- Google LLC v. Uniloc 2017 LLCAll claims unpatentablePTAB · Oct 12, 2021 · IPR2020-00756 · APJ Michael R Zecher · IPR · Final written decision
Claims 9–12 are unpatentable under § 103(a) as obvious over Paulson and Surprenant; additional grounds combine those references with Beenau and, for claim 11, McConnell.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Relying on the testimony of Mr. Lipoff, Google provides the following assessment of the level of skill in the art: A person of ordinary skill at the time of the alleged invention of the ’952 patent would have held at least a bachelor’s degree in electrical engineering or computer science and had one year of relevant experience in the field of wireless communications. Less work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa. Pet. 8–9 (citation omitted) (citing Ex. 1003 ¶¶ 33–35). Uniloc argues that Google’s proposed assessment is improper because it does not define thresholds for “[l]ess work experience” or “higher level of education.” PO Resp. 6 (alteration in original). Uniloc, however, does not offer its own 4 In its Patent Owner Response, Uniloc does not present arguments or evidence of secondary considerations. See PO Resp. assessment of the level of skill in the art, much less indicate that the resolution of any issue depends on a specific type of work experience or a specific level of education. See id. We, therefore, adopt Google’s proposed assessment of the level of skill in the art and apply it to our obviousness analysis below because it is consistent with the ’952 patent and the asserted prior art.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“a person of ordinary skill in the art would have recognized these frequencies to be within the scope of a “plurality of predetermined frequencies” because the frequencies are set initially, before communication takes place, and are based on the capabilities of the communicating devices [(i.e., the transmit device and the receive device)], which are known in advance in at least one disclosed embodiment. Ex. 1003 ¶ 68 (citing Ex. 1005, 13:23–26). In his Declaration accompanying the Reply Brief, Mr. Lipoff clarifies how the “initially determined” frequencies at step 402 preset the range of frequencies discussed in the context of steps 404 and 406 by testifying that, “[t]o achieve [Paulson’s] goal of reducing the probability of interference from noise, one of ordinary skill [in the art] would have understood that it is essential for the noise characteristic created at Step 404 to cover at least the frequencies initially set in Step 402.” Ex. 1027 ¶ 11. Mr. Lipoff further clarifies that “[o]ne of ordinary skill [in the art] would have understood that the phrase ‘initially determined,’ in conjunction with Paulson’s disclosure about further refining the available frequencies in light of the noise characteristic in the surrounding environment, conveys that the range of frequencies identified at Step 402 is related to the later steps in Paulson’s process,” specifically steps 404 and 406. Id. ¶ 19. We credit the aforementioned testimony of Mr. Lipoff because it takes into account the reasonable inferences a person of ordinary skill the art would draw to explain how Paulson’s “initially determined” frequencies at step 402 preset the range of frequencies that are further refined based on the noise characteristic in the surrounding environment at steps 404 and 406. See KSR, 550 U.S. at 418 (An obviousness evaluation “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”).” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Owner Response, Uniloc provides a table listing the parties’ proposed constructions in the district court case, but does not argue that any particular claim term requires construction for purposes of this Final Written Decision. See PO Resp. 6–8. After considering the fully developed trial record, the issues raised by the parties do not turn on the construction of a particular claim term. As a result, we need not construe any claim term for purposes of determining whether Google has demonstrated by a preponderance of the evidence that claims 9–12 of the ’952 are unpatentable as obvious under § 103(a). See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). In our obviousness analysis below, we address the scope and meaning of the claim term “non-user-configurable data,” as this term pertains to the teachings of Surprenant contested by the parties. See infra Section II.B.5.c. More specifically, we address below whether Surprenant’s acoustics modulation protocol identification (“AMP ID”), which is described as being a “unique identification string” specific to “transmit device 101,” teaches or suggests the claim term “non-user-configurable data” as that term is used in the context of the ’952 patent. See infra id. B. Obviousness Over the Combined Teachings of Paulson and Surprenant” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“At the outset, we note that Uniloc advocates—and Google does not dispute—that the claim term “non-user-configurable data” should be construed in accordance with its plain and ordinary meaning—namely, data that is not configurable by a user. See PO Sur-reply 10 (arguing that “non- user-configurable data . . . must be data that is not configurable by the user”); Tr. 31:13–17, 32:21–23 (arguing the same). Instead, the parties’ dispute appears to turn on what types of data amount to data that is not configurable by a user. The specification of the ’952 patent provides important guidance in this respect because it discloses that “[n]on-user-configurable data includes data such as hardware component model numbers, serial numbers, and version numbers, and hardware component parameters such as processor speed, voltage, current signaling, and clock specifications.” Ex. 1001, 6:37–41 (emphasis added). Dependent claim 8 of the ’952 patent, which was not challenged in this proceeding, further limits “non-user-configurable data” to only “hardware component numbers, serial numbers, and version numbers.” Id. at 14:50–52. In contrast, independent claim 9 is broader in scope because it does not limit “non-user-configurable data” to any specific type of data and, therefore, encompasses all the examples from the specification identified above. With this in mind, we turn to Google’s reliance on Surprenant’s AMP ID to teach the “non-user-configurable data,” as recited in independent claim 9. Based on the fully developed trial record, we agree with Google that Surprenant’s AMP ID teaches the “non-user-configurable data” because it discloses that it is a “unique identification string” specific to “transmit device 101.” Pet. 45 (quoting Ex. 1006, 7:45–49). Although Surprenant does not provide further clarification as to what might qualify as a “unique identification string,” Mr. Lipoff provides testimony accompanying the Petition that explains the following: “[b]ecause the AMP ID is disclosed as a ‘unique identification string’ specific to a transmit device, one of ordinary skill [in the art] would have understood it to be derived from a unique property of the device itself that is not user-configurable.” Ex. 1003 ¶ 107. As just one example, Mr. Lipoff testifies that it would have been obvious to a person of ordinary skill in the art for Surprenant’s AMP ID “to take the form of . . . the device’s serial number,” because it is a “unique identification string” that is nothing more than “data [that] helps uniquely identify the transmit device.” Id. ¶ 109. We credit the aforementioned testimony of Mr. Lipoff because it is consistent with Surprenant’s disclosure that the AMP ID is a “unique identification string” specific to “transmit device 101,” and his testimony also is consistent with the examples of “non-user-configurable data” set forth in the specification of the ’952 patent.” slip op. at 43
Patent outcomesUS 9,564,952 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,564,952 - Google LLC v. Uniloc 2017 LLCAll claims unpatentablePTAB · Oct 7, 2021 · IPR2020-00755 · APJ Sally C Medley · IPR · Final written decision
Claims 6–12 are unpatentable as obvious over Braden-Harder and Grossman; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Bernard J. Jansen, who testifies that a person having ordinary skill in the art “would have had a Bachelor’s degree in computer science, information technology, or the equivalent, and one to two years of experience working with at least one of information retrieval systems, the structure and organization of databases, and natural language processing.” Pet. 22 (citing Ex. 1003 ¶ 142). According to Dr. Jansen, “significant work experience in any of these areas could substitute for formal education, and vice versa.” Ex. 1003 ¶ 142. Patent Owner indicates Petitioner’s proposed assessment is improper because it does not define thresholds for “significant work experience” or “formal education.” PO Resp. 4. Patent Owner, however, does not offer its own assessment of the level of skill in the art, or indicate that the resolution of any issue depends on a specific type of work experience or a specific level of education. See id. Patent Owner additionally states that even if Petitioner’s proposed level of qualifications were applied, the Petition does not establish unpatentability. Id. at 5. We adopt the assessment offered by Petitioner as it is consistent with the ’908 patent and the asserted prior art. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific findings as to the level of ordinary skill in the art “where the prior art itself reflects an appropriate level and a need for testimony is not shown”).” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“should not be construed in accordance with 35 U.S.C. § 112, ¶ 6 without clearly explaining why it is necessary to address § 112, ¶ 6 in order to resolve the controversies on the merits that are before us. PO Resp. 9–19; Sur-reply 7–9. As discussed below, beside the arguments directed to the sufficiency of the prior art teaching the “keyfact steps” limitations based on Patent Owner’s construction of the term “keyfact,” Patent Owner fails to explain sufficiently what is lacking from Petitioner’s challenges and related analyses provided that assert that claims 6–12 would have been obvious based on the cited prior art under either construction. For example, Patent Owner argues that “Petitioner fails to recognize that the claim language recites various acts” and that Petitioner construes each recited act as a function. PO Resp. 9. In applying a 112, ¶ 6 analysis to claim 6, however, Petitioner looks to the ’908 patent for the corresponding acts associated with the recited function. See, e.g., Pet. 26–31. Thus, Patent Owner’s arguments appear to us to be a matter of form over substance because Petitioner addresses the corresponding acts by looking to the Specification of the ’908 patent. Tr. 8:12–25. Patent Owner does not persuade us otherwise. For example, Patent Owner argues that the claim 6 “keyfact extracting step” requires “a respective set of acts” such as “‘analyzing …,’ ‘extracting …,’ and ‘respectively extracting … .’” PO Resp. 12–13 (alterations in original). Patent Owner argues that “Petitioner fails to comprehend the logical interrelationship between groups of acts and the underlying respective result, expressed as a ‘step,’ that each group of acts operated to collectively achieve.” Id. at 14. Patent Owner, however, fails to identify or explain how Petitioner’s analysis of the claim language and prior art fails to address the claimed acts. As explained in detail below, we determine that Petitioner shows, by a preponderance of the evidence, how Braden-Harder and Grossman teach or suggest each of the claimed steps, such as the “keyfact extracting step.” Pet. 33–47. As further explained below, Patent Owner does not present meaningful arguments to the contrary.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“distinguishable from claim language where keyfacts are extracted in a paired form, i.e. [object, property]. PO Resp. 22. We agree, however, with Petitioner’s assertion that there is nothing in the ’908 patent “specification or the prosecution history that would limit ‘keyfacts’ to at most two elements (e.g., object and property) and nothing more.” Id. at 18–19. Patent Owner directs us to no intrinsic or extrinsic evidence to support its contention that a “keyfact” must be in the exact paired form “[object, property]” and nothing else. Indeed, as pointed out by Petitioner, Table 1 of the ’908 patent includes, under the “keyfact term list” column “[KEY2 KEY1, NIL].” Ex. 1001, 6:18, Table 1. In the Sur-reply, Patent Owner argues that “every single ‘keyfact’ example disclosed in the specification expresses semantic relation between words in the paired form of [object, property].” Sur-reply 2 (citing Ex. 1001, code (57), Table 1, 1:8–10, 1:16–18, 4:58–60, 6:15–30, 6:38–44) (emphasis omitted). Patent Owner argues that, in the example from Table 1 of [KEY2 KEY1, NIL], “the ‘property’ portion is ‘NIL’ or empty, such that KEY2 and KEY1 pair are the only two nonempty keyfact tags.” Id. at 13 (emphasis omitted). We are not persuaded by Patent Owner’s arguments that the ’908 patent includes a “disavowal expressed in the statement ‘All keyfacts express semantic relation between words in the form of [object, property],’” such that a keyfact must contain a pair and nothing else. Id. at 12–13. We agree with Petitioner that the description from the ’908 patent (all keyfacts express semantic relation between words in the form of [object, property]) does not preclude, for example, “more than the pair of node words,” such as Braden-Harder’s triples that include two node words in the form of [object, property] linked by a semantic relationship. Ex. 1003 ¶¶ 176, 221. Patent Owner responds that in every instance shown in Table 1, “the example keyfacts listed never consist of more than a pair of nonempty tags.” Sur-reply 13 (emphasis omitted). However, even the form [KEY2 KEY1, NIL], for example, contains an indicator “NIL” along with two other terms (KEY2 and KEY1), resulting in a representation that is more than just a pair of terms, like Braden-Harder. Moreover, Patent Owner’s argument that Braden-Harder’s triples are “the sort of phrase-based scheme” that the ’908 patent disparages is unavailing. PO Resp. 22 (citing Ex. 1001, 1:19–28, 1:42–45). As explained above, Braden-Harder applies rules to extract logical form triples, where each triple “is a factual extraction that represents the semantic relation between words of a sentence,” which is distinguishable from phrase-based methods that use “purely syntactic” approaches. Pet. Reply 21–22 (citing Pet. 1, 34; Ex. 1003 ¶¶ 175–176; Ex. 1020, 3:46–59, 4:18–20, 4:61–67) (emphasis omitted). We also are not persuaded by Patent Owner’s arguments that claim 6” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“motivated and found it obvious to combine the teachings of Braden-Harder and Grossman. See, e.g., Pet. 52–53. Petitioner asserts that Grossman teaches that tables (or their equivalents), such as those shown in the table of Figure 4 of the ’908 patent21, were known for implementing document-index structures such as the indexed database in Braden-Harder. Id. (citing Ex. 1003 ¶ 244). Petitioner contends, and we agree, that “[s]uch a technique 21 Petitioner makes this assertion assuming that the “keyfact index structure” is in the form of each of the specific tables in Figure 4 of the ’908 patent. See Pet. 52–53. for generating the index structure would have been an obvious implementation to a POSITA at the time of the ’908 patent, as taught in Grossman.” Id. at 53 (citing Ex. 1010, 134–137). Patent Owner does not dispute Petitioner’s showing regarding the reasons to combine Braden- Harder and Grossman. See generally PO Resp. For all of the reasons above, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 6 would have been obvious over Braden-Harder in view of Grossman.” slip op. at 44
Patent outcomesUS 6,366,908 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,366,908 - PTAB · Oct 6, 2021 · IPR2021-00591 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–40 and all asserted grounds, finding a reasonable likelihood that Miyazawa anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ANALYSIS A. Claim Construction Petitioner does not propose construction of any claim term. Pet. 11– 12. We determine we need not explicitly construe any claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention would have had at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years’ industry experience, or equivalent experience in circuit design or related fields. Alternatively, a POSA could substitute directly relevant additional education for experience, e.g., an advanced degree relating to the design of electroluminescent devices, drive circuits, or other circuit design or an advanced degree in electrical engineering (or equivalent), with at least one year of industry experience in a related field. Pet. 11 (citing Ex. 1003 ¶¶ 35–37). For purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’880 patent and the asserted prior art, we determine that Petitioner’s definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’880 patent and prior art.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“After reviewing the evidence and arguments in the Petition regarding claim 25, which are unrebutted on this record, including the relevant portions of the supporting Hatalis Declaration, we are persuaded that Petitioner’s discussion of the particular structures in Miyazawa, and the explanations in the Petition and the Hatalis Declaration, are sufficient to establish a reasonable likelihood that Miyazawa anticipates claim 25. Accordingly, we determine Petitioner has established a reasonable likelihood of prevailing on its anticipation challenge with respect to claim 25.” slip op. at 22
Claim construction§ 102 anticipationcites KSR · GrahamPatents in suitUS 7,868,880 - Motherson Innovations Co., Ltd. v. Magna Mirrors Of America, Inc.Some claims unpatentablePTAB · Oct 5, 2021 · IPR2020-00777 · APJ Jessica C Kaiser · IPR · Final written decision
Claims 1, 2, 5, 8–11, 15, 16, 26, and 34–36 are unpatentable as obvious; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner asserts a person of ordinary skill in the art “would have” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“a preponderance of the evidence that claims 1, 2, 5, 8–11, 15, 16, 26, and 34–36 of the ’648 patent are unpatentable, but has not shown by a preponderance of the evidence that claims 3, 4, 6, 7, 12, 13, 17–25, and 27– 33 of the ’648 patent are unpatentable, as summarized in the following table: Claims” slip op. at 75
Patent outcomesUS 10,261,648 mixed§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,261,648 - Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentablePTAB · Sep 8, 2021 · IPR2020-00540 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–6, 9, 24, 26, 27, 29, 30, 32, 42, 44, 73, and 74 are unpatentable as obvious under § 103.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“At least with respect to the portions of Dr. Mazumder’s declaration that supports Intel’s arguments on which we rely for our decision, and any cross-examination relevant to that testimony, we disagree that Dr. Mazumder was improperly recalcitrant, or demonstrated a lack of knowledge of the subject matter to the extent that it would discredit him as a credible expert witness. Given the circumstances, we also do not fault Dr. Mazumder for refreshing his recollection during cross-examination. Thus, we do not agree with PACT that we should, as a general proposition, disregard or give less credit to Dr. Mazumder’s testimony for these reasons.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Intel argues that a person of ordinary skill in the art “would have had at least an M.S. degree in electrical engineering, and at least three years of experience with multiprocessor systems design.” Pet. 14 (citing Ex. 1001 ¶ 72). Dr. Mazumder testifies that this level of skill “was the typical level of experience of persons working with multiprocessor systems, including the design of processor, cache, memory, and bus architectures, at the time of the alleged invention.” Ex. 1001 ¶ 72. Dr. Wolfe does not disagree, and in his declaration he applies Dr. Mazumder’s proposed articulation of the level of ordinary skill. See Ex. 2026 ¶ 40. For this decision, we adopt Dr. Mazumder’s uncontested declaratory testimony, which we find consistent with the level of technical expertise assumed by the ’807 patent disclosure and the asserted prior art references.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Intel nor PACT argues that any claim terms need an explicit construction. See Pet. 5 (“Intel does not believe any terms need to be construed to resolve the prior art issues presented in this Petition.”). However, according to Intel, in the co-pending litigation the parties “stipulated that the preambles are not limiting” for all independent claims challenged in the Petition. Id. (citing Ex. 1014). PACT does not challenge this statement, and whether the preambles are limiting does not appear to be material to Intel’s contentions in the Petition. Absent a controversy, we do not need to explicitly construe any terms for our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that our decision involves interpreting claim language, we discuss that language below in our analysis of the claim limitations.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“(quoting Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). Indicia on the face of the reference, such as a copyright date or ISBN number, “are considered as part of the totality of evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Based on the evidence as a whole, Intel has shown persuasively that the IEEE published the Barroso article in 2000 as part of a physical volume accessible to researchers in the field. In addition to having a copyright notice dated 2000, Barroso is part of a non-consecutively paginated article, bearing the ISBN number “1-58113-232-8.” Ex. 1005, 282. The document also provides instructions for copying and republication, and specifies a copying fee of $5.00. See id. We also find it credible that Mr. Grenier would be familiar with the publication practices of the IEEE in 2000, and the IEEE’s practices with respect to maintaining publication metadata for articles such as Barroso. Although we would reach this conclusion without the new evidence that Intel submitted with its Reply, this new evidence also supports our finding. We find credible the librarian testimony that copies of Barroso were publicly available in two university libraries before the earliest priority date of the ’087 patent. See Exs. 1053, 1054. We also find credible the testimony of Dr. Colwell that Barroso was well-known in the field, and that it is standard practice to submit a physical, bound copy of proceedings at the ISCA conference. Ex. 1055 ¶ 10. So the evidence suggests that about 230 people would have received a bound copy of Barroso at that time. See id. ¶ 9. Dr. Annavaram’s testimony, as a witness appearing on behalf of PACT in another case, corroborates this, although according to him, attendees to the ISCA conferences might have received an electronic copy rather than a bound copy. See Ex. 1051, 165:6–166:5. Thus, we find that Barroso was a printed publication at the time of the claimed invention.” slip op. at 21
Patent outcomesUS 9,037,807 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,037,807 - Intel Corporation v. Pact XPP Schweiz AGSome claims unpatentablePTAB · Sep 8, 2021 · IPR2020-00539 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1, 5, 6, 8, 12, 14–24, 28, 30, and 33 are unpatentable under the Nicol and Nicol–Bhatia obviousness grounds; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“2. Reason to combine Nicol and Bhatia Intel argues that a person of ordinary skill in the art “would have been motivated to combine the complementary teachings of Nicol and Bhatia” for the following four reasons: (1) both references “are directed to interrelated thermal and power management aspects that are critical and ubiquitous in processor-based systems,” Pet. 52–53 (citing Ex. 1008, code (54); Ex. 1009, 1:6–8; Ex. 1001 ¶¶ 231–233); (2) the references “both describe a flexible multiprocessor architecture in which software residing in a controller is programmed to selectively control the power supply of each processor, notably by dynamically adjusting the processor’s clock frequency during operation,” Pet. 53–54 (citing Ex. 1008, 2:18–27, 3:13–18; Ex. 1009, 1:57– 59, 2:28–31, 3:23–28, 3:33–38, 12:26–37; Ex. 1001 ¶¶ 231–233); (3) since Nicol “does not discuss over-temperature protection,” which is “critical for high-performance systems such as Nicol’s multiprocessor system,” a person of ordinary skill in the art “would have been motivated to consult Bhatia, which discusses well-known techniques of providing over-temperature protection,” Pet. 54–55 (citing Ex. 1008, 3:9–20, 4:11–13; Ex. 1009, 2:18– 22, 3:33–46; Ex. 1001 ¶¶ 231–233); and (4) a person of ordinary skill in the art “would have been motivated to consult Bhatia [to implement] low activity states in Nicol’s system as . . . means to further minimize power consumption,” Pet. 55 (citing Ex. 1009, 12:58–64; Ex. 1001 ¶¶ 231–233). In its Response, PACT argues that Intel’s four arguments “amount to little more than a suggestion that Nicol and Bhatia manage aspects of a computer system and it would be beneficial to combine these aspects,” which, “without any showing of actual motivation is plainly insufficient,” and “evidences application of impermissible hindsight bias.” PO Resp. 43– 44 (citing Ex. 2027 ¶ 110; Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018)). PACT also argues that Intel “makes no attempt to explain how a system combining Nicol and Bhatia would function, likely due to the fact that managing a plurality of metrics to create an efficient processing system is extremely difficult.” PO Resp. 44 (citing Ex. 2027 ¶ 111). Citing Dr. Mangione-Smith’s testimony, Patent Owner contends that a person of ordinary skill in the art “might spend their entire career developing intricate systems for managing processor temperature and clock frequency among a plurality of processors, and [Intel] dismisses it as a mere triviality.” Id. at 44–45 (citing Ex. 2027 ¶ 111).” slip op. at 58
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). For a combination of known elements that are not explicitly found together in the prior art, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). A successful petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR, 550 U.S. at 418); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4) (2020).” slip op. at 16
Patent outcomesUS 9,552,047 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,552,047 - Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentablePTAB · Sep 7, 2021 · IPR2020-00542 · APJ Sally C Medley · IPR · Final written decision
Claims 1–5, 8, 9, and 12–18 are unpatentable as obvious over the applied Song-based grounds; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Paul Franzon, who testifies that a person having ordinary skill in the art “would have been a person having at least a Master’s degree in Electrical Engineering, Computer Engineering or Computer Science with three years of industry experience in coupled processors, multi-level caches, and caches.” Pet. 14 (citing Ex. 1001 ¶ 39). Patent Owner’s declarant adopts Petitioner’s definition of a person having ordinary skill in the art. Ex. 2051 ¶¶ 16–17.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Claim 1 recites “an algorithm list buffer.” Ex. 1003, 169:9. Both parties agree that the plain meaning of an “algorithm list buffer” is a buffer that stores a list of algorithms. PO Resp. 14; Pet. Reply 4. We disagree with Patent Owner that an “algorithm list buffer” must be in the form of an interlinked list that points to tables that include instructions and data for the algorithm. PO Resp. 11–13 (citing Ex. 1003, code (57), 10:36–40, 19:22– 56, 19:32–59, Fig. 2). Claim 1 does not recite a list that points to tables that include instructions and data for the algorithm, and we decline the invitation to limit claim 1 to unclaimed features. See Ventana Med. Sys., Inc. v. BioGenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006) (“[E]ach claim does not necessarily cover every feature disclosed in the specification [and] it is improper to limit the claim to other, unclaimed features.”). Moreover, and importantly, claim 1 additionally recites that an algorithm “comprises a set of instructions for joint execution.” Ex. 1003, 169:2–4 (emphasis added). Patent Owner overlooks this lexicographic 13 Petitioner alternatively argues that to the extent the claimed “algorithm list buffer” requires “stor[ing] algorithm pointers” as Patent Owner alleges, Song’s fetch unit contains control flow instructions like “Jump to Subroutine” that a POSITA would have understood to point to a new subroutine to be executed. Id. at 5–6. For purposes of this Decision, we need not and do not consider this argument, because we determine that “algorithm list buffer” does not require “storing algorithm pointers.” definition of “algorithm” in presenting its arguments. Taking into account the additional claim limitation that an algorithm “comprises a set of instructions for joint execution,” and the parties’ agreement that an “algorithm list buffer” is a buffer that stores a list of algorithms, claim 1’s “algorithm list buffer” is a buffer that stores a list comprising sets of instructions for joint execution. Claim 1 does not, however, impose any particular organization on how sets of instructions may appear, or be organized, within such a list, or require that the sets have any particular structure at all, apart from appearing in the list and being “for joint execution.”” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“(citing Ex. 1013, 1:62–66; Ex. 1001 ¶¶ 99–100), 46–47 (citing Ex. 1013, 4:32–66, 5:42–6:20, Fig. 2; Ex. 1001 ¶ 103). Petitioner directs attention to Arimilli’s description that a multi-level cache allows the lower level cache (L2) to act as “an intermediary between memory 16 and the on-board caches, and can store a much larger amount of information (instructions and data) than the on-board caches can, but at a longer access penalty.” Id. at 45 (quoting Ex. 1013, 1:63–66). Petitioner further contends that the multi-level cache allows the L1 cache to be rapidly accessed for a small amount of data, and the L2 cache to be accessed for a larger amount of data but at a slower pace. Id. (citing Ex. 1001 ¶ 100). Petitioner argues, and we agree, that to the extent Song does not teach a “multi-level cache,” “[a]dding a second level of cache to Song’s system, like that disclosed in Arimilli, will allow it to ‘store a much larger amount of information’ (Ex. 1013, 1:62–66) than Song’s cache subsystem, and improve efficiency of data transfer by avoiding long memory access.” Pet. 45 (citing Ex. 1001 ¶ 100). Petitioner further argues that a POSITA would have been motivated to “include Arimilli’s cache slices within Song’s caches.” Id. at 46–47. Petitioner argues, and we agree, that read-write operations are improved when the cache is divided into a plurality of slices by allowing “more efficient read and write operations if parallelized into slices rather than serially with the entire cache.” Id. at 47 (citing Ex. 1013, 4:43–66; Ex. 1001 ¶ 103). Petitioner further argues, and we agree, that Arimilli’s sliced cache presents itself as a single cache, confirming that a POSITA would easily integrate Arimilli’s cache slices into Song with a reasonable expectation of success. Id. (citing Ex. 1013, 5:42–6:20, Fig. 2; Ex. 1001 ¶ 103).” slip op. at 45
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Franzon’s testimony that the prior art discloses an “algorithm list buffer,” because “his declaration simply parrots the Petition and he was purposefully evasive and nonresponsive throughout his deposition.” PO Resp. 23–27; Sur-reply 12. We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient for us to give little weight to Dr. Franzon’s declaration. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give Dr. Franzon’s testimony little weight. For example, Patent Owner faults Dr. Franzon for merely “track[ing]” the Petition and failing to provide any independent analysis of the term “algorithm list buffer.” PO Resp. 23. First, we do not find that Dr. Franzon merely copied the Petition, rather, it is most likely that Petitioner incorporated his testimony into the Petition. Pet. Reply 9. Moreover, Patent Owner first raised the meaning of “algorithm list buffer” in connection with its Patent Owner Response, which came after Dr. Franzon’s initial declaration. PO Resp. 14–17. Accordingly, it is not unusual that Dr. Franzon did not analyze the term “algorithm list buffer” in his original declaration, as he all along applied the plain meaning of the term. Ex. 2053, 37:13–24. Lastly, we do not find that the few parts of Dr. Franzon’s cross-examination testimony that Patent Owner points to justifies us concluding that Dr. Franzon was so evasive in answering questions that we should not consider his testimony altogether.” slip op. at 28
Patent outcomesUS 9,170,812 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,170,812 - Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentablePTAB · Aug 31, 2021 · IPR2020-00541 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Nicol and Kling; the Board did not decide the withdrawn grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Carl Sechen, who testifies that a person having ordinary skill in the art “would have been a person with at least a Master’s degree in Electrical or Computer Engineering (or equivalent), and three years of experience with processor design.” Pet. 10 (citing Ex. 1001 ¶¶ 83–85). Patent Owner adopts Petitioner’s definition of a person having ordinary skill in the art. PO Resp. 19. We accept the assessment offered by Petitioner and adopted by Patent Owner as it is consistent with the ’605 patent and the asserted prior art. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“Subsequent to the Decision to Institute, the District Court determined that the phrase “each of the plurality of data processing units . . . adapted for sequentially processing data” means “[s]equential data processors that pass results to one or more additional data processing units to perform additional computations.” Ex. 2026, 17, 19. The parties appear to agree with that construction. PO Resp. 8–9; Pet. Reply 8, 27. Petitioner’s showing in the Petition is consistent with the District Court’s construction, because the construction is similar to Patent Owner’s proffered construction and neither party indicates that there is a substantive difference between Patent Owner’s proffered construction and the District Court’s construction for purposes of deciding the issues in this proceeding. Pet. 30–32; PO Resp. 8–9; Pet. Reply 8, 27. Accordingly, for purposes of this Decision, we adopt the District Court’s claim construction for “each of the plurality of data processing units . . . adapted for sequentially processing data.”” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner’s arguments focus too narrowly on the individual embodiments shown and described in Nicol Figures 2 and 4, and do not adequately address Petitioner’s showings, which rely on Nicol as a whole. Pet. 25–29, 35–38, 40. For example, the Petition relies on an annotated Figure 4 to show and label different PEs (PE1 and PE2) for purposes of showing the claimed “a first processor” and “a second processor.” Pet. 36, 40. Notably, Petitioner does not rely on the passages related to Figure 4 that Patent Owner points to in arguing that Petitioner improperly mixes and matches embodiments, e.g., Exhibit 1009, 5:60–61, 5:67–6:2. Pet. 35–41. Furthermore, the Petition makes clear that Figure 3, which Petitioner primarily relies on to show setting of the clock frequency for the annotated Figure 4 system illustrates how the claim limitations are met. Id. Patent Owner’s incompatibility arguments are based on glossing over the teachings of Figure 3 altogether, while rigidly focusing only on certain descriptions of Figures 2 and 4. PO Resp. 17–19, 28–30. Indeed, Dr. Mangione-Smith’s testimony regarding the incompatibility of Nicol’s Figure 2 and Figure 4 embodiments does not mention Nicol Figure 3 at all. Ex. 2024 ¶¶ 37, 48–51. With this in mind, we address Patent Owner’s incompatibility arguments.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“motivated and found it obvious to combine the teachings of Nicol and Kling. Pet. 23–25, 42–45. For example, Petitioner contends, and we agree, that a POSITA would have been motivated to combine Kling’s over-temperature protection to Nicol’s multiprocessor system because it was known that overtemperature protection was critical for high-performance multiprocessor systems. Id. at 24, 42 (citing Ex. 1001 ¶ 127; Ex. 1009, 2:18–22, 3:9–20; Ex. 1010, 1:38–46; Ex. 1001 ¶¶ 127, 129, 182). Petitioner further contends, and we agree, that a POSITA would have been motivated to use temperature measurements to improve voltage scaling (taught in Nicol) and for over-temperature protection (taught in Kling). Id. at 42–43 (citing Ex. 1001 ¶ 186). Patent Owner first argues that “[m]ere benefit without any showing of actual motivation is plainly insufficient to suggest a POSITA would combine these reference[s].” PO Resp. 54–55 (citing Ex. 2024 ¶ 82). We are not persuaded by this conclusory argument, because “[i]f a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). In any event, Petitioner explains that a POSITA would have been motivated to combine Kling’s over-temperature protection to Nicol’s multiprocessor system because it was known that over-temperature protection was critical for high-performance multiprocessor systems. Pet. 24, 42 (citing Ex. 1001 ¶ 127; Ex. 1009, 2:18– 22, 3:9–20; Ex. 1010, 1:38–46; Ex. 1001 ¶¶ 127, 129, 182). We find, and it is not disputed, that over-temperature protection was critical for high-performance multiprocessor systems. Ex. 1010, 1:42–47 (explaining that if thermal monitoring is not included “the processor may destroy itself by its own heat”). Nicol describes that temperature tracking would be desirable in its power management system (see, e.g., Ex. 1009, 4:11–13 (explaining that “the operating system can reduce the supply voltage even further by tracking temperature and process variations”). Nicol, however, does not specifically provide details, and we give substantial weight to Dr. Sechen’s testimony that a POSITA would have been motivated to consult Kling and implement Kling’s over-temperature protection, which was known to be “critical for high-performance systems.” Ex. 1001 ¶ 127.” slip op. at 41
Patent outcomesUS 9,075,605 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,075,605 - Microsoft Corporation / HP Inc. v. Synkloud Technologies, LLCAll claims unpatentablePTAB · Jun 14, 2021 · IPR2020-00316 · APJ Sally C Medley · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–5, 9, 11, 12, 16, and 18–20 as obvious over McCown and Dutta; claims 6–8, 10, 13–15, and 17 over McCown, Dutta, and Coates.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the testimony of Dr. Henry Houh, who testifies that a person having ordinary skill in the art “would have been someone with a bachelor’s degree in electrical, computer engineering, computer science, or related field with two years of experience in a relevant technical field, such as remote storage systems with related experience in wireless technologies and wireless devices.” Pet. 6 (citing Ex. 1003 ¶ 47). Patent Owner does not propose an alternative assessment. See generally PO Resp.; Ex. 2014 ¶ 21. We accept the assessment offered by Petitioner as it is consistent with the ’526 patent and the asserted prior art. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific findings as to the level of ordinary skill in the art “where the prior art itself reflects an appropriate level and a need for testimony is not shown”).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner does not specifically contest Petitioner’s proposed construction or our adoption of Petitioner’s construction for “utilizing download information.” Patent Owner argues, however, that the longer phrase, “download a file from a remote server across a network into the assigned storage space through utilizing download information for the file stored in said cache storage,” requires “information needed to download a file from a remote server to be (i) stored in a cache storage of a wireless device and (ii) utilized to download the file across a network into an assigned storage space for the user of the wireless device.” PO Resp. 10 (emphasis added). Patent Owner asserts that its proposed construction is consistent with the claim language and the Specification of the ’526 patent. Id. at 10–11. That is so, Patent Owner argues, because both the claim language and the Specification make clear that “the claimed ‘download information’ is for the file at the remote server and this ‘download information’ is stored in the cache storage” in the wireless device. Id. Patent Owner further argues that the Specification of the ’526 patent also makes clear that the “download information in the wireless device’s cache is, in fact, utilized to download the file.” Id. at 11 (citing Ex. 1001, 5:18–26). Importantly, however, Patent Owner fails to explain why the phrase must also include “information needed to download a file.” Patent Owner fails to explain what information is needed to download a file such that we can ascertain the scope of the proposed construction associated with the claim phrase. Id. at 10–11. Accordingly, we decline to adopt Patent Owner’s proposed construction. We instead construe “utilizing download information” like we did in the Decision to Institute to mean “using information stored in the cache storage of the wireless device to download a file from a remote server.” Dec. 10–11. This construction clarifies that it is the download information that is stored in cache storage, not the file itself.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“does not explicitly disclose that the URLs identifying files available for download from the remote site (‘download information’) are ‘stored in said cache storage,’ but it would have been obvious to include that functionality in the system of McCown in view of Dutta.” Id. at 51; see also id. at 30–33 (citing Ex. 1006 ¶ 29, Fig. 3) (explaining that Dutta teaches a “cache storage” with its disclosure of a browser cache). Petitioner explains, and we agree, that “[a] Skilled Artisan would have been motivated to store those URLs in storage that is more readily accessible by the user or user application, or ‘cache storage,’ of the combined system of McCown and Dutta . . . so that those URLs could be quickly retrieved and used to generate the data request of McCown.” Id. at 52 (citing Ex. 1003 ¶ 202; Ex. 1005, 11:12–23; Ex. 1011, 1:66–2:1). Petitioner also argues, and we agree, that it would have been obvious to maintain the URLs in cache storage for some period of time in case the user re-opened the webpage listing the URLs for purposes of making another selection so that the user site would not be required to access the remote site a second time over the Internet, leading to a more efficient process. Id. at 52–53 (citing Ex. 1003 ¶¶ 203–204; Ex. 1010 ¶¶ 2–3; Ex. 1013, 2:13–15); see also Pet. Reply 13. Petitioner contends, and we agree, that using cache for the retrieval of web content was common practice, that employing Dutta’s cache into McCown’s system would have been relatively easy, and that including Dutta’s cache storage technique in McCown’s system would have been an arrangement of old elements performing known functions and yielding no more than predictable results. Id. at 53–54 (citing Ex. 1003 ¶¶ 205–207; Ex. 1010 ¶¶ 2–3; Ex. 1011, 1:66–2:1; Ex. 1012, 8:11–18; Ex. 1022, 473–474).” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Patent Owner provides insufficient credible explanation for how the various screen shots or descriptions that reside beside the claim language in any of the claim charts meet the claim 1 limitations. Patent Owner has left it up to us to figure out how the various screen shots meet the limitations. Patent Owner must explain with credible evidence how the various screen shots meet the claim 1 limitations. For example, in one claim chart, Patent Owner reproduces the claim 1 language of “establish a wireless link for the wireless device access to a storage space of a predefined capacity assigned exclusively to a user of the wireless device by a storage server.” Id. at 41. In the column to the right of that, there is the description that “[t]he OneDrive server allocates a 5 GB free storage space exclusively to a user, e.g., only the user can manage or share a data in the storage space.” Id. Below that description is a screenshot of file folders bearing different labels under the annotation “OneDrive.” Id. But nothing in the screenshot shows “5 GB free storage space,” let alone any indication that such storage space is of a “predefined capacity assigned exclusively to a user of the wireless device by a storage server.” More importantly, the description of what allegedly is shown is apparently attorney argument. The two paragraphs from Mr. Jawadi’s testimony to which we are directed provides no explanation for how the screenshots show all the elements of claim 1. See, e.g., Ex. 2014 ¶¶ 128–129. For the claim 1 language, “to download a file from a remote server across a network into the assigned storage space through utilizing download information for the file stored in said cache storage,” Patent Owner provides insufficient explanation for how any of the screenshots show download information “stored in . . . cache storage.” PO Resp. 42. Neither screenshot on page 42 of the Patent Owner Response illustrates utilizing download information for the file stored in cache storage. The other claim chart for the same two claim 1 limitations is also insufficient as is the claim chart in Exhibit 2021 for the BLU device with Google Drive for all of the reasons provided above. See, id. at 45–47, 49–62, 65; Ex. 2021. Patent Owner argues that there is a presumption of a nexus. Sur-reply 20–22. A nexus is presumed only when the “patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, 994 F.3d at 1373 (quoting Polaris Indus., 882 F.3d at 1072); see also WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1329 (Fed. Cir. 2016) (setting forth circumstances in which the presumption of nexus applies). Here, as explained above, Patent Owner has failed to show” slip op. at 41
Patent outcomesUS 9,098,526 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,098,526 - Samsung Display Co., Ltd. v. Solas Oled Ltd.All claims unpatentablePTAB · Mar 31, 2021 · IPR2020-00140 · APJ Julia Heaney · IPR · Final written decision
Claims 1–9, 11–13, and 15–18 are unpatentable under § 103 over Utsugi alone, Utsugi and Manabe, or Utsugi and Eida.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“No. 6,072,450 (Ex. 1001, “the ’450 patent”). Paper 1 (“Petition” or “Pet.”). Solas OLED Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–9, 11–13, and 15–18 of the ’450 patent, and we instituted this inter partes review as to all challenged claims. Paper 9 (“Dec. on Inst.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s formulation of the level of ordinary skill in the art and determined that a person of ordinary skill in the art at the time of the invention “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Dec. on Inst. 9 (quoting Pet. 13) (adopting Petitioner’s formulation, which is supported by Dr. Fontecchio’s testimony, because it is consistent with the ’450 patent and the asserted prior art). In its Patent Owner Response, Patent Owner argues that a person of ordinary skill would need approximately two years of experience working in design and development related to active matrix organic light emitting diodes (“OLED”) displays, in addition to a Bachelor’s degree in Electrical Engineering, Physics, and/or Materials Science and Engineering or equivalent training. PO Resp. 7–8 (citing Ex. 2001 ¶¶ 30–31). Patent Owner also states, however, that its arguments in opposition to the Petition apply under Petitioner’s definition of the level of ordinary skill as well. Id. at 8. Accordingly, having considered the parties’ arguments and evidence, we maintain our determination from the Institution Decision adopting Petitioner’s proposed level of ordinary skill in the art, as it is consistent with the problems and solutions in the ’450 patent and prior art of record. We also determine our decision would be the same under either side’s formulation of the level of ordinary skill.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“transistors QS and QI, and satisfies this limitation. We find persuasive Petitioner’s rationale that a person of ordinary skill would have understood that insulation above transistor QS would have been necessary to prevent a short circuit across QS; indeed, both parties’ experts agree on this point. See Ex. 1007 ¶ 168; Ex. 1017, 155:8–16. We also find it persuasive, as Petitioner argues, that using the SiO2 layer to provide insulation above transistor QS would have been straightforward and efficient, because it would have avoided additional patterning and the SiO2 layer was already used to provide insulation above other structures. See Ex. 1007 ¶ 169. Patent Owner’s argument that a different insulating material could be deposited does not undermine Petitioner’s showing because Mr. Flasck did not articulate any reason why a person of ordinary skill would undertake such an additional step. See Ex. 1017, 156:6–21. And Patent Owner fails to adequately explain how Petitioner’s proposed modification does not avoid the asserted additional patterning steps; Mr. Flasck’s testimony does not specifically address this. See Ex. 2001 ¶ 54; see generally Ex. 1017. We have also considered Patent Owner’s argument that modifying Utsugi by oxidizing transistor QS’s electrode in order to insulate it would have been an alternative modification that would not involve additional patterning steps. See Tr. 48 (quoting Ex. 2005, 98:25–99:20). Although Dr. Fontecchio’s testimony concerning oxidation of an aluminum surface during vacuum chamber deposition supports Patent Owner’s argument that there would have been alternative techniques to leaving the SiO2 layer in place in order to insulate the electrodes of QS, it neither persuades us that a person of ordinary skill would not have been motivated to use the already-present SiO2 layer to insulate QS, nor outweighs Petitioner’s evidence on that issue. In other words, one obvious modification to a reference does not exclude the possibility of other obvious modifications.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“transistors QS and QI, and satisfies this limitation. We find persuasive Petitioner’s rationale that a person of ordinary skill would have understood that insulation above transistor QS would have been necessary to prevent a short circuit across QS; indeed, both parties’ experts agree on this point. See Ex. 1007 ¶ 168; Ex. 1017, 155:8–16. We also find it persuasive, as Petitioner argues, that using the SiO2 layer to provide insulation above transistor QS would have been straightforward and efficient, because it would have avoided additional patterning and the SiO2 layer was already used to provide insulation above other structures. See Ex. 1007 ¶ 169. Patent Owner’s argument that a different insulating material could be deposited does not undermine Petitioner’s showing because Mr. Flasck did not articulate any reason why a person of ordinary skill would undertake such an additional step. See Ex. 1017, 156:6–21. And Patent Owner fails to adequately explain how Petitioner’s proposed modification does not avoid the asserted additional patterning steps; Mr. Flasck’s testimony does not specifically address this. See Ex. 2001 ¶ 54; see generally Ex. 1017. We have also considered Patent Owner’s argument that modifying Utsugi by oxidizing transistor QS’s electrode in order to insulate it would have been an alternative modification that would not involve additional patterning steps. See Tr. 48 (quoting Ex. 2005, 98:25–99:20). Although Dr. Fontecchio’s testimony concerning oxidation of an aluminum surface during vacuum chamber deposition supports Patent Owner’s argument that there would have been alternative techniques to leaving the SiO2 layer in place in order to insulate the electrodes of QS, it neither persuades us that a person of ordinary skill would not have been motivated to use the already-present SiO2 layer to insulate QS, nor outweighs Petitioner’s evidence on that issue. In other words, one obvious modification to a reference does not exclude the possibility of other obvious modifications.” slip op. at 22
Patent outcomesUS 6,072,450 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,072,450
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.