• Honeywell International, Inc. / Sierra Wireless, Inc. et al. v. 3g Licensing S.A.All claims unpatentable
  PTAB · Dec 6, 2022 · IPR2021-00906 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4, 6, 8, 9, 12, 33–36, 38, 40, 41, 44, 56, 57, 62, and 63 are unpatentable; substitute claims 66–85 are allowed because unpatentability over the asserted prior art was not shown.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “evidence that any of Patent Owner’s proposed substitute claims 66–85 in the Revised Motion to Amend Claims are unpatentable over prior art. Patent Owner, on the other hand, has proved that its proposed substitute claims 66– 1 Petitioner entity Dell, Inc. was terminated from this proceeding on January 11, 2022. Paper 23. Petitioner entities ZTE Corporation and ZTE (USA) Inc. were terminated from this proceeding on October 20, 2021. Paper 17. Petitioner entity Cradlepoint Inc. was terminated from this proceeding on November 7, 2022. Paper 72. Accordingly, Patent Owner’s Revised Motion to Amend Claims is granted. A.” slip op. at 2

  • Strike new argumentNew argument consideredDenied

    “For the foregoing reasons, Patent Owner’s Motion to Strike is denied.” slip op. at 91

  • ExcludeMotion to exclude, deniedDenied

    “prejudicial to Petitioner because they all post-date the priority date of the ’388 patent. Paper 59, 3–4. However, as we explained above, these documents need not have pre-dated the critical date of the ’388 patent. It is not necessary that one with ordinary skill in the art would have had access to them prior to June 1, 2004, or July 20, 2004. Petitioner has not shown the alleged prejudice. Additionally, our consideration of these documents did not result in a favorable conclusion for Patent Owner, either on the matter of Patent Owner’s proposed claim construction or on the matter of Patent Owner’s alleged satisfaction of a long-felt need.” slip op. at 97

  Patent outcomesUS 7,580,388 unpatentable
  Nonecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 7,580,388
• Microsoft Corporation v. D3d Technologies, Inc.All claims unpatentable
  PTAB · Nov 28, 2022 · IPR2021-00878 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–9 and 11–21 are unpatentable as obvious over Acosta and Tomoda, with additional references applied to certain dependent claims.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art the time of” slip op. at 9

  • BurdenFwd all claims unpatentableUnpatentable

    “of Acosta, Tomoda, and Zhou teaches all recitations of the claims because Petitioner’s arguments are consistent with and supported by the evidence of record. Also, we are persuaded that Petitioner has offered articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Acosta, Tomoda, and Zhou in the manner recited in claims 20 and 21. We find that Petitioner’s showing is not undermined by Patent Owner’s arguments and evidence. After consideration of the arguments and the evidence of record based on the complete record now before us, Petitioner has proved, by a preponderance of the evidence, that claims 20 and 21 would have been obvious over Acosta, Tomoda, and Zhou. III. CONCLUSION12 Petitioner has proved by a preponderance of the evidence that claims 1–9 and 11–21 of the ’691 patent are unpatentable. The outcome for the challenged claims is set forth in the table below. In summary:” slip op. at 117

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

    “3. Independent Claim 1 a) Reasoning to Combine Petitioner argues in light of Tomoda’s teaching of obtaining original” slip op. at 36

  Patent outcomesUS 9,980,691 unpatentable
  § 103 obviousnesscites Phillips
  Patents in suitUS 9,980,691
• Momentum Dynamics Corporation v. Auckland Uniservices LimitedAll claims unpatentable
  PTAB · Nov 22, 2022 · IPR2021-01116 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–13 are unpatentable as obvious over Nakao and Beart; the Board did not reach the Hui-910 grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the testimony of Dr. Mark G. Allen, Petitioner offers an assessment as to the level of ordinary skill in the art and the general knowledge of a person of ordinary skill (“POSA”) at the time of the ’955 patent. Pet. 6 (citing Ex. 1003 ¶¶ 31–34). For example, Dr. Allen states that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years’ industry experience or equivalent research” and that relevant additional education could be substituted for experience, “e.g., an advanced degree in electrical engineering (or equivalent) with at least one year of industry experience.” Ex. 1003 ¶ 33. Patent Owner neither disputes Petitioner’s assessment nor proposes an alternate assessment. We adopt Petitioner’s definition of the level of skill, except that we delete the phrase “at least” to avoid including ambiguity in the definition of the level of skill.” slip op. at 6

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

    “In our Institution Decision, we preliminarily determined that “a shield member comprising a backplate” “may include additional components other than the claimed backplate, but additional components are not required.” Dec. 13. Based on the full trial record, however, we need not construe this term because the parties only dispute whether Hui-910 discloses the “shield member comprising a backplate.” PO Resp. 14–15; Reply 11. And we do not reach the Hui-910-based grounds because, for reasons explained below, the ground based on Nakao and Beart is dispositive of all the challenged claims. Thus, we do not construe this term.” slip op. at 7

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

    “After considering Patent Owner’s arguments, which we address below, we agree with Petitioner that one of ordinary skill in the art would have combined Beart with Nakao in the manner proposed. For instance, we find Petitioner’s arguments compelling that adding Beart’s flux shield to Nakao’s wireless system would have increased coupling between the transmitting pad and the receiving pad, and protected surrounding components, objects, and people from stray magnetic flux. Id. at 53–57 (citing, e.g., Ex. 1003 ¶¶ 188–193). We find that one of ordinary skill in the art would have made this modification because, according to Dr. Allen’s unrebutted testimony, increasing transmit-receive coupling would have reduced the problem of nearby metal (such as from a vehicle chassis) reducing power transfer efficiency due to “the ferrous materials provid[ing] a low reluctance path that ‘suck[s]’ flux away from the power transfer system.” Ex. 1003 ¶¶ 189–90. And we further find that one of ordinary skill in the art would have made this modification because Dr. Allen persuasively testifies that “coupling between the transmitting and receiving pads would be improved, and less drive current would be necessary to generate the same amount of power at the receiving pad.” Id. ¶ 192. Moreover, we also find that Dr. Allen persuasively testifies that “when flux interacts with nearby metal components, . . . there are ‘core losses, for example via hysteresis and/or eddy current loss’ in those objects, and those eddy currents may heat up and potentially damage those objects.” Id. ¶ 193 (quoting Ex. 1006, 2:11–27; citing Ex. 1017, 21). We also find compelling his testimony that “stray flux could also interfere with medical devices like pacemakers in a passenger of the vehicle being charged, detonation of electro-explosive devices, and fires caused by sparks from induced fields.” Id. (citing Ex. 1022, 514–15). As such, we also agree with Dr. Allen’s testimony that “a POSA would [have] understood that stray magnetic fields can pose a safety hazard to people as well.” Id. ¶ 194 (citing Ex. 1017, 23–24, 27, 155–60). Accordingly, we find that Petitioner’s arguments for the combination are well-supported by unrebutted record evidence. Thus, even in light of Patent Owner’s arguments, which we address below, we determine that Petitioner has persuasively shown that one of ordinary skill in the art would have combined Beart with Nakao as proposed.” slip op. at 17

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

    “Petitioner persuades us that one of ordinary skill in the art would have combined Beart with Nakao in the manner proposed. Petitioner’s arguments have a rational basis in the evidence of record, supported by the unrebutted testimony of Dr. Allen. In particular, as we explained above, we are persuaded by Dr. Allen’s unrebutted testimony that sidewalls on the receiver side can reduce splay, protect components, and protect people in the vicinity. See Ex. 1003 ¶¶ 148–59, 193–98; Reply 21–23. Patent Owner’s attorney argument, in contrast, does not undermine Petitioner’s showing. Patent Owner’s argument assumes that Beart’s shield sidewalls would be immediately near Nakao’s noncontact coupler. PO Resp. 36–41. But Patent Owner overlooks that the proposed combination relies on sidewalls spaced some distance away from Nakao’s pads, as shown in the figure above. See Reply 22–23. We also agree with Petitioner that even if some of Nakao’s side surface coupling would be blocked by the combination’s proposed sidewall shielding, the advantages of combining would have outweighed the reduction of “some of the side surface coupling.” Reply 23–24; PO Resp. 40. “A given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Allied Erecting and Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (citation omitted). We find that Dr. Allen’s unrebutted testimony regarding the improved coupling and safety advantages, discussed above, outweighs Patent Owner’s speculative disadvantage of reducing “some” side surface coupling. See Ex. 1003 ¶¶ 196, 214; PO Resp. 40.” slip op. at 25

  Patent outcomesUS 9,767,955 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,767,955
• Cradlepoint, Inc. / Dell Inc. et al. v. 3g Licensing S.A.All claims unpatentable
  PTAB · Oct 18, 2022 · IPR2021-00640 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–96 challenged in the decision were shown unpatentable under §103 over the listed combinations of TS 45.008, TS 25.304, TS 25.331, and Japenga.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a similar discipline, with at least three years of relevant industry or research experience (or additional education), including experience with cellular telecommunication systems,” that such experience would have included “designing or implementing user equipment or network equipment or signaling protocols,” and that such a person “would have [had] a working understanding of the then-existing wireless communications standards.” Pet. 16–17 (citing Ex. 1004 ¶¶ 20–24). Patent Owner “concurs with Petitioner[] on the proposed level of ordinary skill in the art at the time of invention.” PO Resp. 7–8. Because the ’383 patent “relates to a dual mode mobile telecommunication device in general (for instance a UMTS (Universal Mobile Telecommunications System) and GSM (Global System for Mobile Communications) dual mode device), and to an apparatus and method for selecting cells in mobile telecommunications system user equipment” (Ex. 1001, 1:21–26), and in view of the parties’ agreement, we find Petitioner’s formulation appropriate, and adopt it.” slip op. at 11

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

    “III. CLAIM CONSTRUCTION The parties do not raise any claim construction issues and we, accordingly, do not construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11

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

    “e. Motivation to Combine TS 25.008 and TS 25.304 Petitioner argues that one of skill in the art “would have been motivated to combine the teachings of TS 45.008 and TS 25.304 to arrive at a multi-RAT UE that performs cell reselection according to the procedures in both of these standards documents” and that the combination “would have 7 Patent Owner argued in the Response that we improperly relied on TS 45.088 for this step. See PO Resp. 8–10. As we explained at the hearing, however, that was not the case. See Paper 41, 35–36. been obvious based on the specific motivation to combine provided by the documents themselves.” Pet. 18–20. Petitioner further argues that the combination would have been nothing more than applying a known technique––“TS 25.304’s procedures for determining if a specific UTRAN cell is barred and therefore may not be camped on for a period”––to a known method ready for improvement––“TS 45.008’s procedures for identifying a UTRAN cell to reselect for camping when camped on a GSM cell”––to yield predictable results––“a multi-RAT UE capable of determining that a particular UTRAN cell should not be reselected to camp on for a period if the UTRAN cell is barred).” Id. at 19–20 (citing Ex. 1004 ¶ 187). Patent Owner does not argue that there would not have been a motivation to combine. As noted above, these references expressly incorporate each other,” slip op. at 20

  • Expert testimonyPetitioner expert creditedOther

    “TS 45.008 is a 3rd Generation Partnership Project (3GPP) specification that “specifies the Radio sub-system link control implemented in the Mobile Station (MS), Base Station System (BSS) and Mobile Switching Centre (MSC) of the digital cellular telecommunications systems GSM.” Ex. 1005, 8.5 The radio sub-system link control aspects addressed by TS 45.008 include handover, RF power control, radio link failure, cell 5 Petitioner relies on the Declaration of Craig Bishop (Ex. 1016) to establish the prior art status of the 3GPP documents. See Pet. 9–13. We find that testimony sufficient on its face, and Patent Owner does not argue these documents are not available as prior art.” slip op. at 13

  Patent outcomesUS 8,600,383 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,600,383
• Momentum Dynamics Corporation v. Witricity CorporationAll claims unpatentable
  PTAB · Oct 12, 2022 · IPR2021-01127 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–8 are unpatentable because Kanno anticipates them and renders them obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address the level of skill in the art. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’635 patent and prior art of record. We adopt Petitioner’s definition of the level of skill, except that we delete the phrase “at least” to avoid including an expert in the definition of the level of skill.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner

    “We agree with Petitioner. The plain language of claim 1 is expansive, requiring only that the partially cancelled first magnetic field is “outside a spatial region through which power is transferred from the first source magnetic resonator to the device magnetic resonator.” The claim does not refer to a specific type of radiation, let alone far field radiation. The claim drafter deliberately chose the broader term “first magnetic field” rather than specifying “far field radiation.” We find nothing in the claim that points to a more restrictive interpretation of “first magnetic field.” The specification does not limit the partially canceled first magnetic field to far field radiation either, as it expressly contemplates that “the fields that need to be minimized or reduced can be either the far-field, or the near field (if the wavelength is much larger than the distance between the wireless power transfer system to the point of interest).” Ex. 1001, 51:33–37 (emphasis added). The specification could not be any plainer than this— referring explicitly to reducing the far field “or the near field.” Id.5” slip op. at 9

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

    “We agree with Petitioner. Patent Owner’s arguments rely on a claim construction that we have not adopted. And Kanno discloses at least near-field cancellation by disclosing, for example, that angles “within the range of 90 to 180 degrees . . . minimized leakage of electromagnetic waves into the surrounding space effectively.” Ex. 1005, 28:36–41; Ex. 1003 ¶¶ 56 (citing, e.g., Ex. 1005, 28:18–42), 107 (similar), 111 (similar). Patent Owner does not dispute that Kanno teaches near-field cancellation. See, e.g., PO Resp. 9 (“reducing ‘near field strength’ as described in Kanno”). Thus, under the correct construction of this limitation as encompassing near-field radiation, far-field radiation, or both, we agree that Kanno teaches it. Not only that, but Patent Owner does not dispute Petitioner’s Reply argument that Kanno also discloses the same far-field cancellation as the ’635 patent, as Patent Owner neither filed a sur-reply nor addressed Petitioner’s Reply argument at the oral hearing. See Tr. 14:20–21 (resting on the briefs). And we agree with Petitioner’s argument, as supported by the unrebutted testimony of Dr. Arnold, that even under Patent Owner’s incorrect construction, Kanno teaches this limitation. Reply 6–7 (citing, e.g., Ex. 1003 ¶¶ 114–15). Dr. Arnold asserts that “[a] reduction in the strength of the electromagnetic near field generally corresponds with a reduction in the strength of the electromagnetic far field.” See Ex. 1003 ¶ 114. Dr. Arnold explains in detail how these near and far fields relate to one another as follows: The term “near field” is a technical term that refers to the electromagnetic near field of an antenna, as opposed to the radiative “far field”. The near field for an electromagnetically short antenna is defined as a region within one electromagnetic wavelength of the antenna. The electrical frequency used in the real-world implementation of the power generator is 3 MHz. Id. 27:44-48. A frequency of 3 MHz corresponds to an electromagnetic wavelength of 100 meters. Here, the measurement distance of 5 meters is well within the near field range of 100 meters, and constitutes a near field measurement. A reduction in the strength of the electromagnetic near field generally corresponds with a reduction in the strength of the electromagnetic far field Id. ¶ 114. In other words, if a field closer to an antenna is reduced, then the field farther from the antenna will be reduced too. This fact is unremarkable, as Dr. Arnold explains, “[t]he principles behind magnetic resonators to wirelessly transfer power have been known for over a century.” Id. ¶ 24.” slip op. at 20

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

    “Even in light of Patent Owner’s arguments, which we address below, we agree with Petitioner. We find that one of ordinary skill in the art would have combined Kanno’s Example 1 with its fundamental arrangement because the specific details in Example 1 and test data would have indicated to the skilled artisan the desirability of combining these portions of Kanno. As Dr. Arnold persuasively testifies, “a POSA would have been motivated to look to Example 1 because it provides those specific implementation details for circuit component types and values, as well as test data showing that the power generator achieves high power transfer efficiency while minimizing electromagnetic field leakage.” Ex. 1003 ¶ 150. He further testifies, “given that Kanno describes ‘Example 1’ as a real-world implementation, a POSA would have had a reasonable expectation of success that the power generator using those implementation details would work.” Id. We agree and credit this unrebutted testimony in support of Petitioner’s motivation to combine separate portions of Kanno.” slip op. at 31

  Patent outcomesUS 9,306,635 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,306,635
• Microsoft Corporation v. D3d Technologies, Inc.All claims unpatentable
  PTAB · Oct 6, 2022 · IPR2021-00703 · APJ Jameson Lee · IPR · Final written decision

  The Board held claims 1–4, 6–10, 12–16, and 18 unpatentable based on anticipation by Rosencwaig and obviousness over the cited combinations.

  RulingsFinal written decision

  • Skill levelOther

    “differences between the claimed invention and the prior art are such that the claimed invention, as a whole, would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said claimed invention pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). There must be some articulated reasoning with rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 11

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

    “1. “projecting” In its Petition, Petitioner did not propose a specific construction for” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

  Patent outcomesUS 9,473,766 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,473,766
• TCT Mobile International Limited / TCT Mobile, Inc. et al. v. Sisvel S.P.A.All claims unpatentable
  PTAB · Sep 22, 2022 · IPR2021-00678 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1, 3–5, 11, and 13–15 are unpatentable as obvious over Dahlman and Samsung and over Nokia and Samsung.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “level of skill in the art, which encompasses that proposed by Patent Owner and is consistent with the specification of the ’279 patent and asserted prior art of record. Our Decision stated that “Patent Owner’s argument that a person of ordinary skill in the art would not have needed to be a member of a standard-setting organization does not address the standard actually proposed by Petitioner – familiarity with the 3GPP specifications, including LTE.” Dec. on Inst. 7−8. We stated that the ’279 patent devotes a significant portion of its disclosure to discussing 3GPP LTE communications systems and, thus, we find familiarity with 3GPP specifications would have been expected of a person of ordinary skill in the art. Id. at 8. And we stated that the asserted prior art addresses and describes 3GPP specifications, and, therefore, it is reasonable to conclude that a person of ordinary skill in the art would have had familiarity with such specifications. Id.” slip op. at 8

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

    “Defining the term “Resource Indication Value (RIV)” to include the specific calculations disclosed in columns 16 through 18 of the ’279 patent, without a cogent and properly supported explanation for why the term should be thus construed, would amount to improperly importing a limitation into the claim from a preferred embodiment. Phillips v. AWH limitations from the specification into the claim”). There is no language in the claim itself that alludes to how the values are calculated or how they are to be interpreted. And as Petitioner points out, the ’279 patent specification provides a broader description of the term, by stating that the “resource indication value (RIV) indicat[es] a start resource block and the length of consecutively-allocated resource blocks (RBs).” Id. at 13:35−38; Pet. 42; see also Reply 4−5 (arguing that the calculation of an invalid RIV value is irrelevant to the claims because the claims do not require any method of calculating such values); Tr. 22:1−23:25 (arguing that a RIV is a value denoting a start resource block and the length of consecutively allocated resource blocks as stated in the ’279 patent specification). Accordingly, we determine that the “Resource Indication Value (RIV)” recited in claims 4 and 14, does not require a RIV calculation method of the type Patent Owner argues.” slip op. at 10

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

    “printed publication, “before the critical date the reference must have been sufficiently accessible to the public interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). When there is an established publisher there is a presumption of public accessibility as of the publication date. Vidstream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020); see also Giora George Angres, Ltd. v. Tinny Beauty & Figure, Inc., No. 96-1507, 1997 WL 355479, at *7 (Fed. Cir. July 24, 1997) (“[A]s Memoirs was published (in England) by an established publisher, there is no reason to suspect that it was not publicly available, including to one skilled in the art, and no evidence was presented that it was not.” (citing In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)) (emphasis omitted)).” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Smith because it is supported by evidence of record and provides explanation sufficient to understand the relationship between the PDCCH signaling used for SPS deactivation and the content of that signal with respect to the identity of the terminal, the C-RNTI. See Lanning Decl. ¶¶ 262–263, 278−280. The proffered testimony of Dr. Smith characterizes Dahlman’s disclosures as limited to what it expressly discloses, and not for what they would suggest to a person of ordinary skill in the art. Smith Decl. ¶¶ 115−120. Dr. Smith’s testimony also does not explain or rebut the Lanning testimony on which RNTI Dahlman suggests for use in the PDCCH signal for SPS activation and deactivation. Id. Indeed, Dr. Smith’s testimony is silent as to what Dahlman’s teachings of using the PDCCH for SPS activation and deactivation would have taught or suggested to a person of ordinary skill in the art. Merely opining that Dahlman limits its discussion of C-RNTI as an identify of the terminal is insufficient to rebut the testimony of Mr. Lanning that the PDCCH transmits DCI which includes the RNTI and that a person of ordinary skill in the art would understand that for DCI 1A transmission that RNTI would be a C-RNTI. Lanning Decl. ¶¶ 278−280. Thus, Petitioner’s position that a person of ordinary skill in the art “would have understood that for deactivation, the DCI sent on the PDCCH must include the C-RNTI” (Pet. 38) is supported by expert testimony that is consistent with Dahlman’s teachings. Mr. Lanning’s testimony also makes a logical connection between Dahlman’s disclosure of using RNTIs, and particularly a C-RNTI, in the DCI (of the PDCCH) and Dahlman’s disclosure of using the PDCCH for SPS deactivation signaling (see Ex. 1003, 314, 352, 477).” slip op. at 28

  Patent outcomesUS 8,971,279 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,971,279
• Microsoft Corporation v. D3d Technologies, Inc.All claims unpatentable
  PTAB · Aug 22, 2022 · IPR2021-00648 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1, 5–7, 11–13, 17, and 18 as anticipated by Jones; claims 2–5, 8–10, and 14–16 as obvious over Jones and Schoolman or Murphy and Guang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art the time of the invention would have had “at least a Bachelor’s degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with, teaching, or researching stereoscopic and/or virtual/augmented reality (VR/AR) display technologies.” Pet. 4 (citing Ex. 1003 ¶¶ 15–16). Petitioner further contends that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Id. At the institution stage in the proceeding, Patent Owner did not dispute Petitioner’s proposal. See generally Prelim. Resp. 5 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. We find that the phrase “at least” in Petitioner's proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, considering the subject matter of the ’183 patent, the background technical field, and the asserted prior art, we otherwise agree with Petitioner’s proposed qualifications for an ordinary level of skill. Inst. Dec. 17. In its Patent Owner Response, Patent Owner asserts that it “mostly agrees with [Petitioner’s] position, but like the Board believes that the use of the term ‘at least’ is inappropriate inasmuch as it would extend to persons having more than ordinary skill.” PO Resp. 18. We maintain our finding at the institution stage that the phrase “at” slip op. at 10

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

    “k) Conclusion Based on the complete record now before us, we find that Petitioner has shown that Jones discloses each recitation of claim 1. Accordingly, we determine that Petitioner has proved, by a preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Jones.” slip op. at 62

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

    “l) Conclusion For the reasons given, we are persuaded that Petitioner establishes that the combination of Murphy and Guang teaches all limitations recited in claim 1. Also, we are persuaded that Petitioner has articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Murphy and Guang in the manner recited in claim 1. Accordingly, based on the complete record now before us, Petitioner” slip op. at 125

  Patent outcomesUS 9,349,183 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,349,183
• Microsoft Corporation v. D3d Technologies, Inc.All claims unpatentable
  PTAB · Aug 3, 2022 · IPR2021-00647 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–21 are unpatentable because Murphy anticipates or renders them obvious; the Board did not reach the remaining grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “mostly agrees with this position, but like the Board believes that the use of the term ‘at least’ is inappropriate inasmuch as it 6 Patent Owner has not submitted any objective evidence of nonobviousness. would extend to persons having more than ordinary skill.” PO Resp. 18. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’771 patent and prior art of record. We adopt Petitioner’s definition of the level of skill but delete the two qualifiers “at least” to keep the articulation from extending to the realm of an expert.” slip op. at 7

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

    “As Petitioner correctly points out, the claim requires “selecting items of said image to be subtracted from said image to produce a filtered image,” or in other words, “the subtraction is being applied to the image.” Reply 4 (citing Ex. 1035 ¶ 8) (emphasis changed). Nothing in the claim explicitly requires “actual elimination of data (voxels) from the underlying three-dimensional model from which the images are created,” as Patent Owner urges. See PO Resp. 21. To the contrary, the plain claim language states that it is the image that is filtered. Thus, absent some definition or disclaimer in the intrinsic record (whether explicit or implicit), there is no requirement to eliminate underlying data. See Trustees of Columbia University v. Symantec, 811 F.3d 1359, 1363–64 (Fed. Cir. 2016). There is no such definition or disclaimer in the Specification. Rather,” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We further find persuasive Dr. Zyda’s opinion that “[n]ot only would such “subtraction” be inconsistent with the claim language, it would be inconsistent with a POSITA’s desire to quickly and efficiently manipulate 3D images in real time by, for instance, repeatedly removing and re-adding different tissue sections.” Id. (citing Ex. 10017, 10:12–17). We find Dr. Zyda’s testimony more credible than Dr. Bajaj’s, as Dr. Bajaj was unable to supply a credible answer for where the patent describes reloading deleted volume data from an archive. See Ex. 1036, 31:12–44:10. Instead, Dr. Bajaj relied on the ’771 patent’s generic disclosure that “the user can then select additional tissues for removal . . . or to be re-added.” See id. at 32:12, 43:7; Ex. 1001, 10:12–17. But, as the previously quoted sentence explains, the disclosure of “removal” or “re-added” refers to displayed tissues, not the underlying data. Ex. 1001, 10:12–17. As the ’771 patent lacks any discussion of deleting underlying data and reloading such data from an archive, we credit Dr. Zyda’s testimony that a POSITA would not have done so in order to more “quickly and efficiently manipulate 3D images in real time.” Ex. 1035 ¶ 8.” slip op. at 16

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

    “We agree with Petitioner. Patent Owner’s arguments rely on a claim construction that we have not adopted. As we explained above, we construe “subtracted” to mean “withdrawn or taken away, as a part from a whole.” Petitioner relies on Murphy’s “ability to [h]ide and show each anatomical feature” (Ex. 1010 ¶ 32); “arbitrarily-chosen regions of the Virtual Patient can be made transparent” (id. ¶ 44); and “they can cut away sections arbitrarily with cutting planes, spheres, etc.” (id. ¶ 57). Pet. 66. Murphy’s hiding, cutting away, and making items completely transparent teaches withdrawing or taking away items from an image. See Ex. 1003 ¶ 184. We credit Dr. Zyda’s testimony that “[one of ordinary skill in the art] would have understood that selecting items of the image to be hidden, cut away, or otherwise made transparent corresponds to subtracting the selected items from the image to produce a filtered image.” Id., cited in Pet. 66. Contrary to Patent Owner’s assertions, we do not view Dr. Zyda’s testimony as defective because Murphy’s teachings corroborate Dr. Zyda’s testimony under our construction of “subtracted.” Compare id., with Ex. 1010 ¶¶ 32, 44, 57. Accordingly, Petitioner has persuasively shown that Murphy discloses” slip op. at 20

  Patent outcomesUS 8,384,771 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,384,771
• Unified Patents Inc. v. American Patents LLCAll claims unpatentable
  PTAB · Aug 3, 2022 · IPR2019-00482 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 5–7 are unpatentable as obvious over the asserted combinations of Coile, Templin, Hu, and Shapiro.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal (unopposed by Patent Owner) is consistent with the ’655 patent specification and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). 7 The record does not include allegations or evidence of objective indicia of nonobviousness. Accordingly, we adopt the level of ordinary skill as articulated by Petitioner. Accord Inst. Dec. 22 (adopting same position).” slip op. at 8

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

    “phrases, but rather assumes that a person of skill in the art would understand their meaning. See Phillips, 415 F.3d at 1313 (“[I]nventors are typically persons skilled in the field of the invention[,] and [] patents are addressed to and intended to be read by others of skill in the pertinent art.”). The Specification states a machine “shares its identity” with a user and “[a]s a 8 Although Patent Owner addressed claim construction at the oral hearing (see generally Tr. 42:20–56:15), Patent Owner did not do so in its briefs (see PO Resp. 12–13 n.5). The oral hearing arguments were untimely and will not be considered. See Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 85–86, available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”); Paper 28 at 7 (Scheduling Order) (“Patent Owner is cautioned that any arguments for patentability not raised in the response may be deemed waived.”); see also Tr. 88:5–15 (Petitioner objecting to new arguments). consequence, the authorized user assumes the identity of the machine and appears to the network as if it were that machine.” Ex. 1001, 2:31–34. “[T]he end user assumes the identity of the [machine] such that the connected end user has all of the access privileges assigned to the [machine].” Id. at 3:19–21. The Specification implies that multiple users can assume the identity of the same machine (id. at 2:34–36), and the Specification explains “the network resources do not worry about the true identity of the end user” after the user assumes the identity of the machine (id. at 4:33–34). Dr. Reddy testifies that, “[b]ased on this disclosure, a [person of ordinary skill in the art] would have understood the phrases ‘assume the identity’ of a machine and ‘assuming the identity’ of a machine to include at least ‘appear[ing] to the network as if it were’ that machine.” Ex. 1003 ¶¶ 46–47 (last alteration in original). On this record, we credit the testimony of Dr. Reddy because it is consistent with and supported by the Specification. Accordingly, we conclude the claimed phrase “assume the identity of a network element” means “appear to the network as if it were the network element,” and similarly, we conclude “assuming the identity of a network element” means “appearing to the network as if it were the network element.”” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “a. Independent Claim 5 Claim 5 recites “[a] method comprising . . . .” Ex. 1001, 5:30. We conclude that this preamble is not limiting. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (“Generally, the preamble does not limit the claims.”). But, even if the preamble were limiting, Petitioner has shown that Coile discloses a method, as recited. Pet. 15 (citing Ex. 1004, 1:16–17).” slip op. at 19

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

    “on the server via a proxy after successfully authenticating with the proxy. E.g., Ex. 1004, 1:36–47, 2:16–38, 2:44–49. According to Dr. Reddy, a person skilled in the art would have understood Coile’s client to use the proxy’s authorization to access these network resources. Ex. 1003 ¶ 77. In addition, Templin teaches that host A communicates with host C using gateway B and its address. Ex. 1005, 8:37–54. Templin’s host C “believ[es] it is communicating with a ‘host’” and “never learns of the existence of host A.” Id. at 8:44–46. Dr. Reddy explains that Templin teaches that host A “assume[s] the identity” of gateway B, as required by claim 5, because host A appears to the network (including, for example, host C) as if it were gateway B. Ex. 1003 ¶¶ 78–82; see supra § II.B.3 (construing “assume the identity of a network element” to mean “appear to the network as if it were the network element”). Patent Owner has not identified any evidence that contradicts this testimony, and we find Dr. Reddy’s testimony to be credible. Further, Patent Owner has not identified any deficiencies in Petitioner’s rationale. Accordingly, we are persuaded that the combination of Coile and Templin discloses these limitations. Finally, Petitioner asserts that a person of ordinary skill in the art would have been motivated to combine these references as proposed (Pet. 25–26), and Patent Owner has not argued otherwise. Dr. Reddy testifies that a person of ordinary skill in the art would have been motivated to combine the identified portions of Coile and Templin to yield the claimed invention, and Dr. Reddy explains the facts and rationale on which this testimony is based. Ex. 1003 ¶¶ 83–86. We find Dr. Reddy’s testimony to be credible, and we perceive no evidence that contradicts this testimony. Further, Petitioner’s rationale for combining the teachings of Coile and Templin is logical, consistent with, and supported by the cited evidence. Accordingly, we are persuaded that a person of ordinary skill in the art would have been motivated to combine Coile and Templin as proposed by Petitioner. For the foregoing reasons, Petitioner has proved by a preponderance of the evidence that claim 5 would have been obvious over Coile and Templin.” slip op. at 25

  Patent outcomesUS 7,373,655 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,373,655

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.