• Keysight Technologies, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · Dec 15, 2023 · IPR2022-01097 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–3, 5–13, and 15–20 are unpatentable as obvious; claims 4 and 14 were not shown unpatentable because Sourcefire did not disclose the claimed responsive updating of an existing packet flow log entry.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address this issue, and neither side argues that it might affect the patentability analysis or otherwise change the outcome. Thus, as 2 Sourcefire 3D System User Guide, Ver. 4.10, Mar. 16, 2011 (Ex. 1004). 3 U.S. Patent App. Pub. No. 2015/0207809 A1 (Ex. 1029). we did at institution, we apply Petitioner’s description of an ordinarily skilled artisan, as we find it consistent with the ’917 patent and the asserted prior art. B.” slip op. at 11

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

    “1. Threat Identifier and Threat Indicator Patent Owner identifies two terms that were construed in the ITC investigation involving the ’917 patent based on constructions agreed upon by the parties. PO Resp. 9. First, the parties in the ITC investigation agreed that “threat identifier” means “information that identifies one or more network threats.” Id. at 11 (citing Ex. 2004, 3). Second, the parties further agreed that “threat indicator” means “information that indicates a resource associated with a network threat,” “[f]or example, network addresses, ports, FQDNs, URLs, URIs, the type of threat, geographic information, anonymous proxies, actors, or the like.” Id. at 11–12 (citing Ex. 2004, 3). Patent Owner asserts that these constructions should be used in this proceeding. Id. at 12. Petitioner does not dispute these constructions, and we adopt them.4” slip op. at 12

  • ExcludeMotion to exclude, grantedGranted

    “Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14

  • Expert testimonyDecided for petitioner

    “Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14

  Patent outcomesUS 10,193,917 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,193,917
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Smart Mobile Technologies LLCSome claims unpatentable
  PTAB · Dec 4, 2023 · IPR2022-01004 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1, 5–9, and 12–14 are unpatentable; claims 2–4 and 15–20 were not shown unpatentable, based on the asserted prior-art challenges.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Petitioner filed a Petition (Paper 2, “Pet.”) requesting institution of an inter partes review of claims 1–9 and 12–20 of the ’943 patent. Smart Mobile Technologies LLC (“Patent Owner”) filed a Preliminary Response (Paper 6). After receiving authorization, Petitioner filed a Reply to the Preliminary Response (Paper 7), and Patent Owner filed a Sur-reply (Paper 8). Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of claims 1–9 and 12–20 of the ’943 patent on all presented challenges. Paper 13 (“Inst. Dec.”), 2, 71.” slip op. at 2

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

    “2. Claim 1 The parties dispute whether Petitioner has shown a motivation to” slip op. at 72

  Patent outcomesUS 9,614,943 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,614,943
• Western Digital Technologies, Inc. / Kioxia Corporation et al. v. Viasat, Inc.Some claims unpatentable
  PTAB · Nov 20, 2023 · IPR2022-01126 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4, 8, 15, 17, and 19 are unpatentable as anticipated by Wu; claim 2 was not shown unpatentable under the asserted obviousness grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “1 Kioxia Corporation and Kioxia America, Inc. filed a petition and a motion for joinder in IPR2023-00408 and have been joined as petitioners to this proceeding. INTRODUCTION A. Background and Summary Western Digital Technologies, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking an inter partes review of claims 1, 2, 4, 8, 15, 17, and 19 (the “challenged claims”) of U.S. Patent No. 8,615,700 B2 (Ex. 1001, “the ’700 Patent”). Viasat, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). We instituted an inter partes review. Paper 13 (“Institution Decision” or “Inst. Dec.”). Kioxia Corporation and Kioxia America, Inc. (collectively, “Kioxia”) filed a substantively identical petition, and we granted institution and joined Kioxia as a petitioner to this proceeding. Paper 25 (copy of Paper 9 from IPR2023-00408).” slip op. at 1

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ articulations of the level of ordinary skill in the art are similar, and we adopt parts of each party’s description of a POSITA’s education and experience. We agree with Patent Owner that computer engineering is a relevant field of study. PO Resp. 3. Our finding is supported by the ’700 Patent, which describes systems, devices, methods, and software for forward error correction for a flash memory system, which may be integrated with a computer, server, or other computing device. Ex. 1001, 3:23–30. We adopt Patent Owner’s proposal regarding the length of a POSITA’s practical experience—two years—rather than four years, as proposed by Petitioner. Neither Petitioner nor Dr. Dolecek assert that two years of practical experience would have been insufficient to acquire POSITA’s experience would have been limited to “hardware implementation.” PO Resp. 3. Our finding is supported by the ’700 Patent, which states that “embodiments may be implemented by hardware, software, firmware, middleware, microcode, hardware description languages, or any combination thereof.” Ex. 1001, 10:26–28. Petitioner’s assertion that a POSITA needs to have experience in “error correction coding (‘ECC’) systems (which include forward error correction or ‘FEC’systems)” (Pet. 19; Ex. 1003 ¶ 25) is consistent with the ’700 Patent, which discloses methods, systems, and devices for forward error correction for flash memory. Ex. 1001, code (57); see also Ex. 1003 ¶¶ 57, 66 (explaining that error correction coding (“ECC”) includes forward error correction (“FEC”)). For these reasons, we find that a POSITA would have had a bachelor of science degree in electrical engineering, computer engineering, or computer science or a related field, and two years of experience designing, developing, or researching error correction coding systems, which include forward error correction systems.” slip op. at 9

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

    “arrows between scrambler 103 and ECC Engines 822-0 to 822-M in Wu’s Figure 8 is sufficient to disclose the generation of a plurality of data streams, as claimed. Pet. 36–37; Pet. Reply 2–6. As between Petitioner’s position that the multiple arrows in Wu’s Figure 8 represent multiple data streams (Pet. 36–37; Pet. Reply 2–3), and Patent Owner’s position that “those arrows are not meant to be taken literally as literal data streams” (Tr. 35:16–17), we find that Petitioner’s position is more reasonable, consistent with the legal standard for anticipation, and amply supported in the record. “In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference.” Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (citing Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003)). “Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference.” Id. (citing Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018)).” slip op. at 17

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find that Dr. Dolecek’s testimony about Wu’s Figure 8 and a “plurality of data streams” is more credible than Dr. Bagherzadeh’s testimony on this topic. Dr. Bagherzadeh testifies that Wu’s scrambler “does not split, copy, or otherwise ‘generate a plurality of partially decoded data streams.’” Id. ¶¶ 100, 108. But that testimony fails to take into account what the depiction of multiple double-sided arrows in Wu’s Figure 8 would have meant to a POSITA, as Dr. Dolecek testifies. Ex. 1003 ¶ 86 (reproducing Wu’s Figure 8 with double-headed arrows between ECC engines 822-0 to 822-M and scrambler 103 shaded yellow to identify a “plurality of partially decoded data streams”). The evidence does not support Dr. Bagherzadeh’s opinion that Wu’s Figure 8 is “incompatible” with Wu’s description and “there’s no way to generate a plurality of data streams from the Scrambler to the ECC Engines.” Ex. 2023 ¶ 109. As Dr. Dolecek explained below, when viewed through the eyes of a POSITA, Wu discloses that the scrambler can generate a plurality of data streams. After quoting from Dr. Dolecek’s deposition testimony (Ex. 2023 ¶ 107 (quoting Ex. 2024, 32:15–22)), Dr. Bagherzadeh asserts that “Dr. Dolecek does not explain how she believes the intra-channel operation of the Scrambler on the ‘one long data stream’ it receives could generate a account Dr. Dolecek’s testimony in response to follow-up questions from Patent Owner. Q So you have found the plurality of data streams in the three arrows of Figure 8 going from the scrambler to the ECC engines? A Yes. . . . Q And how exactly, in your understanding as a person of skill, does the scrambler generate that plurality? . . . THE WITNESS: . . . So the person of ordinary skill in the art would understand that these are multiple arrows here indicated explicitly to suggest parallel operations of the ECC engines. And for them to have parallel operations, a person of ordinary skill in the art would assume that they are receiving inputs at the same time, and the scrambler would, for example, do that by sending descrambled data to different engines at a time, one at a time. . . . Q So how does the scrambler’s function of intrachannel rearrangement generate multiple data streams? . . . THE WITNESS: Once it’s descrambled on a per-block basis, it simply sends that block to a given engine, ECC engine. . . . Q Can the scrambler send out multiple data streams in parallel at the same time? A If it’s designed like that, yes. Ex. 2024, 32:24–34:7 (objections and witness’s false start omitted). Q So describe for me how in Figure 8 that would work for your analysis where the scrambler receiving the data from the multiplexer would then generate the plurality of partially decoded data streams. A Right. Figure 8. So if it receives a long string of data that has already been processed by the 104 unit, it would perform intra- -- intrachannel, if you will, intrablock disarrangement of data. And then it could” slip op. at 18

  Patent outcomesUS 8,615,700 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,615,700
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Some claims unpatentable
  PTAB · Nov 2, 2023 · IPR2022-00914 · APJ James A Tartal · IPR · Final written decision

  Claims 105 and 106 are unpatentable as obvious over Heller and Mastrototaro; Abbott did not prove claims 49, 80, 81, 85, or 86 unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “on the general knowledge of a person of ordinary skill in the art to disclose the predictive relationship limitation of claim 49 not taught by Heller are legally deficient. Resp. 28–38. We agree in that Petitioner’s contentions in the Petition amount to no more than a conclusory assertion that a person of ordinary skill in the art “would have known” the predictive relationship limitation. See Pet. 38–39. Petitioner’s arguments in the Petition are divorced from any analysis of Heller and fail to articulate why a person of ordinary skill in the art would have understood Heller to teach the predictive relationship in light of what was purportedly known more generally in the art. Merely asserting that a particular limitation was “known in the art” does not constitute a legally sufficient basis for establishing obviousness. See, e.g., Deere, 383 U.S. at 17–18. While Petitioner purports to identify multiple references that teach a predictive relationship, Petitioner circumvents a legally sufficient obviousness analysis by choosing not to assert any of the references in combination with Heller, but to instead argue they all collectively show that “predictive relationships” were broadly known in the art. See Pet. 28–33. Rather than establish some broad understanding by persons of ordinary skill in the art concerning the predictive relationship limitation, Petitioner’s arguments make clear that each reference uniquely addressed the relationship between a particular sensor and the in vivo performance of the sensor. For example, Petitioner asserts Gross teaches a sensor for which “the pre-insertion, factory-determined in vitro performance curve and” slip op. at 32

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

    “level in Gross is a “measure of sensor current, not ‘analyte concentration’ is contrary to the express disclosure of Gross. Gross expressly discloses a calibration method that requires, after insertion the in vivo measurement of a saturation level G1 “which can be measured by the sensor and which is of importance for the calibration method.” Ex. 1004, 13:3–18 (further stating that a “voltage V1 (FIG. 4C) applied at time t1 gives a current I1, (FIG. 4B) which corresponds to the saturation level G1 (FIG. 4A) of the enzyme”). Gross explains that “the predetermined stimulus is adapted to saturate the sensor such that the first signal is a maximum signal,” and “[w]hen a sensor is such that it can be saturated by a sufficiently large stimulus, it can be preferable to use this phenomenon in calibrating the sensor as it enables a reproducible first predetermined stimulus, i.e. a saturation stimulus to be provided in all cases, thereby removing uncertainty as to whether the means for providing a predetermined stimulus will in fact achieve exactly the right level of uncertainty.” Id. at 3:17–26.” slip op. at 45

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness. 5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. However, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Pers. Web Tech., LLC, v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)) (alteration in original).” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “In light of the foregoing multiple critical misrepresentations, Petitioner’s MTE is denied regarding sufficiency of Dr. Baura’s qualifications because Petitioner did not timely object to the evidence on the basis asserted in the MTE, fails to refute Patent Owner’s showing that Dr. Baura is sufficiently qualified (see MTE Opp. 3–7; Ex. 2010 ¶ 30), and abandons its argument in its Reply to the MTE.” slip op. at 57

  Patent outcomesUS 11,000,213 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,000,213
• Extractiontek Sales LLC v. Gene Pool Technologies, Inc.Some claims unpatentable
  PTAB · Oct 23, 2023 · IPR2022-01011 · APJ Cynthia M Hardman · IPR · Final written decision

  Claims 1–7 and 9–11 are unpatentable over the asserted obviousness grounds; claims 8 and 12–20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “On the full trial record, we adopt Petitioner’s proposed level of ordinary skill in the art, with Patent Owner’s additions. The additions are consistent with the evidence of record. For example, we find that adding chemistry and biology degrees is appropriate in view of Dr. Miller’s testimony that college-level chemistry and biology courses typically include training on extractive technologies. Ex. 1017 (Miller Tr.), 38:9–39:18. We also agree with Patent Owner that the educational level of the inventors may be considered (see Env’t Designs, Ltd., 713 F.2d at 696), and on this record, we accept Patent Owner and Dr. Miller’s undisputed representation that “named inventor Jason Wasserman had a bachelor’s degree in Agricultural Science and Sustainable Agriculture, a life sciences degree.” Ex. 2008 (Miller Decl.) ¶ 32; PO Resp. 5. Thus, for the reasons above, we define a person of ordinary skill in the art as someone who would have had (1) a bachelor’s degree in chemistry, biology, mechanical engineering, chemical engineering, petroleum engineering, or an equivalent field of physical science, life science, or engineering; and some academic or industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices; or (2) at least four years of industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices.” slip op. at 11

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on this experience, we determine that Dr. Miller qualifies as a person of ordinary skill in the art because by 1992, he had “at least four years of industry experience working with, designing, or studying methods of extracting solute from a source material or similar devices,” as required by the level of ordinary skill we adopt herein. He also avers that he gained additional training and engaged in additional extraction work prior to the effective filing date. Id. Additionally, between 2015 and 2020, Dr. Miller “enter[ed] the cannabis extraction and concentration industry, designing, building, and operating [his] own facility,” further qualifying him as a person of ordinary skill in the art. Ex. 2002 (Miller Decl.) ¶ 10; see also Reply 6 (acknowledging Dr. Miller’s post-2015 “experience and expertise in closed loop extraction systems”). Although this work started in 2015 (two years after the effective filing date of 2013), a person of ordinary skill in the art need not have been one of ordinary skill at the time of a patent’s filing date. See U.S. Endoscopy Group, Inc. v. CDX Diagnostics, Inc., IPR2014-00639, Paper 27, at 18 (Sept. 14, 2015) (“A witness must provide testimony about the level of skill in the art as of the critical date; however, the witness need not have acquired that knowledge as of the critical date.”). For the reasons discussed above, we determine that Dr. Miller is qualified in this proceeding to testify from the perspective of a person of ordinary skill in the art.” slip op. at 14

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

    “We find that Patent Owner has the better argument. Patent Owner’s citations demonstrate that “[t]he ’751 patent consistently describes ‘solvent collection line’ as a line, a pipe, hose, or tube used for the transport of gasses or liquids,” and that this usage is consistent with the way both parties’ declarants use the term “line.” PO Resp. 29–30; Ex. 1001, 9:16–10:41, 14:65–15:10, Figs. 1, 2, 5; Ex. 2002 (Miller Decl.), ¶ 60; Ex. 2003 (Chess Depo. Tr.), 100:6–17, 145:20–146:7, 169:18–171:2. In contrast, Petitioner’s argument is undermined by the same passage it cites. Specifically, “what the ’751 Patent explains in the same paragraph Petitioner cites is that the ‘solvent collection line 190 is configured to pass through condensing system 105 between second pump 102 and solvent collection container 15.’” Sur-reply 14–15 (quoting Ex. 1001, 8:60–63) (emphasis Patent Owner’s). “Figure 5 shows that both ‘solvent collection line 190’ and ‘coolant line 109’ are still ‘lines’ as they pass through ‘first condenser column 107.’” Id. at 15 (citing Ex. 1001, Fig. 5, 9:48–58). Figure 1, in contrast, shows that coolant pump 104 is a component that is distinct from coolant line 109. See id. (citing Ex. 1001, Fig. 1, 9:6–25). For the above reasons, we construe “line” to mean “a pipe, hose, or tube.”” slip op. at 19

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

    “We need not define the exact contours of a “canister interface,” including deciding whether it is “more than a mere connector.” Nor do we need to construe the claim term “support.” It is sufficient to note that a canister interface is not simply the system’s canisters themselves. The plain language of the claims recite that the “canister interface” must be configured to “support” the canisters (thereby distinguishing the canister interface from the canisters themselves). The Specification likewise distinguishes the canister interface and the canisters, indicating that the canister interface “allow[s] canisters to be easily detached and reattached.” Ex. 1001, 11:61– 62. Similarly, Mr. Chess distinguished a “detachable canister interface” from the system’s canisters/containers, characterizing the former as a “fitting of some sort so that you can disconnect or connect the solvent source container to the extraction vessel or canister.” Ex. 2003 (Chess Depo. Tr.), 182:10–16 (emphasis added).” slip op. at 46

  Patent outcomesUS 9,144,751 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,144,751
• Qualcomm Incorporated v. Fedex Corporate Services, Inc.Some claims unpatentable
  PTAB · Oct 6, 2023 · IPR2022-00586 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–15 and 26–30 are unpatentable as obvious over Lau and Benson; claim 28 also relies on Harring. Qualcomm did not show claims 16–25 unpatentable.

  RulingsFinal written decision

  • Exclude

    “We do not rely on Exhibits 1010, 1014, 1026, or 1027 for any determinations or findings in this decision. See infra note 10 (noting the context in which Ex. 1014 has been cited). When we use the phrase “evidence of record” or other similar terms or phrases, we are referring to the evidence of record except that evidence that is the subject of FedEx’s Motion to Exclude, that is, Exhibits 1010, 1014, 1026, 1027, and 2049. Accordingly, Patent Owner’s Motion to Exclude as to Exhibits 1010, 1014, 1026, and 1027 is dismissed as moot.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Almeroth essentially agrees with Qualcomm’s articulation of the level of ordinary skill as expressed above. See Ex. 2200 ¶¶ 45–46. Because Qualcomm’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence by both parties and appears consistent with the types of problems and solutions in the ’231 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:16–2:37 (“Field of the Disclosure” and “Background” sections of the ’231 patent, describing background knowledge about methods for tracking packages using wireless sensor devices). Qualcomm also contends that an ordinarily skilled artisan “would have been familiar with the field of technology described [on pages 7–13 of 6 Qualcomm argues that this is “at least” the level of ordinary skill in the art. Pet. 7. As we did in our instituting decision, we disregard this qualification to avoid vagueness. Dec. 19 n.6; Dr. Almeroth agrees. Ex. 2200 ¶ 46. the Petition].” Id. (citing Ex. 1002 ¶ 41). The “Field of Technology” section of the Petition refers to background knowledge of RFID technology and hierarchical sensor networks. See Pet. 7–13. Because whether this subject matter is part of the background knowledge in the art is not determinative of our decision, we need not adopt this part of Qualcomm’s articulation of the level of ordinary skill.” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Although the ’231 patent does appear to describe these as two separate embodiments, the embodiments both include smartphone 200. See Ex. 1001, 110:13–14, 19–20, 23–26. We find persuasive Qualcomm’s argument that the only apparent difference between the two embodiments is that in the second one, smartphone 200 has an app that allows it to use hardware capable of directly communicating with the server. In other words, the distinction is a matter of programming: the smartphone 200 is both “unable” and “not operable to” communicate with a server when it is not presently configured that way through software. This is inconsistent with Dr. Almeroth’s opinion that a device would not be “unable to directly communicate with the server” if it “ha[s] the circuitry components necessary to communicate with a server but simply lack the programming to do so presently.” Ex. 2200 ¶ 54. Thus, we do not find his testimony credible on this point.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed

    “Although the ’231 patent does appear to describe these as two separate embodiments, the embodiments both include smartphone 200. See Ex. 1001, 110:13–14, 19–20, 23–26. We find persuasive Qualcomm’s argument that the only apparent difference between the two embodiments is that in the second one, smartphone 200 has an app that allows it to use hardware capable of directly communicating with the server. In other words, the distinction is a matter of programming: the smartphone 200 is both “unable” and “not operable to” communicate with a server when it is not presently configured that way through software. This is inconsistent with Dr. Almeroth’s opinion that a device would not be “unable to directly communicate with the server” if it “ha[s] the circuitry components necessary to communicate with a server but simply lack the programming to do so presently.” Ex. 2200 ¶ 54. Thus, we do not find his testimony credible on this point. Regarding FedEx’s term-differentiation argument, we agree with Qualcomm that, based on the above evidence in the ’231 patent disclosure, there does not appear to be any meaningful difference between “unable to” and “not operative to” as those terms appear in the claims. Thus, we disagree with FedEx’s proposed construction of “unable to directly communicate with the server.” Our prior-art analysis below will be informed by the discussion above, but we need not explicitly construe this term to resolve the issues raised in the Petition. See 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 12

  Patent outcomesUS 9,182,231 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,182,231
• Chanel, Inc. v. Molo Design, Ltd.Some claims unpatentable
  PTAB · Aug 9, 2023 · IPR2022-00545 · APJ Carl M Defranco · IPR · Final written decision

  Claims 19–25 and 27 are unpatentable as obvious over MacAllen with the cited references; claims 1–10, 12, 14, and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Chanel argues, with support from its declarant, Mr. Rake, that one skilled in the art during the relevant time frame “would have a bachelor’s degree and at least two years of relevant experience working as an industrial designer, interior designer, furniture designer, architect, or other similar professional” and “would be knowledgeable regarding furniture design and/or the design of exhibit and display systems, and would have a general understanding of related manufacturing processes.” Pet. 21–22 (citing Ex. 1003 ¶¶ 42–46). Molo does not contest Chanel’s definition, and Mr. Rake agrees that it accurately reflects the level of skill in the art. See Pet. Reply 1 (“The parties agree on the POSITA and level of ordinary skill in the art.”); Ex. 2010 ¶ 34 (“I believe this is an accurate definition of a POSITA and 13 Although occasionally we may focus on Molo’s arguments, we do not shift the ultimate burden from Chanel. We focus on Molo’s arguments simply to identify issues in dispute, some of which we find unpersuasive in view of the record as a whole. have used this for my analysis.”). Because Chanel’s definition of the level of skill in the art appears reasonable and consistent with the ’161 patent and the prior art, we adopt it for purposes of our analysis.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner

    “The meaning of “freestanding” set forth in our Institution Decision is consistent with the Specification and prosecution history of the ’161 patent. For instance, during prosecution, the applicants rebutted the Examiner’s finding that “supports are required for the structure to be freestanding” by representing that “the extended wall, which is the structure itself, is freestanding when the base of the wall is placed on the floor of a room” and is “without supports.” Ex. 1002 at 185, 190 (first emphasis added). Based on that representation—that the expanded structure is capable of standing on its own without additional supports that are not part of the structure itself— the Examiner allowed the claims. See id. at 192. The Specification also supports that the expanded structure is freestanding in the absence of additional supports due to foldable supports 14 and 16 being adhered to end panels 18d at opposite ends of the core so as to be part of the structure itself— An end panel 18d of the core is connected to respective ones of the supports 14 and 16 over its entire width. The supports 14 and 16 are made from a self-supporting material, typically a non woven felt material, which has a degree of flexibility but also has sufficient rigidity to resist collapse of the core 12. The supports 14 and 16 extend laterally beyond the core as indicated at 32 and are adhered to respective ones of the end panels 18d. * * * Once partially extended, the supports 14 and 16 may be folded along a vertical axis to provide enhanced rigidity at each end of the partition 12. * * * [T]he supports 14, 16, at the free ends of the partition [are] folded upon themselves to provide stable support. Ex. 1001, 4:50–61, 5:12–14, 5:57–59. With that intrinsic evidence in mind, we maintain the construction in our Institution Decision that the term “freestanding” means “standing alone free of support or attachment.”” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We disagree on both counts. Chanel’s justification for folding the end panels of SoftHousing I into tubular supports finds absolutely no support in the record, and instead, amounts to impermissible hindsight. More specifically, Chanel’s first justification—“functional reasons”—most certainly is derived from the ’161 patent itself, which states unequivocally that “supports 14 and 16 may be folded along a vertical axis to provide enhanced rigidity at each end of the partition 12.” Ex. 1001, 5:12–14. Nowhere does Chanel or its declarant, Mr. Rake, point us to any teaching in SoftHousing I or other prior art indicating that folding the end panels of a honeycomb-like structure into tubular supports was known to enhance its structural integrity. Instead, Chanel’s sole evidence for modifying SoftHousing I, be it for functional or aesthetic reasons, is the unsupported and conclusory opinion testimony of Mr. Rake. See Pet. 40–41 (citing Ex. 1003 ¶¶ 134–137). But nowhere does Mr. Rake provide any evidentiary support for his conclusions. Instead, he simply opines generally on the limits of folding paper effectively—“[T]here’s kind of a limit to how you can manipulate paper effectively, and one of the things you do is fold it. That’s, like, first off. Take a piece of paper, it has no structure, no strength, and you put a fold in it, and you can probably stand it on a – on a desk.” Ex. 2011, 200:3–14. But that testimony says nothing about folding paper into a tubular shape, let alone folding end panels of a honeycomb structure into a tubular shape. As such, we reject the notion that Mr. Rake’s testimony provides credible support for modifying the paper-like end panels of SoftHousing I into tubular supports.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Unlike SoftHousing I, Okuno discloses rigid supports—namely, “substrates 1, 1”—for a honeycomb structure. See Ex. 1011 at 2, Fig. 1. However, Chanel fails to explain why one skilled in the art would have looked to Okuno’s lampshade to modify a partition wall as disclosed in SoftHousing I. Although Chanel states that both are constructed of honeycomb structures, so too are many other objects, including beehives, window shades, collapsible containers, and expandable benches, chairs, and tables. See Ex. 1003 ¶ 55. So, it was incumbent on Chanel to state a more compelling reason for combining the teachings of SoftHousing I and Okuno than simply they share a common material, i.e., a honeycomb-like core. Indeed, conspicuously absent from Chanel’s evidence is any testimony from Chanel’s declarant, Mr. Rake, regarding a reason to combine Okuno with SoftHousing I. See Ex. 1003 ¶ 141 (relying solely on SoftHousing I for teaching the subject matter of claims 12 and 14); see also Pet. 43–44 (lacking citation to Mr. Rake’s declaration). Without more, we are not persuaded that Chanel articulates sufficient reasoning with rational underpinning for combining Okuno’s teachings with SoftHousing I. Thus, we determine that Chanel fails to demonstrate that dependent claims 12 and 14 would have been obvious over SoftHousing I and Okuno.” slip op. at 25

  Patent outcomesUS 9,689,161 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,689,161
• Samsung Electronics Co., Ltd. v. Memoryweb, LLCSome claims unpatentable
  PTAB · Jul 31, 2023 · IPR2022-00221 · APJ Lynne H Browne · IPR · Final written decision

  Claims 1–13 are unpatentable under the stated obviousness grounds; claims 14 and 15 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’658 Patent would have had the following education and experience: (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least one year of experience designing graphical user interfaces for applications such as photo organization systems . . . Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 12 (citing Ex. 1003 ¶ 27). Patent Owner does not challenge this definition of the level of skill at this time. Prelim. Resp. 45. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11

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

    “The ’658 Patent states, “Application Views–The Application Views utilizes the Application’s ability to associate Digital Tags to Digital Files and display them in customized views such as Uploads, Collections, Slideshow, Location, Timeline, Family Tree, People Profile, and Recipes.” Ex. 1001, 9:18–22. Thus, we understand “application view” to mean a customized display of digital tags or files and we adopt this definition of “application view.” Id. Turning to Patent Owner’s contention that the claim language requires the application view of be separate and distinct relative to other claimed views, we do not agree with Patent Owner’s sweeping statement. Rather, each claim must be considered to determine if the structure of the claim requires a view that is separate and distinct from the application view or if the claim further defines the application view.” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Further, we do not agree with Patent Owner that Petitioner’s proposed claim construction “allows an infinite number of intervening events.” PO Sur-reply 3. Rather, Petitioner’s position, as supported by Dr. Greenspun’s testimony, is that “ a POSITA would have recognized that the term ‘responsive to’ merely requires that the second event happen ‘subsequent to’ the first event based on a combination of user interaction and software implementation.” Pet. Reply 4 (citing Ex. 2022, 42:21–44:22; Ex. 2024, 108:20–109:12; Ex. 1047 ¶ 7). We credit Dr. Greenspun’s testimony regarding claim construction for “responsive to a click or tap” and adopt this definition as our own. Ex. 1047 ¶¶ 7–11.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “Although, we agree with Patent Owner, that Petitioner does not dispute that in its second combination Okamura’s cluster maps and their associated geographic information would be lost, we do not see how this observation renders the proposed combination untenable. Petitioner has shown how the proposed combination meets limitations [1b]–[1g] of claim 1. Pet. 26–28, 37–56. To the extent that Patent Owner’s arguments regarding the Petitioner’s first proposed combination apply to its second proposed combination, those arguments are unconvincing for the reasons discussed above. In particular, we determine that the benefits of “better managing digital content” and an enhanced user experience “by providing ‘a good view of what location is associated with what’” outweigh any loss of geographical information. See Pet. 22–30. For these reasons, we determine that Petitioner has shown by a preponderance of the evidence that the combined teachings of Okamura and Belitz as combined in Petitioner’s second combination would have rendered displaying of first and second location selectable thumbnails as required by limitations [1b]–[1g] obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 40

  Patent outcomesUS 10,423,658 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,423,658
• Sensor Electronic Technology, Inc. v. Lite-On Technology CorporationSome claims unpatentable
  PTAB · Jun 26, 2023 · IPR2022-00395 · APJ Jean R Homere · IPR · Final written decision

  Claims 1, 2, and 5 are unpatentable under § 103; claim 3 was not shown unpatentable. The contingent motion to amend was granted for substitute claims 20–22.

  RulingsFinal written decision

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

    “5. Conclusion Weighing the Graham factors, we conclude that Petitioner has not” slip op. at 83

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “merely by increasing the light extraction due to their low refractive index. Id. at 5. Accordingly, Petitioner submits that a POSITA would be apprised that “the amount of light emitted from the light-emitting element 310 reaching the cup-shaped sidewall of the package…can be reduced, so that deterioration of the package can be prevented.” Id. (citing Ex. 1007 ¶ 42; Ex. 1026, 14:13–20). Thus, Petitioner argues, removing the silicone sealing layer and replacing it with an air gap would increase the light extraction from the package, thus performing the same function of the sealing layer disclosed in Nichia-825. Id. (citing Ex. 1014 ¶¶ 35, 36). Additionally, Petitioner argues that Omata’s air hole is designed to allow air to flow out of the LED package to help balance the pressure inside the package with the external air pressure during the reflow process. Id. at 6–7 (Ex. 1021 ¶ 39; Ex. 1026, 22:10–19, 32:2–4). Thus, Petitioner submits that Omata discloses no concern with introducing external contaminants through the air hole, which allows air to flow in the opposite direction once pressure has been equalized. Id. at 7.” slip op. at 61

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

    “Examiner’s rejections based on the oval-shaped drawing during prosecution of the ’685 patent, and because the depictions of different circles and an oval, each having a different center, were not drawn to scale in the Reply, they cannot be relied upon as evidence to support Petitioner’s position that the center of curvature may involve more than one circle or even an oval, each having a different center. Id. at 7–10. Accordingly, Patent Owner submits that the “center of curvature” should be construed consistent with” slip op. at 13

  Patent outcomesUS 10,916,685 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham · Nautilus
  Patents in suitUS 10,916,685
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.Some claims unpatentable
  PTAB · Jun 20, 2023 · IPR2022-00236 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 1, 10–13, and 21 are unpatentable over Osanai and Tokuhiro; claims 2, 6, and 22 were not shown unpatentable because key limitations were not established.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of ordinary skill, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. Thus, we determine that a person of ordinary skill in the art would have been a person with an advanced degree in electrical or computer engineering and two years working in the field, or a bachelor’s degree in such engineering disciplines and three years working in the field.” slip op. at 9

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

    “constructions” from the related proceedings. Pet. 10 (citing Ex. 1019). Patent Owner states that it does not seek construction of any terms in the ʼ035 patent and “agrees with Petitioners that all terms of the ʼ035 Patent have their plain and ordinary meaning.” PO Resp. 13. We determine no terms need to be construed to resolve the disputes between the parties.” slip op. at 10

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

    “determine that Petitioner has sufficiently demonstrated that one of ordinary skill would have been motivated to combine Osanai and Tokuhiro in the way proposed by Petitioner. Petitioner provides sufficient support for its allegation that one of ordinary skill would have been motivated to combine Osanai and Tokuhiro. For example, Dr. Alpert credibly explains that “it would have been obvious to use Tokuhiro’s teaching in Osanai’s data register buffer to achieve the same benefit achieved by Tokuhiro’s device, i.e., reduce the number of steps needed to determine the read delay by basing that determination on timing information determined during write leveling.” Ex. 1003 ¶ 126. This is because, as Dr. Alpert explains, Tokuhiro’s leveling technique uses timing information determined during write leveling for write operations to determine the delay for subsequent read operations. Id. ¶ 122 (citing Ex. 1006, 3:16–26, 16:1–28). Thus, Tokuhiro’s technique reduces the number of steps because it uses previous measurements and calculations from prior write leveling instead of making additional measurements and calculations to determine the delay for read operations. As for reducing power consumption and circuit area, Tokuhiro itself states “[a]ccordingly, the delay times Dt1 and Dt2 from the input of the two signals to the output thereof can be efficiently set without increasing the 24:26–29. Dr. Alpert provides credible testimony that Tokuhiro’s leveling technique allows for “using a common structure for implementing write and read delays [that] would improve power consumption for Osanai.” Ex. 1003 ¶ 127 (citing Ex. 1006, 21:15–24:42, Figs. 16, 17). We determine that evidence from Tokuhiro and Dr. Alpert sufficiently demonstrates that there would be benefits from using Tokuhiro’s technique in combination with Osanai. In terms of Petitioner’s argument that combining Tokuhiro with Osanai would improve signal fidelity, decrease timing skew among components and lower the load perceived by the memory controller (Pet. 40–41), we agree with Patent Owner that the reasoning provided is somewhat conclusory. The portions of Tokuhiro cited in support of this argument do not mention signal fidelity or lowering load, although they do mention adjusting for timing skew. See Ex. 1006, 1:63–2:28. Overall, however, considering the other two reasons provided, we determine Petitioner has sufficiently demonstrated that a person of ordinary skill would have been motivated to combine Osanai and Tokuhiro.” slip op. at 41

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

    “demonstrated by a preponderance of the evidence that Osanai and Tokuhiro teach the limitations of claim 1 and that claim 1 would have been obvious over the combination of Osanai and Tokuhiro.” slip op. at 43

  Patent outcomesUS 9,824,035 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,824,035

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.