- Westerngeco LLC v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 3, 2016 · IPR2015-00313 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1, 4, 10, and 11 are unpatentable: claims 1, 4, and 10 as anticipated by Gallagher, and claim 11 as obvious over Gallagher and Frasier; claims 2, 3, and 5 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Id. at 3:59–65. Additionally, the specification describes how, in this embodiment, “a plurality of the coordinate-designated set of traces have the same coordinates . . . the acquisition geometry resulted in two traces populating each common-inline/common-crossline bin.” Id. at 3:66–4:3. In an alternative embodiment, “there will be a unique set of coordinates per trace (i.e. a single trace per coordinate bin).” Id. at 4:5–7. Thus, based on the specification of the ’059 patent, we credit the testimony of Dr. Lynn that one of skill in the art would understand the “set of bins having a regularized number of traces” into which the coordinate-designated set of traces is organized are “common-offset bins.”4 Ex. 2037 ¶¶ 57–65, 111–113.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“As discussed supra, we determined that the correct interpretation of the claim term “set of bins” is “a set of common offset bins within a common reference point bin.” Patent Owner’s arguments directed to “posthoc bins” are not persuasive because the claims do not limit the bins to “pre” or “post” hoc bins. Thus, in view of the correct construction of the claim term “set of bins,” we are persuaded by Petitioner’s arguments that Gallagher discloses a “set of bins.” Specifically, Petitioner explains how the section shells group the sources based on their azimuth and offset from the CMP (Reply 10–11), and that the sub-squares represent common offset bins (Id. at 11–12). Additionally, Petitioner argues persuasively that the single-trace bin satisfies the claim limitation “a set of bins” as we have construed this term, because “[e]ach trace within the sub-bins or sections of Gallagher is necessarily common [to itself] with respect to offset and even azimuth.” Reply 13. In considering the record in its entirety, Petitioner has presented persuasive evidence to support a finding that Gallagher describes the “organizing” step recited in independent claim 1.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We are not persuaded by Patent Owner’s argument that the disclosure in Gallagher teaches away from the recited method. Patent Owner has not shown, nor can we find, that Gallagher criticizes, discredits, or otherwise discourages the use of a common reflection point instead of a common reference point. A reference teaches away from a claimed invention if it “criticizes, discredits, or otherwise discourages” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We will not, however, “read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“The Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry here is whether Petitioner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Patent Owner does not proffer persuasive arguments or evidence that Petitioner’s proposed modification of the system of Gallagher using the teachings of Frasier regarding common reflection point would not have been obvious to one of skill in the art. We have considered Patent Owner’s arguments; however, we are persuaded that Petitioner has provided an articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 26
Patent outcomesUS 6,026,059 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,026,059 - Nestlé USA, Inc. v. Steuben Foods, Inc.All claims unpatentablePTAB · Jun 2, 2016 · IPR2015-00195 · APJ Christopher G Paulraj · IPR · Final written decision
Claims 1–10, 14, 16–21, 25, 27, 29, and 32–36 are unpatentable as obvious over either of two combinations of prior art.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Petitioner’s new arguments and evidence do not persuasively demonstrate that the machines purchased as lines 1–6/7 were built to Petitioner’s specification, nor has Patent Owner demonstrated persuasively that the purchase agreements otherwise created privity between GEA and Petitioner. Even if the agreements for lines 1–6/7 were similar to the Line 8 Agreement as Patent Owner contends, we examined the relationship created by the Line 8 Agreement in detail, and determined that Petitioner and GEA were not privies. See Inst. Dec. 6–17. Given this, Patent Owner has added nothing new of significance since our Institution Decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“with the specification does not limit the claimed “sterilant concentration levels” to only airborne concentrations. We recognize that the specification, in one instance, refers to zones with “different concentration levels of gas laden sterilant (e.g., hydrogen peroxide in air).” Ex. 1001, 9:51–53. The specification, however, refers elsewhere to the “residual concentration” of H2O2, measured in terms of ppm. Id. at 12:46–47 (“The hot sterile air knives 208 also remove the hydrogen peroxide from the lids 200 so that the residual concentration of hydrogen peroxide is less than 0.5 PPM.”) (emphasis added); see also id. at 11:15–17 (“After bottle 12 has dried, the residual hydrogen peroxide remaining on the bottle 12 surface is less than 0.5 PPM.”) (emphasis added). Patent Owner acknowledges that “[o]ther discussions of ppm within the specification are in the context of residual sterilant on the bottle,” which is measured in accordance with the FDA Regulations (21 C.F.R § 178.1005(d) (Ex. 1013)) as the concentration in distilled water, but nonetheless asserts that “[t]his is consistent with the definition of ‘sterilant concentration’ in the context of the claim [as] parts of sterilant per million parts of carrier gas.” PO Resp. 6. However, insofar as it is undisputed that “residual” sterilant concentrations on the bottle surface are disclosed in the specification and encompassed by the claim scope, Patent Owner does not explain why the skilled artisan would have understood such a concentration would be measured as parts of sterilant per million parts of carrier gas (i.e., airborne) as opposed to parts of sterilant per million parts of distilled water in accordance with the FDA Regulations. See Ex. 1013, 326 (“No use of hydrogen peroxide solution in the sterilization of food packaging material shall be considered to be in compliance if more than 0.5 part per million of hydrogen peroxide can be determined in distilled water packaged under production conditions.”). In short, neither the claims nor the specification limit how or where within “the plurality of zones” the sterilant concentration levels should be assessed in order to determine whether the 5 to 1 ratio is satisfied. As such, we find no basis to limit the claimed sterilant concentration levels to only airborne concentrations.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“14 Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would possess “an undergraduate scientific or engineering degree in a relevant field (such as microbiology or mechanical, packaging, process, or food engineering), at least five years of experience in an aseptic packaging and/or processing field (or a graduate degree conferring similar expertise), and an understanding of the relevant principles of microbiology and food science and technology.” Pet. 12; Ex. 1004, ¶ 12. Patent Owner has not contested that definition in its Patent Owner Response, but its expert Dr. Sharon asserts that Petitioner’s definition is only partially correct insofar as it does not recognize that the POSITA could have a mechanical engineering Patent Owner’s arguments are directed primarily to the sterilant concentration ratio requirement recited in each of the challenged independent claims 1, 4, 17, and 33. Specifically, the challenged claims all require that the sterilant concentration levels in the plurality of zones within the sterilization tunnel “are maintained at a ratio of at least about 5 to 1.” Accordingly, we focus on that limitation, and treat the claims together for purpose of our analysis. 1. Scholle in view of Chambers, the FDA Regulations, Biewendt, Kelbrick, Elliott, Akai, and Kodera Petitioner asserts that, using partitions and pressure differentials, the apparatus of Scholle (Ex. 1004) is configured to prevent the H2O2 sterilant from migrating from the sterilizing compartment to the drying and filling compartments, and, thus, the sterilant concentration in the sterilization compartment of Scholle is necessarily different from the concentration in the drying and filling compartments. Pet. 20 (citing Ex. 1004 ¶ 55; Ex. 1005, 6:36–41). Petitioner also points to Scholle’s teaching of using a 30% solution of H2O2 in water (i.e., 300,000 ppm) as a sterilant (id. at 21 (citing Ex. 1004 ¶ 56; Ex. 1005, 5:18–22)), and asserts that the skilled artisan “would understand that to ensure consistent sterilization and residual peroxide levels, the concentration of applied sterilant must necessarily be ‘maintained.’” Id. degree. Ex. 2056, ¶ 12. We note, however, that Petitioner has included mechanical engineering as a “relevant field” within its definition. Accordingly, we apply Petitioner’s proposed level of skill in the art in our analysis.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“A preponderance of the evidence supports the conclusion that the skilled artisan would have found it obvious to optimize the sterilant concentration levels within the different “zones” (i.e., compartments) of Scholle’s apparatus in such a manner. Several features of Scholle’s apparatus facilitate such an optimization. First, a 30-percent solution of H2O2 in water is atomized and continuously sprayed into the spraying compartment during operation. Ex. 1005, 5:18–26, 45–49. Second, the spraying zone is separated from other compartments by a partition with a narrow opening designed “to reduce the amount of [H2O2] mist passing through the opening.” Id. at 6:12-15. Third, in the drying compartment, the H2O2 is “evaporated” and vented out of the sterile tunnel. Id. at 6:33-36, 44- 55. And finally, the sterile air maintains a positive pressure in the filling and drying compartments, thus reducing any tendency of the H2O2 mist in the spray compartment to migrate through the narrow opening into those other compartments. Id. at 5:36–43, 6:36-41. Although the parties dispute the particular concentration of H2O2 that exists in the sterilization tunnel after it is sprayed, there is no dispute that the spraying compartment in Scholle’s apparatus will have a higher sterilant concentration than the filling compartment. Indeed, even if airborne concentration levels were to be considered, Patent Owner’s counsel acknowledged during oral argument that “there is going to be more sterilant in the air in the spray zone than in the fill zone.” Tr. 122:12–14; see also Ex. 1035, 122:21–123:3 (Patent Owner’s expert Dr. Sharon conceding that the airborne concentration is lower in the fill zone than in the spray zone). Furthermore, we find that the concentration of the 30% solution of H2O2 will remain close to 300,000 ppm in the liquid phase at some point after it is sprayed into the spraying compartment. Scholle discloses that the spray heads atomize the H2O2 solution into a “fine mist or fog,” which coats the exterior of the containers to kill microorganisms. Ex. 1005, 5:22–23, 8:8–13. Although Dr. Sharon asserts that the skilled artisan “would be motivated to use as little sterilant in the sterilization zone as necessary to get the job done” (Ex. 2056, ¶24), he nonetheless acknowledged that, after condensation, the concentration of liquid H2O2 that coats the containers is “somewhere in the neighborhood” of 30%, or 300,000 ppm. Ex. 1035, Tr. 105:17–106:15. Here, we also credit Dr. Heldman’s testimony who stated that although the process of atomizing H2O2 may “result in varying concentrations,” the skilled artisan nonetheless “would understand that to ensure consistent sterilization and residual peroxide levels, the concentration of applied sterilant must necessarily be ‘maintained.’” Ex. 1004 ¶¶ 51, 56.” slip op. at 22
Patent outcomesUS 6,475,435 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,475,435 - Securus Technologies, Inc. v. Global Tel*link CorporationAll claims unpatentablePTAB · Apr 29, 2016 · IPR2015-00156 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1–8 and 11–27 are unpatentable as anticipated by Rae under pre-AIA 35 U.S.C. § 102(e).
RulingsFinal written decision- Skill levelOther
“considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s expert witness, Dr. Akl, attests that a person with ordinary skill in the art in the relevant time frame would be an individual who possesses a combination of experience and education in the field of telecommunications, including “data storage, data transmission and analog/digital signal processing.” Ex. 1003 ¶ 46. According to Dr. Akl, this would consist of the following: (1) a minimum of a Bachelor’s Degree in electrical engineering, computer engineering or the equivalent; and (2) 2 or more years of industry or academic experience in the relevant field. Id. Petitioner’s rebuttal witness, Dr. Forys, offers testimony as to the knowledge level of a person with ordinary skill in the art at the relevant time frame that is essentially the same as Dr. Akl’s assessment. Ex. 2010 ¶ 29. Additionally, we note that the prior art of record in this proceeding— namely, Rae—is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“arguments and evidence concerning the construction of “streaming converter.” We first look to the full phrase that includes this claim term, namely, “a streaming converter coupled to said storage device.” The claim language informs us of the connection between the “streaming converter” and the storage device, i.e., “coupled,” and is not concerned necessarily with the format of the data, i.e. compressed. Patent Owner’s arguments, however, seemingly interpret “streaming converter” in the context of the data, without consideration of the entire claim phrase. Patent Owner does not direct us to, nor do we discern, language in the claim itself requiring the data be compressed. As for the portions of the specification identified by Patent Owner, all refer to the function performed by the streaming converter, namely to convert the compressed conversation data into a streaming format. Although the cited passages describe the voice data themselves as “compressed,” Patent Owner does not direct us to, nor can we find, disclosure in the specification necessarily limiting the voice data to a particular format for transmission, such as a compressed format. Indeed, our review of the specification reveals that: the present technology provides an Integrated Access Device (IAD) 30 wherein voice signals are converted to a digital format and routed by way of a wide area network (WAN) transport mechanism to the central data center 110 for storage. IAD 30 may be embodied as a device more commonly known as a Voice over Internet Protocol (VoIP) Gateway. It is to be specifically understood, however, that the present technology does not require specific devices or systems for implementation but rather is more broadly directed to the inclusion of devices and systems designed to convert analog voice signals into a digital format suitable for transmission over a digital network.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner
“dictionary definition of “Boolean search” does not support Patent Owner’s assertion that one of skill in the art would understand “logical search” to mean “Boolean search.” Reply 5–6. We agree. The proffered extrinsic evidence does not inform us sufficiently that one of skill in the art in the relevant time frame would equate a logical search with a Boolean search. Moreover, Patent Owner does not direct us to, nor can we find, any disclosure in the specification that supports Patent Owner’s proposed definition. Indeed, “logical search” is recited only in claims 16 and 17. We are not persuaded by Patent Owner’s arguments and evidence that the plain and ordinary meaning of “logical search” is a Boolean search. Nevertheless, the parties seemingly agree that a “logical search” is understood by one of skill in the communications field. PO Resp. 9; Reply 5; See Tr. 119:21–23 (“logical search was a well-known term”). Therefore, based on the record before us, we conclude the claim term “logical search” need not be construed expressly for purposes of this decision. 4. “file”” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed
“We have reviewed the expert testimony from both sides, and find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.4 As such, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Akl and Dr. Forys. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) 4 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). We are not persuaded by Patent Owner’s contentions that Dr. Akl’s testimony be disregarded. Thus, we accord the testimony of both Dr. Akl and Dr. Forys the appropriate weight in view of the arguments and evidence of record in this trial. 2. Overview of Rae (Ex. 1002)” slip op. at 16
Patent outcomesUS 7,551,732 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,551,732 - PTAB · Apr 18, 2016 · IPR2015-01542 · APJ Beverly M Bunting · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition on July 02, 2015 pursuant to 35 U.S.C. §§ 311–319, requesting an inter partes review of claims 1–10 and 20–38 (the “challenged claims”) of U.S. Patent No. 6,519,581 B1 (Ex. 1004, “the ’581 patent”). Paper 2, (“Pet.”). Pursuant to our December 7, 2015 Order (Paper 16), Intellectual Ventures I LLC (“IV”), timely filed a Preliminary Response to the Petition on January 20, 2016 (Paper 17, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As recently reiterated by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also are not persuaded by Dr. Taylor’s supporting testimony because it is not supported by underlying facts. See 37 C.F.R. § 42.65. For example, Dr. Taylor testifies that one of ordinary skill in the art would have understood, even when a particular action is not required of the control point subsystem, the information generated is received there to facilitate system management. (Ex. 1001 ¶113). In addition, Dr. Taylor testifies that: one of ordinary skill would understand, any changes to the system resulting from a rule’s action would be reflected in updates to this database. (Id. ¶ 114). Thus, we understand Dr. Taylor to testify that Seiffert’s control point C necessarily could perform the same function of receiving the information from Managed System A. “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed Cir. 1999) (citations omitted). Although Seiffert’s system may indeed be capable of receiving the generated information, mere probabilities or possibilities fall short of demonstrating that the missing descriptive matter is necessarily present in Seiffert, as is required for a ground based on anticipation.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found
“Moreover, a ground of obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[T]his analysis should be made explicit” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. We have considered Petitioner’s arguments (Pet. 55– 59), however, Petitioner does not articulate sufficiently why or how one of ordinary skill in the art would have combined or modified the teachings and suggestions of Fawcett and Ghezzi, or Fawcett, Ghezzi or Berry, to address with sufficient specificity the differences between the claimed invention and the prior art. Based on the record before us, Petitioner has not demonstrated a reasonable likelihood that it will prevail on its assertion that claims 1–8, 10, 20–26, 28–36, and 38 would have been obvious over the combination of Fawcett and Ghezzi. Nor has Petitioner demonstrated a reasonable likelihood that it will prevail on its assertion that claims 9, 27, and 37 would have been obvious over the combination of Fawcett, Ghezzi, and Berry.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,519,581 - PTAB · Apr 18, 2016 · IPR2015-01543 · APJ Beverly M Bunting · IPR · Institution
The Board denied institution on all asserted grounds because IBM did not show a reasonable likelihood of proving claims 11–19 and 39–47 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition and Preliminary Response, and for the reasons explained below, we conclude that the Petition does not establish a reasonable likelihood that Petitioner would prevail in challenging the patentability of claims 11–19 and 39–47 of the ’581 patent. We, therefore, deny the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“Seiffert expressing that the information generated by transmitting a watchdog rule from control point C to Managed System A and applying the rule to values returned by watchdog checks within Managed System A, is also communicated back to control point C. See Pet. 24–26. Indeed, the passage of Seiffert cited by Petitioner is silent with respect to any correlation between action agent 12, 22, and 33 that carries out the specified action(s) and a particular rule evaluator module 13, 23, and 33. See Ex. 1005, 5:49– 58. Petitioner’s argument, i.e., because control point C maintains information about Managed Systems A and B and the computer system as a whole, it would receive any changes resulting from a rule, is not supported by a sufficient factual basis. See Pet. 26 (citing Ex. 1001 ¶ 114; Ex. 1005, 4:47–55, 6:9–14). We also are not persuaded by Dr. Taylor’s supporting testimony” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found
“Moreover, a ground of obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[T]his analysis should be made explicit” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. We have considered Petitioner’s arguments (Pet. 51– 52), however, Petitioner does not articulate sufficiently why or how one of ordinary skill in the art would have combined or modified the teachings and suggestions of Fawcett and Ghezzi, or Fawcett, Ghezzi or Berry, to address with sufficient specificity the differences between the claimed invention and the prior art. Based on the record before us, Petitioner has not demonstrated a reasonable likelihood that it will prevail on its assertion that claims 11–17, 19, 39–45, and 47 would have been obvious over the combination of Fawcett and Ghezzi. Nor has Petitioner demonstrated a reasonable likelihood that it will prevail on its assertion that claims 18 and 46 would have been obvious over the combination of Fawcett, Ghezzi, and Berry.” slip op. at 22
- Expert testimonyPetitioner expert discountedOther
“We also are not persuaded by Dr. Taylor’s supporting testimony because it is not supported by underlying facts. See 37 C.F.R. § 42.65. For example, Dr. Taylor testifies that one of ordinary skill in the art would have understood, even when a particular action is not required of the control point subsystem, the information generated is received there to facilitate system management. (Ex. 1001 ¶113). In addition, Dr. Taylor testifies that: one of ordinary skill would understand, any changes to the system resulting from a rule’s action would be reflected in updates to this database. (Id. ¶ 114). Thus, we understand Dr. Taylor to testify that Seiffert’s control point C necessarily could perform the same function of receiving the information from Managed System A. “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed Cir. 1999). Although Seiffert’s system may indeed be capable of communicating the generated information, mere probabilities or possibilities fall short of demonstrating that the missing descriptive matter is necessarily present in Seiffert, as is required for a ground based on anticipation.” slip op. at 13
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,519,581 - Xilinx, Inc. v. PLL Technologies, Inc.All claims unpatentablePTAB · Apr 18, 2016 · IPR2015-00148 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–10, 12–14, and 16–20 are unpatentable, principally as obvious over the listed combinations of Nienaber, Young, and additional references.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We are not persuaded by Patent Owner that the claims of the ’122 patent should be limited to digital systems. We begin our analysis with the intrinsic evidence from the ’122 patent. See In re Translogic Tech., 504 F.3d at 1257. First, the language of the claims provides no basis, and Patent Owner directs us to none, for limiting the claims to uses in a digital system. Indeed, as Patent Owner conceded, the structural components of the circuit that are recited in the independent claims, i.e., the reference path, the feedback path, the oscillator, and the delay circuits, are not limited to digital applications. Tr. 42:21–44:9. As for the Specification, Patent Owner does not direct us to any criticism of non-digital systems or specific statements in the Specification that Patent Owner contends explicitly or implicitly limit a clock or the invention to digital systems. Instead, Patent Owner states that “the ʼ122 Patent does not describe or contemplate non-digital applications of its ‘clock.’” PO Resp. 20 (citing Ex. 2002 ¶ 46). However, the only support cited for this contention, i.e., Paragraph 46 of Dr. Hayes’s Declaration, states, without any citation: “The ’122 Patent does not describe or contemplate non-digital applications of its ‘clock’ and thus fully supports the fact that a ‘clock’ signal is for a digital system.” Ex. 2002 ¶ 46. We do not find this conclusory testimony, without any citation or explanation, to be entitled to any weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”). Patent Owner also asserts that Dr. Alpert recognizes that the ’122 patent does not describe or contemplate non-digital applications of its clock. PO Resp. 20 (citing Ex. 1010 ¶¶ 27–29). However, we do not understand Dr. Alpert’s testimony as stating such a conclusion. Dr. Alpert describes certain problems in personal computers, and concludes that “[t]he ’122 patent aims to provide a solution to problems like that described above for controlling timing to transfer data between components.” Ex. 1010 ¶ 29. This testimony establishes one problem that the ’122 patent seeks to solve, but does not support Patent Owner’s conclusion that the ’122 patent does not contemplate any non-digital applications for its circuit. We have reviewed the ’122 patent and have been unable to locate any mention of the term “digital” or reference that the circuit is limited to only certain particular uses. The ’122 patent describes clocks broadly as periodic signals used for timing control. See, e.g., Ex. 1001, 1:19–35 (describing a clock synthesizer as generating an output clock based on an input clock, where both input and output clocks are periodic signals having “cycles”), 2:45–3:20 (discussing clock signals as periodic signals). Indeed, the Specification broadly states that “[t]he present invention enjoys particular advantages in applications where a predictable input-output phase relationship is desired, particularly where the output frequency is an integral or one-half an integral multiple of the input frequency.” Id. at 1:48–53. Thus, the Specification describes its potential uses very broadly. Such a broad discussion of potential uses supports Petitioner’s construction.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Means-Plus-Function Limitations Independent claim 7 recites several limitations that Petitioner contends should be interpreted as means-plus-function limitations subject to 35 U.S.C. § 112 ¶ 6.9 Pet. 11–13. In our Decision to Institute, we found certain functions and corresponding structure for those limitations. Dec. Inst. 9–10. Neither party disputes this determination. Based on a full record, we see no reason to alter our preliminary construction for these elements and adopt them for purposes of this Final Written Decision. Id.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“With respect to “programmable delay circuit,” as we have construed it, Petitioner admits that Nienaber does not disclose a delay circuit that is “capable of accepting data or instructions, or both, to alter the delay.” Tr. 14:3–25. Although Nienaber discloses “adjustable” delay circuits, it does not disclose delay circuits that can accept data or instructions, or both, to alter the delay, based on the correct construction of “programmable delay circuit.” Id. Thus, we determine that Petitioner has not shown by a preponderance of the evidence that Nienaber anticipates claim 1. Petitioner’s contentions that Nienaber anticipates claims 7–10 and 14 rely on the Nienaber’s disclosure of adjustable delay circuits that we found inadequate with respect to claim 1. Pet. 20–27. Thus, we are persuaded Petitioner has not shown by a preponderance of the evidence that claims 1, 7–10, and 14 of the ’122 patent are anticipated by Nienaber.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We do not agree with Patent Owner that the combination of Nienaber and Young would render Nienaber unsatisfactory for its intended purpose or that a person of ordinary skill would not have been motivated to combine Nienaber and Young. To begin with, we find that Patent Owner’s identification of the intended use of Nienaber is too narrow. We agree with Petitioner (Pet. Reply 22–23) that Nienaber discloses generally a “phase shifting means” for the purpose of “enabl[ing] video information to be shifted both up and down on a video display without undesirable side effects.” Ex. 1003, Abstract. Thus, we agree with Petitioner’s reasoning that, even incorporating Young without any of the modifications a person of ordinary skill would naturally make (discussed below), the combination would still be sufficient to accomplish Nienaber’s purpose. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.”). In addition, we determine that Patent Owner’s argument appears to be premised, at least in part, on an erroneous assumption that the delay elements of Young would be bodily incorporated into the circuit of Nienaber. However, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)); see also In re Mouttet, 686 F.3d at 1332 (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” (collecting cases)). Thus, we find Young’s teaching of “programmable” delay circuits is sufficient to suggest to a person of ordinary skill that “programmable” delay circuits could be substituted, not just the precise circuit disclosed in Young. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (noting that “[a] reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect” (quoting EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphases omitted)).” slip op. at 29
Patent outcomesUS 6,356,122 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,356,122 - Securus Technologies, Inc. v. Global Tel*link CorporationNo claims unpatentablePTAB · Apr 7, 2016 · IPR2015-00155 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–6 were not shown unpatentable under §103(a) over Susen and Gainsboro because Susen did not disclose steps within the construed access-attempt scope and the combination rationale was insufficient.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not proffer an explicit construction of any term, contending that “no construction is necessary of the ’243 patent claim terms,” but responds in its Reply to constructions proposed by Patent Owner for “public telephone network” and “access attempt to said public telephone network.” Pet. 8; Reply 4–7. 1. “public telephone network” Patent Owner contends that “public telephone network,” as recited in the phrase “access attempt to said public telephone network,” should be construed interchangeably with the term “public switched telephone network” as “a network of telephone communication links and switches, not associated with any particular person or facility, that carries telephone signals of the general public.” PO Resp. 10–13. Petitioner responds that the term “is well understood” without explicit construction and that Patent Owner’s proposed construction “unnecessarily and improperly limits the meaning” of the term. Reply 5. We agree with Petitioner that no express construction is necessary. Patent Owner’s expert testified at his deposition that a person of ordinary skill would understand what is meant by “public telephone network” and that the ’243 patent does not apply any definition of the term outside of its normally understood definition. Ex. 1009, 110:5–111:9.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Petitioner that “access attempt to said public telephone network” is not appropriately construed as a “period of time.” Nevertheless, disagreement between the parties over the scope of the fuller phrase, “during each access attempt to said public telephone network by said potential caller,” requires resolution—specifically, which of the steps that follow recitation of the “during” phrase must be performed “during each access attempt.” A grammatically rigid reading of the claim, which includes two colons and two instances of the word “and,” suggests an illogical construction in which the scope of “during each access attempt” includes the “prompting,” first “recording,” “matching,” “comparing,” “granting,” “monitoring,” and second “recording” limitations. The parties agree that such a construction is inappropriate, and we find it inconsistent with the Specification of the ’243 patent because at least the “monitoring” and second “recording” limitations logically require a connection established within the public telephone network before they can be performed. See PO Resp. 15– 16; Reply 19–20; Tr. 39:18–40:3 (Patent Owner acknowledging “sloppy draftsmanship”). Petitioner contends that, because “during each access attempt . . . ” is followed by a colon without further punctuation or indentation, “[t]he broadest reasonable interpretation of the claims would apply this limitation to only the first step following the colon: ‘prompting.’” Reply 19. Patent Owner contends instead that the “granting” limitation provides a logical conclusion to the “access attempt” so that each of the “prompting,” first “recording,” “matching,” “comparing,” and “granting” limitations are within the scope of “during each access attempt.” PO Resp. 15–16; see Tr. 38:7–20 (confirming Patent Owner’s position that the “granting” limitation is within scope). Patent Owner supports its position with testimony by Leonard J. Forys, Ph. D., who testifies as follows: Simply put, it is my opinion that an “access attempt” is defined by a starting point (e.g., the beginning of the attempt) and the point at which the “attempt” either succeeds or fails. In this case, because the claim recites an “access attempt to said public telephone network”, the “attempt” will succeed or fail (and thus conclude) when the caller is granted access to, or ultimately denied access from, the public telephone network. The period in between these two events comprises some calling procedure in which the caller may be asked to provide certain information, dial the outgoing number, authenticate himself/herself, etc. The above construction is thus supported by this common sense approach. Ex. 2004 ¶ 47. We credit this testimony, and afford it greater weight on this point than the testimony of Petitioner’s witness, Robert Akl, Ph. D., who declined at his deposition to provide meaningful details explaining how he arrived at his opinion that the scope of the recited “during each access attempt . . . ” is more limited. See Ex. 2003, 46:24–48:22. We also agree with Patent Owner that a construction that affords greater scope to “during each access attempt” is consistent with the Specification of the ’243 patent. See PO Resp. 14–15. Accordingly, we construe the scope of “during each access attempt to” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The key to supporting a conclusion of unpatentability under 35 U.S.C. § 103(a) is the clear articulation of reasons why the claimed invention would have been obvious. The Supreme Court has clarified the requirements that must be met to establish a prima facie case of obviousness, emphasizing that the “analysis should be made explicit.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Although the reasoning may draw from numerous intrinsic and extrinsic sources, conclusions of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 15
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner supports its statements with testimony by Dr. Akl, but that testimony repeats the statements made in the Petition with only minimal surface changes. See Ex. 1005 ¶¶ 60, 75, 94.4 As Patent Owner contends, these statements are also made within the context of a broad characterization of the art, namely “managing institutional calls.” See PO Resp. 21–22. The cursory assertion that the prior-art references are drawn from the same 4 With respect to the third statement, addressing claim 6, Dr. Akl provides the additional conclusory assertion that “One skilled in the art would understand that combining these references would be obvious and beneficial in that it would enhance the security of the system.” Ex. 1005 ¶ 94. broadly characterized field provides insufficient analysis concerning why and how a person of ordinary skill in the art would have modified or combined the prior art in the manner asserted, and inadequately articulates “reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine elements in the way the claimed new invention does.”). Furthermore, Petitioner’s perfunctory analysis is effectively rebutted by Dr. Forys, who testifies that “Susen and Gainsboro are directed to unrelated concepts” and “directed to very different architectures that are not easily combined.” Ex. 2004 ¶¶ 53, 56. We credit the testimony of Dr. Forys more strongly than that of Dr. Akl because Dr. Forys provides explicit reasoning to support his opinion that Susen and Gainsboro are concerned with different implementation settings, rely on different architecture structures, have technical incompatibilities, and are drawn from different fields. See id. ¶¶ 52–61; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 16
Patent outcomesUS 7,853,243 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,853,243 - Qualcomm Incorporated v. NVIDIA CorporationInstitution deniedPTAB · Mar 10, 2016 · IPR2015-01863 · APJ Jon B Tornquist · IPR · Institution
Institution was denied for claims 1–19, 21–23, 25–30, 34–36, and 38–43 because the petition did not show a reasonable likelihood of success on its obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail on the ground that claims 1–19, 21–23, 25–30, 34–36, and 38–43 of the ’685 patent would have been obvious under 35 U.S.C. § 103(a) over the combination of Selzer and Fiske or Selzer, Fiske, and Van Hook. III. CONCLUSION For the foregoing reasons, we conclude that Petitioner has not demonstrated a reasonable likelihood that at least one challenged claim is unpatentable based on the asserted grounds. We, therefore, do not institute an inter partes review on the asserted grounds as to any of the challenged claims. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is DENIED.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“[W]hen the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention,” it is generally not limiting. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). However, when a preamble phrase provides antecedent basis for a term in the body of a claim, or is clearly relied upon to distinguish the claimed invention from the prior art during prosecution, this reliance on the preamble to define the scope of the invention “transforms the preamble into a claim limitation.” Id. at 808; Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (noting that when the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention”). As noted by Patent Owner, the preamble of claim 1 provides antecedent basis for the terms “at least two sample types” and “threads.” Moreover, during prosecution the patentee amended the preamble of claim 1 to include the term “simultaneous” and argued this newly added limitation distinguished claim 1 from the prior art of record. Ex. 1012, 2, 12 (“Thus, the references do not teach the limitations found in all claims that the threads can process any of the two or more samples (vertex, pixel, primitive) simultaneously, and therefore, the pending claims should be allowed.”). Given this reliance on the preamble to define the invention, we are persuaded that the preamble of claim 1 is properly considered a claim limitation. See Catalina Marketing, 289 F.3d at 808 (“Moreover, clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.”). slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“On this record, we are not persuaded by this argument. Selzer’s dynamic load balancing system achieves greater than 95% processor utilization and ensures that “no computational power is going to be wasted by a rendering module starting out to run an idle state.” Ex. 1006, 46–47. Petitioner and Dr. Fussell do not persuasively explain why this load balanced system of Selzer would benefit from incorporation into a single multithreaded processor. Moreover, Fiske does not necessarily support Petitioner’s argument that one of ordinary skill in the art would have sought to transition from a multiprocessor architecture to a multithreaded one. For example, Fiske discloses both a multiprocessor architecture (Figure. 1.1) and the benefits of multithreaded processors, yet despite these disclosures, we are directed to no disclosure or suggestion in Fiske to collapse the multiprocessor architecture of Figure 1.1 into a single multithreaded processor; instead, Fiske discloses replacing each individual processor with a multithreaded processor to maximize processor utilization during periods of extended latency. See Ex. 1004, 21–22, Figure 1.1 (noting that the disclosed scheduling mechanisms make more efficient use of the processor pipeline on shared memory multiprocessor systems). Thus, we are not persuaded—on this record—that the general benefits of multithreaded processors would necessarily have motivated one of ordinary skill in the art to consolidate the physical processors of Selzer into one of the single, multithreaded processors of Fiske.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“As noted by Petitioner, Fiske discloses the use of a RISC processor. Ex. 1004, 23. Fiske also instructs that in order “[t]o allow a traditional RISC pipeline design” to be used in the disclosed method, a block multithreading model is assumed. Id. We note, however, that Petitioner’s claim chart for claim 1 relies upon a finely multithreaded architecture, which interleaves instructions from different contexts on a cycle-by-cycle basis. Pet. 35 (citing Ex. 1004, 41 (noting that some “multithreaded architectures interleave instructions from different contexts on a cycle-by-cycle basis”); Ex. 1005 ¶ 105); see also Ex. 1004, 41 (discussing the difference between block multithreading, which “allows a single thread to fully use the processor pipeline,” and a finely multithreaded architecture which interleaves instructions from different contexts on a cycle-by-cycle basis). Petitioner provides no reasoned explanation as to how or why both methods of multithreading would be used in the RISC processor of Fiske, nor an explanation as to how or why one of ordinary skill in the art would modify the RISC processor of Fiske to interleave the graphics and rendering instructions of Selzer on a cycle-by-cycle basis, especially given Fiske’s disclosure that “[c]ycle-by-cycle interleaving” involves “a significant hardware cost to redesign the processor core and pipeline to allow the different contexts to issue instructions simultaneously.” Ex. 1004, 41. With respect to Petitioner’s argument that the general industry trend was from multiprocessor to multithreaded designs, we note that Petitioner and Dr. Fussell provide no persuasive evidentiary support for this conclusion. See Pet. 25–26; Ex. 1005 ¶ 85. Nor does Petitioner provide a persuasive explanation as to why a person of ordinary skill in the art would understand this general trend to apply specifically to the multiprocessor design of Selzer. Thus, we are not persuaded that Petitioner provides sufficient detailed explanation as to how or why the RISC processor of Fiske could be combined with Selzer as proposed by Petitioner. Accordingly, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail on the ground that claims 1–19, 21–23, 25–30, 34–36, and 38–43 of the ’685 patent would have been obvious under 35 U.S.C. § 103(a) over the combination of Selzer and Fiske or Selzer, Fiske, and Van Hook.” slip op. at 17
Claim construction§ 103 obviousnessPatents in suitUS 7,038,685 - Qualcomm, Incorporated v. NVIDIA CorporationInstitution deniedPTAB · Mar 10, 2016 · IPR2015-01862 · APJ Kevin F Turner · IPR · Institution
The Board denied institution because Qualcomm did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“calculation, claims 9 and 10 recite, in part, “saving the output,” claims 11 and 19 recite, in part, “a code segment for saving the output,” and claims 21 recites in part, “logic for saving the output” of a first shading calculation. In a related proceeding, we determined that the plain and ordinary meaning of “save” is “to write data (typically a file) to a storage medium, such as a disk or tape.” See Ex. 3001, 463 (see also IPR2015-01070, Paper 9). Consistent with this ordinary meaning, the ’372 Patent discloses that the “saving” may be done using a storage device, namely using a First-in-First-Out (“FIFO”) Buffer. Ex. 1001 7:1–7. The ’372 Patent also discloses that “the loopback FIFO 407 may be utilized to hold barycentric weights, colors from previous passes, triangle information, and additional scheduling information,” and that the “FIFO 407 may include a plurality of bits that can be reconfigured to store whatever piece of data is appropriate.” Id. Although there are conceivably multiple way of “saving” output, our review of the Specification of the ’372 Patent does not indicate a clear intent to deviate from the plain and ordinary meaning of the term “saving.” As such, we are persuaded, on this record, that the “saving” limitations recited in the challenged claims are directed to “saving in a storage device” and should be construed as such. Patent Owner has acceded to this construction, and Petitioner provides no specific construction for this claim term. Prelim. Resp. 6–7; Pet. 14–18.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991); see also Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (“[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” (citations omitted)). In the instant case, we are persuaded that Cf could be reused without saving in a storage device, i.e., directly passed without any saving, in the context of Kajiya. Although the value could be saved, that is insufficient to anticipate the claim limitation “(b) logic for saving the output,” based on the applied claim construction. As discussed above, claims 1, 10, 11, and 20 also contain the same limitation, and those other independent claims cannot be anticipated by the disclosure of Kajiya. slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We have found previously that the recirculation of data within Gossett is not necessarily equivalent to “saving,” per the challenged claims, or that indefinite recirculation necessarily requires storage in a storage medium or device. See IPR2015-01070, Paper 9, 10. The evidence presented in this proceeding does not persuade us that this previous interpretation was incorrect or provide a reason to deviate from that conclusion. Thus, even if we determined that one of ordinary skill in the art would have had reason to combine the recirculation pipes of Gossett with Kajiya, it is not clear that such ordinarily skilled artisans would have saved output, per the claim limitations, given that neither Gossett nor Kajiya explicitly discloses the same. Because the Petition assumes that both Gossett and Kajiya disclose saving, the Petition does not provide any specific arguments why the combination would have necessarily utilized the saving of output, as recited by the challenged, independent claims. Petitioner’s Declarant, Dr. Fussell, makes similar arguments made in the Petition and testifies that “to save the output of the first shading calculation for its use in the second shading calculation would have been obvious.” Ex. 1010 ¶ 167. This testimony, however, is conclusory, and must be weighed against the disclosure of Gossett, which warns against using unnecessary hardware that could slow down operations. Ex. 1003, 2:52–54, 7:32–35. Therefore, the combination of Gossett and Kajiya could have provided a system that allowed for recirculation of values from a first shading calculation, but that would not necessarily result in the saving of that input. Although the saving of such output could have been obvious in view of Gossett and Kajiya, the Petition does not provide support for such a proposition. See 37 C.F.R. § 42.108(c).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,690,372 - Qualcomm Incorporated v. NVIDIA CorporationInstitution deniedPTAB · Mar 10, 2016 · IPR2015-01861 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Qualcomm did not show a reasonable likelihood that claims 1–19, 21–23, 25–30, 34–36, and 38–43 were obvious over Amanatides, Van Hook, and Fiske.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on the foregoing, we are not persuaded that Petitioner has presented sufficient articulated reasoning with rational underpinning to support the proposed combination of Amanatides, Van Hook, and Fiske. See KSR Int’l, Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail on the ground that claims 1–19, 21–23, 25–30, 34–36, and 38–43 of the ’685 patent would have been obvious under 35 U.S.C. § 103(a) over the combination of Amanatides, Van Hook, and Fiske. III. CONCLUSION For the foregoing reasons, we conclude that Petitioner has not demonstrated a reasonable likelihood that at least one challenged claim is unpatentable based on the asserted ground. We, therefore, do not institute an inter partes review on the asserted ground as to any of the challenged claims. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is DENIED.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner provides no persuasive evidence or argument to explain why the specific auto load balanced system of Amanatides would benefit from a transition to a multithreaded design. See Ex. 1003, 157, 160. For example, although Petitioner notes that “a multithreaded architecture permits rapid switching between tasks (threads), which prevents the processor from remaining unused when one task goes idle,” Pet. 23 (citing Ex. 1004, 21), Petitioner does not explain why this would benefit the load balanced system of Amanatides, which already ensures that the processors will be “kept busy” doing “useful work.” Ex. 1003, 157, 160. Second, we are not persuaded that Petitioner has presented sufficient argument or evidence to demonstrate that the general understanding in the art, as disclosed in Van Hook, that multithreaded processing units may be advantageously applied to graphics processing, would motivate one of ordinary skill to replace the multiprocessor configuration of Amanatides with a single multithreaded graphics processor. In particular, although Van Hook discloses the benefits of multithreaded graphics processors, it does not teach or suggest modifying a multiprocessor configuration to incorporate all the functions of the individual processors within a single, multithreaded processor. Van Hook discloses, instead, the benefits of multithreading in dedicated vertex or pixel processors, which may be part of a larger graphics pipeline. See Ex. 1002, 6:1–2, 11:6–14; Ex. 2006, 66:21–67:23. Finally, although Dr. Fussell asserts that the transition from a multiprocessor architecture to a multithreaded architecture was part of a general industry trend, neither Petitioner nor Dr. Fussell provide any citation to support this conclusion, or an explanation as to why this general industry trend would apply specifically to the graphics processing architecture of Amanatides.6 Pet. 25–26; Ex. 1005 ¶ 85. 6 Dr. Fussell does cite to the 1997 disclosure of Song that multithreading was being given “another look.” Ex. 1005 ¶ 85 (citing Ex. 1007, 1). Dr. Fussell does not identify, however, where Song discloses or suggests Based on the foregoing, we are not persuaded that Petitioner has presented sufficient articulated reasoning with rational underpinning to support the proposed combination of Amanatides, Van Hook, and Fiske. See KSR Int’l, Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail on the ground that claims 1–19, 21–23, 25–30, 34–36, and 38–43 of the ’685 patent would have been obvious under 35 U.S.C. § 103(a) over the combination of Amanatides, Van Hook, and Fiske.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention,” it is generally not limiting. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). However, when a preamble phrase provides antecedent basis for a term in the body of a claim, or is clearly relied upon to distinguish the claimed invention from the prior art during prosecution, this reliance on the preamble to define the scope of the invention “transforms the preamble into a claim limitation.” Id. at 808; Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (noting that when the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention”). As noted by Patent Owner, the preamble of claim 1 provides antecedent basis for the terms “at least two sample types” and “threads.” Moreover, during prosecution the patentee amended the preamble of claim 1 to include the term “simultaneous” and argued this newly added limitation distinguished claim 1 from the prior art of record. Ex. 1012, 2, 12 (“Thus, the references do not teach the limitations found in all claims that the threads can process any of the two or more samples (vertex, pixel, primitive) simultaneously, and therefore, the pending claims should be allowed.”). Given this reliance on the preamble of claim 1 to define the invention, we are persuaded that the preamble is properly considered a claim limitation. See Catalina Marketing, 289 F.3d at 808 (“Moreover, clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.”).” slip op. at 6
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,038,685
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.