• Microchip Technology Inc. v. HD Silicon Solutions LLCInstitution denied
  PTAB · Dec 15, 2021 · IPR2021-00872 · APJ Robert L Kinder · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–32 would be unpatentable over Lempel and Itou, with or without Haswell.

  RulingsInstitution decision

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

    “In summary, Petitioner does not explain with sufficient specificity how or why a person of ordinary skill in the art would have combined Lempel with Itou. Because each ground upon which the Petition relies is based on the combination of Lempel and Itou, including each independent claim challenged, Petitioner has not proven by a reasonable likelihood that it would prevail in showing that any claim of the ’619 patent is unpatentable. VII. CONCLUSION For the foregoing reasons, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that any of claims 1–32 of the ’619 patent is unpatentable. VIII. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied, and we do not institute inter partes review of any claim of the ’619 patent based on the grounds asserted in this Petition.” slip op. at 19

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “V. DISCRETION UNDER 35 U.S.C. § 314(A) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. Prelim. Resp. 40–46 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Because we determine that Petitioner fails to demonstrate that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition, we need not address Patent Owner’s contentions concerning discretionary denial.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’619 patent would have had the following education and experience: at least (1) a master’s degree in electrical engineering, computer science, or a related degree, and at least 3-5 years of experience in computer architecture and cache memory design; or (2) a bachelor’s degree in electrical engineering, computer science, or a related degree, and at least 5-6 years of experience in computer architecture and cache memory design. Pet. 5. Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal, which is supported by Dr. Sechen’s testimony. See Ex. 1002 ¶¶ 26–28.” slip op. at 7

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

    “For instance, Petitioner does not identify persuasively the differences between either Lempel or Itou and the limitations they supposedly teach in combination, nor does Petitioner provide persuasive explanation as to how either reference would be modified to accommodate the distinct architecture of the other reference (Lempel’s parity checking and Itou’s ECC circuitry) in a combination. Petitioner does not explain adequately how this proposed combination would operate. Because the teachings of Lempel and Itou are somewhat contradictory, Petitioner should have provided at least some explanation as to how the resulting system operates and why a person of ordinary skill in the art would have combined the references to operate in that manner. See Prelim. Resp. 24. Petitioner next argues that a POSITA could use the error detection and recovery method of Itou (e.g., an ECC (Error Check Code)-based method) when a correctable error is detected, and the error detection and recovery method of Lempel (e.g., targeted invalidation of the data errors in the cache and selectively replacing the invalidated data with error-free data from the main memory) when a non-correctable error is detected to reduce the latency associated with accessing the content of the main memory. Pet. 67. This rationale, however, fails to address Lempel’s consistent disparagement of ECC approaches, as adopted in Itou. Based on Lempel’s teachings, adding ECC functionality to an integrated circuit already configured with parity checking functionality would increase “space on the silicon” as well as increase cost. See Ex. 1006, 1:31–44, 1:58–61. Yet, Petitioner does not acknowledge these drawbacks of ECC circuitry, much less explain why they would have been acceptable to a POSITA. Thus, we are not persuaded a POSITA would have been willing to combine the two references as proposed by Petitioner.” slip op. at 17

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,302,619
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2020-01054 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103, principally based on grounds involving Goldberg; the Board did not reach the alternative Money-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems.” Pet. 16 (citing Ex. 1003 ¶¶ 27–32). Patent Owner does not dispute Petitioner’s contention on the final record, or propose its own assessment of the level of ordinary skill in the art. See PO Resp. 15. Based on the current record and for the purposes of this Decision, we adopt Petitioner’s proposed description of the person of ordinary skill in the art. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

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

    “Because, as discussed below, we determine that Kiani in combination with Goldberg teaches the claimed sensor ports under any reasonable definition, including those offered by Patent Owner, we need not further elaborate on the scope of a “sensor port” or “sensor ports.” See, e.g., Tr. 34:23–35:23, 36:14–24, 40:20–41:16, 53:18–19. That is to say that even if agree with Patent Owner that the term “sensor port” involves a removable connection and does not include hardwired connections (PO Resp. 19), such a determination is not dispositive because Kiani clearly teaches a removable connection that is a sensor port as further explained below.17 Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy (e.g., whether the claim reads on a prior art reference). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to expressly construe any additional claim term.” slip op. at 14

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

    “proposed combination, Petitioner has shown persuasively that the downsides are not outweighed by the distinct advantages of having a port, which enables removal of a faulty sensor without replacing the entire unit. As explained by Dr. Bergeron, “[s]ensors can fail. Ease of replacing a failed port is the primary advantage of using a removable port over a hardwired, nonremovable connection.” Ex. 1040 ¶ 78; see also Ex. 1003 ¶ 63 (“ports generally provide removable wired connections, so a medical worker would replace a sensor with a different sensor if a new physiological parameter is to be measured”). The proposed combination would also achieve the significant advantages of interchangeability and adaptability. See Ex. 1003 ¶ 77 (“including a port on Goldberg’s housing . . . would predictably enable wired communication with the pulse oximeter sensor 104a while allowing easy removal and replacement of the sensor 104a and providing a secure, wired connection between the pulse oximetry sensor 104a and the housing 112.”). We further agree with Dr. Bergeron that “[p]orts had clear advantages over hardwired connections, such as the ability to replace a faulty sensor without replacement of the entire system,” and “ports would allow for connections to ‘one, all or any combination of’ any known physiological sensor.” Ex. 1040 ¶ 70 (quoting Ex. 1005, 4:50–56, 5:3–8). We find that Petitioner has provided persuasive rationales that a skilled artisan would have appreciated that Goldberg’s explicit teachings of the advantages of using all, or any combination, of the disclosed sensor types would have been combined with Kiani’s teaching of the benefits of having removable ported connections. See, e.g., Pet. 28–29; see also Ex. 1003 ¶ 77 (“modifying Goldberg with Kiani would have been a combination of known concepts (wired electrical communication and wired electrical communication using ports) to yield predictable results (transmission of signals through wires and ports to the controller 102) (citing Ex. 1005, 4:19–29; Ex. 1006, 3:21–27, 8:31–92); Ex. 1040 ¶ 72 (“[a] POSITA having knowledge of Kiani would know how to create a ported connection for each respective wired connection to a sensor that was taught by Goldberg” (citing Ex.1005, 4:50–56; Ex 1006, 3:21–22)). We have considered Patent Owner’s arguments, and Mr. Oslan’s testimony, related to potential disadvantages associated with sensor ports as a part of the proposed combination but determine that, in the aggregate, Petitioner presents stronger evidence as to advantages of such ports that a person of ordinary skill in the art would have considered in 2002. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). In light of the final record before us, and for the reasons discussed” slip op. at 35

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

    “d) Conclusion—Goldberg and Kiani We have considered the respective positions of the parties, including all of the arguments that have been advanced by Patent Owner in connection with the ground based on Goldberg and Kiani. See, e.g., PO Resp. 23–44; PO Sur-reply 6–14. Based on the final record before us, we conclude that Petitioner has shown persuasively that all the features of claims 1, 2, 4, 5, 12, and 14–17 are accounted for by the combined teachings of Goldberg and Kiani. See Pet. 18–41. Petitioner also articulated several reasoned rationales for combining the teachings of the references, with a reasonable expectation of success in making the combination. See id.; Ex. 1003 ¶¶ 57–146. Accordingly, for the reasons discussed above, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 2, 4, 5, 12, and 14–17 of the ’623 patent would have been obvious in view of Goldberg and Kiani. F. Asserted Obviousness in View of (i) Goldberg, Kiani, and Fujisaki; and” slip op. at 42

  Patent outcomesUS 9,872,623 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,872,623
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2020-01015 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Goldberg, Kiani, and Money; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been a person with at least a B.S. degree in electrical or biomedical engineering or a related field with at least two years’ experience designing patient monitoring systems.” Pet. 14–15 (citing Ex. 1003 ¶¶ 27–32). Patent Owner does not dispute Petitioner’s contention on the final record, or propose its own assessment of the level of ordinary skill in the art. See PO Resp. 11. 18 The parties have not directed our attention to any objective evidence of non-obviousness. Based on the record before us, we adopt Petitioner’s proposed description of the person of ordinary skill in the art. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18

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

    “Because we determine that Kiani in combination with Goldberg teaches the claimed sensor ports under any reasonable definition, including those offered by Patent Owner, we need not further elaborate on the scope of a “sensor port” or “sensor ports.” See, e.g., Tr. 34:23–35:23, 36:14–24, 40:20–41:16, 53:18–19. That is to say that even if we agree with Patent Owner that the term “sensor port” involves a removable connection, and does not include hardwired connections (PO Resp. 19), such a determination is not dispositive because Kiani clearly teaches a removable connection that is a sensor port as further explained below.20 Only those terms that are in 20 Indeed, we also note that Patent Owner itself describes Kiani as disclosing a sensor port, albeit in connection with other arguments discounting Kiani as disclosing multiple sensor ports. See PO Resp. 25 (“[B]oth experts now agree that Kiani teaches a single sensor port, not multiple ports.”). Furthermore, at the oral hearing, counsel for Patent Owner acknowledged controversy need be construed, and only to the extent necessary to resolve the controversy (e.g., whether the claim reads on a prior art reference). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to expressly construe any additional claim term.” slip op. at 21

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

    “Examining the potential advantages versus disadvantages of the proposed combination, Petitioner has shown persuasively that the downsides are not outweighed by the distinct advantages of having a port, which enables removal of a faulty sensor without replacing the entire unit. As explained by Dr. Bergeron, “[s]ensors can fail. Ease of replacing a failed port is the primary advantage of using a removable port over a hardwired, nonremovable connection.” Ex. 1040 ¶ 76; see also Ex. 1003 ¶ 63 (“ports generally provide removable wired connections, so a medical worker would replace a sensor with a different sensor if a new physiological parameter is to be measured”). A person of ordinary skill in the art would have perceived that the proposed combination would also achieve the significant advantages of interchangeability and adaptability. Ex. 1003 ¶ 63 (“[I]ncluding a port on Goldberg’s housing . . . would predictably enable wired communication with any sensor (e.g., the pulse oximeter 104a) while allowing easy removal and replacement of the sensor and providing a secure, wired connection between the pulse oximetry sensor 104a and the housing 112.”). We further agree with Dr. Bergeron that “[p]orts had clear advantages over hardwired connections, such as the ability to replace a faulty sensor without replacement of the entire system,” and “ports would allow for connections to ‘one, all or any combination of’ any known physiological sensor.” Ex. 1040 ¶ 69 (quoting Ex. 1005, 4:50–56, 5:3–8). We find that Petitioner has provided persuasive rationales that a skilled artisan would have appreciated that Goldberg’s explicit teachings of the advantages of using all, or any combination, of the disclosed sensor types would combine with Kiani’s teaching of the benefits of having removable ported connections. See Pet. 20–23; see also Ex. 1003 ¶ 63 (“modifying Goldberg with Kiani would have been a combination of known concepts (wired electrical communication and wired electrical communication using ports) to yield predictable results (transmission of signals through wires and ports to the controller 102)” (citing Ex. 1005, 4:19–29; Ex. 1006, 3:21–27, 8:31– 92)); Ex. 1040 ¶ 71 (“[a] POSITA having knowledge of Kiani would know how to create a ported connection for each respective wired connection to a sensor that was taught by Goldberg” (citing Ex.1005, 4:50–56; Ex 1006, 3:21–22)). We have considered Patent Owner’s arguments, and Mr. Oslan’s testimony, related to potential disadvantages associated with the proposed combination but determine that, in the aggregate, Petitioner presents stronger evidence as to advantages that a person of ordinary skill in the art would have considered in 2002. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of” slip op. at 45

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “hardwired sensor of Goldberg cannot be readily replaced with another sensor” (PO Resp. 22; Ex. 2010 ¶¶ 69–70) suggests that a skilled artisan would look beyond hardwired sensors in considering Goldberg’s teachings of implementing multiple sensors as a part of its device. See Ex. 1005, 4:26–29. In view of Goldberg’s disclosure, it simply does not follow that a person of ordinary skill in the art would regard Goldberg as being limited to a single type of sensor connection that is only hardwired. Dr. Yanulis and Dr. Bergeron also explain the desirability of having sensors with port connections as opposed to basic hard wiring. See, e.g., Ex. 1003 ¶¶ 62, 63; Ex. 1040 ¶ 67 (“no POSITA [person of ordinary skill in the art] would ever design Goldberg’s device to be hardwired” and “[a] hardwired system provides no adaptability whatsoever.”). We credit the testimony of Dr. Yanulis and Dr. Bergeron as consistent with the clear disclosure of Goldberg when it comes to sensor connections. Furthermore Goldberg also is explicit that its device “may contain one, all, or any combination” of sensors, which “may be comprised of any type of physiological sensor 104 suitable [f]or use with a portable monitoring device.” Ex. 1005, 5:3–8 (emphasis added). We disagree with Patent Owner that these are mere “aspirational statements” that do not disclose or imply using multiple sensors in the same device. See PO Resp. 32; PO Sur-reply 13. In light of Goldberg’s above-noted disclosures, and the credible testimony of Dr. Yanulis and Dr. Bergeron, we conclude that Goldberg unambiguously contemplates the use of multiple and varied sensors and sensor connections as a part of its medical monitoring device. slip op. at 41

  Patent outcomesUS 9,795,300 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,795,300
• Sotera Wireless, Inc. v. Masimo CorporationAll claims unpatentable
  PTAB · Nov 23, 2021 · IPR2020-00954 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–20 on the reached §103 grounds using Goldberg, Kiani, and Money, with applicable additional references; the Money, Akai, and Kiani grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patient monitoring systems.” Pet. 14 (citing Ex. 1003 ¶¶ 25–32). “Patent Owner does not dispute Petitioner’s characterization of the level of ordinary skill in the art.” PO Resp. 14. Based on the final record, we adopt Petitioner’s proposed description of the person of ordinary skill in the art.” slip op. at 10

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

    “communication port’ is not an issue that the Board must resolve to find the ’735 Patent invalid,” and “Masimo makes no contention that the prior art ports are not ports under its construction.” Pet. Reply 1–2. Petitioner additionally argues that “Masimo’s expert freely admitted that ports were known,” and “[a]s such, construction of this term is not case dispositive.” Id. at 2 (citing Ex. 1042, 23:3–5). See also Tr. 35:16–23 (“[T]hey cite the dictionary definitions technically a port does not have to be removed. I think in the more normal sense of a port it’s removable but . . . the dictionary definitions don’t require removable. It does not matter. We’ve got prior art all over the place.”). We agree with Petitioner that it is not necessary to further define a sensor communication port. Because we determine that Kiani in combination with Goldberg teaches the claimed sensor communication port under any reasonable definition, including those offered by Patent Owner, we need not further elaborate on the scope of a “sensor communication port.” See Tr. 34:23– 35:23, 36:14–24, 40:20–41:16. That is to say that even if agree with Patent Owner that the term “sensor communication port” involves a removable connection, and does not include hardwired connections (PO Resp. 19), such a determination is not dispositive because Kiani clearly teaches a removable connection as further explained below.3 Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy (e.g., whether the claim reads on a prior art reference). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to further construe any additional claim term.” slip op. at 12

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

    “dispositive because Kiani explicitly teaches the benefits of using removable sensor ports. Ex. 1006, 3:21–27, 8:31–9:2, 19:24–26, Fig. 5; Ex. 1003 ¶ 65 (“Kiani demonstrates the ubiquity of ports,” and “that sensor input ports . . . were a known vehicle for wired communication,” such that “it would have been obvious to combine Goldberg and Kiani to include a port on the housing as part of the wired connection between the pulse oximetry sensor 104a and the housing 112 of Goldberg”). Petitioner cited Kiani as evidence that ports were a known means for forming wired connections with medical sensors and we agree with this assessment. Pet. 26; Pet. Reply 10; Ex. 1003 ¶¶ 64, 65, 78. In view of Kiani, a POSITA would have been motivated to make each respective wired connection to a sensor ported because Kiani demonstrates ports were a known and improved method for forming wired 7 We determine it unlikely for Goldberg’s device to be hardwired because Goldberg teaches a device that communicates with “one, all, or any combination of” blood pressure, pulse, oxygen-hemoglobin saturation, glucose, body temperature, respiration, and electrolyte sensors. Ex. 1005, 4:13–16, 4:50–56, 5:3–8 (emphasis added). Accordingly, it is most logical for Goldberg’s ports to not be hardwired. Ex. 1040 ¶ 68 (“no POSITA would ever design Goldberg’s device to be hardwired” and “[a] hardwired system provides no adaptability whatsoever”). connections. Ex. 1003 ¶¶ 64, 65, 78. We also find Dr. Bergeron’s testimony persuasive as to these contentions, specifically, “it is plausible and reasonable to assume that Goldberg has ports,” but more importantly, “[a] POSITA having knowledge of Kiani would know how to create a ported connection for each respective wired connection to a sensor that was taught by Goldberg.” Ex. 1040 ¶¶ 62, 72 (citing Ex. 1005, 4:50–56; Ex. 1006, 3:21–22).” slip op. at 36

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

    “Based on the final record, Petitioner has shown persuasively that the combination of Goldberg, Kiani, and Money teaches all the limitations of claim 1 and has articulated several reasoned rationales for combining the teachings of the references, with a reasonable expectation of success in making the combination. Accordingly, for the reasons discussed above, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 1 of the ’735 patent would have been obvious in view of Goldberg, Kiani, and Money. We have reviewed Petitioner’s contentions and supporting evidence regarding claims 2 and 7–19, and determine Petitioner has demonstrated by a preponderance of the evidence how each of these claims would have been obvious over Goldberg, Kiani, and Money. See Pet. 30–35 and contentions above. Patent Owner does not separately address Petitioner’s contentions for these claims.” slip op. at 47

  Patent outcomesUS 9,788,735 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,788,735
• Regeneron Pharmaceuticals, Inc. v. Novartis Pharma AG, Novartis Technology LLC, Novartis Pharmaceuticals CorporationInstituted
  PTAB · Oct 26, 2021 · IPR2021-00816 · APJ Robert L Kinder · IPR · Institution

  The Board instituted IPR on claims 1–26 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “We weigh this factor against exercising our discretion to deny institution. We acknowledge that some of the investment by the parties in the ITC will carry over to the parallel district court litigation. However, there appears to have been very little work already completed in the parallel district court litigation, e.g., no substantive decisions on validity have been made, and claim construction briefing is not scheduled to begin until after the deadline for a decision on institution in this proceeding. Based on the record before us, we determine that the district court is not likely to expend substantial resources in the parallel district court litigation before we issue our final decision. For the reasons set forth above, we determine that this factor weighs against our exercise of discretion to deny institution.” slip op. at 14

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “in IPR’1317 and IPR’1318. See id. at 2 (“Regeneron is asserting the same prior art references from the original IPRs, which were never addressed on the merits.”). Accordingly, many of the General Plastic factors are not directly applicable to the situation before us. Patent Owner argues that the current petition could have been avoided if Petitioner would have brought the ITC dismissal to our attention in Petitioner’s then-pending request for rehearing. Prelim. Resp. 8; Sur- Reply 2. As noted above, however, the plain language of 37 C.F.R. § 42.71(d) states that a request for rehearing should argue issues that were “previously addressed in a motion.” Further, a party may “file a single request for rehearing,” but only within “30 days of the entry of a final decision.” 37 C.F.R. § 42.71(d). Thus, although the Board has allowed additional evidence and briefing during other unrelated rehearing proceedings (see Sur-Reply 2), our rules do not mandate such a course of action. In this instance, Petitioner was still within the one-year statutory deadline for filing another petition for inter partes review. As such, we do not find anything inherently wrong with the course of action taken by Petitioner.” slip op. at 19

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “Accordingly, we determine that Sigg, Lam, and Boulange are materially different and not cumulative under Becton, Dickinson factors (a) and (b). Regarding Becton, Dickinson factor (d), which is “the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art,” we determine the primary arguments before us do not overlap. A main issue before us is whether the distinct disclosures in Sigg and Lam are sufficiently enabling to teach terminally sterilizing a VEGF antagonist-filled syringe. No such issue was before the Examiner. Accordingly, we determine that there is little or no overlap between the manner in which Petitioner relies on the prior art and the positions taken by the Examiner during examination. For the above reasons, we determine that Sigg, Lam, and Boulange are not the same or substantially the same as the prior art previously 26 presented to the Office under Becton, Dickinson factors (a), (b), and (d). In view of the above, we determine that Petitioner’s art and arguments are not the same or substantially the same as the art and arguments previously presented to the Office.” slip op. at 26

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

    “ordinary skill in the art based on the combination of Sigg, Boulange, and USP789. Petitioner persuasively shows how each element of claim 1 is taught by the combination of references and provides sound reasoning for the combination of references. Pet. 31–47. Further, the current objective evidence of nonobviousness related to secondary considerations have not been shown to have a nexus to the claims. The combination of Sigg and Boulange teaches that pre-filled syringes may be made of glass because Boulange discloses a syringe comprising a glass barrel and a piston (i.e., stopper) that would work in Sigg’s device. See Pet. 41–42 (citing Ex. 1008, 9:21–35, 13:11–12; Ex. 1003 ¶ 192). Sigg also teaches a pre-filled terminally sterilized syringe containing a VEGF-antagonist for intravitreal injection with a nominal maximum fill volume of between 0.5 mL and 1 mL. Ex. 1003 ¶ 159. The current record establishes that the claim limitation “2 particles >50 μm” comes from the USP-789 standard, which is an accepted standard for ophthalmic drugs such a VEGFantagonist solution intended for intravitreal use. Ex. 1019; Ex. 1003 ¶¶ 90– 92. We are persuaded by Mr. Koller that, because Sigg discloses a PFS with ranibizumab, a known VEGF-antagonist solution intended for intravitreal use, Petitioner has established a reasonable likelihood that it would have obvious to a POSITA that the VEGF-antagonist solution in Sigg must comply with the USP-789 standard. Ex. 1003 ¶ 92. As for the limitation requiring about 1 μg to 100 ug silicone oil and a specific break loose force (less than about 11 N), Sigg does not disclose any particular break loose force, but Boulange discloses several tests of “friction force B” of various syringes. Ex. 1008, 15:6–8. Further, Table 7 in 60 Boulange discloses the break loose force test results for syringes A and C, which comprised 40 μg of silicone oil on the internal surface and with pistons that were not coated with Parylene C. Id. at 20:15–17, Table 7. We find persuasive on this record and for institution the Table 7 disclosure of the results of syringe B1, which was also siliconized with 40 μg of silicone oil on the internal surface but (unlike A and C) also has a coating of Parylene C on the piston. Id. Notably, in each case, Table 7 shows that the break loose force at time zero was below the claimed 11 N. Id. On this record, we find sufficient for institution Petitioner’s arguments that Boulange discloses multiple stopper configurations that a POSITA would have been motivated to combine with Sigg. See Pet. 37–40. Notably, the claims of the ’631 patent are silent as to any potential stopper coating. On this record, we also find Petitioner’s reasoning and evidentiary” slip op. at 60

  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,220,631
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCNo claims unpatentable
  PTAB · Oct 8, 2021 · PGR2020-00054 · APJ Robert L Kinder · PGR · Final written decision

  The sole claim was not shown unpatentable: it is definite, and neither asserted obviousness combination renders the design unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Designer of Ordinary Skill in the Art (“DOSA”) LKQ contends that: a designer of ordinary skill would be an individual who has at least an undergraduate degree in transportation or automotive design experience in the field of transportation design, or someone who has several years’ work experience in transportation or automotive design. Pet. 51 (citing Ex. 1003 ¶ 42; Ex. 1004 ¶ 41). Based on the final record, which includes testimony by LKQ’s witnesses, we adopt LKQ’s proposed definition of the ordinary designer.” slip op. at 19

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Based on the final record, the purported issues related to a double line on the convex crease and the length of the single line do not create internally inconsistent drawings that would preclude the overall understanding of the drawing as a whole. We have considered the testimony of each witness and we find Mr. Peters’ explanation most convincing that “the claimed design describes the convex band consistently because each of the figures presents at least one of the ways that a convex band can be represented. . . . Figure 1 illustrates the two intersecting lines of the convex band, while Figures 2-4 illustrate the single max height line of the convex band.” Ex. 2004 ¶ 58. Thus, we agree with GM that these figures are not inconsistent, but rather complementary because both connecting lines (as shown in Figure 1) and the max height line (as shown in Figure 2) are accurate depictions of the convex band of the claimed design. Further, GM has presented persuasive evidence that the varied length of the line between figures is also understandable depending on the point of reference of a particular figure. Ex. 2004 ¶¶ 55, 56; Ex. 2006, 143:11–16, 144:4–7.” slip op. at 27

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “7. Overall Indefiniteness Analysis The figures of the ’065 patent are not perfect and the issues discussed above demonstrate that attention to detail matters when conveying the scope of a three-dimensional object in two dimensions. The proper standard for indefiniteness does not, however, require perfection, but instead requires that an invention is shown with “reasonable certainty.” Nautilus, Inc., 572 U.S. at 910. The purpose of the definiteness standard is “to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what design is claimed – and therefore what would be infringed.” Maatita, 900 F.3d at 1376. Based on the totality of the evidence before us, we determine that the claimed design of the ’065 patent is reasonably understandable and gives potential competitors, and the public, notice of the scope of the claim. As analyzed above, LKQ has not shown that most of the alleged inconsistencies are, in fact, inconsistent features within the claim. Further, we determine that the inconsistencies argued by LKQ do not in the aggregate “preclude the overall understanding of the drawing as a whole.” Id. at 1375–76.” slip op. at 45

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “The Petition fails to adequately address the differences between the claimed ornamental fender design and the Fiat Toro in several important areas, including: the distinct upper portions of each design, the claimed design’s inwardly folded (L-shaped) top edge, and the rear lateral edge. Based on the final record, these differences combined with the other differences noted by LKQ (Pet. 81) are substantial and prevent the Fiat Toro from having design characteristics that are basically the same as that claimed in the ’065 patent – as required for a Rosen reference.” slip op. at 67

  Patent outcomesUS D864,065 not shown unpatentable
  § 103 obviousness§ 112 disclosurecites Nautilus
• LKQ Corporation / Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLCInstitution denied
  PTAB · Oct 13, 2020 · IPR2020-00823 · APJ Scott A Daniels · IPR · Institution

  The Board denied institution because LKQ did not show a reasonable likelihood that the sole challenged claim was obvious over the Avenir Article and Lau.

  RulingsInstitution decision

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

    “determine that the circular portion, horizontal extensions and shape of the vertical tines contribute to the overall visual impression of the design claimed in the ’105 patent. In light of that, we determine that LKQ has not made a threshold showing that Avenir Article is a single reference that creates basically the same visual impression as the claimed design. High Point Design, 730 F.3d at 1312. We further determine on this record, that the circular portion and horizontal extensions as well as the shape of the vertical tines all contribute to the overall visual impression of the claimed design. In light of that, we conclude that even if a designer of ordinary skill were to have combined the Avenir Article and Lau, the result would not be prior art that accounts for the overall visual appearance of the ’105 design. See High Point Design, 730 F.3d at 1311. For the foregoing reasons, we determine that LKQ has not met its burden of demonstrating a reasonable likelihood that the challenged claim is unpatentable over the Avenir Article in combination with Lau. III. CONCLUSION LKQ has not demonstrated that that it is more likely than not that the challenged design claim of the ’105 patent is unpatentable based on the challenges presented.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “B. The Designer of Ordinary Skill LKQ contends that: a designer of ordinary skill would be an individual who has at least an undergraduate degree in transportation or automotive design and work experience in the field of transportation or automotive design, or someone who has several years’ work experience in transportation or automotive design. Pet. 33 (citing Ex. 1003 ¶ 45; Ex. 1004 ¶ 44). GM argues, without citation to evidence, that: [a] designer of ordinary skill in the art relevant to the ’105 patent would have at least an undergraduate degree in automotive design, or other related industrial design field, with at least two years of relevant practical experience in designing automotive body parts. An increase in experience could compensate for less education, and an increase in education could likewise compensate for less experience. Prelim. Resp. 9. The parties do not identify, and we do not discern, any material difference between the parties’ proposed definitions. For purposes of this decision and on the record currently before us, which includes testimony by LKQ’s witnesses, we adopt LKQ’s proposed definition of the ordinary designer. Also, we point out that adopting GM’s definition would not alter the outcome of this Decision.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “central circular portion and the horizontal extensions shown in the claimed design, as compared to Avenir Article, would be considered de minimis by a designer of ordinary skill in the art. For instance, Mr. Gandy testifies that “a designer of ordinary skill would have been motivated to increase the dimensions of the circular portion of the vehicle grille in order to accommodate a larger emblem in the grille.” Ex. 1003 ¶ 66. This testimony expresses a reason for enlarging the circular portion. It is not, however, persuasive evidence that the larger circle size does not have a significant impact on the overall visual impression of the claimed design. Indeed, the larger central circle and angled horizontal extensions of the claimed design are not, in our view, insignificant or minor aspects of the claim. When compared to Avenir Article, the claimed central ornamental elements work together in the context of the overall design such that the larger circle and the proximal tapered and angled ends of the horizontal extensions present a proportionally larger and dynamic emblematic element relative to the bezel and vertical tines. Although both designs are for a vehicle front grille and include a similar bezel profile and generally show vertical tines, the smaller circle and linear blade-like horizontal extensions in Avenir Article do not look like the larger and proportionally dominating central circular portion and horizontal extensions with angled and tapering proximal ends adjacent the circular portion of the claimed design. Add to this the claimed design having vertical tines with decreasing depth portions adjacent the bezel, and thus the claimed design presents a more muscular and dynamic impression than the straight blade-like horizontal extensions and smaller circular portion in Avenir Article. In light of these differences we are not persuaded that a designer of ordinary skill would have viewed Avenir Article as providing the same visual impression as the claimed design so as to be an appropriate primary reference.” slip op. at 21

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

    “2. The Asserted Secondary Reference – Lau Even were we to find that Avenir Article was a proper primary reference, which we do not, and that a designer of ordinary skill would have determined that Lau was so related in ornamental appearance to Avenir Article and would suggest the application of those features Avenir Article, the combination still fails to address the conspicuous discrepancies between the designs discussed above. See In re Carter, 673 F.2d 1378, 1380 (CCPA 1982) (“The designs of other references may properly be relied upon for modification of this basic design when the references are ‘“so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.’”).7 LKQ acknowledges that the images in Avenir Article do not reveal the partial tines as shown in the claimed design. Pet. 52. LKQ relies on Lau mostly for its disclosure of a vehicle grille and “partial tines” along the bottom of the grille interposed between the substantially vertical tines. Id. at 52. We reproduce Petitioner’s annotated figures comparing the claimed design, Avenir Article, and Lau, below. 7 Because we determined that Avenir Article was not a sufficient primary reference, we need not make a finding here as to whether a designer of ordinary skill in the art would have combined Avenir Article and Lau. We assume, only for the sake of argument, that the combination is appropriate.” slip op. at 22

  § 103 obviousness
• Intel Corporation v. Hera Wireless S.A.All claims unpatentable
  PTAB · Mar 12, 2020 · IPR2018-01543 · APJ John A Hudalla · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over both instituted grounds; the motion to amend with substitute claims 3 and 4 is denied.

  RulingsFinal written decision

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

    “an inter partes review of claims 1 and 2 of U.S. Patent No. 8,295,400 B2 (Ex. 1001, “the ’400 patent”). Paper 2 (“Pet.”). Patent Owner, Hera Wireless S.A. (“Patent Owner”), filed a Preliminary Response. Papers 6, 7 (“Prelim. Resp.”). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on March 14, 2019, as to all challenged claims and all grounds of unpatentability. Paper 12 (“Dec. on Inst.”).” slip op. at 1

  • Skill levelDecided for petitioner

    “Level of Ordinary Skill in the Art In the Decision on Institution, we determined that a person of ordinary skill in the art would have had a Master’s degree in Electrical Engineering, at least 2–4 years of academic or industry experience designing and implementing digital wireless communication systems, and familiarity with the family of IEEE 802.11 standards. Dec. on Inst. 13–14 (citing Ex. 1002 ¶ 53). Neither party disputes our determination. We discern no reason to change our determination and apply it for purposes of this Decision.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “TGn-Sync.” Id. (citing Ex. 1002 ¶¶ 212–216). Given TGn-Sync’s express reliance on earlier 802.11 standards (see, e.g., Ex. 1003, 3, 16, 17) and Dr. Wicker’s unrebutted testimony about how TGn-Sync is an extension of 802.11a (see Ex. 1002 ¶¶ 212–216), we are persuaded that an ordinarily skilled artisan would have had reasons to combine the references to make the claimed subject matter.” slip op. at 26

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are persuaded that 802.11a qualifies as prior art under § 102(b) based on Mr. Grenier’s unrebutted testimony. 802.11a’s initial publication date of December 30, 1999, is more than one year before the U.S. filing date of the application that led to the ’400 patent, which is September 9, 2005. Ex. 1001, code (22); Ex. 1032 ¶ 11.” slip op. at 15

  Patent outcomesUS 8,295,400 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,295,400
• Comcast Cable Communications, LLC v. Promptu Systems CorporationNo claims unpatentable
  PTAB · Mar 29, 2019 · IPR2018-00340 · APJ Alex S Yap · IPR · Final written decision

  Claims 1–7, 17–24, and 33 were not shown unpatentable under any asserted § 103 ground because the petition failed to establish the claimed command function.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner that the definitions for a person of ordinary skill in the art involving unrelated patents in different proceedings need not be the same in each proceeding. Reply 2–4. Although the patents in each proceeding before us are issued to the same assignee and have some of the same inventors, the specific goal of each patent differ between proceedings. We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent discloses a system that includes voice recognition processing,” it discusses voice recognition technology only as a component part of the system, and expertise in voice recognition technology was not required to understand the ’538 Patent because it does not discuss any particular voice recognition techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr. Wechselberger that a practitioner would have understood how to implement existing voice recognition products in a cable television network without having special knowledge or experience with voice recognition algorithms. Id. ¶¶ 5–7. For the foregoing reasons, we credit the testimony of Mr. Wechselberger regarding the person of ordinary skill in the art and adopt, with modification (e.g., removing the words “at least” from Petitioner’s proposed definition), Petitioner’s definition of a person of ordinary skill in the art: (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and three years of work experience in the field of analog and digital television systems with exposure to interactive networks and associated control technologies; or (ii) a Master’s of Science degree (or equivalent) in electrical engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the same field. We further note that the prior art in the instant proceeding reflects the” slip op. at 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) applies§112(f) does not applyMixed

    “specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). As the Federal Circuit has noted, “‘structure disclosed in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6.’” Saffran v. Johnson & Johnson, 712 F.3d 549, 562 (Fed. Cir. 2013) (quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). We are not persuaded that Petitioner has identified sufficient corresponding structure for this means-plus-function limitation. Here, Petitioner contends that the corresponding structure for performing the recited function is “‘a processor’ and equivalents.” Pet. 11. Petitioner’s expert further opines that “the patent identifies the Motorola DCT-2000 set-top box (’538 Patent[,] 3:51–52), and a person of ordinary skill in the art would have known that the DCT-2000 includes a processor that executes command functions from the cable head-end.” Ex. 1022 ¶ 138. However, for means-plus-function limitations,” slip op. at 18

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Not shown unpatentable

    “[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015) (en banc) (“In cases . . . involving a claim limitation that is subject to § 112, para. 6 that must be implemented in a special purpose computer, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor[; it must] disclose an algorithm for performing the claimed function.”) (citations omitted); Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). We decline to adopt Petitioner’s proposed construction because Petitioner has not explained sufficiently that the recited function for this term (“responsive to receipt of the command functions for executing the command functions”) is a basic computer function that would not require a special purpose computer, nor has Petitioner directed us to any portion of the Specification sufficient to link a structure (i.e., an algorithm)4 to the recited function. The reference to “a processor” without specifying the algorithm is too generic to identify any specific structure. In Aristocrat, the Federal Circuit stated that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Id., emphasis added. As the Federal Circuit explained, “a general purpose computer programmed to carry out a particular algorithm creates a ‘new machine’ because a general purpose computer ‘in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.’” 521 F.3d at 1333 (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also WMS Gaming, Inc. v. Int’l Game Techs., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Consequently, the specification must disclose enough of a specific algorithm to provide the necessary structure under § 112, sixth paragraph. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Allowing a computer programmed to perform a specialized function to be claimed without disclosure of the algorithm used for that programming would exhibit the same type of impermissible overbreadth of purely functional claims. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).” slip op. at 19

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “includes a set-top box compatible command function” because “while the references’ disclosures broadly indicate that their set-top boxes receive some information from a remote network location,” the information does not require a command to be sent for decoding or formatting. Ex. 2033 ¶ 43. Specifically, Mr. Tinsman testifies: Cable digital television content is typically transmitted as compressed data that must be decompressed by the set-top box for display on a television. Such content information is generally comprised of the compressed video data accompanied by metadata describing the content data to the set-top box, including, e.g., details of the data’s format. A POSITA would know that a set-top box does not need to receive specific instructions to perform a function every time it receives content data. Instead, the video decoder in the set top box automatically decodes the incoming data for display on a television without needing specific instructions to do so from the head-end unit. Id. We credit the above-quoted testimony of Mr. Tinsman, and find it to be persuasive. Patent Owner also points out that Mr. Wechselberger admitted that decoding and formatting information does not necessarily require a command to be sent. Resp. 29–30 (citing Ex. 2034, 50:20–24 (“Q Is it your opinion that decoding and formatting information necessarily requires a command to be sent from the head end to the set top box? A No.”)); see also Ex. 2034, 50:25–52:20. In contrast, we do not credit the conclusory testimony of Mr. Wechselberger that “[a] person of ordinary skill in the art would know that remote server 108 would send a ‘set-top-box-compatible command function’ to the communications box 104 (‘set-top box’) as a prerequisite to permit it to decode and format the video signal for display on display device 112.” Ex. 1022 ¶ 178. This conclusory statement is not supported by persuasive evidence, and is inconsistent with Mr. Wechselberger’s admission that decoding and formatting information does not necessarily require a command to be sent. See Ex. 2034, 50:20–24.” slip op. at 29

  Patent outcomesUS 7,260,538 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,260,538
• Comcast Cable Communications, LLC v. Promptu Systems CorporationNo claims unpatentable
  PTAB · Mar 29, 2019 · IPR2018-00341 · APJ Alex S Yap · IPR · Final written decision

  Claims 34, 35, 37, 40, and 41 were not shown unpatentable under any asserted obviousness ground because the prior art did not establish the claimed set-top-box-compatible instructions.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedSkill level board ownDecided for petitioner

    “We agree with Petitioner that the definitions for a person of ordinary skill in the art involving unrelated patents in different proceedings need not be the same in each proceeding. Reply 2–4. Although the patents in each proceeding before us are issued to the same assignee and have some of the same inventors, the specific goal of each patent differ between proceedings. We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent discloses a system that includes voice recognition processing,” it discusses voice recognition technology only as a component part of the system, and expertise in voice recognition technology was not required to understand the ’538 Patent because it does not discuss any particular voice recognition techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr. Wechselberger that a practitioner would have understood how to implement existing voice recognition products in a cable television network without having special knowledge or experience with voice recognition algorithms. Id. ¶¶ 5–7. For the foregoing reasons, we credit the testimony of Mr. Wechselberger regarding the person of ordinary skill in the art and adopt, with modification (e.g., removing the words “at least” from Petitioner’s proposed definition), Petitioner’s definition of a person of ordinary skill in the art: (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and three years of work experience in the field of analog and digital television systems with exposure to interactive networks and associated control technologies; or (ii) a Master’s of Science degree (or equivalent) in electrical engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the same field. We further note that the prior art in the instant proceeding reflects the” slip op. at 14

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “The use of the term “means” triggers a rebuttable presumption that § 112, ¶ 6 applies. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). One way in which this presumption can be overcome is if “the claim recites sufficient structure for performing the described functions in their entirety.” Id. To determine if the claim recites sufficient structure, “it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359–60 (Fed. Cir. 2004). Here, for each limitation, the claim recites sufficient structure for performing the described functions. For example, a television remote control is sufficient structure “for directly and wirelessly controlling television sets and additionally receiving user voice input and wirelessly transmitting first output representative of the voice input to a television settop box means” (Ex. 1022 ¶ 139) and a television set-top box is sufficient structure for “receiving television input signals via cable television link and providing television output signals compatible with television sets, and responsive to receiving the first output from one of the television remote control means to transmit representative second output to a central processing station via the cable television link.” (id. ¶ 143). Therefore, based on our review of the record before us, we are persuaded by Petitioner that these terms do not invoke 35 U.S.C. § 112, ¶ 6.” slip op. at 16

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

    “Petitioner’s conclusory rationale for the combinations, however, is untethered to any claim limitations. See Pet. 35–38, 56–58 (citing to Ex. 1022 ¶¶ 226–229, 232–234; 299–300, 304–306). For example, when discussing the combination of the references for a particular limitation, Petitioner starts with a discussion of either Julia or Murdock, followed by a discussion of Houser, and then provides a conclusory assertion that the combination would disclose the limitation at issue. See, e.g., Pet. 24–25 (“Julia also discloses . . . . In addition, Houser discloses . . . . Thus, Julia alone or combined with Houser discloses . . .”), 26–27 (“As explained above, Julia discloses . . . . In addition, Houser also discloses . . . . Thus, Julia alone or combined with Houser discloses . . .”). These discussions do not articulate, with respect to any specific limitation, or for any claim as a whole, why or how Julia or Murdock can and should be combined with Houser. A determination of obviousness cannot be reached where the record lacks “explanation as to how or why the references would be combined to produce the claimed invention.” TriVascular, 812 F.3d at 1066. The Petitioner also states that “a skilled artisan would have been capable of combining the teaching[s] of [the prior art references because such] combination[s] would have been no more than combining prior art elements according to known methods to yield predictable results.” However, this discussion is similarly untethered to any claim element, or to the claim as a whole. Pet. 37–38, 58 (citing to Ex. 1022 ¶¶ 233, 306–307.) And, again, we are not informed what teaching of one reference is proposed to be combined with what teaching of the other reference, or why and how the combination would have been made. To the extent Petitioner’s position is that once it establishes that two prior art references are within the same field and are directed to solving the same problem, then all features within one reference can be used within the other, and vice versa, without need for further explanation, it cites no authority to support that broad position and we are aware of none. Therefore, we determine that Petitioner has not established, by a preponderance of the evidence, that claims 34, 35, 37, 40, and 41 would have been obvious over Julia in view of Houser or Murdock in view of Houser. 3.” slip op. at 20

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Id. We credit the above-quoted testimony of Mr. Tinsman, and find it to be persuasive. Patent Owner also points out that Mr. Wechselberger admitted that decoding and formatting information does not necessarily require an instruction to be sent.4 Resp. 31 (citing Ex. 2034, 50:20–24 (“Q Is it your opinion that decoding and formatting information necessarily requires a command to be sent from the head end to the set top box? A No.”)); see also Ex. 2034, 50:25–52:20. In contrast, we do not credit the conclusory testimony of Mr. Wechselberger that “[a] person of ordinary skill in the art would know that remote server 108 would send a ‘set-top-box-compatible instruction’ to the communications box 104 (‘set-top box’) as a prerequisite to permit it to decode and format the video signal for display on display device 112.” Ex. 1022 ¶ 176. This conclusory statement is not supported by persuasive evidence, and is inconsistent with Mr. Wechselberger’s admission that an instruction be sent. See Ex. 2034, 50:20–24.” slip op. at 23

  Patent outcomesUS 7,260,538 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,260,538

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.