• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics, Inc.Some claims unpatentable
  PTAB · Jan 25, 2016 · IPR2014-01204 · APJ Matthew R Clements · IPR · Final written decision

  Claims 51, 56, 57, and 59–61 are unpatentable as obvious; claims 12 and 13 were not shown unpatentable because Broggi did not teach ignoring edges not indicative of objects of interest.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “The premise of Patent Owner’s argument is that evidence that is not based on personal knowledge is not relevant. Personal knowledge is not a necessary condition of relevance. Rather, evidence is relevant if it has any tendency to make a fact more or less probable than it would be without the evidence and the fact is of consequence in determining this case. See FRE 401.” slip op. at 13

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Under the broadest reasonable interpretation, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In the Decision to Institute we determined that neither “algorithmically processes captured image data to a reduced data set” nor “target zone” required express construction. Dec. to Inst. 14–15. Neither party disputes our determination or proposes additional terms for construction.” slip op. at 22

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

    “upon a public use or a sale; rather, the ground must be based upon prior art in the form of a patent or a printed publication. 35 U.S.C. § 311(b); 35 U.S.C. § 102. The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Neither distribution nor indexing is a necessary condition for being a “printed publication;” rather, the key inquiry is whether or not a reference has been made “publically accessible.” Id. at 1348.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s expert, Dr. Frahm, provided testimony regarding the level of skill in the art. See Ex. 1013 ¶¶ 43–48. Although the level of skill in the art is not discussed in the Petition, Dr. Frahm acknowledged that obviousness is viewed from the perspective of a person of ordinary skill in the art, and applied that standard to his evaluations. Id. at ¶¶ 28–29. That is, Dr. Frahm’s evaluations of the grounds of unpatentability based on obviousness is based on the perspective of a person of ordinary skill in the art at the time of the claimed invention, and this analysis is cited and explained in the Petition. Patent Owner’s contention is unpersuasive, in part, because it does not address the merits of the level of skill in the art provided. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Patent Owner’s assertion fails to address how the level of skill in the art impacted the obviousness analysis.” slip op. at 35

  Patent outcomesUS 8,386,114 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,386,114
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics, Inc.Some claims unpatentable
  PTAB · Dec 21, 2015 · IPR2014-01208 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 2, 3, 5, 7, 11, 12, 18, 19, 21–23, 25, 26, 28, 32–35, 37, 40, and 44–46 are unpatentable; claim 24 was not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “§ 42.64(c). Patent Owner seeks to expunge (vice exclude) the Broggi Declaration (Ex. 1033) because it was not timely served in response to Patent Owner’s first set of objections. See id. at 12; Opp. Reply 1–2.; Ex. 1036, 2; Ex. 2015; 37 C.F.R. § 42.64(b)(2). As the moving party, Patent Owner bears the burden of proof. See 37 C.F.R. § 42.20(c). We address first Exhibit 1033 and then the remaining exhibits in reverse chronological order of their filing. 1. Broggi Declaration (Ex. 1033) As explained above, the Broggi Declaration is not supplemental evidence because the objection to which it was served in response was not proper. Because the Broggi Declaration is not evidence, supplemental evidence, or supplemental information, we expunge it.” slip op. at 15

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

    “4. Summary Broggi is a printed article titled “Multi-Resolution Vehicle Detection using Artificial Vision.” The first page makes reference to the 2004 IEEE Intelligent Vehicles Symposium held at the University of Parma in Parma Italy on June 14–17, 2004, and includes a copyright date of 2004 that is consistent with this information. Broggi is not marked with any limitations regarding dissemination. Dr. Frahm, as a person who has chaired an IEEE conference and regularly attended IEEE conferences, states that it is his experience that IEEE papers, such as Broggi, that are presented are made publically available at that conference as is indicated on the face of the paper. Although he did not attend the Symposium, the Senior Director of Publishing Technologies for IEEE, Mr. Grenier, states that IEEE records indicate that Broggi was published and presented as part of the proceedings on the date of the Symposium. The Office Manager of the Internet Archive, Mr. Butler, provides records that indicate that Broggi was posted to a public website no later than October 12, 2004.” slip op. at 34

  • Skill levelDecided for patent owner

    “Petitioner’s expert, Dr. Frahm, provided testimony regarding the level of skill in the art. See Ex. 1010 ¶¶ 43–48. Although the level of skill in the art is not discussed in the Petition, Dr. Frahm acknowledged that obviousness is viewed from the perspective of a person of ordinary skill in the art, and applied that standard to his evaluations. Id. ¶¶ 28–29. That is, Dr. Frahm’s evaluations of the grounds of unpatentability based on obviousness is based on the perspective of a person of ordinary skill in the art at the time of the claimed invention, and this analysis is cited and explained in the Petition. address the merits of the level of skill in the art provided. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Patent Owner’s assertion fails to address how the level of skill in the art impacted the obviousness analysis.” slip op. at 35

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Patent Owner’s Preliminary Response argued that we should deny the Petition based on 35 U.S.C. § 325(d). See Prelim. Resp. 2, 7–12. We considered this argument and declined to exercise our discretion to deny the Petition. See Dec. 12–15. Patent Owner’s current argument adds nothing to 30 We presume the second citation, which is to “§ 315(d)” is a typographical error and “§ 325(d)” was intended. the Petition on that basis.” slip op. at 36

  Patent outcomesUS 7,991,522 mixed
  § 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,991,522
• Parrot S.A. / Parrot, Inc. v. Drone Technologies, Inc.Some claims unpatentable
  PTAB · Oct 20, 2015 · IPR2014-00730 · APJ Howard B Blankenship · IPR · Final written decision

  Claims 1–3, 5–14 are unpatentable: claims 1–3, 5, 10–14 anticipated by Smith; claims 6–7 and 8–9 obvious over Smith with Barr and Fouche, respectively. Claims 4 and 15 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “construe “difference of motion” in claim 4 as relative motion. Pet. Reply 5– 6. Petitioner in its Reply does not, however, provide a persuasive explanation with respect to how the signal sent by the remote controller in Smith, or its “target motion signal” in the terms of claim 4, may contribute to getting the relative motion between the remote controller and the remotecontrolled device.2 Petitioner submits that “[i]t bears noting, moreover, that the ‘target motion signal’ (STAR3) of Fig. 5 of the ’071 Patent, also is a combination of the remote-controller’s measured orientation and the angle of the joystick, just as in Smith. Ex. 1001, 6:39-51. In that embodiment, it is ‘STAR3’ that is used to calculate the ‘difference of motion.’” Pet. Reply. 7. Petitioner refers to no evidence of record, however, to establish that this “third operation mode” described by the ’071 patent necessarily sends, as in Smith, a target motion signal that is the summation of the terrestrial magnetism signal and the orientation of the joystick relative to the remote 2 Although we did not institute trial on the alternative ground that claim 4 would have been obvious over Smith and Fouche (or the knowledge of a person of ordinary skill in the art) (Pet. 29), the alternative ground for obviousness would suffer from the same deficiency as the anticipation ground. controller. Although attorney arguments are helpful when directing us to evidence in the record, the arguments themselves do not constitute evidence. Arguments of counsel cannot take the place of evidence in the record. See, e.g., Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In consideration of the foregoing, we conclude that Petitioner has not demonstrated, by a preponderance of the evidence, that claim 4 is unpatentable as anticipated by Smith.” slip op. at 17

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

    “The ’071 patent, thus, makes clear that, in the preferred embodiment of the invention, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. The “terrestrial magnetism” of the Earth “directs to a fixed direction parallel to the horizontal ground surface.” Id. at col. 3, ll. 63–65. Detecting the orientation of a remote controller with respect to magnetic North is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed. “A claim construction that excludes the preferred embodiment ‘is rarely, if ever, correct and would require highly persuasive evidentiary support.’” Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583–84 (Fed. Cir. 1996)).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “in orientation.” Pet. 17. As Petitioner indicates (id.), the ’071 patent does not provide a definition of the relevant terms different from the ordinary meaning of the words. At the preliminary proceeding stage, we interpreted “difference of motion” simply to mean, under the required broadest reasonable interpretation, relative motion. Dec. on Inst. 10. That interpretation is consistent with the language of claim 4. Claim 4 recites that the “calculated result” — the calculated current motion of the remote-controlled device — is compared with the target motion signal to get the “difference of motion” (relative motion) between the remote-controlled device and the remote controller. In relation to Petitioner’s proffered interpretation, because a change in orientation is a type of motion, relative orientation would be a type (or species) of “difference of motion.”” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Thus, “detecting” the remote controller’s motion is detecting the change in terrestrial magnetism relative to the horizontal ground surface as the controller is moved or rotated, with the resulting terrestrial magnetism sensing signal SG changing accordingly. Patent Owner has not pointed to any disclosure in the ’071 patent of the remote controller storing a previous orientation for comparison with a present orientation to effect “detect[ing] the remote controller’s motion” as claimed. We, therefore, remain convinced that detecting the orientation of a remote controller with respect to magnetic North — which Patent Owner admits Smith to disclose — is, at the least, within the scope of “detect[ing] the remote controller’s motion” as claimed.” slip op. at 13

  Patent outcomesUS 7,584,071 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 7,584,071
• Fiserv, Inc. v. Datatreasury CorporationSome claims unpatentable
  PTAB · Sep 1, 2015 · CBM2014-00088 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 22, 25, 26, 29, 36, 38–43, 50, 51, 55, 62, and 63 are unpatentable as anticipated by Campbell; the remaining instituted claims were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDecided for petitioner

    “B. Patent Owner’s Motion to Exclude Patent Owner moves to exclude Exhibits 1062–1065, filed by Petitioner on April 7, 2015, over two months after Petitioner filed its Reply and 22 days before oral hearing. PO Mot. Excl. 2–3. Petitioner characterizes its submission as “supplemental information” and “apologizes for its oversight” of the “minor procedural defect” of not seeking authorization to file a motion for supplemental information. Pet. Opp. Mot. Excl. 2. We dismiss as moot Patent Owner’s Motion to Exclude because we hereby order the expungement of Exhibits 1062–1065 for being filed without prior authorization.” slip op. at 8

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

    “before (Jack Henry CBM, Paper 17, 9–10).6 PO Resp. 21–22. Patent Owner notes that, if we do not adopt that construction, it will “abide by the Board’s decision.” Id. at 21. We decline to adopt the district court construction, a construction previously considered and not adopted, in the absence of arguments explaining why we should adopt that construction, and in the presence of a statement that Patent Owner will abide by our construction should we not choose to adopt that construction. Upon consideration of the record before us, we maintain that the broadest reasonable interpretation of “subsystem identification information” is “information that identifies a subsystem.”” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1019, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image to refer to different collections of data. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information [that] accompan[ies] those images.” Id. at 5:25–26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed in a prior claim construction of this term, we are persuaded that information identifying the sending institution is a SSID. See Jack Henry CBM, Paper 37, 8–11. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1003 ¶¶ 64–65, 78–84, 91 (Petitioner’s Declarant, Dr. Knox, testifying that the encrypted information in Campbell identifies the receiving institution). Patent Owner argues that Campbell discloses that the controller may be configured to handle encrypted information, which means that it “does not necessarily encrypt subsystem information” and that encryption is not “necessarily always . . . accomplished.” PO Resp. 32–34.14 Patent Owner does not provide an explanation as to how this, even if true, would preclude anticipation: Campbell would still disclose encrypted SSIDs if it disclosed the encryption as a capability but not a necessity of the system. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983) (“The law of anticipation does not require that the reference ‘teach’ what the subject patent teaches. . . . . [I]t is only necessary that the claims under attack, as construed by the court, ‘read on’ something disclosed in the reference, i.e., all limitations of the claim are found in the reference, or ‘fully met’ by it”); see also Pet. Reply 5–6 (arguing that there is no requirement that the prior 14 Later in its Response, Patent Owner argues that, although Campbell may “encrypt the name of th[e] bank,” Campbell does not “encrypt[] identification information that identifies a particular subsystem of the . . . Bank.” PO Resp. 48–49. Thus, Patent Owner appears to recognize that in fact Campbell discloses encrypting the name of the bank (while disputing that the name is sufficient to be a SSID). art mandate the use of a disclosed feature). Notwithstanding, we disagree that Campbell only occasionally encrypts SSIDs, for the reasons explained in the prior paragraph. Reviewing the record before us, we are persuaded that Campbell discloses transmitting an encrypted SSID.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “relay network over a telecommunications company network. Ex. 1002, 12:50–61. Patent Owner’s Declarant, Mr. Ginsberg, acknowledges that Campbell describes transmission of signals over a public switched telephone network, but states that “the ‘central offices’ are not described as being remote from the receiving bank.” Ex. 2004 ¶ 22. Mr. Ginsberg appears to be discussing the portion of Campbell where it describes the signals 16 “Wide Area Network (WAN)[:] A data communications network that covers geographically separated areas, typically containing cities. Thus a WAN is usually composed of Local Area Networks (LAN) interconnected by other communications links hired from a PTT or other common carrier.” Focal Dictionary of Telecommunications (1999) available at http://search.credoreference.com/content/entry/bhfidt/wide_area_network_w an/0 (Ex. 3002). produced by the sending bank being transmitted on network access lines 22 to reach telephone network 10 and, more specifically, that “[t]he signals received by the network on line 22 may be transmitted through the network 10 via . . . one or more central offices to the check image processing node 12.” Ex. 1019, 3:17–43. Mr. Ginsberg does not explain how this passage supports his conclusion. Whether the “central offices” (not relied on by Petitioner for this claim) are remote to the sending bank has no bearing, which we can see, on whether Campbell describes a WAN. Campbell describes transmission of information between the sending bank and the node over a public switched telephone network; it is that communication that Petitioner asserts occurs over a WAN. See Pet. Reply 11–12; Pet. 30–31. A public switched telephone network covers geographically distinct locations. One of ordinary skill in the art would understand that transmitting information over such a network generally involves the sender and receiver being in different locations; likewise, the system of Campbell makes little sense if the banks and the node are all in the same location.17 Accordingly, Mr. Ginsberg’s testimony on this point is unpersuasive. On the other hand, Petitioner’s Declarant, Dr. Knox, explains how the Campbell system uses a public switched telephone network and a frame relay network, which Dr. Knox testifies is a type of WAN. Ex. 1003 ¶ 158. This testimony is persuasive, under its own reasoning and because, as” slip op. at 21

  Patent outcomesUS 6,032,137 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,032,137
• Fiserv, Inc. v. Datatreasury CorporationSome claims unpatentable
  PTAB · Sep 1, 2015 · CBM2014-00087 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 22, 26, 29, 36, 38–42, 46–49, 58–60, 66–69, 73, 74, 80, 82–84, 88–91, 102, 106–110, and 114–123 are unpatentable as anticipated by Campbell; the remaining challenged claims were not shown …

  RulingsFinal written decision

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

    “In our Decision to Institute this trial, we determined the broadest reasonable interpretation of “subsystem identification information” is “information that identifies a subsystem.” Dec. Inst. 8. There, as here, we relied on our prior interpretation of this term in the Jack Henry CBM. See Jack Henry CBM, Paper 17, 9–10; id., Paper 37, 9–12. Notably, we determined, as an ancillary matter to construing the term, that “nothing in the claims, as would be understood by a person of ordinary skill in the art in view of the specification, requires any form of ownership or other type of corporate relationship between the various subsystems; only that they function in the manner set forth in the claims.” Id., Paper 37, 12.5” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “B. Patent Owner’s Motion to Exclude Patent Owner moves to exclude Exhibits 1062–1065. PO Mot. Excl. 2–3. Petitioner filed the disputed exhibits on April 7, 2015, which was more than two months after Petitioner filed its Reply and 22 days before oral hearing. Id. Petitioner characterizes its submission as “supplemental information” and “apologizes for its oversight” of the “minor procedural defect” of not seeking authorization to file a motion for supplemental information. Pet. Opp. Mot. Excl. 2. We dismiss as moot Patent Owner’s Motion to Exclude because we hereby order the expungement of Exhibits 1062–1065 for being filed without prior authorization.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1019, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image to refer to different collections of data. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information [that] accompan[ies] those images.” Id. at 5:25–26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed in a prior claim construction of this term, we are persuaded that information identifying the sending institution is a SSID. See Jack Henry CBM, Paper 37, 9–12. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1003 ¶¶ 64–65, 78–84, 91 (Petitioner’s Declarant, Dr. Knox, testifying that the encrypted information in Campbell identifies the receiving institution).” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “bank and the node over a public switched telephone network; it is that communication that Petitioner asserts occurs over a WAN. See Pet. Reply 10; Pet. 21–22. A public switched telephone network covers geographically distinct locations. One of ordinary skill in the art would understand that transmitting information over such a network generally involves the sender and receiver being in different locations; likewise, the system of Campbell makes little sense if the banks and the node are all in the same location. Accordingly, Mr. Ginsberg’s testimony on this point is unpersuasive. On the other hand, Petitioner’s Declarant, Dr. Knox, explains how the Campbell system uses a public switched telephone network and a frame relay network, which Dr. Knox testifies is a type of WAN. Ex. 1003 ¶ 158. This testimony is persuasive, under its own reasoning and because, as we mentioned above, the WAN in the ’988 patent involves a frame relay network over a telecommunications company’s network.” slip op. at 22

  Patent outcomesUS 5,910,988 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 5,910,988
• Jack Henry And Associates, Inc. v. Datatreasury Corp.Some claims unpatentable
  PTAB · Jul 8, 2015 · CBM2014-00057 · APJ William V Saindon · CBM · Final written decision

  Claims 1, 2, 16, 18, 26, 27, 42, and 46 are unpatentable: Campbell anticipates five claims, and Campbell with Blackwell renders five claims obvious.

  RulingsFinal written decision

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

    “stamp . . . , an identification number to identify the merchant originating the scan and any additional useful information.” Ex. 1001, 8:14–17 (emphasis added). The DAT_TERMINAL_ID, which is part of the unencrypted tag, “uniquely identifies the DAT 200 which is used by the customer.” Id. at 10:27–33. The DAT 200, also known as the remote data access terminal (id. at 4:62–63) is shown in Figure 2 and is a collection of components found at the merchant (e.g., bank). Id. at 5:20–38. Thus, in this particular example, the SSID (which is not encrypted) identifies the remote data access terminal, for example, the subsystem that scans and sends images at a bank. Nothing about the term “subsystem identification information,” as set forth in the claims or specification, indicates that only the remote data access subsystems can have an SSID; this is merely an example. Accordingly, we construed SSID in a manner that encompassed a preferred embodiment but, because the specification provided no indication that the term should be read more narrowly, we did not limit SSID to the particular embodiment identified by Patent Owner. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “Regarding Petitioner’s improper use of sub-exhibits within an exhibit, we note that, although parties are not permitted to file combined documents as Petitioner has done in Exhibit 1026, see 37 C.F.R. § 42.6(a)(3), exclusion would be too extreme a remedy in this instance, where there is insufficient prejudice to Patent Owner. A more reasonable remedy would be to have Petitioner re-file the documents, but at this late stage of the proceeding, where briefing has closed, there is no compelling reason to have Petitioner re-file the documents.” slip op. at 13

  • BurdenMixed

    “We agree with Petitioner that Campbell discloses a plurality of sending and receiving banks. Ex. 1018, 6:9–14 (describing subscribing and non-subscribing banks using the system). Petitioner, however, relied on the node in Campbell to show the central location limitation of independent claim 26, not the remote bank. Pet. 31. Petitioner does not explain how Campbell describes a plurality of nodes (or, conversely, how the receiving bank describes each feature of the central location). Accordingly, Patent Owner’s observation that Petitioner has failed to address the claim limitations is persuasive. We determine that Petitioner has failed to show by a preponderance of the evidence that Campbell anticipates the subject matter of claim 29.” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “With a full record, we find that the preponderance of the evidence supports Petitioner’s position. Campbell does not state that only the image is encrypted. Instead, Campbell states that “information [is] encrypted . . . to provide security for the images transported.” Ex. 1018, 5:55–58 (emphasis added). Thus, Campbell uses the terms information and image for different things. Earlier in that column, Campbell also explains what it means by “information,” and it is clear that this information is not just images but rather includes “information that accompan[ies] those images.” Id. at 5:25– 26 (emphasis added). For example, the information identifies the “sending institution,” “receiving institution,” and “the disposition of the check.” Id. at 5:26–31. As we discussed above in our claim construction section, we are persuaded that information that identifies the sending institution is an SSID. Thus, when this information is encrypted, it is an encrypted SSID, as required by claim 1. See also Ex. 1026, 14 (Petitioner’s expert, Dr. Michalson, testifying that the encrypted information in Campbell identifies the receiving institution). Reviewing the record before us, we are persuaded that Campbell discloses transmitting an encrypted SSID.” slip op. at 17

  Patent outcomesUS 5,910,988 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,910,988
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics, Inc.Some claims unpatentable
  PTAB · May 28, 2015 · IPR2014-00220 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–5, 8–13, 15–20, 25–32, 39–42, 47, and 48 are unpatentable as obvious under § 103; claim 7 was not shown unpatentable over Nissan.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Arguing that Wang is not prior art under 35 U.S.C. § 102(b) is a challenge to the sufficiency or weight to be given to Wang. Such argument is not proper in a motion to exclude, which is a challenge to the admissibility 7 Although the second Grenier Declaration is filed as an exhibit, it is supplemental evidence and may only be considered with regard to the admissibility of Wang (Ex. 1007). See 37 C.F.R. § 42.64(b)(2). of evidence, not a challenge to sufficiency. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (August 14, 2012) (A motion to exclude may not be used to challenge the sufficiency of the evidence to prove a particular fact.). Patent Owner’s preliminary response and response were opportunities to challenge whether Petitioner has sufficiently demonstrated that Wang is prior art under 35 U.S.C. § 102(b). Patent Owner elected not to make such a challenge. We determine that Patent Owner has not met its burden of proof to establish that Wang is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). A motion to exclude is a challenge to admissibility, and is not the proper venue to challenge Wang’s status as prior art. Patent Owner’s Motion to Exclude is denied.” slip op. at 10

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

    “The ’565 patent does not define the term “image portion.” Patent Owner cites column 7, lines 22 to 25, but that disclosure is not determinative because it states only a preference. Ex. 1001, 7:22–25 (“However, the portion of the image displayed is preferably biased toward the downward portion of the captured image . . . .”) (emphasis added). Patent Owner also cites column 9, lines 3 to 8, but that disclosure does not inform us as to whether the described image portions—right image portion 46’, left image portion 44’, and central image portion 48’—are less than the entire image captured by image capture devices 14, 16. Elsewhere in the ’565 patent, the terms “left image portion 44,” “right image portion 46,” and “center image portion 48” are used while describing Figure 3. Id. at 5:48–50. The ’565 patent states explicitly that “[e]ach image portion 44–48 is reversed from the image as captured by the respective image capture device 14, 16 utilizing conventional techniques.” Id. at 5:50– 53. The ’565 patent does not, however, describe each image portion 44, 46, and 48 as comprising less than the entire image captured by the respective image captures devices 14, 16. Based on our review, there is no such disclosure anywhere in the ’565 patent. Accordingly, we are not persuaded that Patent Owner’s proposed construction is the broadest reasonable interpretation. Regardless of how “image portion” is construed, we note that the independent claim limitations in which “image portion” is recited set a minimum—not a maximum—for what must be included in a displayed image. For example, independent claims 1, 30, 41, and 47 recite “the displayed [composite] image displayed on said single display screen includes an image portion” (emphasis added). The other independent claims recite “image portion” in similar context. See, e.g., Claims 11, 18, and 25 (“the displayed image including an image portion” (emphasis added)). These limitations require that the displayed image include an “image portion,” but do not preclude the displayed image from including more than a portion. The limitations do not, for example, require that the displayed image include no more than an image portion. Patent Owner’s definition that a portion is “an often limited part of a whole” implies that a portion also can include the whole, and we discern nothing in the Specification inconsistent with that ordinary meaning. See Ex. 2006.” slip op. at 13

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

    “We are not persuaded by Petitioner’s arguments. Petitioner cites only page 7, lines 1–4 of Nissan, which teaches that “at fast speeds, the image on the TV monitor is compressed and displayed, and the display region is widened and displayed, thus, more effective images can be obtained.” Pet. 30; Ex. 1004, 7:1–4 (emphases added). This passage describes manipulation of the image being displayed, but teaches nothing about whether the fields of view of the image capture devices are dynamically adjusted. Moreover, Petitioner does not argue that the fields of view of the image capture devices necessarily must be dynamically adjustable in order for Nissan to manipulate the images as described. Accordingly, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that Nissan teaches this limitation.” slip op. at 22

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

    “We are not persuaded by Petitioner’s arguments. Petitioner cites only page 7, lines 1–4 of Nissan, which teaches that “at fast speeds, the image on the TV monitor is compressed and displayed, and the display region is widened and displayed, thus, more effective images can be obtained.” Pet. 30; Ex. 1004, 7:1–4 (emphases added). This passage describes manipulation of the image being displayed, but teaches nothing about whether the fields of view of the image capture devices are dynamically adjusted. Moreover, Petitioner does not argue that the fields of view of the image capture devices necessarily must be dynamically adjustable in order for Nissan to manipulate the images as described. Accordingly, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that Nissan teaches this limitation.” slip op. at 22

  Patent outcomesUS 7,859,565 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 7,859,565
• Distinctive Developments, Ltd / Electronic Arts Inc. et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Some claims unpatentable
  PTAB · Dec 3, 2014 · IPR2013-00391 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1, 20, 30, 31, 67, 107, and 108 are unpatentable; claims 21 and 22 were not shown unpatentable, because Deluca does not disclose a cellular telephone.

  RulingsFinal written decision

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

    “The ’067 patent does not define either “verification data” or “verification data for verifying the license data stored on the licensing medium.” The language of claim 1, however, specifies that the recited “verification data” is “for verifying the license data stored on the licensing medium.” Patent Owner cites three methods described in the ’067 patent (PO Resp. 15), but those methods verify the validity of the licensing medium, not of the license data. Ex. 1001, 4:6–26 (“The electronic device may verify the validity of the licensing medium by comparing the license data to the verification data of the registration authority.” (emphasis added)); see also claims 2, 5, 9, 10 (reciting “verify validity of the licensing medium by . . .” (emphasis added)). Based on our review, the only disclosure in the ’067 patent of a “verification” of license data is the disclosure that the license data (or a hash of it, or an encrypted hash of it) is compared to a copy of itself in the “verification data” of the registration authority. Ex. 1001, 4:6–26. In the context of the ’067 patent, then, we construe “verifying the license data,” as recited in claim 1, to mean comparing the license data to a copy of itself to confirm that the two match.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner that the “identification information” disclosed in Cronce is not “verification data for verifying the license data,” as we have construed that term, because it is not used to verify the license data (i.e., authorization information 171). Specifically, Cronce does not disclose, for example, a comparison of identification information with authorization information 171. Instead, Cronce’s “identification information” is compared only to fixed key ID 151, which Petitioner does not identify as the recited “license data” in its Petition. In its Reply, Petitioner argues that fixed key ID 151 is “the license data,” because the ’067 patent defines that term broadly as “data that is used [ ] to determine whether or not to allow access to electronic data.” Pet. Reply 7–8 (citing Ex. 1001, 3:65–67; Ex. 2002 ¶ 12). We do not agree, however, that “license data” has the meaning proposed by Petitioner. Specifically, the sentence relied upon by Petitioner does not define “license data.” It states only that “license data is used by the electronic device to determine whether to allow access to the electronic data.” Ex. 1001, 3:65–67. It does not state that all data used in the process of determining whether to allow access to electronic data is license data. Even assuming that Cronce’s fixed key ID 151 is used in the process of determining whether to allow access to Cronce’s protected information 115, that is not sufficient for fixed key ID 151 to be the recited “license data.” Petitioner also argues in Reply that “there is a comparison between two pieces of information that, if successful, results in verified and updated license information being transmitted to the portable authorization device.” Pet. Reply 5. Neither piece of information is “verification data for verifying the license data,” however, unless it is compared with the license data itself. Cronce discloses no such comparison between its identification information (i.e., the recited “verification data”) and authorization information 171 (i.e., the recited “license data”). Petitioner also argues in Reply that Cronce discloses a second verification process in which the information authority (i.e., “registration authority”) has a fixed secret key 152 (i.e., “verification data”) that is compared to a fixed secret key 152 stored on the portable authorization device. Pet. Reply 5–7. As with the process relied upon in the Petition, however, Cronce does not disclose the use of fixed secret key 152 to “verify” authorization information 171 (which Petitioner identifies as the recited “license data”), such as by a comparison of the two to confirm a match. Because fixed secret key 152 is not used to verify authorization information 171 it is not “verification data for verifying the license data,” as we have construed that term.” slip op. at 16

  Patent outcomesUS 6,857,067 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,857,067

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