469 patent were held unpatentable; the remaining challenged claims were not shown unpatentable because the cited art did not establish current network connection status.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “and NetBIOS fail to determine whether a computer or process is connected to the computer network. PO Resp. 35, 49–51. In view of our construction of this claim limitation, we agree with Patent Owner. Microsoft Manual 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. 1012, 62– 63, 68–69. Microsoft Manual 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 68. Microsoft Manual 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 150. In other words, Microsoft Manual discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in Microsoft Manual 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 above (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. Microsoft Manual 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. 1012, 68, 150. As such, we determine that Microsoft Manual does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein.” slip op. at 19

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

    “In Ancora Techs., the Federal Circuit explained that “[t]he ordinary meaning of the word ‘program’ in the computer context encompasses both operating systems and the applications that run on them (as well as other types of computer programs)” and “‘to a computer programmer’ a program is merely a ‘set of instructions’ for a computer.” Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 734 (Fed. Cir. 2014). Applying this guidance to the case before us, we agree with Petitioner and construe the term “process” to mean “a running instance of a computer program or application,” where a “computer program” is a set of instructions for a computer that encompasses both operating systems and the applications that run on them. We further note that the ʼ704, ʼ469, and ʼ121 patent specifications interchange the terms “process” and “processing unit.” For example, the specifications explain that a first “processing unit” is “established in the database [] as an active on-line party.” Ex. 1001, 5:29–34. The claims recite the term “process.” Accordingly, our construction is also consistent with the specifications, such that a “process” includes a “processing unit” that is running a program (operating system) or application.” slip op. at 14

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

    “Petitioner contends that “WINS is an implementation of NetBIOS” and, therefore, Petitioner contends that “one having skill in the art would have known about and been motivated to combine Microsoft Manual with NetBIOS.” Id. at 34 (citing 67 Ex. 1004 ¶¶ 88–89). We are persuaded by Petitioner that the combination is reasonable because Microsoft Manual demonstrates that Microsoft TCP/IP has combined the elements of NetBIOS and Microsoft Manual in the same manner in which Petitioner proposes to combine NetBIOS and Microsoft Manual. See 67 Ex. 1012, 3, 11. Microsoft Manual discloses that Microsoft TCP/IP for Windows NT provides support for application interfaces, including NetBIOS for establishing logical names and sessions on the network. Id. at 11. Microsoft Manual describes that “[w]hen WINS servers are in place on the network, NetBIOS over TCP/IP resolves names on a client computer by communication with the WINS server.” 67 Pet. 34 (quoting 67 Ex. 1012, 62). We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by Microsoft Manual, and a person with ordinary skill in the art would have readily combined the disclosures of Microsoft Manual and Microsoft Manual.” slip op. at 25

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

    “and NetBIOS fail to determine whether a computer or process is connected to the computer network. PO Resp. 35, 49–51. In view of our construction of this claim limitation, we agree with Patent Owner. Microsoft Manual 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. 1012, 62– 63, 68–69. Microsoft Manual 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 68. Microsoft Manual 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 150. In other words, Microsoft Manual discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in Microsoft Manual 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 above (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. Microsoft Manual 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. 1012, 68, 150. As such, we determine that Microsoft Manual does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1014, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to Microsoft Manual, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of Microsoft Manual and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 19

  Patent outcomesUS 6,009,469 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,009,469
• HTC Corporation / HTC America, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Feb 3, 2016 · IPR2014-01198 · APJ James B Arpin · IPR · Final written decision

  Claims 1–3 and 5 are unpatentable as obvious over Sears and as obvious over Sears and Nguyen.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “A party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party must construct an embodiment or perform a process that satisfies every element of the claim at issue, and (2) the embodiment or process must operate for its intended purpose. See Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). Moreover, in order to demonstrate an actual reduction to practice, the constructed embodiment must have been tested sufficiently to demonstrate that it will work for its intended purpose, but it need not be in a commercially satisfactory stage of development. See, e.g., Scott, 34 F.3d at 1062; see also Wells v. Fremont, 177 USPQ 22, 24–25 (BPAI 1972) (“[E]ven where tests are conducted under ‘bench’ or laboratory conditions, those conditions must ‘fully duplicate each and every condition of actual use’ or if they do not, then the evidence must establish a relationship between the subject matter, the test condition and the intended functional setting of the invention,” but it is not necessary that all the conditions of actual use are duplicated.). Further, an actual reduction to practice can be done by another on behalf of the inventor. De Solms v. Schoenwald, 15 USPQ2d 1507, 1510 (BPAI 1990). Here, it is undisputed that Concept Electronique, rather than the named inventor, Mr. Charrat, fabricated the prototype, on which Patent Owner relies to establish actual reduction to practice. PO Resp. 17–18. Assuming initially, without deciding, that the prototype embodies the subject matter of the challenged claims, the issue is whether Patent Owner has sufficiently shown that the Concept Electronique-built prototype inures to Patent Owner’s benefit. We determine that Patent Owner has not.” slip op. at 23

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “To antedate . . . an invention, a party must show either an earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.” Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (emphasis added, internal citation omitted). Patent Owner’s position is based on the first of these options, i.e., that it was the first actually to reduce the invention to practice, rather than the first to conceive plus diligent reduction to practice. PO Resp. 9; PO Sur-Reply 4–5. A party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party must construct an embodiment or perform a process that satisfies every element of the claim at issue, and (2) the embodiment or process must operate for its intended purpose. See Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). Moreover, in order to demonstrate an actual reduction to practice, the constructed embodiment must have been tested sufficiently to demonstrate that it will work for its intended purpose, but it need not be in a commercially satisfactory stage of development. See, e.g., Scott, 34 F.3d at 1062; see also Wells v. Fremont, 177 USPQ 22, 24–25 (BPAI 1972) (“[E]ven where tests are conducted under ‘bench’ or laboratory conditions, those conditions must ‘fully duplicate each and every condition of actual use’ or if they do not, then the evidence must establish a relationship between the subject matter, the test condition and the intended functional setting of the invention,” but it is not necessary that all the conditions of actual use are duplicated.). Further, an actual reduction to practice can be done by another on behalf of the inventor. De Solms v. Schoenwald, 15 USPQ2d 1507, 1510 (BPAI 1990). Here, it is undisputed that Concept Electronique, rather than the named inventor, Mr. Charrat, fabricated the prototype, on which Patent Owner relies to establish actual reduction to practice. PO Resp. 17–18. Assuming initially, without deciding, that the prototype embodies the subject matter of the challenged claims, the issue is whether Patent Owner has sufficiently shown that the Concept Electronique-built prototype inures to Patent Owner’s benefit. We determine that Patent Owner has not. slip op. at 23

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “in the art as “a person with at least a master’s degree in electrical engineering (or a substantively equivalent degree), in addition to two years of experience with systems that use short-range wireless communication, such as radio frequency identification (RFID) systems.” Ex. 1003 ¶ 12 (emphasis added); Ex. 1031 ¶ 18; see also Pet. 8 (adopting this definition). Patent Owner’s declarant, Dr. Alyssa B. Apsel, defines a person of ordinary skill in the art as a person having “at least a bachelor’s degree in electrical 7 Patent Owner does not contend in the Patent Owner Response that secondary considerations are present that would render the challenged claims patentable over the applied references. See Paper 11, 2–3. engineering (or an equivalent degree), and two years of experience with short-range wireless communication systems.” Ex. 2027 ¶ 13 (emphasis added); see PO Resp. 9, 45, 47. The proposed definitions differ primarily in level of academic achievement, with Patent Owner’s declarant proposing a lower level. Based on Exhibit 1003 (Attachment A) and Exhibit 2028, both Dr. Tentzeris and Dr. Apsel meet or exceed the requirements for qualification as a person of ordinary skill in the art under either definition. Moreover, neither party challenges the other party’s declarant’s credentials. Therefore, to the extent necessary, we adopt Dr. Apsel’s definition of a person of ordinary skill in the art.” slip op. at 32

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

    “Specifically, Patent Owner contends that “[t]his method of modulating the power does not involve ‘setting’ the buffers to any particular value; it only involves changing the duty cycle of the input they receive.” Id. (citing Ex. 2027 ¶ 58). Nevertheless, because Sears’s Figure 5 depicts a square wave provided by buffers 200A–200F, we are persuaded that Sears teaches a control circuit comprising binary ports or teaching or suggesting binary ports. See Ex. 1003 ¶¶ 30, 31. In addition, Petitioner argues that buffers 200A–200F are “tristatable” because “buffers (200A–200F) are used to yield (1) a high level output, (2) a low level output, or (3) complete disconnection that amounts to a high impedance state.” Pet. 16 (citing Ex. 1004, col. 5, ll. 4–8, col. 6, ll. 39–46; Ex. 1003 ¶¶ 32, 33). Moreover, each buffer 200 may be “constructed from a CMOS hex inverter integrated circuit” that drives a load impedance that is either “a low impedance load, such as the electromagnetic antenna 108B, or a high or infinite impedance load.” Id. at 16 (quoting Ex. 1004, col. 4, ll. 36–42). Petitioner discusses the application of Sears’s disclosure of a CMOS hex inverter circuit and why a person of ordinary skill in the art would understand that this circuit teaches the control circuit recited in the challenged claims. Pet. 15–16; see Ex. 1003 ¶ 33 (“A [person of ordinary skill in the art] would have understood that a tristatable CMOS inverter, as described in Sears, provides output in one of three states: logic 0, logic 1, and high impedance.”). Consequently, we are persuaded that Petitioner has identified sufficiently “the scope and content of the prior art . . . ; differences between the prior art and the claims at issue . . . ; and the level of ordinary skill in the art.” Graham, 383 U.S. at 17.” slip op. at 36

  Patent outcomesUS 6,700,551 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,700,551
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00836 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious over the cited combinations of the EFA Manual, Thomas, and, where applicable, Greene or Brigham.

  RulingsFinal written decision

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

    “term “anomaly” is “deviation from the normal or common order, form, or rule.” Dec. on Inst. 7 (citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 54 (1975)); Ex. 3001, 54. The examples provided in the ’856 patent for identifying a voltage anomaly are consistent with this definition. Namely, a spike in the electric field or an increase in the electric field above a threshold would indicate a deviation from the normal order. Ex. 1002, col. 17, ll. 12–19, col. 18, ll. 8–9, col. 19, ll. 62–67, col. 21, ll. 4– 7. Therefore, we determined that the broadest reasonable interpretation of the phrase “identify the voltage anomaly in the electric field” in claim 1 of the ’856 patent is “identify a deviation from a normal voltage in the electric field, including by identifying an electric field that exceeds a threshold, or that rises and peaks above a threshold or background and then falls.” Dec. on Inst. 7. We see no reason now to deviate from that construction.” slip op. at 8

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

    “obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–27, 42–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1022 ¶¶ 51–55, 65–67. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 52–53; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1022 ¶¶ 104–106; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 54–56; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1022 ¶¶ 109–110; see KSR, 550 U.S. at 416.” slip op. at 16

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

    “c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1022 ¶¶ 52–53.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’856 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23

  Patent outcomesUS 8,536,856 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,536,856
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00834 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious under § 103(a) over the specified combinations of the EFA Manual, Thomas, and, for dependent claims, Greene or Brigham.

  RulingsFinal written decision

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

    “proposed construction is not the broadest reasonable interpretation, and we see no reason now to deviate from that determination. Dec. on Inst. 5–6. Specifically, the word “unexpected” in Petitioner’s proposed construction is not found anywhere in the claims or the written description of the ’274 patent, and we are not persuaded that the word “unexpected” is synonymous with “undesirable” or “dangerous.” Further, Petitioner does not explain how any of the cited portions of the prosecution history show that the “voltage anomaly” recited in claim 1 is an unexpected voltage. Pet. 15–17.” slip op. at 6

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

    “obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 25–28, 43–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1023 ¶¶ 51–55, 64–66. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 53–54; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1023 ¶¶ 100–102; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 55–57; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1023 ¶¶ 105–106; see KSR, 550 U.S. at 416.” slip op. at 16

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

    “c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1023 ¶¶ 52–53.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’274 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23

  Patent outcomesUS 8,482,274 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,482,274

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.