• Toyota Motor Corp. v. Leroy G. HagenbuchSome claims unpatentable
  PTAB · Mar 3, 2015 · IPR2014-00124 · APJ Jameson Lee · IPR · Final written decision

  Claims 15–20, 23, and 24 are unpatentable as obvious over Aoyanagi, Vollmer, and Steiner; claims 21 and 22 were not shown unpatentable over the four-reference ground.

  RulingsFinal written decision

  • Skill levelOther

    “differences 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). Obviousness is a legal determination based on underlying factual inquiries including (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed invention, (3) the level of ordinary skill in the art, and (4) secondary considerations of nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The level of ordinary skill in the art need not always be expressly defined. It can be reflected by the prior art of record. 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).” slip op. at 9

  • Prior constructionPrior construction not adoptedDecided for patent owner

    “After institution of trial, neither party disputed the above-noted claim construction. Upon review of the full record, we have no reason to deviate from them, except for the construction of the term “second memory.” We did not intend to suggest that a memory address is the same as a memory. Accordingly, the construction of “second memory” is revised to: “any memory space separate from a first memory space.”” slip op. at 8

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

    “parameters for monitoring and recording. Ex. 1103, 71. Although Aoyanagi states that these parameters “are not always necessary but just illustrative,” (id. at 71) that statement does not take away from or diminish Aoyanagi’s specific disclosure of the 15 vehicle parameters to monitor and record. What Aoyanagi illustrated, as an embodiment, is the monitoring and recording of all 15 vehicle parameters. That Aoyanagi also indicates that all 15 parameters “are not always necessary” merely adds to and expands its disclosure of an embodiment that monitors and records all 15 vehicle parameters. Hagenbuch’s argument is misplaced, that Toyota has not shown that one with ordinary skill in the art would have selected the particular combination of parameters to monitor and record, as required by claim 15, i.e., the ground speed of the vehicle, engine throttle position of the vehicle, braking system on/off status, seat belt status, and information indicative of a change in the velocity of the vehicle, such as acceleration and deceleration. The argument is misplaced, because claim 15 does not limit or restrict the monitoring and recording to only those parameters expressly recited in the claim or prohibit the monitoring and recording of other vehicle parameters. The claim feature relating to what vehicle parameters to monitor and record reads on prior art that monitors and records the identified parameters, whether or not additional vehicle parameters also are monitored and recorded. On the basis of its embodiment that monitors and records all 15 vehicle parameters, Aoyanagi is such prior art. No picking or choosing is involved or necessary.” slip op. at 15

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

    “In an obviousness analysis, it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. KSR, 550 U.S. at 418. A basis to combine teachings need not be stated expressly in any prior art reference. In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006). There need only be an articulated reasoning with rational underpinnings to support a motivation to combine teachings. Id. at 988. Toyota’s stated rationale does have rational underpinnings and are straightforwardly logical. Vollmer teaches that in case of a crash or accident, sending a wireless distress signal to summon help decreases the time before emergency services are notified, and that automatically sending a distress signal avoids the difficulties a person may have, in case of a crash or accident, in manually making a call. Pet. 13. That purpose and objective, as a motivation to incorporate automatically sending a distress signal in response to detection of a collision, is applicable to any onboard device that detects a collision, such as Aoyanagi’s system, regardless of what other functions are performed by the onboard device. In any event, the data monitoring and recording function of Aoyanagi are not unlike those performed by the system of Vollmer. As we have discussed above, Vollmer’s distress signal includes monitored information such as the vehicle’s position, the number of passengers in the vehicle, the seat positions, speed and deceleration measurements, and whether the vehicle was proceeding against traffic.” slip op. at 23

  Patent outcomesUS 8,532,867 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,532,867
• Toyota Motor Corp. v. Leroy G. HagenbuchSome claims unpatentable
  PTAB · Mar 3, 2015 · IPR2014-00123 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–7 and 10–12 are unpatentable as obvious; Toyota did not prove claims 8, 9, 13, and 14 unpatentable over the asserted combination.

  RulingsFinal written decision

  • BurdenOther

    “We determine that Petitioner has shown by a preponderance of the evidence that claims 1–7 and 10–12 of the ’867 patent are unpatentable. We also determine that Petitioner has not shown, by a preponderance of the evidence, that claims 8, 9, 13, and 14 of the ’867 patent are unpatentable.” slip op. at 2

  • Skill levelOther

    “A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences 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). Obviousness is a legal determination based on underlying factual inquiries including (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed invention, (3) the level of ordinary skill in the art, and (4) secondary considerations of nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The level of ordinary skill in the art need not always be expressly defined. It can be reflected by the prior art of record. 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).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “interpretation in an inter partes review. 37 C.F.R. § 42.100(b). However, the ’867 patent is expired. Consequently, the Board’s review of the claims of the ’867 patent is similar to that of a district court’s review. In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms are given their ordinary and customary meanings, as understood by a person of ordinary skill in the art, at the time of the invention, having taken into consideration the language of the claims, the specification, and the prosecution history of record, because the expired claims are not subject to amendment. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.” Id. at 1314.” slip op. at 7

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

    “interpretation in an inter partes review. 37 C.F.R. § 42.100(b). However, the ’867 patent is expired. Consequently, the Board’s review of the claims of the ’867 patent is similar to that of a district court’s review. In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms are given their ordinary and customary meanings, as understood by a person of ordinary skill in the art, at the time of the invention, having taken into consideration the language of the claims, the specification, and the prosecution history of record, because the expired claims are not subject to amendment. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.” Id. at 1314.” slip op. at 7

  Patent outcomesUS 8,532,867 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,532,867
• Toyota Motor Corporation v. American Vehicular Sciences LLCSome claims unpatentable
  PTAB · Jan 12, 2015 · IPR2013-00419 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 30, 32–34, 37–40, 43, 46, 48, and 49 are unpatentable; claims 1–4, 7–10, 31, 41, 56, 59–62, and 64 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “Based on the foregoing, Toyota’s Petition and supporting evidence fail to establish that the reference in Lemelson to training with “known inputs” discloses training with patterns of waves actually received from possible exterior objects. In addition, Toyota’s Reply fails to provide timely and persuasive evidence or argument that a person having ordinary skill in the art would have understood that training a neural computer using “known inputs” in Lemelson necessarily describes training with patterns of waves actually received from possible exterior objects. Accordingly, Toyota has not shown by a preponderance of the evidence that Lemelson discloses a “trained pattern recognition algorithm generated from data of possible exterior objects and patterns of received waves from the possible exterior objects,” as recited in independent claims 1 and 56 and dependent claim 41. Therefore, Toyota has not demonstrated by a preponderance of the evidence that independent claims 1 and 56 and dependent claim 41 are anticipated by Lemelson. Toyota also has not demonstrated by a preponderance of the evidence that dependent claims 2–4 and 7–10, which depend from claim 1, and claims 59–61 and 64, which depend from claim 56, are anticipated by Lemelson.” slip op. at 19

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “as responsive to AVS’s Patent Owner Response, we are not persuaded that Toyota has shown by a preponderance of the evidence that Lemelson’s “known inputs” are patterns of waves actually received from possible exterior objects, as required by the claims. Instead, we find credible the testimony of AVS’s expert, Dr. Koutsougeras, that one of ordinary skill in the art would have understood that Lemelson’s “known inputs” could include real or simulated data for training a neural network. See Ex. 2001 ¶¶ 55–63; see also Ex. 1022, 132:24–138:5, 157:12–159:14, 163:18–164:7 (deposition testimony of Dr. Koutsougeras).6 This understanding is supported by Toyota’s counsel, who was asked at the hearing whether “known inputs” in Lemelson refers to “just real sensor data or is . . . understood as both” real data and simulated data. Tr. 27:25–28:1. He answered that “one of ordinary skill in the art would have understood [known inputs] as real sensor data, but it is not to the exclusion of simulated data.” Id. at 28:4–6 (emphasis added). In addition, Toyota’s expert, Dr. Papanikolopoulos, acknowledges in his deposition testimony that use of simulated data was a possibility for training pattern recognition algorithms. See Ex. 2002, 102:5–14 (stating that “[i]n this particular domain, you go to simulated data, or if you don’t have access to real data, to real images” for training pattern recognition systems to detect automobiles); see also id. at 48:2–9 (stating that using simulated data rather than images was a possibility). In his Reply Declaration, Dr. Papanikolopoulos opines that one of ordinary skill in the art at the time of the invention would have understood “known inputs” in Lemelson to refer to real data because an ordinarily skilled artisan “would have known that training with ‘real data’ would have yielded the best results for” the purpose of identifying exterior objects. Ex. 1023 ¶ 9. In essence, Dr. Papanikolopoulos’s supporting analysis indicates that one of ordinary skill in the art would have preferred real data over simulated or partial data for various applications. See id. ¶¶ 10–26. This preference, however, is not sufficient to show that Lemelson’s description of training with “known inputs” expressly discloses generating a 6 We refer to the page numbers of the deposition transcript rather than the exhibit page numbers. pattern recognition algorithm using waves actually received from possible exterior objects, as required by the claims.7 Nor does Toyota’s evidence show by a preponderance of the evidence that Lemelson’s “known inputs” inherently, or necessarily, refer to waves actually received from possible objects, because the “known inputs” could refer to simulated data. We disagree with Toyota’s argument that Dr. Koutsougeras’s testimony should be given little weight because he has limited experience with pattern recognition in vehicles. See Pet. Reply 11–12. Dr. Koutsougeras testified that his “dissertation [was] on neural networks, particularly methods for training neural networks,” and he has taught classes and directed student theses on neural networks or for which neural networks were a substantial component. Ex. 1022, 19:19–20:24. We are not persuaded by Toyota’s argument that experience in training neural networks specifically for vehicle exterior monitoring systems is necessary to support testimony regarding an ordinarily skilled artisan’s understanding of Lemelson’s disclosure of training using “known inputs.”” slip op. at 15

  • Strike new argumentNew argument disregardedDecided for patent owner

    “understood that training a neural network to identify exterior objects in Lemelson would have been done with “real data,” and not with simulated or “partial data” (i.e., actual waves received from objects other than those being detected). Pet. Reply 8 (citing Ex. 1023 ¶¶ 10–26). Initially, we note that Toyota introduces this argument for the first time in its Reply, along with a supporting Reply Declaration from Dr. Papanikolopoulos (Ex. 1023). A reply may only respond to arguments raised in the patent owner response. 37 C.F.R. § 42.23(b). Furthermore, “a reply that raises a new issue or belatedly presents evidence will not be considered.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 12, 2014). Even if we consider Toyota’s newly proffered argument and evidence as responsive to AVS’s Patent Owner Response, we are not persuaded that Toyota has shown by a preponderance of the evidence that Lemelson’s “known inputs” are patterns of waves actually received from possible exterior objects, as required by the claims. Instead, we find credible the testimony of AVS’s expert, Dr. Koutsougeras, that one of ordinary skill in the art would have understood that Lemelson’s “known inputs” could include real or simulated data for training a neural network. See Ex. 2001 ¶¶ 55–63; see also Ex. 1022, 132:24–138:5, 157:12–159:14, 163:18–164:7” slip op. at 15

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

    “in the ’057 patent, we give the claim language its ordinary and customary meaning as would be understood by a person having ordinary skill in the art in the context of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In describing the training of pattern recognition systems, such as neural networks, for use with the invention, the ’057 patent explains that a large number of experiments are conducted in which different objects are placed in numerous positions and orientations, and signals from a CCD array are returned from the objects and measured by sensors or transducers. Ex. 1001, 36:22–39. This is the sole example of a pattern recognition training session provided in the ’057 patent. Although the described training session relates to objects inside a vehicle, the ’057 patent indicates that pattern recognition systems for identifying exterior objects are trained in a similar manner. See, e.g., id. at 40:1–9. According to the plain language of the disputed limitation, the algorithm must be generated from both “data of possible exterior objects” and “patterns of received waves from the possible exterior objects.” We are not persuaded by Toyota’s argument that the claimed “patterns of received waves,” in contrast to “patterns from received waves,” need only be patterns representing what received waves would look like. Neither the written description of the ’057 patent nor the claim language, in context, supports such parsing, particularly when the claim language further requires the waves to be received “from” possible exterior objects. In view of the claim language and the description in the ’057 patent of a training session using signal patterns actually received from real objects, we see no reasonable basis for interpreting “generated from . . . patterns of received waves from the possible exterior objects” to encompass training of a pattern recognition algorithm using simulated wave patterns. Therefore, the broadest reasonable construction of the claim language at issue requires a pattern recognition algorithm that has been generated using patterns of waves actually received from possible exterior objects.” slip op. at 11

  Patent outcomesUS 6,772,057 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,772,057
• Distinctive Developments, Ltd / Electronic Arts Inc. et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Some claims unpatentable
  PTAB · Dec 3, 2014 · IPR2013-00391 · APJ Matthew R Clements · IPR · Final written decision

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

  RulingsFinal written decision

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

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

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

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

  Patent outcomesUS 6,857,067 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,857,067
• Harmonic, Inc. v. Avid Technology, Inc.Some claims unpatentable
  PTAB · Jul 10, 2014 · IPR2013-00252 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Haskell and Rossmere; claims 11–16 were not shown unpatentable because the petition did not establish the predefined timing limitation.

  RulingsFinal written decision

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

    “Upon further review of the ’291 Patent Specification, the inclusion of “into the selected input lines” is not consistent with the ’291 Patent Specification. Instead of disclosing control of the video data flow into the selected input lines, the ’291 Patent Specification discloses that input switch 105, via microcontroller 110, controls video data flow of the selected input 8 lines into decompression circuits 120, 130. For example, the ’291 Patent Specification provides the following disclosures: (1) “[m]icrocontroller 110 instructs input switch 105 to begin flowing the second compressed video data stream into decompression circuit 130 [] at the second, lower rate” (Ex. 1001, col. 4, l. 66–col. 5, l. 1 (emphasis added)); (2) “[m]icrocontroller 110 will . . . instruct input switch 105 to stop the flow of video data into decompression circuit 130” (id. at col. 5, ll. 9–11 (emphasis added)); (3) “[i]nput switch 105 also begins to flow the second video data stream into decompression circuit 130 at the higher, first rate of video flow” (id. at col. 5, ll. 19–21 (emphasis added)); (4) “[m]icrocontroller 110 has instructed input switch 105 to begin flowing the second video data stream into decompression circuit 130 at the second, lower rate” (id. at col. 5, ll. 36–39 (emphasis added)); (5) “[m]icrocontroller 110 instructs input switch 105 to begin flowing the next video data stream into first decompression circuit 120 at the second, lower rate” (id. at col. 5, ll. 43–46 (emphasis added)); and (6) “[m]icrocontroller 110 [] instructs input switch 105 to begin flowing the next video data stream into decompression circuit 130 at the second, lower rate” (id. at col. 5, ll. 52–56 (emphasis added)). Accordingly, applying the broadest reasonable construction standard, we now construe “input switch . . . capable of controlling the video data flow rate” as “controlling the time, duration, and rate at which video data flows, and includes some level of control beyond simply turning flow on or off.”” slip op. at 8

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

    “We are persuaded by Petitioner’s assertion that Patent Owner’s arguments are predicated incorrectly on demultiplexer switch 203 alone as teaching or suggesting the claimed input switch, and disregard the claim construction of “switch” as including “a device or assembly for routing or selecting a data stream.” Pet. Reply 3–5. As set forth in the Petition (Pet. 44), Haskell’s demultiplexer switch 203 of decoder 200 (illustrated in Fig. 3) is coupled to compressed data streams via multiplexer switch 108 of encoder 100 (illustrated in Fig. 2). Thus, Petitioner’s position is that demultiplexer switch 203 of decoder 200 together with multiplexer switch 108 of encoder 100 teaches or suggests the claimed input switch. Petitioner also asserts that Haskell’s encoder 100 controls the flow of data through decoder 200. Pet. 44. As pointed out by Petitioner, Patent Owner fails to address the relevant components and functionality provided in the encoding system 100, which includes multiplexer switch 108 communicatively coupled with demultiplexer switch 203 of decoder 200. Pet. Reply 4–5. Patent Owner’s arguments narrowly focus on demultiplexer switch 203, and do not address sufficiently multiplexer switch 108 of encoder 100 together with demultiplexer switch 203 of decoder 200 as capable of controlling the video flow rate of the selected input lines (i.e., controlling the time, duration, and rate at which video data flows, and including some level of control beyond simply turning flow on or off).” slip op. at 18

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

    “by Petitioner, Patent Owner does not identify any explicit teaching away from the combination in Haskell. Pet. Reply 9–10. “Under the proper legal standard, a reference will teach away when it suggests that the developments 22 flowing from its disclosures are unlikely to produce the objective of the [patented] invention.” Syntex (U.S.A.) v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Patent Owner does not explain sufficiently how Haskell suggests that any developments flowing from its disclosures are unlikely to produce a decompression system including an output switch. Rather, as noted by Petitioner, Patent Owner’s arguments focus on a portion of Haskell’s disclosure that is exemplary and not limiting. Pet. Reply 10–11 (citing Ex. 1008, col. 11, ll. 25–41). Petitioner correctly points out that Haskell is not limited to operating on related input types (i.e., video and audio streams generated during the same time period), but that Haskell discloses that “[a]ny signals capable of being divided into units and encoded may be employed within the scope of the invention.” Id. at 11 (citing Ex. 1008, col. 20, ll. 30–32). Patent Owner’s arguments regarding the addition of an output switch are predicated incorrectly on preserving the function and intended purposed of Haskell’s system operating on the exemplary video and audio signals that were generated during the same time period. Instead, Haskell must be considered for everything it teaches. EWP Corp., 755 F.2d at 907. As set forth in the Petition, “[i]t would [have] be[en] obvious to a person of ordinary skill in the art to combine the system disclosed in Haskell with an input and output switch, which were well-known in the art[,] including in Rossmere, in order to select separate decoded video signals.” Pet. 47. Petitioner further asserts that” slip op. at 22

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

    “We also are not persuaded by Patent Owner’s repeated argument that there is no reason, absent hindsight reliance on the teachings of the ’291 Patent, for a person of ordinary skill to contemplate adding an output switch to generate a single continuous output stream from the outputs of Haskell’s system. PO Resp. 30; see Prelim. Resp. 36. Patent Owner’s arguments presented in the Response are identical substantially to the arguments presented in the Preliminary Response, and Patent Owner does not offer any additional evidence in its Response to support its arguments. Compare PO Resp. 30, with Prelim. Resp. 36. As explained in our Decision on Institution, Patent Owner does not provide sufficient evidence to support this assertion, or sufficient evidence or argument addressing the technological difficulties that may prevent one with ordinary skill in the art from combining the teachings of Haskell and Rossmere to arrive at the invention embodied in claim 1. See Dec. on Institution 29. For these reasons, we are persuaded by a preponderance of the evidence that Haskell in view of Rossmere would have rendered obvious the invention of claim 1.” slip op. at 24

  Patent outcomesUS 5,495,291 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 5,495,291
• Berk-Tek LLC v. Belden Technologies Inc.Some claims unpatentable
  PTAB · Apr 28, 2014 · IPR2013-00059 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1–9, 11–19, 21, and 22 are unpatentable as obvious; claims 10 and 20 were not shown unpatentable over the asserted foamed-polymer combination.

  RulingsFinal written decision

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

    “Interpretation We agree with Petitioner that the claimed “circumferential surface” is “virtual,” in that, as explained above, the claims require that the “circumferential surface” serves as a reference point from which the protrusions extend. We also agree with Petitioner that the claimed “circumferential surface” spans the circumference (is continuous rather than discontinuous) to include extending across the base of the protrusions. The ordinary meaning of “circumferential” is “of, at, or close to the circumference,” and the ordinary meaning of “circumference” is “the line bounding a circle or other rounded surface, a periphery.” WEBSTER’S NEW UNIVERSAL UNABRIDGED DICTIONARY (Deluxe Second Ed. 1983) (“circumferential,” a.; “circumference,” n. def. 1) (Ex. 3001). Therefore, the ordinary meaning of the term “circumferential” suggests that the claimed “circumferential surface” extends along the line bounding the inner surface (the periphery) of the jacket, to include extending across the base of the protrusions.” slip op. at 11

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

    “Resp. 23), without more, does not establish that the proposed combination would not have yielded predictable results. Even in an unpredictable art, the appropriate inquiry is whether there was a reasonable expectation of success. For example, in O’Farrell, Appellants argued that at the time of the claimed invention there was significant unpredictability in the field of the claimed invention. In re O’Farrell, 853 F.2d 894, 902 (Fed. Cir. 1988). Applying a Graham factor analysis, the court held that obviousness does not require absolute predictability of success; rather, a reasonable expectation of success is all that is required. Id. at 903-904; see in re Inland Steel Co. 265 F.3d 1354 (Fed. Cir. 2001); Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Consequently, the proper inquiry here is whether there was a reasonable expectation of success in adding Grandy ’612’s separator to Newmoyer ’046’s cable. The ’641 Patent includes embodiments utilizing a separator (core or separator 101). See e.g., Ex. 1001, 5:3-16; 11:45-65; figs. 1, 9A, 9B. The Specification does not disclose that incorporation of a separator proved difficult or produced unexpected/unpredictable results. To the contrary, the ’641 Patent acknowledges that it was known to utilize a core that separates twisted pairs to reduce and stabilize crosstalk between the twisted pairs (APA). Id. at 2:18-26. In light of this, we agree with Petitioner that the addition of a separator (core) was a known method with a predictable result (reduced crosstalk). Grandy ’612’s star separator is similar to the core of the APA, in that it separates the twisted pair conductors of the cable to improve crosstalk. Ex. 1010, 5:66˗6:12; fig. 1; Ex. 1001, 5:3-16; 11:45-65; Pet. 25- 26. For these reasons, Petitioner has established a reasonable expectation of success in the proposed modification, and Patent Owner’s argument regarding predictability is unpersuasive.” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “But admissibility as an Office record does not preclude a hearsay objection if the Declaration is relied on by Petitioner as expert testimony for the truth of the matter asserted therein. An Office record is admissible to show what was said during a previous Office proceeding. Petitioner clearly has relied on the Baxter declaration as expert testimony for the truth of the matter asserted therein, beyond the nature of an Office record. Patent Owner could have made a hearsay objection and requested cross-examination of Mr. Baxter. Then, Petitioner would have had to produce Mr. Baxter for cross-examination or address the issue in some other way. Here, Patent Owner neither made a hearsay objection nor requested cross-examination. See generally 37 CFR § 42.52; see 37 CFR § 42.64(b)(1)(ii). Therefore, this line of argument is unpersuasive. Second, Patent Owner argues that, “Mr. Baxter never actually opines” slip op. at 24

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

    “Gingue ’748 does not disclose that a halogenated polymeric material is a foamed polymeric material, and Petitioner offers no evidence that a halogenated material is a foamed polymer. Consequently, there is insufficient evidence in the record that a halogenated polymeric material is a foamed polymeric material. Further, Gingue ’748 does not disclose that a cable jacket may be comprised of a foamed polymeric material.” slip op. at 33

  Patent outcomesUS 7,135,641 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,135,641
• Microstrategy, Inc. v. Zillow, Inc.Some claims unpatentable
  PTAB · Mar 27, 2014 · IPR2013-00034 · APJ Michael W Kim · IPR · Final written decision

  Claims 2-11, 13-17, 26, 28-33, 35-37, 39, and 40 are unpatentable; claims 12, 27, 34, and 38 were not shown unpatentable.

  RulingsFinal written decision

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

    “19-26. Petitioner counters that “automatic valuation of a distinguished home” is not a term of art, and should be construed as “a calculation of a value of a distinguished property or home performed without human intervention.” Reply 5-9. We agree with Petitioner for the reasons set forth below. The Specification of the ‟674 patent does not set forth expressly a definition of “automatic valuation.” Nor is it apparent what definition is implicit within the Specification. The parties also do not identify any prosecution history that purportedly would offer a definition for the term. Instead, Petitioner proposes that “automatic valuation of a distinguished home” should be construed with its ordinary and customary meaning as “a calculation of a value of a distinguished property or home performed without human intervention.” For support, Petitioner cites the testimony of their expert, Dr. Borst (Ex. 1023 ¶¶ 13-18). This construction is consistent with the Specification, which discloses using computer system 100 to perform home valuations (Ex. 1001, Fig. 1), and thus is appropriately broad and reasonable in light of the Specification, as required by our rules. It is also consistent with dictionary definitions of “automatic”2” slip op. at 7

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

    “Furthermore, even if a tribunal were permitted, generally, to take into account a disavowal made during the same proceeding, as opposed to a prior, completed proceedings, absent extraordinary circumstances, we are not persuaded that such same proceeding disavowals are proper in a proceeding where amendments are available. This is because when claim amendments are available, a patent owner has an opportunity to amend claims to a scope it desires, so as to have the substance of any purported same proceeding disavowal reflected in the claim language expressly. The public should not be burdened with inadequate notice concerning the scope of claims, where the Patent Owner has been provided with an opportunity to amend claims to reflect the scope it desires. If Patent Owner chooses not to avail itself of the opportunity to amend, it is reasonable to accord the claims their scope under the broadest reasonable construction, without regard to the substance of any same proceeding disavowal.” slip op. at 12

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

    “forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 23

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

    “replace the appraiser of Dugan and Kim with the “owner,” as recited in independent claim 2, because both Dugan and Kim are directed to appraisal processes which must be controlled by an appraiser. PO Resp. 26-28. Petitioner counters that both Dugan and Kim disclose that the discussions of appraisers in the process are merely exemplary, and that there is nothing preventing a non-appraiser from using the systems set forth in Dugan and Kim. We agree with Petitioner. Dugan discloses the following: “[o]nce the system 10 is formatted, step 30, the operator, here an appraiser, will have two options.” Ex. 1003, 7:44-45. By using the term “operator” in conjunction with system 10, and indicating that an example of an “operator” is an appraiser, Dugan at least suggests that operators other than appraisers are contemplated. Furthermore, Dugan discloses that because the appraisals are relied upon by sellers, buyers, appraisers, bankers, investors and the like, it is desirable that the appraisal is trustworthy. Ex. 1003, 4:30-33. Accordingly, we are persuaded that it would have been obvious to have a seller as an operator in Dugan because the seller would have interest in obtaining an accurate 32 valuation of his or her property. And as set forth above in our construction of “owner,” a seller is merely an owner who is selling their property. Similarly, Kim discloses the following: “login page 200 includes a name field and a password field in which a user (e.g., an appraiser) enters his/her name and password to access the appraiser valuation engine.” Ex. 1004 ¶ 42 (emphasis added). Patent Owner asserts that the use of the term “e.g.,” by itself, does not show that the system in either Dugan or Kim was intended for use by someone other than an appraiser. Petitioner counters that the use of the term “e.g.” signals exactly that: that both Dugan and Kim contemplated users other than an appraiser. We agree with Petitioner. When words are used they are presumed to convey meaning, and we find that the deliberate use of the term “e.g.” shows that Kim explicitly contemplates users other than the appraiser. And as an owner would have interest in obtaining an accurate valuation of their property, we are persuaded that it would have been obvious to replace the appraiser with the owner as the user in Kim. Patent Owner cites the testimony of Dr. Kilpatrick in support of its position. PO Resp. 26-28 (citing Ex. 2001 ¶ 31). Petitioner counters that Dr. Kilpatrick acknowledges that sellers could use the systems of Dugan and Kim. Reply 12-14 (citing Ex. 1022, 152:22- 153:8, 156:3-157:4). We have reviewed Dr. Kilpatrick‟s testimony and agree with Petitioner. 33 Fundamentally, independent claim 2 recites a “computer readable medium,” which is, at best, an apparatus claim. As an apparatus claim, Petitioner only needed to show that Dugan and Kim suggest a system capable of receiving input from an owner. To counter, Patent Owner needed to show not only that Dugan and Kim disclose an appraiser controlling the appraisal process, but also that Dugan and Kim disclose systems that could not be used by individuals other than appraisers. Patent Owner has failed to do so, as Dr. Kilpatrick agrees that both buyers and sellers could use the systems disclosed in Dugan and Kim. Ex. 1022, 152:15-153:8, 156:3- 157:4.” slip op. at 32

  Patent outcomesUS 7,970,674 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,970,674
• Berk-Tek, LLC v. Belden Inc.Some claims unpatentable
  PTAB · Mar 18, 2014 · IPR2013-00057 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–4 are unpatentable: claims 1 and 4 as obvious over JP ’910, and claims 2 and 3 as obvious over JP ’910 with either the ’582 patent or JP ’694; claims 5 and 6 …

  RulingsFinal written decision

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

    “We are persuaded by Belden’s arguments, however, that Berk-Tek’s proposed claim construction is inconsistent with the context of the surrounding language of claim 1. See, e.g., ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding words of the claim also must be considered”). Claim 1 recites “passing a plurality of transmission media and a core through a first die which aligns the plurality of transmission media . . . and prevents twisting of the core,” “bunching the aligned plurality of transmission media and core using a second die . . . which maintains a spatial relationship between each of the plurality of transmission media,” “twisting the bunched plurality of transmission media and core to close the cable,” and “jacketing the closed cable.” As Belden argues (PO Resp. 13), these recited steps suggest a process of producing a complete, jacketed cable, not a part or subset of the cable, contrary to Berk-Tek’s asserted claim construction.” slip op. at 11

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

    “4. “surface features” We initially determined that the term “‘surface features’ is on its face broad and does not require any particular structure, shape or configuration,” and that “[a]pplication of the broadest reasonable construction rule also results in the conclusion that any surface feature qualifies, including the plain profile of a flat or curved surface area.” Inst. Dec. 12. Neither Berk-Tek nor Belden has raised any issue with respect to our initial construction of the term “surface features.” Accordingly, we adhere to our initial construction.” slip op. at 15

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

    “As discussed above, the claim term “a plurality of transmission media” in claim 1 encompasses all of the transmission media that are enclosed in the cable under production, not merely a subset of the transmission media. Under that claim construction, the limitation “surface features of the core which maintain a spatial relationship between each of the plurality of transmission media” (emphasis added) requires surface features that maintain a spatial relationship between each of the plural transmission media that are enclosed in the cable under production. Thus, as Belden contends, merely separating two groups of the transmission media that are enclosed in the cable does not meet the claim requirement, because transmission media within either group may not be separated from one another. That is, irrespective of whether the plurality of transmission media in the ’582 patent are considered to be the plurality of individually-insulated conductors, the plurality of pairs of twisted individually-insulated conductors, or the plurality of stranded units, many of the transmission media are adjacent to one another. As such, a spatial relationship is not maintained between each of the plurality of transmission media, as claim 1 requires. For the foregoing reasons, we determine that the ’582 patent does not anticipate claim 1 of the ’503 patent. Because dependent claim 2 incorporates by reference the method of claim 1, it follows that the ’582 patent does not anticipate claim 2 for the same reasons as claim 1.” slip op. at 18

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

    “on core 1 with the four conductors. This requires orienting each of the grooves on core 1, as it passes through the center hole in board 5, to face in the direction of one of the four holes (placed on board 5 at intervals of 90 degrees) through which a corresponding conductor passes. A person with ordinary skill in the art would have recognized that such alignment of the grooves on core 1 with the fixed positions of the conductors on board 5 cannot be maintained if core 1 twists in relation to board 5. See Ex. 1012, ¶ 121. Therefore, by teaching alignment of the grooves and the conductors at board 5, JP ’910 suggests using board 5 to prevent twisting motion of core 1. That is, a person of ordinary skill in the art would have recognized that preventing twisting motion of core 1 in relation to board 5 would maintain alignment between grooves 3a, 3b, 3c, 3d and conductors 4a, 4b, 4c, 4d, in accordance with the teaching of JP ’910. Further, as Berk-Tek argues, “since one of the most important concerns, as stated in the reference[,] is to avoid any misplacement of the conductors in relation to the core, it would [have been] prudent to prevent any twisting of the core relative to the conductors at the first possible instance during the manufacturing.” Pet. 35-36. That board 5 could have been used to prevent twisting of core 1 as it passes through board 5 need not be stated explicitly in JP ’910. See KSR, 550 U.S. at 418. We are persuaded that board 5 could have been used to prevent twisting of core 1 by one with ordinary skill in the art exercising ordinary creativity. See id. at 421; Reply to PO Resp. 11-14; Ex. 1012, ¶¶ 118-131. For example, as explained by Berk-Tek’s expert, Mr. Baxter, a person skilled in the art would have recognized that a material, such as a heat recoverable polymer that changes shape by extrusion, could have been used as a core to separate the conductors of the quad disclosed in JP ’910. Ex. 1012, ¶¶ 124-126. Such a material, according to Mr. Baxter’s testimony, “solidifies into a new form that would engage the die so as to prevent the back twisting motion of the core.” Id. at ¶ 126.” slip op. at 23

  Patent outcomesUS 6,074,503 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,074,503

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.