• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Some claims unpatentable
  PTAB · Apr 29, 2026 · IPR2024-01493 · APJ John D Hamann · IPR · Final written decision

  Claims 1, 3, 5, 7–11, 14, and 15 are unpatentable as obvious; claims 2, 4, 6, 12, and 13 were not shown unpatentable because the references did not establish entirely crystallized CoFeB layers.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted the definition Petitioner proposes for one having ordinary skill in the art at the time of the invention of the ’167 patent. Dec. on Inst. 6. Namely, we found that one of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Id. (citing Pet. 20 (citing Ex. 1024 ¶ 25)). We also found that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Id. Patent Owner does not address Petitioner’s definition, nor provide its own. See generally PO Resp. Because Petitioner’s definition of the level of skill in the art is consistent with the ’167 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7

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

    “Here, neither party sets forth any term for claim construction. Pet. 17; see generally PO Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., 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) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”)).” slip op. at 8

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

    “In addition, we agree with Petitioner and find that one of ordinary skill in the art “would have been motivated to replace either or both of Bowen’s electrodes with CoFeB to increase TMR and lower Hf [(coupling field)] and Hc [(coercivity)].” Pet. 24, 27; Ex. 1055,30 2270 (“[I]t is natural to replace both the free and pinned layers to CoFeB to further increase the TMR value.”); Ex. 105631 ¶¶ 67–68 (“[B]oth the ferromagnetic layers 5, 7 are made of an FeCoB”32 for “improvement of the TMR ratio.”); Ex. 1024 ¶¶ 129, 132. We credit Dr. Bokor’s cited testimony as it is consistent with the cited evidence. Moreover, as Petitioner explains, “[r]esearchers were . . . interested in optimizing MTJs to improve MRAM performance,” and “[h]igher TMRs long promised improved performance for MRAM.” Pet. 6 30 Dexin Wang et al., 70% TMR at room temperature for SDT sandwich junctions with CoFeB as free and reference layers, 40 IEEE Trans. Magn. 2269–71 (July 2004). 31 US 2004/0136232 A1, published July 15, 2004, to Hosomi. 32 We find persuasive Dr. Bokor’s testimony that “a skilled artisan [would have] understood that CoFeB and FeCoB refer to the same alloy.” Ex. 1024 ¶ 121. 36–44) (emphasis omitted). In addition, we agree with Petitioner that one of ordinary skill in the art “would have found it obvious to use Parkin’s CoFeB layer in place of Bowen’s electrodes to increase TMR” in light of Parkin’s explicit teachings. Pet. 27; Ex. 1024 ¶ 133. In particular, Parkin explicitly teaches that “very high TMR values are unexpectedly found for MTJs with highly textured (100) MgO tunnel barriers but with nominally amorphous storage layers.” Ex. 1062, 18:49–51. Notably, Parkin provides that “[t]he TMR of the device of F[igure] 3A is nearly two times higher than the highest TMR ever reported in prior art devices using conventional alumina tunnel barriers.” Id. at 18:63–65; Pet. 27. And as we discuss above, Parkin teaches that Figure 3A’s MTJ may be inverted, such that the storage layer is formed beneath the tunnel barrier. Ex. 1062, 17:7–10. In addition, we agree that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Bowen in the manner Petitioner proposes, as forming electrodes with CoFeB alloys was known. Pet. 28. As Petitioner argues, “forming electrodes with CoFeB alloys in MTJs was known and had been successfully done,” and thus we are persuaded that “one of skill would have found it to be a straightforward, predictable, and desirable improvement to TMR, Hf, and Hc in Bowen’s” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We find unavailing Patent Owner’s arguments that Bowen teaches a “radically different manufacturing process[] from the claimed invention,” and that Bowen “went to heroic lengths to provide a crystalline (001) bottom electrode that provides a template for epitaxially growing a crystalline MgO(001) layer.” PO Resp. 2 (emphasis omitted). Patent Owner describes in detail Bowen’s specific manufacturing process, including the specific structure of the MTJ manufactured, and argues the claimed invention differs. PO Resp. 30–33. These arguments are inapposite. Petitioner cites the specific teachings Petitioner relies on from Bowen, rather than adopting the entirety of Bowen’s process or MTJ. See, e.g., Pet. 21–36 (citing the portions of Bowen—that in combination with Parkin—teach claim 1). Petitioner is not “compelled to adopt every single aspect of [Bowen’s] teaching without the exercise of independent judgment.” Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). We also find unavailing Patent Owner’s argument that Bowen and Parkin each teach away from Petitioner’s combination because Parkin used boron to avoid crystalline electrodes whereas Bowen tried to achieve perfect crystalline electrodes. PO Resp. 4. As we discuss above, one of ordinary skill in the art would have been motivated to replace Bowen’s electrodes with CoFeB to increase TMR. And Patent Owner does not identify in either reference a specific teaching that criticizes, discredits, or otherwise 35 M. Jimbo et al., Thermal stability of spin valves using amorphous CoFeB, 165 J. Magnetism & Magnetic Materials 308–11 (1997) (“Jimbo”). combination. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 23

  Patent outcomesUS 10,680,167 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,680,167
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Some claims unpatentable
  PTAB · Mar 27, 2026 · IPR2024-01447 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–2 are unpatentable as obvious over each Bowen-based combination; claims 3–4 were not shown unpatentable, and the Nagahama-based grounds failed for all claims.

  RulingsFinal written decision

  • 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 5 Nagahama, EP 1391942 A1, published February 25, 2004 (Ex. 1027, “Nagahama”). 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 is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Consistent with the Institution Decision (Dec. 7), we adopt the assessment offered by Petitioner as it is consistent with the ’134 patent and the asserted prior art. Patent Owner does not dispute that Dr. Bokor is qualified as a person of ordinary skill in the art in accordance with the assessment adopted. See Tr. 90:9–15. Patent Owner, however, questions Dr. Bokor’s knowledge on the formation of crystalline materials and seeks to exclude his related testimony. See PO Resp. 1–2, 27; PO Mot. Excl. 12–15. We address this issue infra Section V.” slip op. at 7

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

    “Petitioner “submits the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 24. Patent Owner does not raise any claim construction issues in its Response. See generally PO Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Strike new argumentNew argument consideredDenied

    “A reply may only respond to arguments raised” in the patent owner response. 37 C.F.R § 42.23(b). The Consolidated Trial Practice Guide states that responding “does not mean proceed[ing] in a new direction with a new approach,” and “[w]hile replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered,” that is, “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide § II.I (last updated Dec. 12, 2025) (“CTPG”), available at https://www.uspto.gov/patents/ptab/trial-practice-guide. We are not persuaded by Patent Owner’s assertions that Petitioner’s reply arguments on Parkin should not be considered. As discussed supra Section II.D.3.i above, the Petition includes the assertion that if Parkin’s CoFeB electrodes were used to modify Bowen, the MgO polycrystalline or single-crystal layer would still have the same 001 orientation. Pet. 33–34 (citing Ex. 1024 ¶ 129; Ex. 1062, 9:58–10:2, 18:49–51; Ex. 1005, 4:30–32). Petitioner’s support in the Petition references disclosures relating to Parkin’s Figure 3A (Ex. 1062, 18:49–51), which discloses a MgO(100) tunnel barrier, and the Petition also notes that the structure of Figure 3A may be inverted. Pet. 40 (citing Ex. 1062, 17:7–10). Patent Owner’s arguments, in large part, are related to Petitioner’s arguments in the Reply relating to Parkin’s Figure 11. Parkin’s Figure 11 is an embodiment where the structure of the devices of Figure 3A is inverted. See Ex. 1062, 22:29–33. We do not find that Petitioner’s arguments that are at issue in the Reply represent a new direction in its approach—the Petition is clearly based on the assertion that if Parkin’s CoFeB electrodes are used in Bowen, the device would have a MgO(001) tunnel barrier layer. Further, the Petition refers to Parkin’s disclosure that the device in Figure 3A may be inverted, which would be encompassed by the Figure 11 embodiment. Moreover, in the Institution Decision, we invited additional briefing on whether Parkin’s storage magnetic electrode was an amorphous ferromagnetic electrode, which relates to Parkin’s Figure 11 (Dec. 28–29). We are also not persuaded by Patent Owner’s argument that the Petition’s assertions do not correspond to what Petitioner argues in the Reply because they were referred to in the section pertaining to limitation 1[e]. The Petition includes a cross-reference in the limitation 1[d] discussion on the tunnel barrier layer limitation: “if Sunai’s or Parkin’s CoFeB electrodes are used as described in Claims 1[e] and 2 in this Ground, one of skill would understand that the MgO . . . would still have the same (001) orientation.” Pet. 33. Further, Petitioner’s arguments in its Reply properly respond to arguments made on contested issues. Patent Owner’s contentions on the merits in its Response are largely based upon the assertion that the modified MTJ of Bowen would not have a MgO(001) layer as claimed. See PO Resp. 4–10, 18–48. Petitioner’s reply arguments on Parkin relate to whether there would be a MgO(001) layer in its structure, so we find that Petitioner’s arguments on Parkin in its Reply (Pet. Reply 2–5) and the related evidence are appropriately responsive. slip op. at 17

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

    “We find that there is sufficient evidence in support of Petitioner’s assertion of the rationale to replace Bowen’s electrodes with CoFeB and anneal them. As discussed supra Section II.D.ii.2, Parkin’s Figure 11 depicts and describes a storage electrode that may be composed of amorphous CoFeB, with the formation of a MgO(001) barrier layer atop it. See Ex. 1062, 22:29–66. Patent Owner argues that Parkin’s benefits are because its CoFeB electrode is amorphous (PO Resp. 51–52), but this is not accurate. In Parkin, the CoFeB amorphous electrode crystallized at the interface layer between the barrier and the electrode. Id. at 19:6–19. Parkin discloses that higher TMRs were attributable to the crystallization of CoFeB. Id. at 18:63–19:22. Parkin also discloses that its completed CoFeB- MgOH(001)-CoFeB device was annealed with resulting high TMRs. Id. at 17:60–18:16. These disclosures provide support that one of skill in the art would have been motivated to replace Bowen’s electrodes with CoFeB and anneal to crystallize them because of the known improvements of TMR. Additionally, Parkin’s disclosures support that the results of the combination would have been predictable. That is, Parkin actually discloses an amorphous CoFeB electrode, formation of a MgO(001) tunnel barrier on the amorphous electrode, and annealing the assembly, with a resulting high TMR. Accordingly, Petitioner has provided reasoning with rationale underpinning for the motivation to combine. See KSR, 550 U.S. at 415 (“[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”).” slip op. at 31

  Patent outcomesUS 8,405,134 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,405,134
• Juniper Networks, Inc. v. Portsmouth Network Corp.Some claims unpatentable
  PTAB · Jan 13, 2026 · IPR2024-00913 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 2, 4, 6, 7, 11, 12, 14, 16, and 17 are unpatentable over Blease, Weyman, and Hu, with some claims also over Deng; claims 8–10 and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “disclosure in Weyman (or Blease) for deactivating and activating ports, or performing certain actions in the time between such actions. Again, the only portion of Weyman cited pertains to a request to join the fabric from a processing unit having a “default” configuration, which does not relate to the timing or sequence of events in initialization. See Ex. 1006 ¶¶ 69, 156, 161–162; Ex. 1103 ¶¶ 93–94. Nor does Dr. Lavian point to any other evidence in the record supporting his conclusion that a person of ordinary skill in the art would have “ensure[d] that the processing unit is deactivated prior to being updated for use . . . and then activate[d] the processing unit after updating.” See Ex. 1103 ¶ 94. Accordingly, we give little weight to Dr. Lavian’s conclusory opinion” slip op. at 75

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

    “See Axonics, 73 F.4th at 957; Allied Erecting, 825 F.3d at 1381; Mouttet, 686 F.3d at 1332–33. Petitioner’s position is that, based on the teachings of Weyman, a person of ordinary skill in the art would have modified Blease’s system to distribute the functionality of control unit 44 (including its existing multicast forwarding information 48 used by OIF mapper 50). See Pet. 23–26, 38; Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1222 (Fed. Cir. 2022) (“That the proposed combination of [two references]—rather than one of the individual references—discloses the disputed claim limitations does not defeat the Board’s conclusion of obviousness. In this case, it is sufficient that a person of ordinary skill in the art would have been motivated to combine the prior art in a way such that the combination discloses the claim limitations.”).” slip op. at 55

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

    “10 In the Cisco IPR, we determined that Cisco had proven claims 8 and 18 to be unpatentable based on a different combination of references (identified as Weyman, Jain, and LeMaire), finding that limitation 8[f.ii] was taught by Jain and LeMaire. IPR2024-00506, Paper 38 at 58–77. As explained herein, we are not persuaded by Petitioner’s arguments in this proceeding that limitation 8[f.ii] is taught or suggested by Weyman. Also, in the Decision on Institution in this proceeding, the Board found that there were questions as to Petitioner’s showing for limitation 8[f.ii] and declined to reach a conclusion on whether Petitioner had shown a reasonable likelihood of prevailing on its asserted ground based on Blease and Weyman. Dec. on Inst. 43.” slip op. at 71

  Patent outcomesUS 8,014,394 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,014,394
• Meta Platforms, Inc. v. Eight KHZ, LLCSome claims unpatentable
  PTAB · Jan 7, 2025 · IPR2023-01003 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 3, 6, 15, 16, and 19 are unpatentable; claims 2, 8–10, 12, 14, 17, and 18 were not shown unpatentable.

  RulingsFinal written decision

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

    “1. “Call” Terms (Claims 1, 8, and 15) The parties, and their respective experts, agree that “telephone call” (claim 1), “electronic call” (claim 8), and “electronic phone call” (claim 15) should be interpreted to mean “voice communication over an electronic network between at least two parties,” which was Patent Owner’s proposal in the district court case. See Pet. 16, 19 n.8, 58 (citing Ex. 1027, 9);1 Ex. 1003 ¶ 82; Ex. 2011 ¶¶ 51–53; Ex. 2016, 176:10–177:6 (Dr. Kyriakakis agreeing that “there is live voice exchange during a telephone call” (in addition to “background noise”)), 180:22–181:11 (same). Based on our review of the ’090 patent, we agree as well and adopt that interpretation for purposes of this Decision. See, e.g., Ex. 1001, col. 3, l. 1–col. 5, l. 44 (“Consider an example in which a listener sits at his kitchen table and has an electronic telephone call with his mother.”), Fig. 1. 1 When citing non-patent references, we refer to page numbers added by Petitioner in the bottom-right corner of the exhibit. Listening Person” (Claim 1) and “Sound Localization Point . . . Away From and Proximate to the First Person” (Claim 15) a) Procedural History As explained above, the parties did not propose any express interpretations in their Petition and Response. See Pet. 15; PO Resp. 3. Patent Owner argued, however, that “Petitioner and Dr. Kyriakakis misapprehend the scope and meaning of the [c]hallenged [c]laims.” PO Resp. 35–49. For example, Patent Owner argued that they “mischaracterize [c]laim 1’s scope as exclusively directed at binaural recording (but not binaural synthesis),” claim 8 “inherently us[es] binaural synthesis and HRTF processing,” and “binaural synthesis methods must be employed” for claim 15. Id. at 36, 46, 48–49 (emphasis omitted). In its Reply, Petitioner characterized the dispute between the parties as pertaining to the phrase “away from and proximate to,” where Petitioner proposed an interpretation of “a distance from” and Patent Owner allegedly was proposing “externalization of sound through HRTFs and [6 degree of freedom (6DOF)] tracking of the listener relative to the SLP that represents the talker.” Reply 2–12. Patent Owner responded in its Sur-Reply by stating that Petitioner “mischaracterizes” Patent Owner’s arguments, Petitioner “disputes constructions that [Patent Owner] never proposed,” and Petitioner’s focus on certain claim language for which Patent Owner “never proposed construction” was “misplaced.” Sur-Reply 1–2, 11. Patent Owner agreed, though, that the parties’ disagreement was “whether the claims require HRTF processing and whether [the] prior art teaches such processing.” Id. at 5; see Tr. 49:19–21 (Patent Owner agreeing that the dispute is “whether the claims require . . . processing with HRTFs”). dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 13

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

    “dispute between the parties, as many of the arguments regarding claim interpretation in the parties’ papers were interspersed with discussions of the prior art, the state of the art, and related declarant testimony. Paper 56, 3–4. In particular, we requested that the parties identify “the specific claim language that allegedly does or does not require HRTF processing” and the support in the record for each party’s interpretation. Id. at 4. Patent Owner responded that all of the challenged claims “require HRTF processing” because they recite the phrase “sound localization point . . . away from and proximate to the [listener].”2 PO Supp. Br. 1 (emphasis omitted). Petitioner disagreed. Pet. Supp. Br. 1. Accordingly, we interpret that phrase as it appears in independent claims 1 and 15 and, specifically, address whether the phrase requires HRTF processing.3” slip op. at 15

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

    “Petitioner relies on its earlier arguments regarding claim 17. Pet. 41; see Ex. 1003 ¶ 184 (citing earlier analysis of Bedingfield). Petitioner further contends that a person of ordinary skill in the art “would have been motivated to apply Ballas’s wearable frame with head tracking and HRTF processing to Bedingfield-Andrea’s headphones” to “provide[] a more realistic virtual experience,” but does not make any argument that Ballas teaches changing an ITD. Pet. 39–43; see Ex. 1003 ¶¶ 175–191. For the reasons explained above, we are not persuaded that Bedingfield teaches changing an ITD. See supra Section II.D.6. Accordingly, Petitioner has not proven, by a preponderance of the evidence, that claim 18 would have been obvious based on Bedingfield, Andrea, and Ballas under 35 U.S.C. § 103.” slip op. at 61

  • Strike new argumentNew argument consideredDenied

    “exceptional remedy of striking sentences in the Sur-Reply. Patent Owner filed the deposition transcripts of Dr. Welch and Dr. Roginska “only for the limited purpose of allowing the Board to understand the context of the cross-examination” and “does not rely on the[] [e]xhibits for any substantive argument in [the] Sur-Reply.” Sur-Reply v–vi. Patent Owner does not cite Exhibits 2029 and 2030 themselves in its Sur-Reply; it only cites Dr. Kyriakakis’s deposition transcript in this proceeding. Id. We agree with Patent Owner that its arguments in the Sur-Reply are properly responsive to the Reply because they address Dr. Kyriakakis’s cross-examination testimony where he was questioned about the opinions in his reply declaration (but we do not agree with Patent Owner’s claim interpretation arguments on the merits, for the reasons explained above). See Mot. to Strike Opp. 3; supra Section II.B.2.e. We also agree, under the particular factual circumstances presented, that filing Exhibits 2029 and 2030 was proper so the Board has the full context in which to evaluate Dr. Kyriakakis’s cross-examination testimony. Petitioner’s Motion to Strike is denied.” slip op. at 79

  Patent outcomesUS 9,226,090 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,226,090
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentable
  PTAB · Oct 26, 2022 · PGR2021-00077 · APJ Meredith C Petravick · PGR · Final written decision

  Claim 1 is unpatentable under § 101; claims 2–27 were not shown unpatentable because the other challenges were deficient.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person having ordinary skill in the art would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, or a related/equivalent field and at least four years of work experience in identity, transaction, and telecommunication solutions.” slip op. at 12

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “As can be seen from claim 1 above, all of the claimed method steps occur “at the mobile device” and the final step is to enable completion of a cashless transaction. Claim 1 does not recite completing the purchase. The ’833 patent describes that any commercial transaction is completed at the automatic retail machine, not at the mobile device. Ex. 1001, 11:5–9; see also id. at 21:4–11, 22:18–20, 23:53–61, 30:25–27. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements italicized above recite the concept of obtaining authorization for a purchase and enabling completion of a cashless transaction, prior to user selection of any items or services. See Pet. 22–23 (arguing that the claimed method “is effectively no different than a person entering a store, the store checking the customer’s available credit (or calling a bank to do so) and when the customer decides on the item, completing the purchase”); Pet. Reply 5–6 (arguing that the claim recites “obtaining payment authorization and performing a financial transaction, the same as a person entering a store, the store checking the customer’s available credit (or calling a bank to do so) and, when the customer decides on the item, allowing the purchase”). In particular, claim 1 recites steps for obtaining authorization prior to user selection of any items or services — steps of identifying the automatic retail machine, obtaining a request from the electronic payment device, sending the request to a server, and obtaining from the server an authorization grant. Claim 1 also recites steps for enabling the completion of a purchase (i.e., cashless transaction) — detecting a trigger condition and sending the authorization grant to the electronic payment device. Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 18

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “We are not persuaded. Patent Owner’s arguments rest on the alleged novelty of the abstract idea itself, not the “specific limitation beyond the judicial exception,” i.e., the additional elements. “[A] claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90. “The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89 (emphasis added). Patent Owner and Dr. Shamos do not identify, and we cannot find, anything in the claim suggesting that the mobile device, server, or automated retail device (i.e., the additional elements) are more than generic components. Indeed, the ’833 patent’s specification demonstrates that these elements were well-understood, routine, and conventional to the industry. Ex. 1001, 2:23–29, 37–42, 3:25–38 (explaining that Offer “teaches permitting the cashless utilization of a vending machines via a communications service, such as a cellular telephone;” Khan teaches an application on a user’s “personal trusted device” used to effectuate cashless purchases; and Carlson teaches “a system and a method for using a portable consumer device such as a mobile phone for payments and the like,” the method including prompting a user to select, from his mobile device, a product for purchase at a vending machine, after/if the user is authorized to make the purchase, and sending an authorization response to the vending machine from a “remote payment server”).” slip op. at 26

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

    “At the institution stage, we determined that no claim term required explicit construction. Inst. Dec. 35–37. Petitioner does not challenge our determination or otherwise advance its claim constructions in its Reply. See generally Pet. Reply. Patent Owner does not advance any explicit claim construction. PO Resp. 7–13. Regarding the identifying limitation, Patent Owner indicates that it is “undisputed between the parties that the claims require automatically determining the identity of the specific automatic retail machine based on an electronic transmission received from an electronic payment device of that automatic retail machine.” Id. at 7–8 (emphasis in original, citing Ex. 2018, 3; Ex. 2016 ¶ 68). Patent Owner submits that Petitioner’s constructions for each of the obtaining, authorization, and payment limitations should be rejected “for lacking accordance with the plain meaning of the claim in view of the specification” or “ignor[ing] the plain meaning of the term.” Id. at 9, 12, 13. As to the detecting limitation, Patent Owner argues that certain prior art asserted in the grounds in the Petition fails to teach the term as construed. Id. at 9. We determine that we need not expressly construe these claim terms” slip op. at 33

  Patent outcomesUS 10,719,833 mixed
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,719,833
• Petitioner v. Unification Technologies LLCSome claims unpatentable
  PTAB · Jul 8, 2022 · IPR2021-00344 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–5 and 8–12 are unpatentable as obvious over Suda, and claims 22–26 are not shown unpatentable because their scope cannot be determined with reasonable certainty.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–667 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Construction Order construing various terms of the ’658 patent: Claim Term Construction An identifier that can be associated with a physical address on a storage “logical identifier” device for identifying data stored at the physical address “logical identifier [that/in Indefinite the index] is empty” “data associated with the Not indefinite; plain and ordinary logical identifier [has meaning been/is] erased” Not indefinite; not subject to §112(f); “marking module” plain and ordinary meaning Not indefinite; not subject to §112(f); “storage module” plain and ordinary meaning “instructions configured to . . . recording persistent Not indefinite; not subject to §112(f); data . . . in response the plain and ordinary meaning indication” Ex. 2006, 2–3. We address three claim interpretation issues. First, in the Decision on Institution, based on the record at the time, we agreed with and adopted the district court’s construction of “logical identifier.” Dec. on Inst. 11–12. The parties agree with that construction. See PO Resp. 19; Reply 3. Based on the full trial record, we interpret “logical identifier” in the same manner as the district court.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “No other claim terms require interpretation to decide the issues presented during trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted)).” slip op. at 12

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

    “Third, with respect to the “module” and “instructions” terms listed above, neither party argues that the terms are means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph, and the district court construed them not to be means-plus-function limitations. See PO Resp. 18–19; Reply 3–4; Ex. 2006, 2–3. We presume that the terms are not means-plus-function limitations because they do not use the word “means” and find no basis on the record before us to conclude otherwise. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (“Because invoking § 112 ¶ 6 is typically a choice left to the claim drafter, we presume at the first step of the analysis that a claim limitation is subject to § 112 ¶ 6 when the claim language includes the term ‘means.’ . . . The inverse is also true—we presume that a claim limitation is not drafted in means-plus-function format in the absence of the term ‘means.’ . . . [T]his presumption is rebuttable [and] can be overcome if a challenger demonstrates that the claim term ‘fails to recite sufficiently definite structure.’”) (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015)). No other claim terms require interpretation to decide the issues” slip op. at 12

  Patent outcomesUS 8,762,658 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,762,658
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationSome claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01494 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–8, 10–12, 21–24, and 26 are unpatentable as obvious over Li and Tiedemann, with or without ETSI1997; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In its Response, InterDigital does not contest Dr. Acampora’s articulation of the level of ordinary skill, except that “InterDigital applies Petitioners’ alleged baseline level of ordinary skill without the phrase ‘at least.’” PO Resp. 3. We agree with InterDigital that the term at least arguably “creates unnecessary ambiguity.” Id. (citing Inst. Dec. 9–10). But we find that Petitioner’s articulation, after deleting the phrase at least, is reasonable in light of the subject matter involved in the ’449 patent, and we adopt it for our decision.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To the extent that text was copied and pasted in either direction between the Petition and Dr. Acampora’s declaration, we disagree that this mere fact indicates that we should give Dr. Acampora’s testimony less weight. Patent Owner does not argue that Dr. Acampora was uninvolved with the preparation of his declaration, which he signed, under penalty of perjury, and presented as reflecting his own opinions. That typographical errors may, for example, have been propagated from his declaration to the Petition is by itself of little consequence. The cited Wowza decision does not suggest otherwise. In that case, the Board assigned little weight to the expert declaration, not because of its similarity to the petition, but because the declaration did not disclose the underlying facts or data on which its opinion testimony was based. See IPR2013-00054, Paper 16 at 4–5. As Petitioner correctly argues in its Reply, InterDigital does not “identif[y] where Dr. Acampora fails to provide sufficient facts underlying his opinions.” Pet. Reply 1 n.1.” slip op. at 20

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. “channel quality” InterDigital states that the court in the parallel district court litigation adopted the parties’ agreed construction of “channel quality” as meaning “a value/values quantifying how efficiently downlink resources of a channel can communicate information.” PO Resp. 3–4 (citing Ex. 2008, 1; Ex. 2009, 18). InterDigital contends that the ’449 patent suggests this construction, and that both sides’ experts agree with it. Id. at 4 (citing Ex. 1001, 1:36–61; Ex. 2001 ¶¶ 33–35; Ex. 2002, 21:14–22; Ex. 2007, 26:12–17). Because the meaning of this term is uncontested, and it is consistent with the evidence of record, we adopt the parties’ agreed construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “For the above reasons, we determine that Petitioner has persuasively shown that a channel quality of the plurality of downlink resources and the related term a first channel quality indication for the plurality of downlink resources mean “a channel quality value related to the ‘plurality of downlink resources’ as a whole.” Pet. 11–13. We also determine that Petitioner has persuasively shown that both alternatives 8 and 9 reflect embodiments of this term, which is consistent with the district court’s construction that provides “a mean or reference value related to the plurality” as examples of a channel quality value related to the plurality of downlink resources as a whole, explicitly referencing alternative 9 in its analysis. See Ex. 2009, 12– 13.” slip op. at 18

  Patent outcomesUS 9,456,449 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,456,449
• One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Some claims unpatentable
  PTAB · Apr 24, 2018 · IPR2017-00073 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–3, 10, and 11 are anticipated by Crimmins; claims 4–8, 12, and 13 are obvious over Crimmins and Weik; claim 14 was not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “evidence, and we find that Crimmins discloses every limitation of claim 1. Petitioner has proven, by a preponderance of the evidence, that claim 1 is anticipated by Crimmins under 35 U.S.C. § 102(b).” slip op. at 32

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Dec. on Inst. 10–13, 17–19. We also preliminarily interpreted the following limitations as means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph: Limitation Interpretation “apparatus for communicating Functions: communicating the the identities of faults in the identities of faults in the operation of operation of the barrier” slip op. at 10

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

    “In its Response, Patent Owner states that Petitioner’s proposed interpretations “introduce concepts that have no basis in the claim’s plain language.” PO Resp. 3–4. Patent Owner, however, does not offer any alternative interpretations or take a position as to whether any of the limitations identified above are means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph. Instead, Patent Owner argues that the claims should be interpreted according to their “plain language” and that “no construction is necessary for any claim term.” Id. at 4. Petitioner adopts our preliminary interpretations. Reply 3. Upon review of the full record from trial, we do not perceive any reason or evidence that compels any deviation from our earlier interpretations. See Dec. on Inst. 7–19. We adopt the previous analysis and conclude that no other terms require interpretation.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Neither party explains in detail why the respective proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. The parties’ declarants agree that an ordinarily skilled artisan would have had an undergraduate degree in electrical or computer engineering (or the equivalent) and two years of work experience. The difference between the two is the substance of that work experience. Mr. Lipoff opines that it would be in “the fields of access control or automated door control systems,” whereas Dr. Davis opines that it would be in “embedded computer systems or related technologies involving microcontrollers.” See Ex. 1003 ¶ 29; Ex. 2006 ¶ 18. Mr. Lipoff’s proposed definition is consistent with the technology at issue in this proceeding. The ’611 patent is directed to “barrier movement operators,” such as “[g]ate operators and garage door operators,” and “human interface methods and apparatus for such systems.” Ex. 1001, col. 1, ll. 6–14. The ’611 patent does not mention specifically “embedded” computer systems, but does disclose that barrier movement operators were known to include a “motor” and “controller” that “selectively energiz[es] the motor to move the barrier” and is “responsive to stimulus signals to perform various barrier movements.” Id. at col. 1, ll. 9–19; see also Ex. 1004, col. 1, ll. 9–13 (Crimmins similarly disclosing that it is directed to “a controller for controlling the motor, interface, safety systems and other functions of a commercial door or barrier operator”); Ex. 1007 ¶¶ 2–5 (Weik similarly disclosing that it is directed to “[a]utomated, motor-driven barriers”). Thus, an individual having experience working with barrier movement operators would have been familiar with their constituent parts, including motors and controllers for the devices. Based on the record developed during trial, including our review of the ’611 patent and the types of problems and solutions described in the ’611 patent and cited prior art, we agree with Mr. Lipoff’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 14

  Patent outcomesUS 7,196,611 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,196,611
• Avx Corporation v. Presidio Components, Inc.Some claims unpatentable
  PTAB · Aug 21, 2017 · IPR2016-00636 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 13–16 and 18 are unpatentable under §103; claims 1–12, 17, and 19–21 were not shown unpatentable because the asserted combinations relying on Liebowitz and Devoe lacked sufficient motivation to combine.

  RulingsFinal written decision

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

    “Liebowitz discloses a “high inductance drawback” to buried metallizations and vias, and expressly states that its invention is designed to “avoid[] any of these inductance-increasing methods.” Ex. 1004, 1:40–53; see also Ex. 2009, 113 (prosecution history of the ’639 patent, where the applicants distinguished Devoe by arguing that “the present invention recognizes that buried multi-layered structures can be used to make capacitors using vias and edge connections” and “it is this very construction that the present inventor seeks to avoid” (emphases omitted)). Indeed, Dr. Chung in her declaration filed in support of the Petition expressly recognized the high inductance drawback mentioned in Liebowitz. Ex. 1003 ¶ 49. Yet Petitioner’s proposed combination is based on a POSITA looking to Devoe to incorporate the very feature that Liebowitz states should be avoided. Petitioner and Dr. Chung do not account sufficiently for this express disclosure in Liebowitz. Instead, Dr. Chung testifies that a skilled artisan would have understood that the benefits of increased capacitance “may outweigh any negative impacts of an increase in inductance” because “the inductance concerns raised in Liebowitz are not always applicable.” Ex. 1003 ¶ 49 (emphasis added). Dr. Chung concludes that a skilled artisan would have combined the buried metallizations and vias of Devoe with the capacitor of Liebowitz “when increasing capacitance is of greater concern than lowering inductance.” Id. However, Petitioner does not provide sufficient explanation or credible evidence to explain when or under what circumstances increasing capacitance would have been of greater concern than lowering capacitance, or sufficient evidence to show that a skilled artisan would have understood that the benefits of increased capacitance would have outweighed the negative effects of high inductance. In particular, Dr. Chung’s unsupported and equivocal testimony that increased capacitance “may” outweigh increased inductance is insufficient for Petitioner to meet its burden.11 See id.” slip op. at 24

  • Skill levelSkill level patent owner adoptedPetitioner expert creditedDecided for patent owner

    “We disagree with Patent Owner’s contention that a declarant must actually be a person of ordinary skill in the art in order to present testimony as to what a person of ordinary skill in the art would have understood at the time of the invention. See, e.g., SEB S.A. v. Montgomery Ward & Co. Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010) (stating there is no requirement of a 9 Patent Owner further contends Petitioner admitted that it was “required to present the opinions of a person of ordinary skill in the art . . . at the time of the invention of the ’639 patent.” PO Resp. 20 (citing Ex. 1003 ¶ 15). We have reviewed the cited material and find Petitioner did not make any such admission. perfect match between an expert’s experience and the field of the art in question, provided the expert has “sufficient relevant technical experience” to testify). The Federal Circuit has explained that a person of ordinary skill in the art is a “hypothetical person postulated by § 103” that is “presumed to have . . . knowledge of all material prior art.” Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1452–53 (Fed. Cir. 1984); see also id. at 1454 (“It should be clear that that hypothetical person [of ordinary skill in the art] is not the inventor, but an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability . . . .”). Thus, the proper question to ask is not whether the testifying witness is in fact such a “hypothetical person,” but rather whether the testifying witness possesses sufficient qualifications to be able to testify as to what the hypothetical person of ordinary skill in the art postulated by § 103 would have known and understood at the time of the invention. Although Dr. Chung may not have “industry” experience (Ex. 1016 ¶ 65), we find that Dr. Chung possesses sufficient education, training, and experience to provide testimony as to what a POSITA would have understood at the time of the invention, under either party’s proffered definition. See, e.g., Ex. 1011, 1–34; Ex. 1003 ¶¶ 2–5; Ex. 1016 ¶¶ 63–65 (describing Dr. Chung’s experience). For example, Dr. Chung has both a master’s degree and a doctorate in Materials Science from the Massachusetts Institute of Technology. Ex. 1003 ¶ 3. Dr. Chung has been active in capacitor research for at least 16 years, including experience in the design of single-layer capacitors, as evidenced by numerous publications. Ex. 1011; Ex. 1016 ¶¶ 64, 65. Additionally, Dr. Chung is the Founding Director of the Composite Materials Research Laboratory at the University of Buffalo, is a professor, and has taught classes in Materials Science, including teaching concepts in the design of single layer capacitors to her students. See, e.g., Ex. 1003 ¶¶ 4–5; Ex. 1016 ¶ 64. We further note that Dr. Chung is the author of Yih (Ex. 1012), which is one of the prior art references that is asserted in this proceeding. Certainly, the prior art of record in this proceeding—namely, Liebowitz, Devoe, Veater, SinghDeo, Insetta, and Yih —is indicative of the level of ordinary skill in the art. See Okajima, 261 F.3d at 1355; GPAC Inc., 57 F.3d at 1579. Moreover, to the extent Dr. Chung is less familiar with aspects” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We disagree with Patent Owner’s contention that a declarant must actually be a person of ordinary skill in the art in order to present testimony as to what a person of ordinary skill in the art would have understood at the time of the invention. See, e.g., SEB S.A. v. Montgomery Ward & Co. Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010) (stating there is no requirement of a 9 Patent Owner further contends Petitioner admitted that it was “required to present the opinions of a person of ordinary skill in the art . . . at the time of the invention of the ’639 patent.” PO Resp. 20 (citing Ex. 1003 ¶ 15). We have reviewed the cited material and find Petitioner did not make any such admission. perfect match between an expert’s experience and the field of the art in question, provided the expert has “sufficient relevant technical experience” to testify). The Federal Circuit has explained that a person of ordinary skill in the art is a “hypothetical person postulated by § 103” that is “presumed to have . . . knowledge of all material prior art.” Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1452–53 (Fed. Cir. 1984); see also id. at 1454 (“It should be clear that that hypothetical person [of ordinary skill in the art] is not the inventor, but an imaginary being possessing ‘ordinary skill in the art’ created by Congress to provide a standard of patentability . . . .”). Thus, the proper question to ask is not whether the testifying witness is in fact such a “hypothetical person,” but rather whether the testifying witness possesses sufficient qualifications to be able to testify as to what the hypothetical person of ordinary skill in the art postulated by § 103 would have known and understood at the time of the invention. Although Dr. Chung may not have “industry” experience (Ex. 1016 ¶ 65), we find that Dr. Chung possesses sufficient education, training, and experience to provide testimony as to what a POSITA would have understood at the time of the invention, under either party’s proffered definition. See, e.g., Ex. 1011, 1–34; Ex. 1003 ¶¶ 2–5; Ex. 1016 ¶¶ 63–65 (describing Dr. Chung’s experience). For example, Dr. Chung has both a master’s degree and a doctorate in Materials Science from the Massachusetts Institute of Technology. Ex. 1003 ¶ 3. Dr. Chung has been active in capacitor research for at least 16 years, including experience in the design of single-layer capacitors, as evidenced by numerous publications. Ex. 1011; Ex. 1016 ¶¶ 64, 65. Additionally, Dr. Chung is the Founding Director of the Composite Materials Research Laboratory at the University of Buffalo, is a” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for patent owner

    “In our Decision on Institution, we construed “essentially monolithic structure” in claims 1 and 8 to mean “an essentially solid structure of materials that are sintered together” and that has “internal metallizations that create a partial boundary or seam within the structure, but because the metallizations do not cover the entire area of the dielectric layer, the ceramic materials sinter together around the edges of the metallization.” Dec. on Inst. 8–12. We disagreed with Petitioner’s argument that “essentially monolithic structure” should be interpreted broadly “to incorporate the elimination of any or all ‘boundaries/joints’ within a structure.” Id. (citing Pet. 6). Rather, we determined that the ’639 patent distinguished between a “monolithic structure,” which lacks any boundary or seam, and an “essentially monolithic structure” that possesses a partial boundary or seam. Id. at 10 (citing Ex. 1001, 5:3–19). The parties do not dispute our interpretation in their Patent Owner Response and Reply. Moreover, in consideration of the arguments and evidence developed during trial, we do not perceive any reason or evidence that compels any deviation from this interpretation. Accordingly, we adopt our previous analysis and claim interpretation of “essentially monolithic structure” for purposes of this Decision. Id. at 8–12. We further determine that for the purposes of this Decision, no other claim terms require construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating “only those terms need be construed that in controversy and only to the extent necessary to resolve the controversy”).” slip op. at 15

  Patent outcomesUS 6,661,639 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,661,639
• Telit Wireless Solutions Inc. / Telit Communications PLC et al. v. M2m Solutions LLCSome claims unpatentable
  PTAB · Mar 6, 2017 · IPR2016-00055 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–23 and 29 are unpatentable as obvious; claim 24 was not shown unpatentable because Van Bergen does not disclose the coded number and telephone number in the same transmission.

  RulingsFinal written decision

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

    “authenticates the at least one of the transmissions including the at least one telephone number or IP address and the coded number by determining that the at least one of the transmissions includes the coded number.” Ex. 1101, 12:48–52, 15:2–6, 16:15–19 (emphasis added). Here, the emphasized phrase “the at least one of the transmissions” takes antecedent basis from the first recitation of “at least one of the transmissions,” which is the transmission within which the telephone number (or IP address) is included. Therefore, the processing module performs authentication “by determining that the at least one of the transmissions includes the coded number,” and “the at least one of the transmissions” is defined in the claim as the transmission within which the telephone number (or IP address) is included. As such, the independent claims require processing module authentication of one transmission that includes both the telephone number (or IP address) and the coded number. Certainly, the claim allows for the existence of more than one transmission, but there must be at least one transmission that contains both.” slip op. at 9

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

    “According to the prosecution history, therefore, the applicant added the language “permitted to” because the Examiner did not believe it was “clear” in the claims as written that the language “configured to” meant that the device was also “permitted to” call those numbers. There is no mention of restricting what numbers the device can call. Patent Owner further contends the Specification of the ’717 patent “expressly disclose[s] the concept of restrictive outbound calling lists.” PO Resp. 17 (citing Ex. 1101, 2:20–23, 2:28–32). One of these passages, in the “Background of the Invention” section, states: “Clearly there is a need to provide a means to limit the cost of calling and also to provide a means to prevent the child dialling overseas numbers for extensive periods of time.” Ex. 1101, 2:20–23 (emphasis added). This passage describes a goal of controlling durations of calls to certain numbers, i.e., overseas calls, not completely blocking the sending of outgoing wireless transmissions to such numbers. The other passage cited by Patent Owner similarly states: “An improved child Hotlink communicator, which restricts the usage of the mobile phone and thereby does not generate high charges through uncontrolled calling, is clearly a solution to the family tariffing challenge.” Id. at 2:28–32. This also relates to “control” of calling, not necessarily blocking outgoing transmissions. We do not read these passages as the applicant acting as a lexicographer and defining the “configured to and permitted to” language in the claims.” slip op. at 12

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

    “3. “Processing module for authenticating” Neither Petitioner nor Patent Owner argued that the limitation of independent claims 1, 24, and 29 reciting “a processing module for authenticating one or more wireless transmissions sent from a programming transmitter and received by the programmable communicator device by determining if at least one transmission contains a coded number” should be interpreted as a means-plus-function limitation under 35 U.S.C. § 112, paragraph 6. Based on the full record developed during trial, we determine that this limitation is not governed by 35 U.S.C. § 112, paragraph 6, and does not require further construction. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (“When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” (internal quotations and citation omitted)).” slip op. at 14

  • Skill levelSkill level board ownDecided for petitioner

    “that time, that the skill level of a person of ordinary skill in the art, at the relevant time for the ’717 patent (May 2000), would have been “at least an undergraduate degree in electrical engineering and three years of experience working the development of wireless subscriber terminal systems or components, or an equivalent combination of education and experience in related fields.” Dec. on Inst. 23 n.4 (citing Sierra Wireless Am., Inc. et al. v. M2M Solutions LLC, Case IPR2015-01823, slip op. at 11 n.4 (PTAB Mar. 8, 2016) (Paper 16)). The parties did not propose a different level of ordinary skill in the art during trial. Based on the record developed during trial, we see no reason to deviate from our prior determination of the skill level of a person of ordinary skill in the art. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 15

  Patent outcomesUS 8,648,717 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,648,717

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.