• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 15, 2016 · IPR2015-01222 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–11 and 13–15 are unpatentable as obvious over Strubbe and Rae; claims 12 and 16–20 were not shown unpatentable because the petition did not tie the connection-fee limitation to those references.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between American Securities and Petitioner 9 were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9. Third, we found ambiguous and unreliable statements made by a non- lawyer CEO during settlement negotiations covering “ongoing intellectual property disputes” (see Discovery Motion 1) failed to demonstrate that American Securities funded and controlled the instant proceeding. Discovery Order 9; see Exs. 2006, 2011.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “Similarly to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly recount statements made by Petitioner’s CEO during settlement discussions between Patent Owner and GTL. Mot. Exc. 2nd, 1–2.” slip op. at 12

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

    “We agree with Petitioner. One portion of the Specification cited by Patent Owner details: “[t]he list of items displayed for the inmate may be selected based upon data stored in the inmate's profile on JAMS database 115.” Ex. 1001, 3:61–63 (emphasis added). The conditional nature of the selection need not be incorporated into claim 8. In addition, the instant claim language would also read on a display of all items, with indications of 18 availability with each item for the inmate, such that all items would be displayed instead of Patent Owner’s truncated listing. As such, we conclude that Patent Owner’s proposed construction of the language of claim 8 is overly narrow and is not adopted in the analysis that follows.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Leonard J. Forys, testifies that one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 2–3 years of academic or industry experience in a call center technology particularly computer telephony integration and in telephone networks in general.” Ex. 1003 ¶ 30; see Pet. 10 (citing Ex. 1003 ¶¶ 29–30). Patent Owner’s declarant, Mr. Ivan Zatkovich, proposes that Petitioner’s definition be adopted. Ex. 2012 ¶ 31. As such, we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 21

  Patent outcomesUS 8,750,486 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,750,486
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01225 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–4 and 6–8 are unpatentable as obvious over the instituted combinations; claim 5 was not shown unpatentable over Magee, Nussbaum, and Juang.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10; Inst. Dec. 18. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8; Inst. Dec. 18. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8; Inst. Dec. 18.” slip op. at 15

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

    “In the Decision to Institute, after considering constructions of SCF rating proffered by Petitioner and Patent Owner, we determined that the ’663 patent did not provide the requisite clarity, deliberateness, and precision necessary to define the term SCF rating, and we declined to read the limitation from the preferred embodiment into claim 1. Inst. Dec. 10–14 (citing Paulsen, 30 F.3d at 1480; Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); Am. Academy of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004); Van Geuns, 988 F.2d at 1184). We credited the testimony of Petitioner’s declarant, Homayoon Beigi, D. Eng’g Sci., that “[t]here is no definition of ‘Suspicious Call Finder (SCF) rating’ that would be immediately known to a person of ordinary skill in the art.” Inst. Dec. 14 (quoting Ex. 1003 ¶ 45).” slip op. at 24

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownOther

    “data from said selected portion of speech.” In the Decision to Institute, we determined that “prosody” needed express construction, although neither party had proffered an express construction for the term. Inst. Dec. 15–16. We identified an express definition of “prosody” in the Specification: The word “prosody” (defined at Princeton University as ‘the patterns of stress and intonation in a language’) is often used in the field of affective computing (computing relating to emotion) to refer to emotion-indicating characteristics of speech.” Ex. 1001, 6:36–40; see Inst. Dec. 15 (quoting Ex. 1001, 6:36–40). Based on that definition, we preliminarily construed “prosody data” to mean “data reflecting emotion-indicating characteristics of speech” in our Decision to Institute and further determined that, on the partially-developed, pre-institution record, that the prosody construction was consistent with the plain language of claim 8. Inst. Dec. 15.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Beigi, testifies that one of ordinary skill in the art “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent or related field (or comparable industry experience), as well as at least 1–3 years of academic or industry experience in speech processing.” Ex. 1003 ¶ 23; see Pet. 9–10 (citing Ex. 1003 ¶ 32) (asserting level of ordinary skill in the art). Patent Owner adopts Petitioner’s definition without contesting it. PO Resp. 10. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1007–1011), we also adopt the level of ordinary skill in the art employed by both Petitioner and Patent Owner.” slip op. at 30

  Patent outcomesUS 8,886,663 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,886,663
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 7, 2016 · PGR2015-00013 · APJ Kevin F Turner · PGR · Final written decision

  Claims 1–4, 7–19 were held unpatentable as obvious; claims 5, 6, and 20 were not shown unpatentable over Reinhold, Walters, and Dudovich.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10; Dec. 8. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between the American Securities and Petitioner were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9.” slip op. at 11

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s motion to exclude Exhibits 1013, 1014 and 1015 is denied. As Patent Owner points out, 37 C.F.R. § 42.6(a)(3) indicates that “[a]rguments must not be incorporated by reference from one document into another document.” We are not persuaded, however, that Petitioner is attempting to incorporate by reference; Exhibits 1013, 1014, and 1015 are cited by Petitioner’s declarant, not incorporated by reference. If Petitioner’s declarant or the cited exhibits contained arguments not made in a paper, we would likely ignore such arguments. In this instance, Petitioner is making of record the documents cited, which is generally laudatory, so that a reader can determine for herself that cited facts are supported. We are not persuaded that the cited exhibits are “irrelevant.” Additionally, we find no support for Patent Owner’s contention that exhibits must be cited by “papers,” and not other exhibits. Many exhibits, such as declarations, prior art references, and deposition transcripts, cite to other exhibits in normal trial practice. Accordingly, Patent Owner’s Motion to Exclude Exhibits 1013, 1014, and 1015 is denied.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Mr. Frank Koperda, testifies that one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least 2–5 years of academic or industry experience in the telecommunications industry. Ex. 1002 ¶ 19; see Pet. 5 (asserting level of ordinary skill in the art). Patent Owner’s declarant, Mr. Stuart J. Lipoff, largely adopts Mr. Koperda’s level of ordinary skill in the art, adding that such artisans should have experience “in the generation of billing statements or cost accounting reports.” Ex. 2012 ¶ 33. We are not persuaded that such billing or accounting experience is necessary “to fully understand the ’280 patent disclosure.” Id. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1003, 1007, 1006, 1008), we also adopt the level of ordinary skill in the art employed by Petitioner’s declarant, where Patent Owner’s declarant acknowledges that his analysis would be the same under Mr. Koperda’s level of ordinary skill in the art. Ex. 2012 ¶ 34.” slip op. at 23

  Patent outcomesUS 8,855,280 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,855,280
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01220 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–5 and 12–17 are unpatentable as obvious; claims 7, 9–11, and 18–26 were not shown unpatentable on the asserted combinations.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Thus, Patent Owner has not introduced evidence reasonably bringing into question Petitioner’s identification of the real party-in-interest in this proceeding. Accordingly, the evidence of record does not support a determination that American Securities had a role in funding or controlling this proceeding, or could have exercised control over this proceeding. 11 For these reasons, we determine that a preponderance of the evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. As such, we determine that Petitioner’s real party-in-interest identification at the time of filing the Petition remains valid.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “For these additional reasons, we determine that, even without excluding Exhibits 2006 and 2011, the preponderance of evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. Accordingly, Petitioner’s Second Motion to Exclude Exhibits 2006 and 2011 is dismissed as moot.” slip op. at 15

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

    “construed also undermine Petitioner’s position. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). On the other hand, a preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. The only limitations in the body of independent claim 22—the two biometric sensors—are not structurally complete in themselves. Rather, the telephone handset is required to describe a structurally complete invention that includes two biometric sensors. Without the telephone handset as an element, the claim merely recites two unconnected biometric sensors without any structure—a structurally incomplete invention. Furthermore, the telephone handset recited in the preamble does not duplicate the biosensor limitations in the body of the claim. Thus, we conclude that the telephone handset is essential structure and is necessary to give life, meaning, and vitality to the claim. This weighs toward a determination that independent claim 22 requires a telephone handset. See Catalina Mktg. Int’l, 389 F.3d at 808–09.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner, however, does not acknowledge that both Dr. Beigi and Dr. Caloyannides include electrical engineering as a field of study in the respective level of ordinary skill. Thus, we do not agree with Patent Owner’s statement that Dr. Beigi’s proposed “academic requirements do not provide this background. See Ex. 1003 ¶ 34 (Dr. Beigi opining that “one of ordinary skill in the art (a “POSA”) would have a Bachelor of Science (B.S.) degree in electrical engineering, computer science, or an equivalent or related field”). Because both experts specify electrical engineering as an academic field of study but only Dr. Beigi specifies computer science, we understand the disagreement of the parties to be whether computer science is a relevant academic field of study. We do not agree with Patent Owner’s contention that “bachelor’s level degree in electrical engineering or physics is necessary to understand both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric systems.” See PO Resp. 7. Contrary to Patent Owner’s contention, the invention as claimed recites elements and functions using a high-level of abstraction with little, if any, technical detail regarding “the data/network communication aspects of the claimed invention.” For example, independent claims 1 and 12 recite methods that include broad functional steps of authorizing, continuously monitoring, verifying, and monitoring a biometric training with 30 little, if any, technical detail. Similarly, the call processing system recited in independent claim 13 and the biometric telephone handset recited in independent claim 22 recite elements that perform broad functions with little, if any, technical detail. Thus, the plain language of the claims undermines Patent Owner’s contention that an understanding of “both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric system” necessitate an electrical engineering or physics academic degree.” slip op. at 30

  Patent outcomesUS 7,494,061 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,494,061
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 29, 2016 · PGR2015-00014 · APJ Barbara A Benoit · PGR · Final written decision

  Claims 1, 4–10, and 13–18 are unpatentable as obvious; claims 2, 3, 11, 12, and 19–25 were not shown unpatentable because the prior art did not teach the required video-communication eligibility query and confirmation.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Thus, Patent Owner has not introduced evidence reasonably bringing into question Petitioner’s identification of the real party-in-interest in this proceeding. Accordingly, the evidence of record does not support a determination that American Securities had a role in funding or controlling this proceeding, or could have exercised control over this proceeding. For these reasons, we determine that a preponderance of the evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. As such, we determine that Petitioner’s real party-in-interest identification at the time of filing the Petition remains valid.” slip op. at 16

  • ExcludeDenied

    “Similarly to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly recount statements made by Petitioner’s CEO during settlement discussions between Patent Owner and GTL. Mot. Exc. 2nd, 1–2.” slip op. at 18

  • Skill levelSkill level board ownOther

    “Petitioner’s declarant, Kevin Jeffay, Ph.D., testifies that one of ordinary skill in the art would have a Bachelor of Science degree in computer science (or an equivalent field), as well as at least 2–3 years of academic or industry experience in software development (or comparable industry experience). Ex. 1002 ¶ 30; see Pet. 12 (citing Ex. 1002 ¶ 30) (asserting level of ordinary skill in the art). Dr. Jeffay indicates that he bases his opinion of the level of ordinary skill on the disclosure of the ’525 patent. Ex. 1002 ¶ 30. Patent Owner’s declarant, Mr. Stuart J. Lipoff, adopts Dr. Jeffay’s level of ordinary skill in the art. Ex. 2014 ¶ 36. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1009, 1010, 1012), we also adopt the level of ordinary skill in the art employed by both Petitioner’s declarant and Patent Owner’s declarant.” slip op. at 26

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Furthermore, we credit Dr. Jeffay’s testimony that a skilled artisan would have been able to incorporate Virtanen’s voice-to-video switching in Torgersrud’s computer system. Ex. 1002 ¶ 44. Dr. Jeffay’s testimony relied on “sophistication of software packages to manage audio and video streams on personal devices available in 2014” and identified specific “Software Development Kits” available to develop software for mobile devices. Id. Moreover, he testified that an undergraduate student would have been able to implement the necessary modification and testified that he was aware of a specific example of such a system that one of his undergraduate students developed in 1995. Id. We weigh Dr. Jeffay’s testimony more heavily than Mr. Lipoff’s testimony. Dr. Jeffay’s testimony is based on specific reasons, whereas Mr. Lipoff’s testimony lacks sufficient supporting analysis and is based on a faulty premise that a central communications processing system would need to be inserted in Torgersrud’s system. Compare Ex. 1002 ¶ 44, with Ex. 2014 ¶¶ 63–64 (“I believe a skilled artisan would need to be familiar with communication processing systems of a controlled facility, like in” slip op. at 56

  Patent outcomesUS 8,929,525 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,929,525
• Mako Surgical Corp. v. Blue Belt Technologies, Inc.Some claims unpatentable
  PTAB · Jul 15, 2016 · IPR2015-00629 · APJ Sally C Medley · IPR · Final written decision

  Claims 1, 3, 5–9, 11, 13, 14, and 17 are unpatentable; the remaining challenged claims were not shown unpatentable under the asserted grounds.

  RulingsFinal written decision

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

    “Claims 1 and 17 lack an indication as to what about the workpiece is being tracked or what constitutes tracking data. In other words, there is nothing in the claims themselves that explicitly indicates that the position of the workpiece is being tracked, as opposed to motion (i.e., tracking if something moved), shape (i.e., tracking the shape of the workpiece after a portion has been cut), or size of the workpiece (i.e., tracking the size of the workpiece after a portion has been cut), or some other parameter associated with the workpiece. The record evidence supports Petitioner’s argument that the ordinary meaning of the word track encompasses monitoring characteristics in general of an object. In other words, “to observe the progress of” or “to follow” something does not necessarily mean that it is the movement or position of something that is being observed or followed (i.e., that an object moved from point A to point B) as Patent Owner’s construction would seem to require. Indeed, the Specification of the ’582 patent itself describes that “in some systems and methods, the cutting tool can include an ultrasonic motor that can transmit an encoder signal to allow the computer to track the motor characteristics (e.g., speed, rotation, etc.).” Ex. 1001, 14:40–43 (emphasis added). Thus, it appears to us that Patent Owner is reading limitations into the claims, because its proposed interpretation for at least to “track the cutting tool and the workpiece” would read out of the claim the embodiment that includes tracking a characteristic of the motor of the cutting tool, such as speed or rotation.” slip op. at 9

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

    “associated with the workpiece are derived from a first marker associated with the workpiece and that Taylor does not describe “at least one first marker associated with the workpiece.” PO Resp. 15, 16, 20. However, Patent Owner’s arguments are not commensurate in scope with the language of claim 1. Claim 1 does not recite that the tracking data associated with the workpiece are derived from a first marker associated with the workpiece. Moreover, claim 1 recites “where the tracker includes at least one of: at least one first marker associated with the workpiece, and at least one second marker associated with the cutting tool.” Emphasis added. Accordingly, a marker associated with the workpiece is not even required. As long as the prior art describes a marker associated with either the workpiece or the cutting tool, the limitation is satisfied. Taylor describes a marker associated with the cutting tool as described above and Patent Owner does not present arguments that Taylor does not describe a marker associated with the cutting tool. In any event, we agree with Petitioner’s showing (Pet. 22) that Taylor also describes a marker associated with the patient’s femur (workpiece), for example, titanium pins implanted into the patient’s femur. Ex. 1008, 262. While the markers (titanium pins inserted in femur) are for the purpose of imaging the femur (workpiece) pre-operatively, there is nothing in claim 1 that requires that the tracking data be derived from such markers. Claim 1 does not require that the tracking data be derived from markers associated with either of the workpiece or the cutting tool. We also have considered Patent Owner’s argument that Taylor describes bone fixation, which is the exact disadvantageous system described in the Specification of the ’582 patent. PO Resp. 17, 20. However, Patent Owner has not shown this argument to be particularly relevant to the anticipation inquiry. In other words, Patent Owner does not contend that claim 1 forecloses bone fixation, and we conclude that it does not. Patent Owner argues that Taylor does not describe tracking data associated with a workpiece because Taylor’s system does not provide tracking data that identify the location and position of the workpiece over time within a coordinate system. PO Resp. 15–21. As explained above in the claim interpretation section, Patent Owner has not shown that the term “tracking data” necessarily includes data that identify a position (location) of the workpiece over time within a coordinate system. Rather, as explained above, “tracking data” include data associated with monitoring a characteristic of the workpiece. Taylor describes a redundant motion monitoring subsystem that, among other things, monitors strain gauges that can detect possible shifts of bone relative to a fixation device. Taylor further describes that in using the strain gauge system for detecting shifts or motions of the bone relative to the fixator, motions on the order of 0.1 mm could be detected. Id. at 270.6 Taylor further describes that if such a shift is detected 6 This description in Taylor contradicts Dr. Cleary’s testimony that the “strain gauge described in Taylor, however, only signals whether the workpiece has moved.” Ex. 2004 ¶ 44. By detecting that the bone has moved by a certain amount, (e.g., described in Taylor as being on the order of 0.1 mm), we find that Taylor describes doing more than signaling whether a workpiece has moved, and, thus, would appear to meet even Patent a “freeze motion” signal is sent to the robot controller. Ex. 1008, 265. Under the correct interpretation, Petitioner has shown, by a preponderance of the evidence that Taylor meets the claim 1 “tracking data associated with the workpiece” limitation.” slip op. at 16

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

    “speed (65,000 rpm) pneumatic surgical cutting tool, which Petitioner characterizes as a drill or rotatable blade. Pet. 18–19, 23; Ex. 1004 ¶¶ 37, 46. Petitioner concludes that it would have been obvious to modify the ball cutter in Taylor with other known cutting elements, such as the one described in Glassman. Id. Patent Owner does not contend that Glassman does not meet the additional limitations of claim 3, or that it would not have been obvious to a person of ordinary skill in the art to combine the teachings of Glassman and Taylor. PO Resp. 52–54. Rather, Patent Owner argues that Glassman does describe the claim 1 elements. Id. The argument is misplaced as the Petition does not rely on Glassman to meet any of the claim 1 elements. For all of these reasons, we agree with Petitioner’s showing, and adopt it as our own, that Taylor in combination with Glassman disclose a rotatable blade and that modifying Taylor’s ball cutter with Glassman’s rotatable blade would have been obvious for the reasons provided by Petitioner.” slip op. at 29

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

    “A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Patent Owner has not shown sufficiently that Taylor would have discouraged a person of ordinary skill in the art from replacing Taylor’s titanium pin markers with infrared markers. As explained already, the claims do not preclude bone fixation, and, therefore, whether Taylor fixes the bone during operation has not been shown to be particularly relevant in determining whether claim 7 would have been obvious based on Taylor and DiGioia. Patent Owner’s arguments regarding items 2 and 3 above also are not persuasive, because such arguments are narrowly based on incorporating physically all technicalities of DiGioia into Taylor. See, e.g., PO Resp. 55– 56. The test for obviousness is what the combined teachings of the references would have suggested to a person of ordinary skill in the art, not whether one reference may be bodily incorporated into the structure of another reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In particular, and in support of Patent Owner’s arguments, Dr. Cleary opines that Taylor discourages using an image-based tracking system, such as DiGioia’s, in the operating room. Ex. 2004 ¶ 112. But Petitioner does not propose using DiGioia’s whole system with Taylor’s system. Rather, DiGioia is relied on for its teaching of infrared markers. Patent Owner’s arguments, and the supporting testimony of Dr. Cleary, are premised on the assumption of incorporating all features of DiGioia into Taylor, which is not what Petitioner proposes.” slip op. at 31

  Patent outcomesUS 6,757,582 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,757,582
• Google Inc. v. Network-1 Technologies, Inc.Some claims unpatentable
  PTAB · Jun 20, 2016 · IPR2015-00345 · APJ Kevin F Turner · IPR · Final written decision

  Claims 9–16, 23, and 24 were held unpatentable as anticipated by Iwamura; the Board did not find claims 1–8, 21, 22, 25–27, 29, 30, 33–35, 37, and 38 unpatentable.

  RulingsFinal written decision

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

    “Although the sections of the Specification of the ’237 Patent cited by Petitioner relate to disk size, that size is a direct result of the number of records in the data set. Claim 1, for example, recites “using the received features extracted from the media work to perform a sub-linear time search of extracted features of identified media works.” For that claim, under our adopted claim construction, the size of the data set would be the number of extracted features of the identified media works. It would not be logical to assume that the size of the data set would be the length of an individual record or the amount of disk space the data set occupies when the number of extracted features would be readily available. Although disk space could be used as a measure, it would be variable with respect to the format of the disk space, for example. Therefore, we are not persuaded that disk space should be used as a determinant of data set size in the construction of “sub-linear search.” As such, the data set would be the number of extracted features, in claim 1, irrespective of the exact number of commercials or frames.” slip op. at 7

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

    “ii) “non-exhaustive search” With respect to the claim term “non-exhaustive search,” Patent Owner emphasizes that a non-exhaustive search makes a comparison without all possible matches but does not concern itself with whether all data within all possible matches have been compared. PO Resp. 6–7. Petitioner does not dispute the construction, and we remain persuaded that a “non-exhaustive” search need not consider all data within all possible matches, but rather should be exhaustive or non-exhaustive with respect to the number of records in a database. See Dec. 5–7.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “Petitioner responds that the statements in the Specification do not rise to the level of lexicography or disavowal. Reply 4–5 (citing Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App'x 864, 868 (Fed. Cir. 2014); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998)). We agree, given that the cited portion provides that an approximate nearest neighbor search may be an example of a sublinear search, but not that all approximate nearest neighbor searches must be sub-linear. Additionally, Patent Owner has not provided persuasive evidence that all approximate nearest neighbor searches must be sub-linear, other than the citation to the Specification. As well, similar to our discussion of neighbor searches above, we are not persuaded that if an approximate nearest neighbor search happens to arrive at an exact match, that would negate the nature of the search. We are persuaded that an approximate nearest neighbor search would depend on the search methodology and not on the specific results obtained. Additionally, as Petitioner points out, the instant claims confirm that sublinearity is not necessarily required for an approximate nearest neighbor search. Reply 5–6. Claim 33 recites, in part, a “sublinear approximate nearest neighbor search,” whereas claims 9 and 12 simply recite an “approximate nearest neighbor search,” without the sublinear modifier. Interpreting all recitations of approximate nearest neighbor searches as intrinsically sublinear would render the limitation in claim 33 superfluous. Id. (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005); Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1274–75 (Fed. Cir. 2012)). For this additional reason, we remain persuaded that an approximate nearest neighbor search corresponds to “identifying a close match that is not necessarily the closest match,” without a requirement of being sublinear.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “in which he agrees that Iwamura’s system compares a work to be identified with each reference work in the database. PO Resp. 26–28 (citing Ex. 2006, 207:18–23, 223:2–8, 247:18–20, 269:19–270:2, 271:19–21); see also Tr. 17:17 (Petitioner conceding at oral hearing that “every song is looked at”). Dr. Moulin also acknowledges that if a non-exhaustive search is one that does not look at each of the melodies in the database, Iwamura discloses an exhaustive search rather than a non-exhaustive search. Ex. 2006, 233:24– 234:14; see PO Resp. 27. Despite Dr. Moulin’s testimony and Iwamura’s description of a search that compares an input melody to each melody in the database, Petitioner contends that Iwamura discloses a non-exhaustive search. First, Petitioner submits that Iwamura specifically identifies its peak note search as a non-exhaustive search because the “search speed using peak notes is 20% of a brute force search.” Pet. 9–10 (quoting Ex. 1012, 9:8–11); Reply 7–8 (citing Ex. 1012, 9:7–11; Ex. 2005 ¶ 82; Ex. 2001). We agree with Patent Owner, however, that Iwamura’s peak note search accelerates a search within a single comparison between a work to be identified and an individual record in the database, while still comparing the work to each record in the database. See PO Resp. 29–30. In other words, the peak search technique may improve the efficiency of an individual comparison between an entered melody and a reference melody in the database, but it is still an exhaustive search because it compares the entered melody with each musical work in the database, as confirmed by Petitioner’s declarant, Dr. Moulin. Id. (citing Ex. 2006, 269:19–270:2). Petitioner further argues that Iwamura discloses a non-exhaustive search because the search can be accelerated by stopping the search when computations “exceed[] a certain limit.” Pet. 10 (quoting Ex. 1012, 7:56– 57). We agree with Patent Owner that this disclosure also refers to improving the speed of a comparison between the work to be identified and a single record in the reference database. See PO Resp. 32 (citing Ex. 2005 ¶ 179). As Dr. Karypis explains and Dr. Moulin confirms, when the total absolute difference computed between the entered melody and a particular reference melody exceeds a certain limit, the computation stops, and the search shifts to the next peak range comparison within the same record. Id. at 32–35 (citing Ex. 2005 ¶¶ 180–81; Ex. 2006, 241:24–242:2). Thus, Iwamura’s computation “limit” does not describe a non-exhaustive search because Iwamura still compares a work to be identified with each reference melody in the database.” slip op. at 16

  Patent outcomesUS 8,205,237 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,205,237
• Epicor Software Corporation v. Protegrity CorporationSome claims unpatentable
  PTAB · Apr 20, 2016 · CBM2015-00002 · APJ Kevin F Turner · CBM · Final written decision

  Claims 1, 5, 19, and 20 are unpatentable under § 101; claims 27–31 were not shown unpatentable under that ground.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “e. Broadest Reasonable Construction of “Database” We determine that the broadest reasonable construction, in light of the specification of the ’201 Patent, and the proffered evidence, of “database” is “an organized collection of structured data.” As discussed above, this construction is consistent with the words of the claims, the disclosure of the ’201 Patent, the testimony of Mr. Schneier and Dr. Shamos and the position taken by Patent Owner in the related district court proceeding. We are not persuaded by Patent Owner’s arguments, Patent Owner’s declarants’ testimony, database manual, or technical encyclopedia that this construction is unreasonably broad.” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

    “Mr. Mattsson’s and Dr. Direen’s testimony is unpersuasive because it is inconsistent with the ’201 Patent. As discussed above, the ’201 Patent describes the O-DB as one database in a larger database management system. Ex. 1001, 5:49–6:12. The ’201 Patent describes the O-DB database as containing data and describes the modules of the larger database management system as performing data processing. Id. at 5:53–58, 6:13–45. The ’201 Patent does not describe the O-DB database as producing the compelling calling. See Ex. 1001, 10:44–58 (“is first collected by the system”); see id. at Abstract, 2:54–61, 3:51–65, 4:16–22, 7:57–61 (disclosing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database). The assertion that the compelling calling is produced by the O-DB database is only found in Patent Owner’s arguments, Mr. Mattsson’s testimony, and Dr. Direen’s testimony, and not the ’201 Patent. See, e.g., Ex. 2045 ¶¶ 12– 16, 22, 29; Ex. 2046 ¶ 57. Extraneous features should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). In that regard, “extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history.” Bell Atl. Network Servs. v. Covad Commc'ns Grp., 262 F.3d 1258, 1269 (Fed. Cir. 2001); see Vitronics, 90 F.3d at 1584 (“expert testimony, which was inconsistent with the specification and file history, should have been accorded no weight”). Further, we give little weight to Mr. Mattsson’s testimony because Mr. Mattsson is not a disinterested witness. Mr. Mattsson is Patent Owner’s Chief Technology Officer (Ex. 2045 ¶ 1) and has an interest in the outcome of this proceeding.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by Patent Owner’s argument that Mr. Schneier’s declaration should be excluded under FRE Rule 702 or 403. Patent Owner’s arguments attack the sufficiency and credibility of Mr. Schneier’s testimony. As the Board has noted in numerous cases, “the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial, without resorting to formal exclusion that might later be held reversible error.” See, e.g., Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00002, Paper 66 at 70 (PTAB Jan. 23, 2014); Gnosis S.P.A., et al. v. S. Alabama Medical Science Foundation, IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014); S.E.C. v. Guenthner, 395 F. Supp. 2d 835, 842 n.3 (D. Neb. 2005); Opp. to Mot. Exclude 4. We, thus, are not persuaded by Patent Owner to exclude Exhibit 1002 and Patent Owner’s Motion to Exclude is denied.” slip op. at 35

  • Strike new argumentNew argument disregardedGranted

    “The scheduling order authorizes the filing of such a motion for observations regarding cross-examination of a reply witness by Due Date 4. Mr. Schneier cross-examination testimony was given on June 12, 2015, prior to Patent Owner filing its Patent Owner’s Response, on June 24, 2105. The cross-examination did not occur after Patent Owner filed its last substantive paper. Patent Owner’s Motion for Observation, thus, is improper. The Scheduling Order did not authorize Patent Owner to file a Motion for Observation of cross-examination that occurred prior to Patent Owner filing its last substantive paper on an issue, the Patent Owner’s Response and Patent Owner did not seek other authorization for such. The improper observations are akin to an unauthorized sur-reply to argument made in Petitioner’s Reply. We, thus, expunge Patent Owner’s unauthorized observations from the record. See 37 C.F.R. § 42.7(a). Additionally, we expunge Petitioner’s Opposition to that Observation (Paper 40) as being unnecessary.” slip op. at 37

  Patent outcomesUS 6,321,201 mixed
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski
  Patents in suitUS 6,321,201
• Epicor Software Corporation v. Protegrity CorporationSome claims unpatentable
  PTAB · Apr 18, 2016 · CBM2015-00006 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 33–38, 41, 43–52, 55, and 57–60 are unpatentable under § 101; claims 39, 40, 42, 53, 54, and 56 were not shown unpatentable. Substitute claims 61–68 were denied.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “B. Patent Owner’s Request to Cancel Claims 1–32 In the Patent Owner’s Response and the Motion to Amend, Patent Owner requests cancellation of claims 1–32 of the ’281 patent. PO Resp. 2– 3; Mot. Amend 1. Patent Owner’s request to cancel these claims is not contingent on the claims being determined to be unpatentable or on the entry of the proposed substitute claims. Patent Owner’s request to cancel claims 1–32 is granted and we need not address these claims further.” slip op. at 3

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

    “1998) (citing Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 619–20 (Fed. Cir. 1995)). Independent claim 33 recites “[a] computer-implemented data processing method” that includes, among other steps, a step of “maintaining a database comprising a plurality of data portions.” Ex. 1001, 13:38–41. Similarly, independent claim 47 recites “[a] computer system” that includes, among other elements, “a database storing a plurality of data portions.” Id. at 14:47–48. As can be seen from the above, claims 33 and 47 recite that the database comprises or stores data portions. Neither of claims 33 and 47, nor any claims dependent therefrom, recites that the database performs any other function, such as producing a compelling calling to the data protection catalogue to retrieve the data processing rules. See id. at 13:38–16:29. Indeed, unlike the parent ’201 patent, none of the claims of the ’281 patent recite a compelling calling at all. See id.; Ex. 1004, Ex Parte Reexamination Certificate 1:24–51 (amended claim 8). Notably, independent claim 8 of the parent ’201 patent recite an apparatus having a database that stores data to be protected. Ex. 1004, Ex Parte Reexamination Certificate 1:24–51 (amended claim 8). Claim 8 of the parent ’201 patent was amended during reexamination to recite that the apparatus, not the database, controls the user’s processing of the data according to the data processing rules, and the apparatus, not the database, also produces the compelling calling to the data element protection catalogue. Id. at Ex Parte Reexamination Certificate 1:41–51. The words of the claims of the ’281 patent, thus, are consistent with Petitioner’s proposed construction as the broadest reasonable construction.” slip op. at 10

  • BurdenDecided for petitioner

    “We are persuaded by Petitioner that a preponderance of the evidence shows that at least claim 33 encompasses activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity.” slip op. at 21

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “Independent claim 33 recites a data processing method that grants access to a requested data portion if the rules associated with a data category that is associated with the requested data portion is satisfied. Ex. 1001, 13:38–54. Claim 33 requires a database that comprises the data portions and requires a separate data protection table comprising data processing rules that must be satisfied before the data portion can be accessed. Id. The data processing rules are associated with the data category. Id. Independent claim 47 recites a corresponding computer system. Id. at 14:47–63. Independent claims 33 and 47, thus, recite a method or system that grants access to a requested data portion if the rules associated with a data category that is associated with the requested data portion are satisfied. Ex. 1001, 13:38–54. Given the above, we are persuaded by Petitioner that the claims are directed to the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied. We are not persuaded by Patent Owner that the claims are not directed to an abstract idea, because Patent Owner’s argument is based upon elements not required by the claims. See PO Resp. 29–38. Given our construction of “data portion” and “database” in section II (A) above, the claims do not require protection on the data element level based on rules stored in a separate database, where the first database calls out to the second database. Patent Owner’s argument is not commensurate with the scope of the claims.” slip op. at 30

  Patent outcomesUS 8,402,281 mixed
  Claim construction§ 101 eligibilitycites Alice · Mayo
  Patents in suitUS 8,402,281
• Ubisoft, Inc. / Ubisoft Entertainment SA v. Guitar Apprentice, Inc.Some claims unpatentable
  PTAB · Apr 1, 2016 · IPR2015-00298 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–3, 5, 17, 18, and 20 are unpatentable as anticipated by Lee and Epstein; claims 9–12, 14, and 16 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “limitations in claim 9 are similar to the limitation at issue in Williamson. Specifically, the “proficiency sensing module” and “mode control module” limitations are in a format consistent with traditional means-plus-function limitations. Ex. 1001, col. 10, ll. 40–53; see Williamson, 792 F.3d at 1350. Each limitation replaces the term “means” with the term “module,” and recites certain functions performed by the module. Ex. 1001, col. 10, ll. 40– 53; see Williamson, 792 F.3d at 1350. The word “module” by itself does not provide any indication of structure. See Williamson, 792 F.3d at 1350–51; PO Brief 3 (“Thus, the module, like most computing elements, are a combination of relatively generic computer hardware coupled with software.”). Further, neither party argues specifically or identifies evidence indicating that the prefixes “proficiency sensing” and “mode control” impart structure into the term “module.” See Pet. Brief 2; PO Brief 5–6; Williamson, 792 F.3d at 1350–51. Patent Owner argues that the claim language imparts structure by reciting the input and output of each module. PO Brief 5–6; Tr. 25:7–14. The functions recited in claim 9, however, only describe certain inputs and outputs at a very high level (e.g., receiving signals from a guitar and comparing the received signals to expected signals). Ex. 1001, col. 10, ll. 40–53; see Williamson, 792 F.3d at 1351. The ’849 patent explains that a person of ordinary skill in the art “would conceive of numerous structural means” for performing the recited functions of the “proficiency sensing module” and the “mode control module.” Ex. 1001, col. 3, ll. 19–28; see id. at col. 3, ll. 58–67. As a result, the functions recited in claim 9 for the “proficiency sensing module” and the “mode control module” do not connote sufficiently definite structure. See Williamson, 792 F.3d at 1351. Therefore, we determine that the “proficiency sensing module” and “mode control module” limitations in claim 9 are means-plus-function limitations under § 112 ¶ 6.” slip op. at 16

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

    “Patent Owner argues that Lee does not disclose the above limitation of claims 1 and 17, because the system in Lee does not define the number of user segments in a subsequent iteration of a musical performance based on a user proficiency level determined from a previous iteration of the musical performance. PO Resp. 5–7 (citing Ex. 1003 ¶¶ 106, 161, 183). Specifically, Patent Owner argues that, in Lee, “the user, not the system,” selects the difficulty level (and thus the number of user segments) for a subsequent session. PO Resp. 7 (citing Ex. 1003 ¶ 183). Patent Owner’s argument is not persuasive. Lee discloses that “when the difficulty level of a musical piece is set to a low level, the user may be required to play only one out of every N 1 Lee discloses maintaining the number of musical events played by the user, as required by claim 17. Pet. 30–31; Ex. 1003 ¶¶ 165, 173, 174; Ex. 1006 ¶¶ 32–34. musical events, where N>1,” and, “[a]s the user progresses and gains skill from session to session, the value of N may be gradually reduced to 1” at which point “the user may be required to correctly play each of N musical events.”2 Ex. 1003 ¶¶ 173, 174 (emphasis added). Thus, Lee discloses a system that defines the number of user segments in a subsequent session based on the user’s proficiency level in a previous session. Id. Petitioner’s declarant, Dr. Michael Zyda, testifies that one of ordinary skill in the art reading Lee would have known that the system can adjust the number of user segments from session to session, as described in paragraphs 173 and 174 of Lee, without input from the user.3 Ex. 1006 ¶¶ 25, 29, 30.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2 As discussed above, Lee discloses that the term “musical piece” refers to a song or musical composition, and the term “musical event” refers to a note or chord in the musical piece. Ex. 1003 ¶¶ 30, 31, 58. 3 Dr. Zyda testifies that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, physics, mathematics, or a related field or an equivalent number of years of working experience, in addition to one to two years of software programming experience. Ex. 1006 ¶ 17. Patent Owner does not dispute Dr. Zyda’s definition of the level of ordinary skill in the art, and we adopt that level of ordinary skill in the art in this case. discussed above, though, the evidence indicates that the system disclosed in Lee also can adjust the number of user segments from session to session without input from the user. Ex. 1003 ¶¶ 173, 174; Ex. 1006 ¶¶ 25, 29, 30.” slip op. at 9

  Patent outcomesUS 8,586,849 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 8,586,849

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.