- Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Nov 30, 2015 · IPR2014-00548 · APJ James A Tartal · IPR · Final written decision
Claims 1, 4–6, 10, and 13–20 are unpatentable as obvious; claims 2 and 11 were not shown unpatentable because the petition did not establish their variable-length header adjustment limitations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Fischer teaches that the comparators in coherent demodulator 114 convert a “‘spread spectrum modulated’ analog signal into a digital signal,” as opposed to “other analog signals.” See PO Resp. 13. To the contrary, Fischer states that “[t]he communicators preferably transmit and receive messages over a wireless physical layer provided by a direct-sequence, spread spectrum (DSSS) radio data link.” Ex. 1004, 14:24–27. Fischer further explains that “[s]ince many of the signals in the coherent demodulator 114 are analog signals, the coherent demodulator 114 includes comparators to establish digital waveforms.” Ex. 1004, 16:58–60. As shown in Figure 5 of Fischer, the coherent demodulator 114 is followed by spread spectrum correlator and decoder 130, which “handles the demodulator 114 output to regenerate the unspread data.” Ex. 1004, 17:58– 60. Thus, we agree with Petitioner, as supported by Prof. Ding, that a person of ordinary skill in the art “would have understood Fischer to describe that the demodulator 114 converts the analog DSSS modulated messages received by antennas 100/102 to digital signals and outputs these digital DSSS modulated messages in I and Q format to spread spectrum correlator and decoder 130.” Reply 3–4; Ex. 1013 ¶ 5.” slip op. at 18
- Skill levelOther
“3. Claims 1, 10, and 17 Petitioner argues that each of independent claims 1, 10, and 17 is unpatentable as obvious over Fischer and Nakamura. Pet. 15–26. Notwithstanding the fact that claim 1 recites “means” for performing identified functions, whereas claims 10 and 17 do not recite “means” limitations, the three claims recite similar subject matter, and Petitioner advances the same reasoning in its analysis of all three claims. Id. Patent Owner’s Response also generally addresses claims 1, 10, and 17 collectively in a similar manner. PO Resp. 10–31. Although our analysis below primarily focuses on claim 1, our determinations with respect to claim 1 apply for the same reasons to the identified similar limitations of claims 10 and 17.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“The Petition makes no mention of Nakamura in its discussion of the additional limitations of claims 2 and 11. Yet in reply, Petitioner argues that “[i]n view of Fischer’s variable length preambles, a [person of ordinary skill in the art] would have found it obvious to utilize Nakamura’s timer function and its repetitive duration function.” Reply 15. Petitioner may not rely on a new argument asserting that Nakamura teaches the additional limitations for claims 2 and 11 presented for the first time in its Reply. Moreover, Petitioner fails to address how either Fischer or Nakamura teaches means for adjusting means for timing when Fischer contains no timer, and when the timer of Nakamura is described as being based on a predetermined period of time. See Ex. 1005, 6:31–36 (“timer 34 permits the switch 14 to transfer from terminal A to terminal B after the lapse of predetermined time”); see also Ex. 2006, ¶¶ 83–84. Petitioner’s contention that “Nakamura’s timer is also flexible” is insufficiently supported by any reference to either Nakamura or the declaration of Prof. Ding. See Reply 16–17; see also Ex. 1013 (no discussion of claims 2 or 11). Petitioner has not demonstrated that the features of claims 2 or 11 are disclosed by the combination of Fischer and Nakamura. 5. Claims 4, 5, 6, 13, 14, 16, and 18–20 Petitioner has persuasively shown that each of the additional limitations of dependent claims 4, 5, 6, 13, 14, 16, and 18–20 are taught by the combination of Fischer and Nakamura. For example, claims 4, 14, and 19 all require a “single monolithic device.” Petitioner has shown that Fischer RF modem 96 is a single monolithic device, and that Fischer communicator 60 is a circuit contained on a single monolithic device that includes RF modem 60. See Pet. 27–28; Ex. 1003 ¶¶ 41–42. Petitioner has also shown that RF modem 96 includes coherent demodulator 114 that provides in-phase and quadrature data outputs that are responsive to an analog signal that has in-phase and quadrature components, corresponding to the requirements of an analog signal “in the form of in-phase and quadrature components” as recited in claims 5 and 16. See Pet. 28–29; Ex. 1003 ¶ 38. With respect to the limitations of claims 6, 16, and 20 requiring PN modulation and phase shift keyed modulation, Petitioner has shown that Fischer discloses RF modem 96 supports BPSK or QPSK, and that it would have been obvious to implement direct sequence spread modulation by using PN modulation. See Pet. 29; Ex. 1003 ¶¶ 34, 37. We are also persuaded that Fischer discloses the “antenna selection circuitry” as recited in claim 13 and the “serial data stream” as recited in claim 18. See Pet. 30–31; Ex. 1003 ¶ 40. Patent Owner does not substantively dispute Petitioner’s assertion that Fischer teaches each of these limitations.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner contends that “[i]f reliability alone is the concern,” then “the most reliable method is to use BPSK for the entire packet (as taught by Fischer).” PO Resp. 38. We are not, however, persuaded that “reliability alone is the concern.” Nakamura and Fischer clearly teach a benefit to using both BPSK and QPSK consisting of improved reliability for BPSK with enhanced speed from QPSK. Thus, we find Patent Owner’s contention that those of skill “would not look beyond the teachings of Fischer” unpersuasive. See id. Likewise, Patent Owner’s contention that Fischer already teaches improved reliability by using longer preambles has no bearing on whether one of ordinary skill in the art would have also looked to Nakamura for other means of improving reliability. See id. at 39. We find that Petitioner articulates sufficient reasoning with rational underpinnings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).” slip op. at 28
Patent outcomesUS 5,712,870 mixed§ 103 obviousnesscites KSRPatents in suitUS 5,712,870 - Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Nov 30, 2015 · IPR2014-00553 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–3, 5–10, 13, 18, and 23 are unpatentable under § 103; claims 4, 11–12, 14–17, and 19–22 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPrinted publication establishedDecided for petitioner
“A reference is established to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” In” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system” because “Wu itself references the 802.11a standard as a multi-carrier OFDM scheme that is able to achieve data rates that are faster than the 802.11b transmission rates used in the Wu system.” Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68; Ex. 1108, 411). Petitioner contends that [w]ith this motivation in mind a [person of ordinary skill in the art] would have recognized that adding the multi-carrier 802.11a modulation scheme to the modulation schemes already available in the Wu system would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme[,] and supports that contention with testimony by Dr. Almeroth. Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68). Petitioner identifies such a technique as disclosed by Böhnke. Id. at 49. Böhnke “relates to the mapping of data and pilot symbols in an OFDM-system.” Ex. 1113, col. 1, ll. 4–5. Figure 2 of Böhnke is reproduced below. Figure 2 illustrates a sequence that includes a first OFDM modulated signal S1, a midamble MA that can be OFDM modulated or single-carrier modulated, and a second OFDM symbol S2. Id. at col. 4, ll. 36–41. The midamble can be used for the transmission of pilot symbols, which “are necessary for a channel estimation such as to effect coherent detection of e.g. OFDM-modulated signals,” and such pilot symbols can be created by a single carrier modulation with a known training sequence. Id. col. 1, ll. 7–9, col. 5, ll. 45–49, col. 5, ll. 61–63. Böhnke, thus, uses the channel estimation obtained from the single-carrier training sequence to detect multi-carrier OFDM symbols by matching bandwidth and performing synchronization. Id. at col. 2, ll. 43–45, col. 2, ll. 61–62. Petitioner reasons that the Böhnke channel-estimation techniques “provide a way to combine a high-rate, multicarrier OFDM data transmission scheme with a single carrier training sequence” and that [w]ith this background, a [person of ordinary skill in the art] investigating options for including the multi-carrier 802.11a standard in the Wu system would have appreciated that Bohnke’s channel estimation techniques could be applied to Wu’s single-carrier 802.11b preamble and used for acquisition of data modulated according to multi-carrier 802.11a.” slip op. at 12
- BurdenMixed
“We agree with Patent Owner that Petitioner’s analysis of claim 22, which recites separate single-carrier and multi-carrier receivers, as well as a switch coupled to such receivers, is deficient. Petitioner’s assertion that claim 22 is unpatentable for “reasons similar to those explained in regards to claims 1-3 and 5” insufficiently addresses these limitations, which do not appear in claims 1–3 or 5. Pet. 58.” slip op. at 23
Patent outcomesUS 6,754,195 mixed§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,754,195 - Hart Communication Foundation v. Sipco, LLCSome claims unpatentablePTAB · Nov 13, 2015 · IPR2014-00751 · APJ Patrick M Boucher · IPR · Final written decision
Claims 2–4 are unpatentable under § 103; claims 1 and 9–13 were not shown unpatentable because the art did not establish the claimed wireless retransmission.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“distances.” Id. ¶¶ 7, 6. Although we credit those opinions of Mr. Gannon, we find more compelling the bases for Dr. Almeroth’s opinion that one of skill in the art would be disinclined to use wireless communication at multiple levels of Enterprise Server CM’s tree hierarchy.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“articulated clearly in the Petition, and it is, nevertheless, unpersuasive in light of Dr. Almeroth’s testimony. Nor are we persuaded by Petitioner’s general argument that various of the references disclose wireless communications that a person of skill in the art would have found obvious to implement in the tree hierarchy disclosed by Enterprise Server CM. See id. at 2–4. That argument is insufficiently supported by evidence that responds to the several issues raised by Dr. Almeroth. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (unsupported attorney argument in a brief cannot take the place of evidence).” slip op. at 18
Patent outcomesUS 7,468,661 mixed§ 103 obviousnessPatents in suitUS 7,468,661 - Toshiba Corporation / Toshiba America, Inc. et al. v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Jul 9, 2015 · IPR2014-00310 · APJ Kevin F Turner · IPR · Final written decision
Claims 1 and 3–6 are unpatentable: claims 1, 3, 5, and 6 as anticipated by Levine, and claim 4 as obvious over Levine and Whetsel; claims 2 and 7–10 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“The parties do not disagree with our preliminary constructions for claim terms recited in the instant claims. See PO Resp. passim; Dec. 6–10. On the full record, we maintain our constructions for the construed claim terms. We repeat those specifically construed terms here for completeness:” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“be accessible by other mean such as addresses in I/O space.” Ex. 1004, 9:39–40, 51–53 (emphasis added). Levine also provides that “[t]hese special purpose registers are accessible for read or write,” such that they could be considered a buffer memory, per claim 1. Id. at 9:45–46. At oral hearing, Patent Owner’s counsel stated: “[a]nd there are technical reasons why these MMCR registers cannot be the buffer memory” (Tr. 48:22–23), but we have been unable to find a portion of Patent Owner’s Response, its expert’s testimony, or the oral hearing transcript where those technical reasons are elucidated. As such, we are not persuaded by Patent Owner’s arguments.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“First, although Levine does not disclose circuits that produce analog signals, we are persuaded that the evaluation of analog signals would have been seen as useful in light of Whetsel. See Pet. 36. Additionally, we are persuaded that both provide embedded circuits that capture and analyze signals, which is sufficient rationale to consider the combination of Levine and Whetsel. One of ordinary skill in the art need not consider circuit testing and software performance monitoring to be equivalent to consider the utility of applying Whetsel’s analog probes into the system of Levine. Lastly, we disagree with Patent Owner that “the temperature and voltage signals do not provide any useful information to improve the performance of processor execution and storage control.” PO Resp. 29. We are persuaded that measurements of temperature could be useful in determining processor performance. We have considered the evidence presented by Petitioner and Patent Owner. On the full record, Petitioner has shown by a preponderance of the evidence that Levine and Whetsel render claim 4 obvious.” slip op. at 15
Patent outcomesUS 7,836,371 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,836,371 - Toshiba Samsung Storage Technology Korea Corporation v. LG Electronics, IncorporatedSome claims unpatentablePTAB · Apr 1, 2015 · IPR2014-00205 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 3–5, 7–10, 13, 17, and 18 are unpatentable; claims 2, 6, 14, 15, and 19–22 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“We agree with Patent Owner that Kulakowski does not disclose determining whether the target area has been initialized. See PO Resp. 50– 51. As discussed above, Kulakowski discloses erasing the target area whenever an update write operation is received. See Ex. 13:10–13. Petitioner does not point us to disclosure in Kulakowski or other evidence that describes consulting the VTOC whenever an update write command is received. See Tr. 40:18 (“It’s not explicitly stated [in Kulakowski], no.”), 40:21–22 (“I don’t believe our expert testimony went into this detail on the VTOC.”). Rather, Petitioner merely asserts, “That’s just well known in the art.” Tr. 38:17–24; accord Tr. 39:23–40:23. As Petitioner does not provide any evidence supporting its position, we are not persuaded that Kulakowski discloses “determining whether the recording area has been initialized,” as recited in claim 19. For the foregoing reasons, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that Kulakowski anticipates claim 19.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“reasonable interpretation in light of the specification. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667, at *5–8 (Fed. Cir. Feb. 4, 2015). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). On the other hand, a “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer” and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We disagree with Petitioner. “If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is ‘inherent’ in its disclosure.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.’” Id. (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Petitioner acknowledges that there is no evidence in the record regarding whether keeping the table on a full-track basis is always (or necessarily) convenient. See Tr. 30:13–15. In fact, Petitioner asserts, “It can be a convenient basis.” Tr. 30:16–17 (emphasis added). Accordingly, based on the record before us, we are not persuaded that the “other basis” in Seamons necessarily corresponds to a “predetermined physical unit” that “is one rotation unit region,” as recited in claims 2, 6, and 14. For the foregoing reasons, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that Seamons anticipates claims 2, 6, and 14.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“We disagree with Petitioner. “If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is ‘inherent’ in its disclosure.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.’” Id. (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Petitioner acknowledges that there is no evidence in the record regarding whether keeping the table on a full-track basis is always (or necessarily) convenient. See Tr. 30:13–15. In fact, Petitioner asserts, “It can be a convenient basis.” Tr. 30:16–17 (emphasis added). Accordingly, based on the record before us, we are not persuaded that the “other basis” in Seamons necessarily corresponds to a “predetermined physical unit” that “is one rotation unit region,” as recited in claims 2, 6, and 14.” slip op. at 17
Patent outcomesUS 6,101,162 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,101,162
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.