• United Services Automobile Association v. PNC Bank, N.A.All claims unpatentable
  PTAB · Jan 3, 2023 · IPR2021-01248 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1–5 and 7–10 are unpatentable as obvious over Corneil; claims 8–10 are also unpatentable as obvious over Corneil and Abjanic.

  RulingsFinal written decision

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

    “1. “external system” In the Institution Decision, we preliminary determined that the claim term “external system” did not require a construction because, based on the preliminary record, there was no dispute between the parties as to whether Corneil’s second trading partner 217 teaches this claim term. Dec. on Inst. 8–9. PNC does not maintain its preliminary argument that the claim term “external system” requires construction. See PO Resp. 11–17; PO Sur-reply 2–8. Based the fully developed trial record, there is no readily discernible controversy between the parties that requires us to construe this claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “Based on the fully developed trial record, we maintain our preliminary determination that the claim term “secure service router” must be construed consistently across the ’788 patent and the ’786 patent. Dec. on Inst. 9–11 (citing SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015)). As a result, the claim term “secure service router” must “authenticate the data source system” that sends messages or requests because this is recited explicitly in independent claims 1 and 7 of the ’786 patent, but we also adopt certain portions of the “forwarding” aspect of PNC’s newly proposed construction for the embedded phrase “service router.” See id. at 10–11. That is, we construe the claim term “secure service router” as “hardware and/or software that authenticates the data source system prior to forwarding messages or requests.” The “authentication” aspect of our construction finds support in the specification of the ’788 patent, which consistently reinforces that the “secure service router” must authenticate the data source system. Ex. 1001, code (57), 1:54– 59, 6:42–44, 8:3–6.” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Based on the fully developed trial record, PNC fails to articulate clearly its understanding of the plain and ordinary meaning of the claim term “verifying access and transmission rights of the data source system and the external system.” On the one hand, PNC argues in the Patent Owner Response that, “[r]egardless of whether one could use a sender’s Trading Partner Profile to determine that a receiving partner is in the same network and can transmit messages back to the sender, this claim limitation is met only if Corneil actually teaches performing such an action.” PO Resp. 24; see also PO Sur-reply 10 (“USAA’s other arguments . . . fail to provide any evidence that Corneil teaches or suggests verifying the right of a receiving trading partner to transmit a message.”). On the other hand, PNC argues in the Sur-reply that the plain and ordinary meaning of this claim term “does not require verifying that the external system has the right to send to any particular entity, such as the sender.” PO Sur-reply 6. Moreover, PNC fails to persuasively show that either understanding of the claim language is consistent with how a person of ordinary skill in the art would have understood this claim term in view of the intrinsic record. PNC’s contradictory and unsupported arguments, together with its failure to state explicitly what it believes is the plain and ordinary meaning of the claim term “verifying access and transmission rights of the data source system and the external system” beyond simply repeating this claim language, render PNC’s arguments ambiguous and unpersuasive, leaving us with the district court’s claim construction order that provides a reasoned analysis. With this in mind, we see no reason to deviate from the district court’s construction of the claim term “verifying access and transmission rights of the data source system and the external system” as “determining whether the data source has permission to send messages to the external system and whether the external system has permission to receive messages from the data source.” Ex. 1037, 84. We adopt and incorporate by reference the district court’s claim construction analysis, and we do not repeat it in full here. Id. at 82–84. We, however, take this opportunity to provide additional reasoning in support of the district court’s claim construction analysis based on the arguments and evidence presented during trial. To the extent PNC argues for an implicit construction of the embedded phrase “verifying access and transmission rights of the data source system and the external system” that requires determining whether the external system has permission to transmit messages back to the data source system, we do not agree. See PO Resp. 24. It is well-settled that “extraneous” limitations should not be read into a 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). Neither the plain language of independent claim 1 nor the specification of the ’788 patent explicitly requires the external system to transmit a message back to the data source system. Ex. 1001, 14:61–15:9 (claim 1), 4:9–13 (“Accordingly, user registry server 120 may be configured to invoke various routines to authenticate data source systems 104, 108, 112 and/or verify access and transmissions rights of various computer systems and internal and external networks.”), 6:53–56 (stating the same, except limiting it to “various embodiments”). Indeed, independent claim 1 only requires “receiving a message from a data source system” and transmitting “the message to . . . an external system.” Id. at 14:62–65. It is not until dependent claim 8, which depends directly from independent claim 1 and further recites, in relevant part, “receiving a response [from] the external system,” that any claim requires the external system to transmit a response message back to the data source system. Id. at 15:40.” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of skill in the art advanced by each party requires at least a Bachelor of Science degree in electrical engineering, computer/software engineering, computer science, or equivalent. We do not discern a material difference between the industry experiences advanced by either party, nor does either party premise arguments on its own industry experience. For purposes of this Final Written decision, we adopt USAA’s assessment of the level of skill in the art because Dr. Malek’s identification of relevant industry experience applicable to software development and programming in the area of web services, including familiarity with enterprise systems and standard web transport and security protocols, is consistent with the ’788 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under either party’s assessment of the level of skill in the art.” slip op. at 27

  Patent outcomesUS 7,949,788 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,949,788
• United Services Automobile Association v. PNC Bank, N.A.All claims unpatentable
  PTAB · Jan 3, 2023 · IPR2021-01163 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious over Corneil and, independently, over the combined teachings of Corneil and Abjanic.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art In determining whether an invention would have been obvious at the time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person having ordinary skill in the art” is a hypothetical construct, from whose vantage point obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. Relying on the testimony of Dr. Malek, USAA argues the following: [a] person of ordinary skill in the art . . . at the time of the alleged invention would have had a Bachelor’s degree in computer science, software engineering, or electrical engineering and two years of experience in software development and programming in the area of web services, including familiarity with enterprise systems and standard web transport and security protocols. This level of skill is approximate, and more experience would compensate for less formal education, and vice versa. Pet. 9 (citation omitted) (citing Ex. 1003 ¶ 53). In its Patent Owner Response, PNC offers essentially the same assessment of the level of skill in the art as USAA, arguing the following:” slip op. at 18

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

    “4. Claims 1 and 12 USAA relies on essentially the same arguments and evidence to explain how the teachings of Corneil account for all the limitations of independent claims 1 and 12. Compare Pet. 10–34, with id. at 64–66. Our obviousness analysis below only focuses on the limitations of independent claim 1, but our obviousness analysis equally applies to independent claim 12. The preamble of independent claim 1 recites “[a] system, comprising.” Ex. 1001, 15:9. To the extent the preamble should be treated as limiting, USAA contends that Corneil teaches the feature recited in the preamble because Figure 2 of Corneil illustrates a system having all the elements of independent claim 1, including a “web services hub,” a “secure service router,” and multiple “data source systems” and “external systems.” Pet. 10. Each of these elements is illustrated in the annotated version of Figure 2 of Corneil, reproduced below. Id. Based on the annotated version of Figure 2, reproduced above, which illustrates a transaction processing system for electronic messages, USAA argues that “trading partner 217” (in red) represents a collection of “distinct, plural trading partners [who] communicate with each other by routing electronic documents through the managed network.” Id. at 10 (quoting Ex. 1004 ¶ 23) (alteration in original). More specifically, USAA argues that first trading partner 217 is the “data source system” (in red) that sends a message via “web services hub” (in green) to second trading partner 217 that is the “external system” (also in red). Id. at 10–11 (citing Ex. 1004 ¶ 23; Ex. 1003 ¶ 83). Next, independent claim 1 recites “a web services hub comprised of hardware, the hardware comprising at least one non-transitory memory connected to at least one processor.” Ex. 1001, 15:10–12. USAA contends that Corneil teaches this limitation because it discloses that the “web services hub” (in green above) includes, among other things, queue processor 203, message routing engine 204, and translation engine 208. Pet. 11 (citing Ex. 1004, code (57), ¶ 31). USAA then argues that Corneil’s “web services hub” includes at least one processor that executes software processes, and the software executing on the processor stores data, which means Corneil’s system necessarily includes at least one non-transitory memory connected to the processor. Id. at 12–13 (citing Ex. 1004 ¶¶ 25, 26, 32, Fig. 2, claims 15 and 16; Ex. 1003 ¶ 85).” slip op. at 22

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

    “2. Claims 1, 7, and 12 Apart from one exception, USAA relies on essentially the same arguments and evidence for independent claims 1 and 7 it identifies above in the obviousness ground based on the teachings of Corneil alone to explain how the combined teachings of Corneil and Abjanic account for all the limitations of independent claims 1, 7, and 12. See Pet. 9–34, 57–62, 64–66. Each of independent claims 1 and 7 recites, in relevant part: the web services hub to receive a response to the transformed request from the external system after the external system has completed processing of the transformed request and transmitted a response to the transformed request, the web services hub to parse the response to the transformed request for the data source system and transform the response to the transformed request into a transformed response to send to the data source system such that the transformed response is understandable and processable by the data source system. Ex. 1001, 15:28–37, 16:28–37. Independent clam 12 recites similar limitations. Id. at 17:19–33. USAA contends that, to the extent that Corneil does not teach the “response” steps required by independent claims 1, 7, and 12, Abjanic teaches these limitations because it discloses transformer 715 that parses and transforms, if necessary, requests and responses into “a format that is compatible with the receiving node.” Pet. 26 (quoting Ex. 1005 ¶ 75) (citing Ex. 1005 ¶ 74). USAA argues that Abjanic provides a specific example of a business transaction between “Bookstore.com” and “market.com,” where “Bookstore.com” understands and processes messages in “format A” and “market.com” understands and processes messages in “format B.” Id. at 28 (quoting Ex. 1005 ¶ 96) (citing Ex. 1003 ¶ 104). USAA argues that Abjanic’s system uses “tags” and other information to identify messages that need to be transformed so that “Bookstore.com” and “market.com” can communicate. See id. (quoting Ex. 1005 ¶ 98). Turning to rationale to combine, USAA contends that, when considering the teachings of Abjanic that it identifies above, a person of ordinary skill in the art would have been motivated “to use Corneil’s [transaction processing] system to receive a response from the external system after it has completed processing a transformed request and to parse and transform that response into a format understandable and processable by the data source system to which the response is to be transmitted.” Pet. 28– 29 (citing Ex. 1003 ¶ 105). According to USAA, “[t]his would have allowed a [person of ordinary skill in the art] to implement a business transaction, such as a purchase order request and response accepting the order, while taking advantage of the translation and efficiency features of Corneil’s web services hub.” Id. at 29. USAA also argues that there would have been a reasonable expectation of success in “[u]sing Corneil’s [transaction processing] system for both requests and responses between trading partners,” as taught by Abjanic, because it would provide certain benefits, such as “cost savings and efficiency resulting from eliminating point-to-point integrations and improved interoperability between otherwise incompatible systems, with no drawback that would have discouraged a [person of ordinary skill in the art] from implementing the claimed functionality.” Id. at 30 (citing Ex. 1003 ¶ 106).” slip op. at 72

  Patent outcomesUS 8,868,786 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,868,786
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 21, 2022 · IPR2022-00245 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2–4 are unpatentable as obvious over Lam, Enz, and Tayloe; claims 2 and 3 are also unpatentable as obvious over Tayloe and the TI Datasheet.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12

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

    “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above. slip op. at 18

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

    “Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23

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

    “On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24

  Patent outcomesUS 7,110,444 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,444
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 21, 2022 · IPR2021-00990 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2–4 are unpatentable under §103: claims 2–3 over Tayloe and the TI Datasheet, and claims 2–4 over Lam, Enz, and Tayloe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s option (a) is substantially the same as Petitioners’ proposal—both require a bachelor’s degree in the same or a related subject and two additional years of related work experience. Patent Owner’s option (b) adds an additional option based on work experience in lieu of a formal degree. Neither party contends that the difference in their proposals affects the outcome of this proceeding and we do not find that it does. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12

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

    “The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively. Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value. Storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal. Ex. 2029, 66:59–67 (emphases added); see Ex. 2016, 39–40 (discussing Patent Owner’s prior arguments to construe “storage module” in IPR2014- 00948). When defining certain terms in a section titled “General Terminology,” the ’551 patent repeatedly uses the phrase “when used herein” in combination with the phrase “refer(s) to.” See, e.g., Ex. 2029, 13:56–15:27 (mentioning a term followed by “when used herein,” followed by “refers to,” followed by a definition). For example, the ’551 patent states, “[t]he term digital signal, when used herein, refers to a signal that changes between discrete states, as contrasted to a signal that is continuous.” Id. at 15:7–9. As shown, the ’551 patent defines “digital signal” by stating “when used herein” followed by “refers to.” And, the same sentence also provides a comparison between “digital signal” and a signal that is continuous. Even though the passage describing “storage module” is not listed under the “General Terminology” section of the ’551 patent, the passage provides the same indications that the patentees clearly and unambiguously intended to define the term “storage module” by stating “as used herein” and “refer to”—hallmarks that the patentees were providing a lexicographic definition of the term. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 679 (Fed. Cir. 2015) (“An applicant’s use of the phrase ‘refers to’ generally indicates an intention to define a term.”) (citing In re Imes, 778 F.3d 1250, 1252–53 (Fed. Cir. 2015); Microsoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 1360 (Fed. Cir. 2013); Linear Tech. Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1054 (Fed. Cir. 2009)). Additionally, as with the term “digital signal,” the above-passage provides a comparison between “storage module” and “holding module” and uses the definitions of the terms to compare and contrast them. “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner, 669 F.3d at 1366 (citing CCS Fitness, 288 F.3d at 1366). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347–48 (Fed. Cir. 2009)). That is precisely what the patentees did in the above-passage. Specifically, we find that they clearly set forth a definition that is different than the plain and ordinary meaning and, in so doing, clearly expressed an intent to redefine the term. That the patentees intended to redefine the term “storage module” is clearly expressed by the use of “as used herein”16 and “refers to” in the above-passage and is consistent with the patentees’ use of these same phrases when defining other terminology in the ’551 patent, as discussed above.” slip op. at 17

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

    “Generally . . . the preamble does not limit the claims.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). A term in the preamble is a limitation only if it “recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” TomTom, 790 F.3d at 1323. We agree with Petitioners that “wireless modem apparatus,” as recited in the preambles of claims 2 and 3, is not limiting. In particular, “wireless modem apparatus” does not provide antecedent basis for any term subsequently recited in claims 2–4; it does not provide any essential structure because the body of the claim recites a structurally complete invention; and it is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner’s argument that the preamble is limiting because it makes clear that the input signal is input to a wireless modem apparatus is unavailing because the body of claims 2 and 3 expressly recite, as the first element, “a receiver for frequency down-converting an input signal.” See Ex. 1001, 60:48–49 (claim 2), 61:2–3 (claim 3). And, Patent Owner’s arguments make clear that its attempt to read “wireless modem apparatus” as limiting is solely for the purpose of arguing that claims 2–4 require a transmitter, which is a structural element that is not recited in the claims. See, e.g., PO Resp. 72 (arguing that Tayloe does not disclose a transmitter), 79 (raising the same arguments directed to Lam). When the patentees intended to limit a claim to a transmitter, they expressly recited a transmitter in the body of the claim. See, e.g., Ex. 1001, 61:25–57 (Claim 6 recites “[a] wireless modem apparatus, comprising,” and expressly recites “a receiver” and “a transmitter” in the body of the claim.). Accordingly, for each of these reasons, we find that “wireless modem apparatus” recited in the preambles of claims 2 and 3 is not limiting. slip op. at 23

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

    “Additional Terms Petitioners propose that we construe the following three terms: “frequency down-conversion module,” “subtractor module,” and “under-samples.” Pet. 15–18. Patent Owner responds to Petitioners’ constructions for “frequency down-conversion module” and “subtractor module.” PO Resp. 39–41. On the full record before us, none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of these additional terms. Accordingly, we need not construe them expressly to resolve the present disputes between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 24

  Patent outcomesUS 7,110,444 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,444
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 17, 2022 · IPR2022-00246 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 12–15, and 17–20 are unpatentable as obvious over the prior-art combinations; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’835 patent, and the opinion of Dr. Steer. Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 13

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

    “preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24

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

    “the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26

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

    “differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55

  Patent outcomesUS 7,292,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,292,835
• TCL Industries Holdings Co., Ltd. / LG Electronics Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Nov 17, 2022 · IPR2021-00985 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board held claims 1, 12–15, and 17–20 unpatentable as obvious, including over Hulkko and Gibson and over Gibson and Schiltz.

  RulingsFinal written decision

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

    “preamble of claim 1, is not limiting. In particular, “cable modem” does not provide antecedent basis for any term subsequently recited in claim 1, it does not provide any essential structure because the body of the claim recites a structurally complete invention, and “cable modem” is not necessary to give life, meaning, and vitality to the claim. Further, Patent Owner fails to raise any arguments on these issues to the contrary. Accordingly, for each of these reasons, we find that “cable modem” is not limiting.” slip op. at 24

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

    “the construction of “frequency translation module,” but that is inapposite because none of the parties’ arguments nor the outcome of this proceeding hinge on the construction of this term. Accordingly, we need not construe it expressly to resolve the present dispute between the parties. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 26

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

    “differently than the Federal Circuit in ParkerVision. Accordingly, because this specific issue of what amounts to “non-negligible amounts of energy” was already decided by the Federal Circuit, we construe this term to mean “energy in amounts that are distinguishable from noise.”30” slip op. at 55

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

    “argument regarding the second alternative persuasive. In particular, the distinction Patent Owner seeks to draw between Hulkko and Gibson generally, does not undermine Petitioners’ argument and evidence that the particular structures proposed for combination are substantially similar, operate in a similar manner, and would have been expected, by one of ordinary skill in the art, to function predictably and with a reasonable expectation of success, once combined. Notably, we find particularly persuasive Hulkko’s teaching to use its switched capacitors as a mixer to perform down-conversion, which is the same function as Gibson’s mixers. See Ex. 1004, 5:39–49 (“switched capacitor switching elements . . . are used to implement the mixer 11 which directly demodulates the IF-signal into a base-frequency signal”). Accordingly, we find that the combination of Hulkko and Gibson teaches element [1B] and that one of ordinary skill in the” slip op. at 42

  Patent outcomesUS 7,292,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,292,835
• Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentable
  PTAB · Feb 1, 2022 · IPR2020-00665 · APJ Michael R Zecher · IPR · Final written decision

  Claim 17 is unpatentable as obvious over Peinado alone and Peinado with Shear; the Board did not reach the Hurtado-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of this Final Written Decision, we adopt Dolby’s assessment, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound (i.e., encompassing a Ph.D. degree and beyond), and does not meaningfully indicate the level of skill in the art. Dolby’s assessment— without the qualifier—is supported by the testimony of Dr. Chatterjee and it is consistent with the ’106 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 16

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

    “After considering the fully developed trial record, the issues raised by the parties do not turn on the construction of the claim term “digital certificate.” Instead, the issues turn on whether Peinado teaches “the first digital certificate having been generated by a first entity based at least in part on a determination that the rendering application will handle electronic content with at least a predefined level of security,” as recited in independent claim 17. That is, we need not construe the claim term “digital certificate” to determine whether Dolby has demonstrated by a preponderance of the evidence that independent claim 17 of the ’106 patent is unpatentable under § 103(a) as obvious over the teachings of Peinado alone or in combination with the teachings of Shear because the parties do not dispute that Peinado’s certificate 72 is a digital certificate. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “e. Summary After weighing all of the evidence of obviousness and non- obviousness, on balance, Dolby has demonstrated by a preponderance of the evidence that the subject matter of independent claim 17 would have been obvious over the teachings of Peinado.” slip op. at 53

  Patent outcomesUS 8,931,106 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,931,106
• Intel Corporation v. Parkervision, Inc.All claims unpatentable
  PTAB · Jan 21, 2022 · IPR2020-01265 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claim 3 is unpatentable under §103 over Tayloe and the TI Datasheet; the Board did not reach the Tayloe and Kawada ground.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art in the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’444 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include option (b) from Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 12

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

    “proposes that it be construed to mean “an element that stores a nonnegligible amount of energy from an input electromagnetic (EM) signal.” Pet. Reply 10. Petitioner contends that its proposed construction expressly tracks the definition provided in the ’551 patent for “storage element,” which the parties agree is synonymous with “storage module.” Id.; see id. at 10 n.2. In particular, Petitioner asserts that the ’551 patent states: “Storage modules . . . refer to systems that store non-negligible amounts of energy from an input EM signal.” Id. (quoting Ex. 2007, 66:65–67). Petitioner notes that the ’551 patent also states that “the ‘goal of the storage modules’ is ‘to store non-negligible amounts of energy transferred from the EM signal’” and that the patent “specifically distinguishes storage elements from holding elements on this basis.” Id. at 10–11 (quoting Ex. 2007, 66:59–67 (“Holding modules . . . identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of ‘holding’ a voltage value. Storage modules . . . on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal.”)). Thus, Petitioner contends “‘storage element’ should be construed accordingly.” Id. at 11 (citation omitted).” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Owner fails to “establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, 838 F.3d at 1220. In particular, neither Patent Owner nor Dr. Steer makes any attempt to establish nexus with the elements recited in claim 3 based on a presumption of co-extensiveness or otherwise. Each instance in which Dr. Steer mentions claim 3, he only ties the discussion to energy transfer systems or energy sampling in general, which is based on Patent Owner’s proposed claim construction that we do not adopt. See, e.g., Ex. 1022 ¶¶ 229 (“energy transfer (energy sampling) system – of claim 3”), 230 (“energy sampling as set forth in claim 3”), 233 (“[u]sing energy sampling . . . as set forth in claim 3”), 234 (“energy sampling as set forth in claim 3”), 235 (same), 236 (same), 237 (“using the energy transfer (energy sampling) system of claim 3”), 238 (same), 239 (“energy sampling system as set forth in claim 3”). Thus, we find that Patent Owner fails to establish that a presumption of nexus is warranted and similarly fails to establish nexus absent the presumption. Accordingly, for the reasons above, Patent Owner has not satisfied its burden to establish nexus. See WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999) (patent owner “bears the burden of showing that a nexus exists”).” slip op. at 64

  Patent outcomesUS 7,110,444 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,444
• Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentable
  PTAB · Dec 15, 2021 · IPR2020-01123 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 9 and 29 are unpatentable as anticipated by Arnold and obvious over Arnold; Petitioner did not show they were obvious over Chang and Stefik.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “do not agree with Petitioner that it would have been obvious to combine Stefik’s tamper resistant barrier with Chang. Petitioner argues that a tamper resistant barrier would enhance security and would further Chang’s goal of allowing only authorized code to be executed on its platform. Pet. 64 (citing Ex. 1005, 8:55–59; Ex. 1006, 27:11–15). We agree with Patent Owner that this reason to combine is too general and conclusory to explain how the specific modification of securing Chang’s public keys behind a tamper resistant barrier would have provided a relevant benefit to the combination beyond Chang’s own secure distribution system that provides security, without placing the public key behind a tamper resistant barrier. We determine that such a generalized and conclusory reason for combining Chang and Stefik is insufficient. Magnum, 829 F.3d at 1380 (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory on evidence of record, to support the legal conclusion of obviousness.”). Specifically, Chang discloses that platform producers desire to allow only authorized code to be executed on their platform. Ex. 1005, 8:55–59. This is done by identifying the software that will execute on their platform. Id. at 8:60–62. Chang provides a solution to this problem by using software passports that include digital signatures. Id. at 8:65–9:48. Chang’s solution involves using a public key which is not kept behind a tamper resistant barrier. Id. Thus, Petitioner’s proposed motivation to combine to “enhance security” (Pet. 64) and to allow only authorized code to be executed on a platform does not explain why the public key would have to be kept behind a tamper resistant barrier. In response to the argument that its motivation is too conclusory, Petitioner further explains that its proposed motivation to combine (a platform producer’s desire to allow only authorized code on their platforms) would have motivated a POSITA to secure Chang’s public key behind a tamper resistant barrier to prevent a user from replacing the key. Pet. Reply 19 (citing Ex. 1005, 8:55–59). We agree with Patent Owner that this motivation suffers from hindsight bias as it is the same motivation disclosed in the ʼ721 patent itself for securing public keys behind a tamper resistant barrier. Ex. 1001, 14:23–28 (“In addition, maintaining the ‘public’ key within a tamper resistant environment forecloses the significant threat that the owner of protected processing environment 108 may himself attack the environment.”). Petitioner does not provide evidence that the motivation of preventing the user themselves from replacing the public key was a known problem in the industry or that it stems from either Chang or Stefik. Without such evidence, we conclude that Petitioner’s articulated reason for reconstruction. Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47

  • Expert testimonyPetitioner expert creditedOther

    “parties, we are persuaded that Arnold discloses limitation (c) of claim 9. Arnold discloses an adapter card with a secured area. Ex. 1004, 5:49–51 (describing that the microprocessor, memory, and cryptographic functions of Arnold’s cryptographic system are “housed within a secured area or module” of an adapter card); Pet. 49–50. Arnold describes the secured area of its adapter card as an area “where data is protected from disclosure” (Ex. 1004, 5:10) and “which is protected from physical and direct electrical access” (Ex. 1004, 10:47–48). Pet. 49–50. These disclosures indicate that the secured area of Arnold’s adapter card is a “tamper resistant barrier” that prevents the data stored within from read access and, therefore, keeps the data “hidden from the user” as recited in limitation (c). We also credit Dr. Chatterjee’s testimony that, based on Arnold’s description of the secured area of the adapter card, the secured area forms a tamper resistant barrier that keeps data stored within, hidden from the user. Ex. 1002 ¶¶ 141–144 (citing Ex. 1004, 3:56–57, 5:9–12, 5:52–53, 6:13–32, 6:28–30, 6:51–52, 6:55–59). Arnold makes clear that the “secured area of the card . . . contains the public key KPU” (Ex. 1004, 6:51–52) and that “said public key (KPU) is stored within said secured area.” Ex. 1004, 12:25; see also id. at 12:42 (“means for providing a public key (KPU) within said secure areas”); Pet. Reply 9. Dr. Chatterjee’s testimony, which we determine to be credible, also supports Petitioner’s contention that Arnold’s public key is within the secured area of Arnold’s adapter card. Ex. 1002 ¶ 143 (“The public key is secured behind a tamper resistant barrier and therefore hidden from the user.”). in the secure area of Arnold’s adapter card and that (2) the secure area protects data from disclosure and prevents physical and direct electrical access.5 Thus, we agree with Petitioner that Arnold’s public key is “secured behind a tamper resistant barrier and therefore hidden from the user” as recited in claim 9.” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s articulation of the level of ordinary skill in the art, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a POSITA is supported by the testimony of Dr. Chatterjee and is commensurate with the level of ordinary skill as reflected in the prior art and the ’721 patent. We note, however, that our analysis would be the same under either party’s definition of a POSITA.” slip op. at 13

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

    “Petitioner argues the term “load module” recited in claim 9 should be construed as “executable code, such as a computer program or an applet, plus any associated data required for code execution.” Pet. 19. To support this proposed construction, Petitioner cites the Specification’s statements that “[l]oad modules may contain algorithms, data, cryptographic keys, shared secrets, and/or other information that permits a load module to interact with other system components,” and “[f]or a load module to operate and interact as intended, it must execute without unauthorized modification.” Id. (emphasis omitted) (quoting Ex. 1001, 3:28–35); see also id. at 19–20 (citing Ex. 1001, 4:36, 4:51–56, 5:34–39). Petitioner also points to the “Field of the Invention” section of the ’721 patent, which provides that “[t]he present invention relates to . . . techniques for certifying load modules such as executable computer programs or fragments [(called ‘applets’)] thereof as being authorized for use by a protected or secure processing environment.” Id. at 20 (alterations in original) (emphasis omitted) (quoting Ex. 1001, 1:17–28) (citing Ex. 1001, 2:33–37; Ex. 1002 ¶¶ 67–69). According to Patent Owner, Petitioner’s proposed construction is inconsistent with the construction adopted in co-pending litigation of the related matters, in which the term was construed to mean “executable code and any associated data.” PO Resp. 22 (citing Ex. 2007, 44). Nevertheless, Patent Owner contends that the term “load module” does not require construction and should be given its plain and ordinary meaning. Id. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute and that its arguments would apply equally under the construction of the co-pending litigation or under a plain and ordinary meaning of the term. Id. we agree with Patent Owner that no explicit construction of this phrase is necessary to resolve the disputes between the parties. 2. “associated digital signature” Patent Owner points out that “the District Court [for the Eastern District of Texas] adopted a construction of ‘associated digital signature’ as ‘a digital value, verifiable with a public key, that can be used to determine the source and integrity of the load module/executable.’” PO Resp. 21 (citing Ex. 2001, 1). Nevertheless, Patent Owner contends that the term “associated digital signature” does not require construction and that its arguments would apply equally under the District Court’s construction or a plain and ordinary meaning of the term. Id. at 23. Petitioner does not provide its own construction of the term “associated digital signature.” Based on the arguments presented by the parties, we agree with Patent Owner that no explicit construction of this term is necessary to resolve the disputes between the parties.” slip op. at 14

  Patent outcomesUS 6,157,721 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,157,721
• Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentable
  PTAB · Dec 3, 2021 · IPR2020-00664 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 1 and 4–8 are unpatentable as obvious over Gammie; claims 1 and 8 are also obvious over Shamoon, which does not render claims 4–7 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposals do not differ in any meaningful way with respect to the issues in dispute. We adopt Petitioner’s definition of a POSITA, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a person of ordinary skill in the art is supported by the testimony of Dr. Madisetti and is commensurate with the level of ordinary skill as reflected in the asserted prior art and the ’627 patent. We” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “Petitioner argues that, “even if the preamble is limiting, it has been met by the art.” Pet. Reply 3. Petitioner argues that the preamble language recites only a generic processor and type of storage medium, both of which would be evident from the body’s recitation of steps performed by an executing application. Thus, according to Petitioner, the preamble adds nothing essential to the claim that the claim body does not already require. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Here, we need not decide whether the preamble limits claim 1 because Petitioner establishes by a preponderance of the evidence that Gammie and Shamoon each respectively teach the preamble of claim 1, as we explain in the sections further below. See §§ II.C.2.a, II.D.2.a.” slip op. at 10

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

    “2. “secure control application” Petitioner asserts the term “secure control application” recited in claim 1 should be construed to mean “an application that manages access to protected content.” Pet. 14–16 (citing Ex. 1002 ¶¶ 88–90). To support this proposed construction, Petitioner states that the ’627 patent describes the “secure control application” as “‘a first application’” that “‘act[s] as a supervisory digital rights managements system that controls a second application.’” Id. at 15 (quoting Ex. 1001, 2:46–49, 4:23–33); see also id. at 15–16 (citing Ex. 1001, 4:45–48, 4:49–5:1, 5:23–44, 6:25–31). Patent Owner applies Petitioner’s proposed construction in its Response and contends that construction of this term is not necessary to resolve the parties’ controversy. PO Resp. 24. Based on the arguments presented by the parties, and the fact that Patent Owner does not dispute the construction, we adopt Petitioner’s proposed construction for “secure control application.”” slip op. at 11

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

    “be given its plain and ordinary meaning. The term “governed application” is recited in independent claim 1. Dependent claim 4 adds that the governed application “satisfies one or more requirements.” Ex. 1001, 12:43–47. Patent Owner argues that the governed application of claim 1 be subject to certain rules or policies, but fails to explain how these rules and policies differ from the “one or more requirements” of claim 4. See Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004) (“[T]he presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.”). Furthermore, Patent Owner’s proposed construction requires the governed application to be subject to certain rules or policies imposed by the “security module.” The term “security module” appears nowhere in the ʼ627 patent or claims, and its inclusion in the construction of the term would create confusion regarding whether claim 1 includes the additional limitation of a security module separate from its other limitations. Patent Owner’s proposed construction would, therefore, add ambiguity rather than providing clarity to the claim beyond the plain meaning of the term itself.” slip op. at 13

  Patent outcomesUS 9,569,627 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,569,627

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.