- ROKU, Inc. v. Universal Electronics Inc.Adverse judgmentPTAB · Dec 28, 2023 · IPR2021-00263 · APJ Russell E Cass · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–11 because Patent Owner cancelled all challenged claims in a co-pending reexamination.
RulingsAdverse judgment- RehearingRehearing, grantedGranted
“After our Denial Decision, the Director issued an Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Interim Fintiv Guidance”)1, directing that “[t]he PTAB will not discretionarily deny petitions based on applying Fintiv to a 1 The Interim Fintiv Guidance is available at https://www.uspto.gov/ sites/default/files/documents/interim_proc_discretionary_denials_ aia_parallel_district_court_litigation_memo_20220621_.pdf. parallel ITC proceeding.” Interim Fintiv Guidance, 7. Following the Federal Circuit’s decision, we conducted a conference call with counsel for the parties and allowed the parties to submit additional briefing to address the status of the case, the status of any related proceedings, the Interim Fintiv Guidance, and any actions that should be taken by the panel at this point concerning this proceeding. Papers 16–18. After considering the parties’ arguments, we granted Petitioner’s Request for Rehearing on February 8, 2023, concluding that, in light of the Interim Fintiv Guidance, exercising discretion to deny institution under 35 U.S.C. § 314(a) was not warranted in this case. Paper 19, 5–12. We also determined that Petitioner had demonstrated a reasonable likelihood of success in proving that the challenged claims were unpatentable, and instituted an inter partes review of claims 1–11 of the ’317 patent with respect to all grounds set forth in the Petition. Id. at 12–37.” slip op. at 2
- Adverse judgmentAdverse judgmentGranted
“(b) Request for adverse judgment. A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include: . . . (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. 37 C.F.R. § 42.73(b). In the ’074 Reexam, Patent Owner cancelled all of challenged claims 1–11, and the USPTO has issued a Reexamination Certificate indicating that these claims are cancelled. Ex. 2100, 2; Ex. 1046, 1:15. The Board has previously construed a patent owner’s cancellation in a reexamination of all claims challenged in a pending IPR as a request for adverse judgment under § 42.73(b). See Tarsco Bolted Tank Inc. v. Tank Connection, LLC, IPR2016-01634, Paper 16 at 2 (PTAB Aug. 24, 2017) (“Cancellation of claims 1–11” in an ex parte reexamination “is construed as a request for adverse judgment” in the corresponding IPR proceeding.); Mercedes-Benz USA, LLC v. Signal IP, Inc., IPR2015-00941, Paper 21 at 2–3 (PTAB Apr. 14, 2016) (“Pursuant to 37 C.F.R. § 42.73(b), we construe cancellation of all claims involved in this proceeding” in “a concurrent Reexamination of the” patent at issue “as a request for adverse judgment.”). We agree with the prior decisions in Tarsco and Mercedes-Benz that a patent owner’s cancellation of all challenged claims in an IPR in a co-pending ex parte reexamination is properly construed as a request for adverse judgment under 37 C.F.R. § 42.73(b). Consequently, we construe Patent Owner’s cancellation of all of the claims challenged in this IPR in the ’074 Reexam as a request for adverse judgment.” slip op. at 5
NonePatents in suitUS 10,600,317 - PTAB · Dec 21, 2023 · IPR2023-01046 · APJ Jean R Homere · IPR · Institution
The Board instituted IPR on claims 1–14 and 16–19 on all asserted grounds, finding a reasonable likelihood of success on the obviousness grounds based on Chalom and Aslan, with Grau or Pace for certain claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a) (2023). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute inter partes review. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art, but offers a definition of its own. Prelim. Resp. 9. Patent Owner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s or master’s degree in electrical engineering, computer engineering, electrical and computer engineering, computer science, or similar educational background; or equivalent on-the-job training, including approximately two to three years of experience in machine learning and/or pattern recognition.” Id. (citing Ex. 2001 ¶ 21). Patent Owner asserts that the “level of skill is approximate and more experience would compensate for less formal education and vice versa.” Id. (citing Ex. 2001 ¶ 21). We note that the differences between the parties’ descriptions are immaterial and find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’985 patent and prior art of record, and adopt it as our own for purposes of this Decision, albeit without the two instances of “at least,” which introduce ambiguity. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends that it “applied plain and ordinary meanings of all terms and no express constructions are required here.” Pet. 5. Patent Owner “agrees with Petitioner that there are no claim terms that require construction for purposes of the Board’s decision on institution.” Prelim. Resp. 9. At this stage in the proceeding, and without further argument from the parties, we determine that we do not need to expressly construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review). We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial, as permitted by our rules and binding precedent. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“related fields, in that they disclose similar techniques of using machine learning for image processing (e.g., using image data to train MLAs to correct the gaze of a video-conferencing user). Pet. 41–42 (citing Ex. 1005, 3:21–32; Ex. 1007 ¶ 24). Petitioner also contends both “Chalom and Aslan are at least reasonably pertinent to a problem identified in the ’985 Patent of high accuracy MLAs often consuming more computational resources and being slower to run, as compared to efficient MLAs tending to provide less accurate predictions.” Id. at 42 (citing Ex. 1001, 16:24–30; Ex. 1007 ¶ 45). Thus, “Chalom and Aslan are at least reasonably pertinent to this efficiency- 4 It has been held that where the claimed subject matter involves more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement, a holding of obviousness must be based on “an apparent reason to combine the known elements in the fashion claimed.” KSR, 550 U.S. at 417–18. That is, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Such reasoning can be based on interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. Id. at 417–18. versus accuracy problem. Id. (citing Ex. 1005, 1:16–25, 9:48–55, 10:40–60, Fig. 3; Ex. 1007 ¶ 45; Ex. 1001, 16:24–44, 17:14–17; Ex. 1003 ¶ 212). Petitioner shows sufficiently for institution that a POSITA would have been motivated to incorporate Aslan’s teacher-student architecture into Chalom’s image editing and training of its RFC to enhance the overall gains in efficiency and accuracy of the ensuing system. Id. at 42–44 (citing Ex. 1003 ¶¶ 213–222; Ex. 1007 ¶ 44). For purposes of institution, we find that Petitioner’s rationale, which is supported by the testimony of Dr. Karam, is a sufficient demonstration, at this stage, of a motivation to combine the references with a reasonable expectation of success. KSR, 550 U.S. at 417–18. However, we note that Patent Owner’s arguments may have some merit, and encourage the parties to further develop this issue at trial.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,740,985 - Unified Patents, LLC v. VL Collective IP LLCSome claims unpatentablePTAB · Dec 18, 2023 · IPR2022-01086 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable over Sonohara; claims 20 and 21 were not shown unpatentable because Sonohara’s assignment rule is based on timestamps.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s expert, Dr. Goodrich, proposes what Patent Owner characterizes as “a somewhat different level,” namely “an individual with at least a bachelor’s degree in Computer Science or related area and two years of experience developing software tools and/or computer systems for use in the area of audio or video creation, encoding, and/or distribution.” PO Resp. 13; Ex. 2007 ¶ 50. Although we agree that the respective articulations are “somewhat different,” they are generally similar, and our Decision does not depend on nuanced distinctions regarding the level of ordinary skill. Indeed, Dr. Goodrich describes his proposed articulation as “approximate,” such that “more work experience could compensate for less education or more education could compensate for less work experience.” Ex. 2007 ¶ 50. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Freedman’s testimony, we adopt it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We nevertheless note that we would reach the same ultimate conclusion that claims 1, 3, 5, 9, 12, 13, and 15 (but not claims 20 and 21) have been shown to be unpatentable by a preponderance of the evidence were we to adopt Patent Owner’s proposal. See PO Resp. 13 (“this Response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill”).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“We need not resolve this dispute because we reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable, but not that claims 20 and 21 are unpatentable, even if we apply Patent Owner’s proposed construction that the preambles are limiting and the first and second data files must be different. See Reply 15 (Petitioner asserting that “there is no need to construe the preambles as the prior art meets them even if construed”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). For purposes of this Decision, we accordingly treat the preambles of independent claims 1 and 9 as limiting, and with the recited “first data file” and “second data file” as distinct data files.4” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“We agree with Patent Owner’s contention that the emphasized sentence defines the term “content-related.” See PO Resp. 15–16 (Patent Owner arguing that “[t]here are thus three strong indications of lexicography: (1) ‘content-related’ is set off by quotation marks; (2) the patentee used the word ‘is’ to describe the term ‘content-related’; and (3) the patentee states what ‘content-related’ is ‘understood to mean.’” Nor does Petitioner disagree that the sentence is definitional. See Tr. 8:15–16 (referring to the “term content-related as it’s defined in the specification”). Indeed, in the Starz litigation, the district court also treated the sentence as definitional, a fact that we find significant as a matter of comity. See Ex. 1018, 111:24–112:1 (district court judge stating at Markman hearing, “I’m going to adopt . . . the express definition provided in the specification”). But like the district court, we discern insufficient reason to adopt the additional gloss that Patent Owner seeks to apply to the definition of “content-related.” That is, Patent Owner proposes that we additionally construe the phrase “syntactical meaning” within the definitional statement to arrive at Patent Owner’s proposed construction. PO Resp. 16–20. According to Patent Owner, “[t]he specification makes clear, through its use of consistent and repeated examples, that ‘syntactical meaning’ requires a specific relationship between the data segments within a data file: succeeding data segments within a data file must be ordered so as to present the content in its intended sequence when rendered.” Id. at 17 (citing VirnetX Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1317–19 (Fed. Cir. 2014); Alloc, Inc. v. ITC, 342 F.3d 1361, 1368–71 (Fed. Cir. 2003)). Patent Owner adds that the claims, the context provided by the problems solved by the ’794 patent, and the cross-examination testimony of Petitioner’s expert, Dr. Freedman, all support this additional aspect of Patent Owner’s proposed construction. Id. at 18–20. Relying on additional direct testimony by Dr. Freedman, Petitioner counters this position as “improperly import[ing] limitations from the specification that are not required by the claims” and “render[ing] other portions of claim 1 superfluous.” Reply 3 (citing Ex. 1016 ¶ 22); see Tr. 10:18–20 (Petitioner explaining at oral hearing that “the syntax information is simply just identification information which is used to find out what the order of the files is. But the identification information does not by itself indicate the order. It’s just an identifier.”). We agree with Petitioner that it would be imprudent to adopt Patent Owner’s additional gloss because, “[w]hile claims must be construed in light of the specification, . . . limitations from the specification are not to be read into the claims, . . . for ‘[i]t is the claims that measure the invention.’” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir. 2004) (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (other citations omitted). It is apparent that the Applicant for the ’794 patent understood how to define terminology recited in the claims, but chose to limit its definition of “content-related” in terms of the broader phrase “syntactical meaning” rather than through narrower specific reference to presentation order. In addition, claims 1 and 9 already specify “sequentially outputting the first and second data segments according to their chronological sequence,” which supports Petitioner’s observation that requiring an additional sequential order to “content-related . . . data segments” renders other portions of claim 1 superfluous. See Reply 3. We accordingly adopt the definitional construction provided by the” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed Cir. 2003) (citing Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)) (emphasis added). As such, a statement during prosecution qualifies as a disavowal of claim scope only if it is “so clear as to show reasonable clarity and deliberateness” and “so unmistakable as to be unambiguous evidence of disclaimer.” Id. at 1325 (citations omitted). “Consequently, for prosecution disclaimer to attach, [Federal Circuit] precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). And “[s]tatements by the patent owner are not considered in a vacuum; rather, the skilled artisan would look at the record as a whole in assessing claim scope.” Galderma Lab’s v. Amneal Pharma, 806 F. App’x 1007, 1010 (Fed. Cir. 2022) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 867 (Fed. Cir. 1993) (“The prosecution history must be examined as a whole in determining whether estoppel applies.”)). We have reviewed the prosecution history, which we summarize supra § I.A.3., and we have particularly reviewed those portions highlighted by Patent Owner. See PO Resp. 32–40. We reach the same conclusion as the district court in the Starz litigation that the standard for attachment of prosecution disclaimer is not met. See Ex. 1018, 109:15–22 (district court stating at Markman hearing, “I’ve also carefully reviewed the portions of the prosecution history relied on by VideoLabs, including the patentee’s arguments regarding the Shin and Rosenau references, and I’m up [sic: not6] persuaded there was a clear and unmistakable disclaimer of all assignment rules that perform assignments by using exact timing information”). slip op. at 20
Patent outcomesUS 8,605,794 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,605,794 - PTAB · Dec 7, 2023 · IPR2023-00839 · APJ Charles J Boudreau · IPR · Institution
The Board instituted review of claims 1–26 on both asserted obviousness grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“General Plastic, Paper 19 at 16. The General Plastic factors “are not dispositive, but part of a balanced assessment of all relevant circumstances in the case, including the merits.” Consolidated Trial Practice Guide 58 (Nov. 2019) (“Trial Practice Guide”), https://go.usa.gov/xpvPF (citing General Plastic, Paper 19 at 15).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion Regarding Ground 1 Based on the current record, we preliminarily determine that Petitioner has shown a reasonable likelihood that it will prevail in its challenge to claims 1–26 as unpatentable in view of RFC 3209 and Raz.” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address the level of ordinary skill in its Preliminary Response. At this preliminary stage and on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, apart from the phrase “at least” modifying the number of years of professional experience. Inclusion of such qualifiers renders the articulation vague by being open-ended thus encompassing the level of experience of an expert, someone with more than ordinary skill in the art. Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any express claim constructions. Pet. 4; see generally Prelim. Resp. Based on the current record and without any opposition from Patent Owner, we see no need for express construction of any term at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 18
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,118,602 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 6, 2023 · IPR2023-00406 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Grounds 1–3; the Board did not reach Grounds 4–5 and dismissed Petitioner’s motion to exclude as moot.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“e) Conclusion on Motivation to Combine Harris and the FBDIMM Standards On this record, Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have combined Harris and the FBDIMM standards since Harris states that its memory module may include fully buffered DIMMs (FBDs). Ex. 1023 ¶ 9. We agree that one of ordinary skill in the art would have recognized Harris’s mention of FBDIMMs as a standard and looked to the FBDIMM Standards for information concerning the voltage values standardized for use in an FBDIMM. Ex. 1027, 83; Ex. 1028, 9. For these reasons and others set forth above, we determine that one of ordinary skill in the art would have combined Harris and the FBDIMM Standards with a reasonable expectation of success.” slip op. at 41
- ExcludeMotion to exclude, deniedDenied
“H. Motion to Exclude Petitioner seeks to exclude materials referenced in three URLs submitted with Patent Owner’s Sur-Reply on August 4, 2023. Paper 33 (citing Paper 31, 1 n.2, 24, 26). Because we do not rely on any of these URLs in a manner adverse to Petitioner, we dismiss the Motion to Exclude as moot.” slip op. at 89
Patent outcomesUS 11,016,918 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,016,918 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 6, 2023 · IPR2022-00996 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Grounds 1–3; Grounds 4–5 were not reached because those claims were already shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“e) Conclusion on Motivation to Combine Harris and the FBDIMM Standards On this record, Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have combined Harris and the FBDIMM standards since Harris states that its memory module may include fully buffered DIMMs (FBDs). Ex. 1023 ¶ 9. We agree that one of ordinary skill in the art would have recognized Harris’s mention of FBDIMMs as a standard and looked to the FBDIMM Standards for information concerning the voltage values standardized for use in an FBDIMM. Ex. 1027, 83; Ex. 1028, 9. For these reasons and others set forth above, we determine that one of ordinary skill in the art would have combined Harris and the FBDIMM Standards with a reasonable expectation of success.” slip op. at 41
- ExcludeMotion to exclude, deniedDenied
“H. Motion to Exclude Petitioner seeks to exclude materials referenced in three URLs submitted with Patent Owner’s Sur-Reply on August 4, 2023. Paper 33 (citing Paper 31, 1 n.2, 24, 26). Because we do not rely on any of these URLs in a manner adverse to Petitioner, we dismiss the Motion to Exclude as moot.” slip op. at 89
- BurdenFwd all claims unpatentableUnpatentable
“a preponderance of the evidence that claims 1–30 of the ’918 patent are unpatentable. V. ORDER Accordingly, it is: ORDERED that claims 1–30 of the ’918 patent have been shown to be unpatentable;” slip op. at 89
Patent outcomesUS 11,016,918 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,016,918 - Uber Technologies, Inc. v. LBT IP II LLCAll claims unpatentablePTAB · Dec 6, 2023 · IPR2022-00880 · APJ Stephen E Belisle · IPR · Final written decision
Claims 11–16 are unpatentable: claim 11 as obvious over Hashimoto and Hockley; claims 12–14 with Luccketti; and claims 15–16 with Mohi.
RulingsFinal written decision- BurdenDecided for petitioner
“applicable evidentiary standard, Petitioner has the burden to prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2022). “Preponderance of the evidence means the greater weight of evidence, evidence which is more convincing than the evidence which is offered in opposition to it.” United States v. C.H. Robinson Co., 760 F.3d 1376, 1383 (Fed. Cir. 2014) (internal quotations omitted). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be 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) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’855 patent, the background technical field, the prior art, and Petitioner’s generally unopposed proposed definition of the skilled artisan, we apply the level of skill set forth above, which also is consistent with the testimony of Mr. Andrews (Ex. 1002 ¶¶ 27, 32–71). Regardless, neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). “Petitioner does not believe that any term requires explicit construction to resolve the grounds presented.” Pet. 8. “Patent Owner agrees that none of the terms in the patent require an explicit construction to resolve the dispute between the parties,” and submits that “all of the terms should be given their plain and ordinary meaning in light of the surrounding claim language.” PO Resp. 5. Based upon the parties’ positions here and our consideration of the complete record before us, we conclude that it is unnecessary to interpret expressly any limitations for purposes of rendering our final decision in this case. See Nidec, 868 F.3d at 1017. That said, we note that the parties present various patentability arguments in this case that depend at least in part on attributing a particular interpretation to certain claim limitations. We discuss these interpretations in the context of the relevant limitations in our patentability analysis below in Section III.D.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“Neither Petitioner nor Patent Owner takes a position as to whether the preamble is limiting, nor does Patent Owner dispute that Hashimoto discloses such a “method,” generally. See Pet. 18–19; see generally PO Resp.; PO Sur-reply. Because we find that Petitioner’s cited disclosure from Hashimoto discloses a “method of determining location via a tracking device associated with an individual or an object to be located,” we need not determine whether the preamble is limiting. See Nidec, 868 F.3d at 1017.” slip op. at 19
Patent outcomesUS 7,598,855 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,598,855 - Uber Technologies, Inc. v. LBT IP II LLCAll claims unpatentablePTAB · Dec 6, 2023 · IPR2022-00926 · APJ John A Hudalla · IPR · Final written decision
Claims 8–10 and 13–15 are unpatentable as obvious over Robert and Curatolo; the Board did not reach the Robert-alone or Girerd grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related positioning techniques.” Pet. 8 (citing, inter alia, Ex. 1002 ¶¶ 27–28, 33). Patent Owner disputes that “two years of that specific work experience is a necessary requirement” for a person of ordinary skill in the art because “more general work experience is sufficient, and may be substituted with education.” PO Resp. 8. Patent Owner nonetheless states that this “distinction . . . is not meaningful or determinative with respect to the issues raised in the petition.” Id. (citing Ex. 2005 ¶¶ 32–34). Patent Owner does not otherwise dispute Petitioner’s definition of the level of ordinary skill in the art. Given Patent Owner’s concession that its criticisms of Petitioner’s proposed level of ordinary skill are not consequential, and based on the evidence before us, we adopt Petitioner’s definition, albeit without the two instances of “at least,” which introduce ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’289 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“d. Conclusion Regarding “first identification code” For the reasons discussed above, we decline to limit the “first identification code” in the manner suggested by Patent Owner, and we instead apply the plain and ordinary meaning to this term. Accordingly, we consider the ordinal “first” in “first identification code” to be a descriptor meant only to distinguish the “first identification code” from other recited identification codes. We also determine that the “identification code” in “first identification code” need not identify any particular device and encompasses, but is not limited to, a user identification code, a stored identification code, and an ESN.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“For these reasons, we are persuaded that the combination of Robert and Curatolo teaches communicating location coordinates to a monitoring station in a “second reply signal” such that the communicating is performed “in part responsive” to verifying “id codes.” See, e.g., Ex. 1002 ¶ 137; Ex. 1012, 5:67–6:3, 10:34–41, 10:60–65, 18:22–25; Ex. 1013 ¶¶ 81–82. Petitioner’s proposed combination of Curatolo’s monitoring station with Robert’s system is rooted in (1) Robert’s teaching of a receive station “tak[ing] any appropriate action, such as notify[ing] the authorities, proceed[ing] to the target location, log[ging] the position in a journal, etc.” after the location of the target is determined (Ex. 1012, 5:67–6:3); (2) Robert’s claim 36, which teaches communicating a target’s location to a “display device being located at a remote station” (id. at 18:22–25); (3) Robert’s disclosed application of monitoring “the location of a person or vehicle (or persons and fleets of vehicles)” (id. at 1:18–22); and (4) Curatolo’s teaching of a monitoring station requesting and receiving the “not limited to the particular invention it is describing.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). location of signaling units on demand and then communicating or displaying that information to an authorized user at a remote receiver (Ex. 1013 ¶¶ 81–82). Mr. Andrews also has put forth unrebutted testimony that an ordinarily skilled artisan would have expected success in combining the references using “commercially available computers and [a] hand-held PDA,” which is supported by Curatolo’s teachings. See, e.g., Ex. 1002 ¶ 140; Ex. 1013 ¶ 75. As such, we find Petitioner’s proposed combination amounts to “the predictable use of prior art elements according to their established functions” for Petitioner’s proposed fleet-vehicle monitoring application. KSR, 550 U.S. at 417.” slip op. at 43
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have reviewed the comparison provided by Petitioner at Exhibit 1044, and we note that, at the very least, Mr. Andrews provides significant technology background information that is not included in the Petition. See, e.g., Ex. 1002 ¶¶ 33–73. Although Patent Owner criticizes the technology background as “generic points” (PO Sur-reply 1–2), this unrebutted testimony has proven useful for us to understand the parties’ arguments regarding known calculation methods for triangulation, for example. See infra § II.D.4. Thus, we decline to discount Mr. Andrews’s testimony based on certain other similarities with the Petition. Further, we do not read Xerox as requiring us to deny Petitioner’s patentability challenges based simply on the degree of similarity between Petitioner’s papers and Mr. Andrews’s declarations. Rather, in Xerox, the Director affirmed the Board’s decision to give a declarant’s testimony little weight because the testimony merely offered conclusory assertions without underlying factual support and repeated a petitioner’s conclusory assertions. Xerox, Paper 12 at 4–5. In conformity with Xerox, we have accorded appropriate weight to the declarants’ testimony in our analysis based on, inter alia, whether such testimony is supported by underlying evidence.” slip op. at 45
Patent outcomesUS 8,531,289 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,531,289 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 5, 2023 · IPR2023-00405 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Harris, the FBDIMM Standards, and Amidi; the Board did not reach the Spiers grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“the combination of Harris and FBDIMM Standards and relies on the Declaration of Dr. Andrew Wolfe (Ex. 1003) in support. Pet. 14–40. For the reasons that follow, we are persuaded that the evidence, including Dr. Wolfe’s testimony, supports Petitioner’s showing and establishes by a preponderance of the evidence that these claims are unpatentable.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 7–8 (citing Ex. 1003 ¶ 61). Petitioner contends that additional training can substitute for educational or research experience, and vice versa. Id. at 8. Petitioner asserts that such a hypothetical person would have been familiar with the JEDEC industry standards, and knowledgeable about the design and operation of standardized DRAM and SDRAM memory devices and memory modules and how they interacted with a memory controller and other parts of a computer system, including standard communication busses and protocols, such as PCI and SMBus busses and protocols. Id. Petitioner further contends that such “a hypothetical person would also have been familiar with the structure and operation of circuitry used to access and control computer memories, including sophisticated circuits such as ASICs, FPGAs, and CPLDs, and more low-level circuits such as tri-state buffers.” Id. Petitioner further asserts that such “a hypothetical person would further have been familiar with voltage supply requirements of such structures (e.g., memory modules, memory devices, memory controller, and associated access and control circuitry), including voltage conversion and voltage regulation circuitry.” Id. Patent Owner indicates “[f]or the purposes of this [Response], Patent Owner is applying the level of ordinary skill in the art proposed by Petitioner.” Resp. 2. The evidence that Petitioner presents mostly applies to the educational level and experience of workers in the field, but also touches upon other factors as well, including problems and solutions in the prior art and complexity of the technology. See Pet. 7–8. We find Petitioner’s proposal is consistent with the level of skill in the art reflected by the ’054 patent and the prior art of record, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art, with the exception of the open-ended language “at least,” which introduces ambiguity and may encompass skill levels beyond ordinary.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The District Court’s Claim Construction Order (Ex. 2032) issued after our Institution Decision (Paper 11). Although Petitioner argued in the District Court litigation that the claim preambles were not limiting, Petitioner does not appear to maintain that argument here following the District Court’s determination that the preambles are limiting. Ex. 2032, 35. Since the term is recited in both the preambles and bodies of these claims, there is evidence that the inventors of the ’054 patent intended the term to limit the claim, as the District Court determined. See Catalina Mktg. Int’l., Inc. v. Coolsavings,com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Bell Commc’ns Rsch., Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”)).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Petitioner’s contention that “memory module” is not limited to “main memory modules . . . designed to connect to the primary memory controller.” See Reply 2. The ’054 patent states In certain embodiments, the device contains a high density Flash memory with a low density DRAM, wherein the DRAM is used as a data buffer for read/write operation. The Flash serves as the main memory. Ex. 1001, 11:3–6 (emphases added). This is the only mention of “main memory” in the ’054 patent. That the Flash memory serves as “main memory” in “certain embodiments” implies that there may be other embodiments in which this is not the case. Accordingly, we agree with Petitioner that the term “memory module” is not limited to “main memory modules . . . designed to connect to the primary memory controller.” We agree with Patent Owner that the “memory module” includes structure to connect with a “host system” including its memory controller. See, e.g., Ex. 1001, code (57), 12:52–59. The claims do not mention a “memory controller,” but they do mention that the “memory module” has an “interface” to connect with a “host system.” Ex. 1001, 38:20–25 (claim 1), 39:63–65 (claim 16), 41:6–8 (claim 24). That the “memory module” has structure for connecting to the host system’s memory controller may thus be implied from the claims. We agree with Petitioner that the District Court’s determination was that the preambles (presumably of claims 1, 4, 6, 11, 16 and 25) are limiting. Ex. 2032, 35. To the extent that the District Court’s determination construed “memory module” to include structure necessary to connect to a memory controller, our construction of “memory module” is consistent.” slip op. at 16
Patent outcomesUS 11,232,054 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,232,054 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 5, 2023 · IPR2022-00999 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Harris, the FBDIMM Standards, and Amidi, with Hajeck also supporting Ground 3; Grounds 4 and 5 were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. The prior art may reflect an appropriate level of skill. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001). Petitioner asserts a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 7–8 (citing Ex. 1003 ¶ 61). Petitioner contends that additional training can substitute for educational or research experience, and vice versa. Id. at 8. Petitioner asserts that such a hypothetical person would have been familiar with the JEDEC industry standards, and knowledgeable about the design and operation of standardized DRAM and SDRAM memory devices and memory modules and how they interacted with a memory controller and other parts of a computer system, including standard communication busses and protocols, such as PCI and SMBus busses and protocols. Id. Petitioner further contends that such “a hypothetical person would also have been familiar with the structure and operation of circuitry used to access and control computer memories, including sophisticated circuits such as ASICs, FPGAs, and CPLDs, and more low-level circuits such as tri-state buffers.” Id. Petitioner further asserts that such “a hypothetical person would further have been familiar with voltage supply requirements of such structures (e.g., memory modules, memory devices, memory controller, and associated access and control circuitry), including voltage conversion and voltage regulation circuitry.” Id. Patent Owner indicates “[f]or the purposes of this [Response], Patent Owner is applying the level of ordinary skill in the art proposed by Petitioner.” Resp. 2. The evidence that Petitioner presents mostly applies to the educational level and experience of workers in the field, but also touches upon other factors as well, including problems and solutions in the prior art and complexity of the technology. See Pet. 7–8. We find Petitioner’s proposal is consistent with the level of skill in the art reflected by the ’054 patent and the prior art of record, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art, with the exception of the open-ended language “at least,” which introduces ambiguity and may encompass skill levels beyond ordinary.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The District Court’s Claim Construction Order (Ex. 2032) issued after our Institution Decision (Paper 11). Although Petitioner argued in the District Court litigation that the claim preambles were not limiting, Petitioner does not appear to maintain that argument here following the District Court’s determination that the preambles are limiting. Ex. 2032, 35. Since the term is recited in both the preambles and bodies of these claims, there is evidence that the inventors of the ’054 patent intended the term to limit the claim, as the District Court determined. See Catalina Mktg. Int’l., Inc. v. Coolsavings,com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Bell Commc’ns Rsch., Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”)).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that the “memory module” includes structure to connect with a “host system” including its memory controller. See, e.g., Ex. 1001, code (57), 12:52–59. The claims do not mention a “memory controller,” but they do mention that the “memory module” has an “interface” to connect with a “host system.” Ex. 1001, 38:20–25 (claim 1), 39:63–65 (claim 16), 41:6–8 (claim 24). That the “memory module” has structure for connecting to the host system’s memory controller may thus be implied from the claims. We agree with Petitioner that the District Court’s determination was that the preambles (presumably of claims 1, 4, 6, 11, 16 and 25) are limiting. Ex. 2032, 35. To the extent that the District Court’s determination construed “memory module” to include structure necessary to connect to a memory controller, our construction of “memory module” is consistent.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“conversion for double-rank DIMMs can be accommodated with a form factor design of approximately about one square inch (both sides of the printed circuit board).” Ex. 1023 ¶ 13. Thus, Harris indicates that the VRM circuitry to generate two regulated voltages can fit within this space. Patent Owner argues that Petitioner’s evidence shows that each ADP1821 converter package would be about 0.193 by 0.236 inches. Sur-Reply 12 (citing Ex. 1078, 20–23). This means three ADP1821 converters would occupy about 40% of the available space. Patent Owner does not demonstrate that the remaining 60% of available space would have been insufficient to accommodate the additional components required for three voltage converters. Id. at 12–13. In any case, we do not view Harris’s disclosure of “approximately about one square inch” to limit the applicability of its teachings to a person of ordinary skill in the art. In the same paragraph, Harris states that the form factor “may be suitably modified.” Ex. 1023 ¶ 13. Patent Owner further argues that “independent voltage sources for different voltages would require specific control circuitry to delay and more precisely control each voltage source’s ramping rate, adding complexity and cost without commensurate benefits.” Sur-Reply 14 (citing Ex. 2061 ¶ 90). However, Dr. Wolfe states that it is simpler to use multiple regulators for multiple voltages since a single regulator that generates multiple voltages is more complicated than multiple regulators. Ex. 2060, 53:16–54:14, 89:1–21, cited in Reply 14. Dr. Wolfe further indicates that buck converters can be in some applications “extremely small.” Ex. 2060, 89:11–15. Dr. Wolfe further testifies that multiple smaller converters may be less costly than a larger single converter because of component costs, separated spaces available for converters on circuit board, and other “ordinary engineering factors.” Id. at 45:21–46:10. Although Patent Owner may be correct that individual control of multiple voltage regulators would have required additional control circuitry, this does not meaningfully undermine the benefits that Petitioner mentions including permitting power sequencing, independent control of voltages, improved efficiency without generating excess heat or requiring cooling devices, and saving power. Pet. 29–30 (citing id. at 14–19; Ex. 1028, 17–20; Ex. 1026, 2–3, 9; Ex. 1028, 30–32; Ex. 1040, 1, 23–24 (Figs. 22–25); Ex. 1041, 1, 13; Ex. 1048, 3; Ex. 1058, 5; Ex. 1059, 5:23–30; Ex. 1062, 11, 13; Ex. 1064 ¶ 101; Ex. 1003 ¶¶ 240, 255). Dr. Wolfe testified that, in at least some circumstances, multiple converters may be less complicated, less costly, and take up less space. Ex. 2060, 45:21–46:10, 89:11–15. Patent Owner’s argument that a single converter generating multiple voltages would be better in some circumstances does not negate that Petitioner’s proposed use of multiple converters for multiple voltages would have been preferred in other circumstances that a person of ordinary skill in the art would have recognized. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“Our caselaw is clear. It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Thus, Patent Owner’s argument does not undermine Petitioner’s showing of a motivation to combine Harris and the FBDIMM Standards.” slip op. at 25
Patent outcomesUS 11,232,054 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,232,054
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.