• EMC Corporation v. Actividentity, Inc.All claims unpatentable
  PTAB · Jul 2, 2018 · IPR2017-00338 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1, 3, 5, 7–9, 11, 13, 15, 16, and 19 are unpatentable as anticipated by Wood and obvious over Wood combined with Neuman IETF.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Exclusive Licensee’s Response does not appear to identify or provide any assessment of the level of skill possessed by an ordinary artisan in the field of the claimed invention at the time of filing. Exclusive Licensee’s declarant, Dr. David Goldschlag, however, testifies that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent field with three or four years of academic or industry experience in communications. This assessment would include a person with a master’s degree in the aforementioned fields with coursework in computer network security and one or two years of experience in communications. Ex. 2007 ¶ 20. We find that a person of ordinary skill in the art in the field of the ’685 patent is a person who has a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent field and 3–4 years of professional or academic experience in computer systems, network security, or network communications, or a master’s or doctorate degree and 1–2 years of professional experience in computer systems, network security, or network communications, or equivalent academic experience. C. Prior Art References and Alleged Grounds of Unpatentability” slip op. at 9

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

    “The ’685 patent does not define expressly the term “security policy.” Petitioner’s proffered construction, that a “security policy” is “rules specifying conditions for accessing a secure resource,” is generally consistent with the use of the term in the Specification, including the claims. For example, the Specification explains “[i]n dependence upon the security policy . . . an authorization method . . . is selected.” Ex. 1001, 7:50–54. The Specification also explains, “the authorization method is varied because a security policy . . . is different.” Id. at 6:3–7. The Specification provides some examples of the parameters or conditions that a security policy considers. For instance, a security policy may consider the requested time of access, and may indicate that no access is provided between the hours of midnight and 6:00 a.m. Ex. 1001, 7:55–58. The Specification indicates that a security policy may vary based on the location of the user requesting access. Id. at 9:55–62. The Specification also indicates a security policy may require the use of different user authentication devices. Id. at 8:23–45, 9:8–15, 9:28–37; Ex. 1002 ¶ 42. Therefore, we determine that the broadest reasonable interpretation of the claim term “security policy” consistent with its use in the ’685 patent is “a rule or set of rules specifying conditions for accessing a secure resource.”” slip op. at 7

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

    “Exclusive Licensee’s arguments, however, are unavailing. Wood’s Figure 4 and the accompanying text demonstrate that Wood discloses recording (encoding) the received user identification data. Figure 4 of Wood, shown below, illustrates relations between login credentials, session credentials and a cookie encoding of a session token. Ex. 1011, 4:15–16. Figure 4 of Wood shown above, annotated by Petitioner, shows the encoding of login credentials. As Wood explains, [t]ypically, login credentials encoded in login credentials structure 410 are obtained from a principal via browser client and serve as evidence that the principal (e.g., a human user) is entitled to a particular identity. Accordingly, login credentials structure 410 encodes a userId and a domainId within which the userId should uniquely correspond to a principal. Specific login credentials, e.g., a password, a certificate, results of a biometric process, a response to an Enigma challenge or results of a smart card interrogation, etc. are encoded in login credentials structure 410, as a tagged value. . . . Of note, principal ids, authorizations and other contents encoded in the session credential may be read by components of the security architecture, . . . security architectures employing facilities described herein ensure that information contained in the session credential is provably constant once set by an authentication service. . . . . . . . Referring again to session credentials structure 420, a session id, a principal id, a trust level, group ids, a creation time and an expiration time are encoded in both in encrypted portion 421 and clear text portion 422. The session id is a unique identifier for a persistent session maintained by the security architecture. . . . Principal id encodes an identifier for a principal to which the security architecture has resolved login credentials. For example, a login credential including a username jdoe and a password corresponding to jdoe may be resolved by the security architecture to a unique principal id associated with John. Q. Doe of the shipping and receiving department, having an employee badge number of 12345, etc.” slip op. at 26

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

    “Exclusive Licensee appears to conflate Petitioner’s arguments. Petitioner first argues that it would have required no more than routine skill in the art to combine the teachings of Wood and Neuman IETF, because Neuman IETF’s framework was designed expressly to be adapted for integration with many different types of systems for authorizing users to access resources. Pet. 62. Petitioner then argues that a person of ordinary skill would have had reason to do so because he would have readily recognized that the risk associated with access requests differ with time, location, and/or type of communication link. Id. at 65. Petitioner argues that a person of ordinary skill would have understood that by taking these factors into account, an access control system can achieve more fine-grained access control that can be tailored according to different circumstances. Id. Petitioner points out that Wood describes such a rationale. Id. (citing Ex. 1011, 2:49–55; Ex. 1002 ¶ 154). Petitioner, therefore, provides a rational basis to combine Wood and Neuman IETF along with sufficient reason to do so. Whether Neuman IETF expressly uses the word “risk” is of no moment, as long as a person of ordinary skill in the art would have appreciated the benefits of combining the teachings of Wood and Neuman IETF and would have had reason and the ability to do so. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). d. Conclusion on Claims 1, 9, and 19 We find, on the basis of the evidence and explanation provided by Petitioner, that the combination of Wood and Neuman IETF teaches or suggests the recited limitation “determining a security policy from a plurality of predetermined security policies based on previously stored policy data and the received indication of the type of communication link between the workstation and the security server, the geographic location of the workstation, or the time of access of the workstation” of independent claim 1, and similarly recited limitations of independent claims 9 and 19. For the reasons stated above, we are persuaded that Petitioner has shown by a preponderance of the evidence that the combination of the teachings of Wood and Neuman IETF teaches or suggests all of the limitations recited by independent claims 1, 9, and 19 and that a person of ordinary skill in the art at the time of invention would have had reason to combine the teachings of the references.” slip op. at 43

  Patent outcomesUS 9,098,685 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,098,685
• Apple Inc. / Fitbit, Inc. v. Valencell, Inc.All claims unpatentable
  PTAB · Jun 5, 2018 · IPR2017-00321 · APJ James B Arpin · IPR · Final written decision

  Claims 14–21 are unpatentable as obvious; the Board denied the contingent motion to amend substitute claims 22–29.

  RulingsFinal written decision

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

    “review of claims 14–21 (“the challenged claims”) of U.S. Patent No. 8,923,941 B2 (Ex. 1001, “the ’941 patent”) under 35 U.S.C. §§ 311– 319. Paper 2 (“Pet.”). Valencell, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We instituted the instant inter partes review as to the challenged claims.2 Paper 11 (“Inst. Dec.”). Fitbit, Inc. (also “Petitioner”) filed a corresponding Petition (IPR2017-01556, Paper 2), accompanied by a Motion for Joinder (IPR2017-01556, Paper 3), challenging claims 14–21 of the ’941 patent, and we granted the Motion for Joinder and instituted review of the challenged claims based on the corresponding Petition (IPR2017-01556, Paper 9).” slip op. at 2

  • BurdenFwd all claims unpatentableUnpatentable

    “A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;5 and (4), when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.6 Graham v. 5 Petitioner proposes an assessment of the level of ordinary skill in the art. Pet. 11; see Ex. 1003 ¶ 54. Petitioner’s declarant, Dr. Sarrafzadeh, and Patent Owner’s declarant, Dr. Pollonini, exceeds this assessed level. Ex. 1004; Ex. 2010 ¶¶ 6–11. Patent Owner does not contest Petitioner’s assessment or propose an alternative assessment. See MTA 11. To the extent necessary, we adopt Petitioner’s assessment. 6 In the instituted proceeding, Patent Owner does not raise arguments or present evidence based on the presence of such objective evidence of nonobviousness. See In re Applied Materials, 692 F.3d 1289, 1299 (Fed. Cir. 2012) (“The party seeking the patent bears the burden to overcome the prima facie case of obviousness with evidence of secondary considerations, such as commercial success.”); Medtronic, Inc. v. Nuvasive, Inc., Case IPR2014-00087, 2015 WL 1546574, at *11 (PTAB 2015) (“Although it is Patent Owner's burden to introduce evidence supporting such objective indicia, see In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996), the ultimate burden of persuasion never shifts to Patent Owner, see 35 U.S.C. § 316(e).”), aff’d, In re Nuvasive, Inc., 689 Fed. Appx. 954 (Fed. Cir. 2017); but see Prelim. Resp. 4–6. Therefore, this factor does not play into our analysis of Petitioner’s challenges to any claim on any ground. John Deere Co., 383 U.S. 1, 17–18 (1966). Nevertheless, the Supreme Court cautions us against “the temptation to read into the prior art the teachings of the invention in issue.” Graham, 383 U.S. at 36.” slip op. at 12

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

    “6. “PPG sensor” (claims 14–21) In the Institution Decision, we adopted Patent Owner’s proposed construction of the term “PPG sensor” as the broadest reasonable interpretation of the term. Id. at 10–11. In the Patent Owner Response, Patent Owner proposes a slight modification to this interpretation (PO Resp. 9), to which Petitioner does not object (see Reply 1–4). Patent Owner now contends that the broadest reasonable interpretation of the term “PPG sensor” is “an optical sensor which obtains a plethysmogram that results from blood flow modulations caused by the subject’s heartbeat.” PO Resp. 9 (emphasis added); see Ex. 2005, 1. We agree that the term should include express reference to “an optical sensor,” rather than merely to “an optically obtained plethysmogram.” Inst. Dec. 10; see Ex. 1001, 1:64–2:6. We determine that our previous construction, as modified by Patent Owner, is the broadest reasonable interpretation of this term.” slip op. at 10

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

    “have had reason to combine the teachings of Kosuda and Maekawa in the manner proffered by Petitioner. Initially, we note that although Patent Owner has suggested an alternative solution to the signal-to-noise problem, neither Patent Owner nor its declarant provides support for their contention that the alternative solution is superior to that taught by the combination of the teachings of Kosuda and Maekawa. See PO Resp. 24; Ex. 2010 ¶ 90. But even if it had, as Petitioner notes, “the law does not require that a particular combination be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the claimed invention.” Reply 8; see In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“The question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination, not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” (emphasis added)). Thus, the existence of potentially superior alternatives does not negate the combination of teachings proposed by Petitioner. Accordingly, we are persuaded that Petitioner demonstrates sufficiently that a person of ordinary skill in the art would have had reason for combining the teachings of Kosuda and Maekawa to achieve the device recited in claim 14 of the ’941 patent.” slip op. at 29

  Patent outcomesUS 8,923,941 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,923,941
• Qualcomm Incorporated v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Aug 23, 2017 · IPR2016-00623 · APJ James B Arpin · IPR · Final written decision

  Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyOther

    “of a “clear” channel is “a channel that is not already in use by a non-frequency hopping communications system” and that the broadest reasonable interpretation of an “occupied” channel is “a channel that already is in use by a non-frequency hopping communications system.”” slip op. at 21

  • Skill levelSkill level petitioner adoptedOther

    “would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art. slip op. at 14

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

    “Id. Thus, Petitioner argues that, because multiple tests must be applied to determine the continued presence of interference regardless of the source, limiting “occupied” to NFH communications systems is overly narrow. Nevertheless, the words chosen by the patentee to describe its invention have significance. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not the PTO’s.”). As noted above, “occupied” is only used in the Specification with respect to NFH communications systems, and neither claims 4 and 19 nor their base claims nor the intervening claims specify a single or multiple tests. Therefore, we find Petitioner’s arguments, which attempt to incorporate the teachings of “bad” and “good” channels from elsewhere in the Specification into the interpretation of these claim limitations, unpersuasive. See Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (“[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 17

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

    “4. Other Claim Terms For purposes of this Decision, we discern no other claim terms that require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting to allow us to construe the terms “occupied” and “clear,” we relied less on Dr. Ding’s testimony regarding how a person of ordinary skill in the art would understand these terms. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”). Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see PO Resp. 7.” slip op. at 21

  Patent outcomesUS 8,873,500 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,873,500
• Qualcomm IncorporatedSome claims unpatentable
  PTAB · Aug 23, 2017 · IPR2016-00620 · APJ James B Arpin · IPR · Final written decision

  Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “F. Assessment of Person of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the relevant art “would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art.” slip op. at 14

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

    “1. “hopping sequence” (Claims 1, 14, 16, and 29 and others) In the institution decisions, we determined that, in light of the Specification of the ’500 patent, the broadest reasonable interpretation of the phrase “hopping sequence” is “the order in which the communications network hops among the set of frequencies.” E.g., 620 Dec. on Inst. 10–11 (citing 620 Pet. 11–12). Patent Owner does not contest this construction. PO Resp. 6–7. For the reasons set forth in the Decision on Institution in Case IPR2016-00620, we remain persuaded that Petitioner’s proposed construction is the broadest reasonable interpretation of the phrase “hopping sequence.”” slip op. at 15

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

    “Petitioner also provides a persuasive rationale for combining the teachings of Dabak and Kockmann. Id. at 39–40. Petitioner asserts that they are both references directed to the same problem, namely, “to communication performance improvements through adapted frequency hopping to avoid channels disturbed by interference.” Id. at 40 (citing Dabak, Abstract; Kockmann, 2:49–3:20; 620 Ex. 1002 ¶ 113). In addition, according to Petitioner, a person of ordinary skill in the art would have had reason to modify the teachings of Dabak regarding the MSD technique in view of the teachings of Kockmann “to utilize multiple channels to communicate with the slave device over the subset of communication channels according to an adapted hopping sequence” in order to accomplish the shared goals of these references. Id. at 40 (citing 620 Ex. 1002 ¶ 113); see In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.”). According to Petitioner, the combination of these teachings “is a simple use of known teachings to yield predictable results.” Id. (citing KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)). Based on our review of Petitioner’s arguments and evidence, we find that Petitioner demonstrates that combined teachings of Dabak and Kockmann teach or suggest all of the limitations of independent claims 1 and 16 and find that a person of ordinary skill in the art would have had reason to combine the teachings of Dabak and Kockmann to achieve the methods of claim 1 and the devices of claim 16. See 620 Pet. 17–20, 33–35, 38–40, 48–49. We conclude that Petitioner has shown by a preponderance of the evidence that independent claim 1 would have been obvious over the combined teachings of Dabak and Kockmann. Moreover, because Petitioner’s arguments for the obviousness of independent claim 16 over Dabak and Kockmann rely on the arguments and evidence presented with respect to independent claim 1, we also conclude that Petitioner has shown by a preponderance of the evidence that independent claim 16 would have been obvious over the combined teachings of Dabak and Kockmann, as well as on its related challenges to dependent claims 2, 3, 5, 8, 9, 12, 14, 15, 17, 18, 20, 23, 24, 27, and 29–31. See 620 Pet. 25–26, 40 (claim 2; citing Dabak, 7:57–60, 8:1–2, Fig. 1; 620 Ex. 1002 ¶ 51, 52), 26–27, 40 (claim 3; citing Dabak, 2:39–40, 3:1–5, 3:50–54, 3:60–62; 620 Ex. 1002 ¶¶ 54, 55), 27–28, 42 (claim 5; citing Dabak, 7:57–67; 620 Ex. 1002 ¶ 57), 28, 44 (claim 8; citing Dabak, 2:58–59; 620 Ex. 1002 ¶ 59), 44–47 (claim 9; citing Kockmann, 7:44–47, 8:39–48; 620 Ex. 1002 ¶¶ 136, 137), 31, 47 (claim 12; citing Dabak, Fig. 3B; 620 Ex. 1002 ¶ 65), 31–32, 47 (claim 14; citing 620 Ex. 1002 ¶¶ 69–75, 152), 32–33, 48 (claim 15; citing Dabak, 3:1–5, 7:57–” slip op. at 31

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

    “Patent Owner contends, however, that the combined teachings of Dabak and Kockmann fail to teach or suggest all of the limitations of claim 4. In particular, Patent Owner contends that, “[a]s described in Kockmann, ‘disturbed’ does not in fact mean ‘occupied,’ but rather it only means that ‘[a] disturbed carrier frequency is thus a carrier frequency onto which a signal is modulated that exceeds a specific threshold.’” PO Resp. 14 (citing Kockmann, 6:43–49). Patent Owner contends that determining whether a channel is “occupied” “requires analysis beyond the measurements called for by Kockmann (i.e.[,] determining more than just the mere presence of a modulated signal ‘that exceeds a specific threshold,’ but rather whether its source was FH or NFH).” Id. at 15; see 620 Ex. 2001 ¶¶ 33–37. Initially, Petitioner again states that Kockmann discloses that “[d]isturbance thereby means that either a disturbance in the actual sense or an occupancy by some other transmitter is present.” Kockmann, 6:41–43 (emphasis added). Patent Owner contends, however, “that a channel ‘occupied’ by an NFH system and a channel ‘disturbed’ by another transmitter are somehow different because an occupancy determination requires additional ‘analysis.’” Reply 10. Nevertheless, we agree with Petitioner that Patent Owner does not show where the claims recite one type of analysis or prohibit another. Id. Thus, we find that the combined teachings of Dabak and Kockmann teach or suggest all of the limitations of claim 4. Petitioner’s arguments with respect to claim 4 apply equally to claim 19. Based on our review of the arguments and evidence, we conclude that Petitioner has established by a preponderance of the evidence that claims 4 and 19 would have been obvious over the combined teachings of Dabak and Kockmann.” slip op. at 34

  Patent outcomesUS 8,873,500 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,873,500
• Apple Inc. / HTC Corp. et al. v. Parthenon Unified Memory Architecture LLCAll claims unpatentable
  PTAB · Aug 4, 2017 · IPR2016-00923 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1, 3, 5, 11, and 13 are unpatentable as anticipated by Lambrecht; claims 4 and 6 are unpatentable as obvious over Lambrecht with Artieri and Moore, respectively.

  RulingsFinal written decision

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

    “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). The words of a claim generally are given their ordinary and customary meaning, and that is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent, including the specification. See Phillips, 415 F.3d at 1312–13. Claims are not interpreted in a vacuum, but are a part of, and are read in light of, the specification. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). Although it is improper to read a limitation from the specification into the claims, the claims still must be read in view of the specification of which they are a part. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2004). slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the knowledge level of a person of ordinary skill in the art. Relying on the testimony of its declarant, Dr. Stone, Petitioners assert that a person of ordinary skill in the art at the time of the invention of the ’789 patent would be an individual who possesses (1) an accredited Bachelor’s degree in electrical engineering, computer science, or computer engineering; and (2) at least three years of experience in the fields of data compression and overall computer system architecture. Pet. 10 (citing Ex. 1030 ¶¶ 74–77). Patent Owner’s declarant, Dr. Thornton, testifies that a person of ordinary skill in the art at the time of the invention of the ’789 patent would be an individual who possesses (1) an accredited Bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree; and (2) at least two to three years of experience in signal/image processing and computer architecture at both the systems and micro-architecture levels. Ex. 2003 ¶ 27. In lieu of the two to three years of experience, Dr. Thornton testifies that a person of ordinary skill in the art at the time of the invention of the ’789 patent may hold a Master’s or other graduate degree in electrical or computer engineering with a focus in computer architecture and signal/image processing, along with one year of relevant experience. Id. Putting aside the subtle distinctions in the assessments of the level of skill in the art put forth by both declarants, Dr. Thornton testifies that, if he were to apply Dr. Stone’s assessment of the level of skill in the art, his “analysis and conclusions would remain unchanged.” Ex. 2003 ¶ 28. Because Dr. Stone’s assessment of the level of skill in the art is consistent with the ’789 patent and the asserted prior art, we adopt it and apply it to our evaluation below, but note that our conclusions would remain the same under Dr. Thornton’s assessment.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Lambrecht together with the knowledge of one of ordinary skill in the art, we agree with Petitioners that, when Lambrecht’s PCI bus 120 is placed in multimedia mode, it allows real time, multimedia data transfers between multimedia device 144D (which Petitioners identify as the decoder (Pet. 15)) and main memory 110. See Pet. 13–14, 17–19; Pet. Reply 3–7. Lambrecht discloses that “multimedia devices 142D–146D communicate with each other and with CPU 102 and main memory 110 via the PCI bus 120, as is well known in the art.” Ex. 1032, 27:57–59. Lambrecht further discloses that “multimedia devices 142D–146D also communicate data between using the PCI bus signal lines 120 when the PCI bus 120 is in the multimedia mode.” Id. at 27:59–62; see also id. at Fig. 21 (illustrating how PCI bus 120 is coupled to multimedia devices 142D–146D and PCI bridge chipset 106, which, in turn, interfaces with main memory 110). Based on these disclosures, one of ordinary skill in the art would have understood that, in Figure 21 of Lambrecht, multimedia devices 142D–146D have access to main memory 110 in multimedia mode because Lambrecht discloses that multimedia devices 142D–146D communicate both with each other and main memory 110 via PCI bus 120, and also communicate data using the same PCI bus signal lines 120 when PCI bus 120 is in multimedia mode. See Ex. 1030 ¶ 78 (addressing the limitations recited in independent claim 1). In addition, upon considering these cited disclosures in Lambrecht, Petitioners’ declarant, Dr. Stone, testifies that one of ordinary skill in the art would have understood that, when PCI bus 120 in Figure 21 is placed in multimedia mode, it “provides for real-time[,] multimedia data transfers.” Ex. 1044 ¶ 4. We credit Dr. Stone’s testimony in this regard because it is consistent with Lambrecht’s description of Figure 21. See id. (citing Ex. 1032, 26:53–56, 27:57–62). Moreover, there is nothing in reference to Figure 21 and its corresponding description suggesting that, when PCI bus 120 is placed in multimedia mode, multimedia device 144D is precluded from accessing main memory 110 and operating in real time.” slip op. at 20

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

  Patent outcomesUS 5,812,789 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,812,789
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.All claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00323 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 2, 8, and 9 are unpatentable as obvious over Chen and Harari because the combined teachings meet the claim limitations and provide a reason to combine.

  RulingsFinal written decision

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

    “We agree with Petitioner that Patent Owner improperly seeks to narrow the construction of this term. There is no contention by either party that the Specification of the ’953 patent defines or limits the plain and ordinary meaning of “configures.” In addition, our own review of the Specification has failed to locate any definition of the term or disclaimer of the term’s scope. The only support that Patent Owner cites for its definition is Dr. Madisetti’s testimony. See PO Resp. 29 (citing Ex. 2001 ¶ 104). But the only support cited by Dr. Madisetti is the IEEE Dictionary. See Ex. 2001 ¶ 104 (citing Ex. 2004, 11). The IEEE Dictionary definition offered by Patent Owner defines the term as “[t]o initialize a device so that it operates in a particular way.” Ex. 2004, 11. Petitioner accepts this definition as the plain and ordinary meaning. Pet. Reply 19. However, this definition does not contain support for Patent Owner’s additional requirement “that functionality thereafter becomes available/unavailable for use when it is setup to allow/disallow it.” Without additional support from the intrinsic evidence, we decline to read in additional limitations into the plain and ordinary meaning for this term as evidenced by the dictionary definition. On the contrary, we find that this dictionary definition is consistent with the use of that term in Specification, which use “configure” in the plain and ordinary sense of the term. See, e.g., Ex. 1001, 28:12–29:55 (discussing various embodiments where there are different options for “configuring” the memory). Thus, we determine that the broadest reasonable interpretation of “configures” consistent with the Specification is “[t]o initialize a device so that it operates in a particular way.” Ex. 2004, 11 (definition of “configure”).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner that Patent Owner improperly seeks to narrow the construction of this term. There is no contention by either party that the Specification of the ’953 patent defines or limits the plain and ordinary meaning of “configures.” In addition, our own review of the Specification has failed to locate any definition of the term or disclaimer of the term’s scope. The only support that Patent Owner cites for its definition is Dr. Madisetti’s testimony. See PO Resp. 29 (citing Ex. 2001 ¶ 104). But the only support cited by Dr. Madisetti is the IEEE Dictionary. See Ex. 2001 ¶ 104 (citing Ex. 2004, 11). The IEEE Dictionary definition offered by Patent Owner defines the term as “[t]o initialize a device so that it operates in a particular way.” Ex. 2004, 11. Petitioner accepts this definition as the plain and ordinary meaning. Pet. Reply 19. However, this definition does not contain support for Patent Owner’s additional requirement “that functionality thereafter becomes available/unavailable for use when it is setup to allow/disallow it.” Without additional support from the intrinsic evidence, we decline to read in additional limitations into the plain and ordinary meaning for this term as evidenced by the dictionary definition. On the contrary, we find that this dictionary definition is consistent with the use of that term in Specification, which use “configure” in the plain and ordinary sense of the term. See, e.g., Ex. 1001, 28:12–29:55 (discussing various embodiments where there are different options for “configuring” the memory). Thus, we determine that the broadest reasonable interpretation of “configures” consistent with the Specification is “[t]o initialize a device so that it operates in a particular way.” Ex. 2004, 11 (definition of “configure”).” slip op. at 8

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

    “specific ISPP process. As Petitioner explains and Patent Owner concedes, there is no express definition or disclaimer of “programming” in the Specification. Pet. Reply 4–7; Tr. 24:1–15. Instead, Patent Owner’s argument is based on its contention that the Specification only describes ISPP, and, therefore, must be limited to that programming process. See Tr. 20:9–28:14. We do not agree. The mere fact that the Specification describes only one programming process embodiment is insufficient to limit the claims to that process. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[W]e have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.”); see also Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (“The patentee is entitled to the full scope of his claims, and we will not limit him to his preferred embodiment or import a limitation from the specification into the claims.”); Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“[T]his court has expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.”). Indeed, “[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’” Liebel–Flarsheim, 358 F.3d at 906 (quoting Teleflex Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)). Here, Patent Owner has not identified any such words or expressions of manifest exclusion or restriction. On the contrary, the language of the Specification is clear that the process described is not intended to be limiting. See Ex. 1001, 4:29–30 (describing Figure 23 as “a flow chart describing one embodiment of a programming process”), 4:5–6 (describing Figure 11 as “a flow chart describing one embodiment of a process for programming non-volatile memory”), 16:39–40 (“FIG. 11 is a flow chart describing one embodiment of a method for programming non-volatile memory.”), 25:31–33 (“FIG. 23 is a flowchart describing one embodiment of a process for programming according to the graphs of FIGS. 21 and 22.”). Thus, we decline to limit “compensation during programming” to only the ISPP programming process.” slip op. at 10

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

    “In the proposed combination, the combined managing circuit teaching includes Harari’s adaptive error correction approach in Chen’s floating gate compensation technique. See Pet. 45–46. As the Petition explains, the advanced error correction scheme is enabled dynamically during either reading or programming to minimize impacts to the performance of the flash EEPROM without compromising reliability. Id. at 46. As Dr. Subramanian testifies, when the managing circuit teaching of Chen is modified in light of Harari, the storage device of Chen is initialized to operate using a similar adaptive error correction approach. Ex. 1010 ¶¶ 35, 36. Under this approach, the modified managing circuit teaching of Chen would use error correction techniques to detect floating-gate coupling errors in Chen’s storage system, and then selectively enable floating-gate coupling compensation either during reading or programming, but only when an error is detected. Id. Thus, the managing circuit would configure the memory system to either perform compensation during reading or during programming depending on the type of error encountered. Id. This type of setup is consistent with the configuring described in the Specification, where the managing circuit is configured at manufacture to operate a particular way. See Ex. 1001, 28:30–38. As Dr. Subramanian persuasively testifies the combined system would obtain the benefit of enhanced reliability of the compensation techniques of Chen, while reducing the performance impact associated with those techniques. Ex. 1010 ¶ 36. As Dr. Subramanian explains, this combined managing circuit initializes the storage device, so that it operates in a particular way. Id. Dr. Subramanian testifies that, depending on the type of error detected, Harari makes a particular type of error correction available and makes the other type of error correction unavailable. Id. ¶ 40. As a result, the managing circuit of Harari initializes the functionality of the memory device, so that the advanced error correction functionality thereafter becomes available or unavailable for use. Id. We find Dr. Subramanian’s testimony to be consistent with the references’ teachings and consistent with the construction we have adopted. Thus, we give Dr. Subramanian’s testimony substantial weight. Dr. Madisetti’s testimony, on the other hand, relies on the inappropriately narrow construction we rejected above. Thus, we determine that Dr. Madisetti’s testimony is entitled to less weight. In light of this determination and weighing the testimony and evidence presented by the parties, we find that Petitioner has shown that the combination of the teachings of Chen and Harari accounts for the “managing circuit” that “configures.”” slip op. at 18

  Patent outcomesUS 7,495,953 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,495,953
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.All claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00320 · APJ Karl D Easthom · IPR · Final written decision

  Claims 8–10 are unpatentable: claim 8 as obvious over Seligson and Bucklen, or Seligson, Yonemaru, and Bucklen; claims 9–10 as obvious over Seligson and Yonemaru.

  RulingsFinal written decision

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

    “This court has repeatedly emphasized that an indefinite article “a” or “an” in patent parlance carries the meaning of “one or more” in open-ended claims containing the transitional phrase “comprising.” See Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 . . . (Fed. Cir.1999); Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 . . . (Fed. Cir.1997); North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1575–76 . . . Fed. Cir.1993); see also Robert C. Faber, Landis on Mechanics of Patent Claim Drafting 531 (3d ed. 1990). Unless the claim is specific as to the number of elements, the article “a” receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article. See Abtox, 122 F.3d at 1023 . . . . Under this conventional rule, the claim limitation “a,” without more, requires at least one. . . . . Moreover, standing alone, a disclosure of a preferred or exemplary embodiment encompassing a singular element does not disclaim a plural embodiment. “[A]lthough the specifications may well indicate that certain embodiments are preferred, particular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments.” Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 . . . (Fed. Cir. 1994). Thus, as the rule dictates, when the claim language or context calls for further inquiry, this court consults the written description for a clear intent to limit the invention to a singular embodiment. Id. (emphasis added). Claim 9 does not recite “selecting a [single] row.” Accordingly, in line with the “conventional rule,” “selecting a row” means “selecting at least one row.” See KCJ Corp., 223 F.3d at 1356. KCJ Corp. also shows that absent a clear disclaimer (or lexicographic definition), Patent Owner’s argument that “the embodiments disclosed in the ‘503 Patent . . . select[ ] . . . a single row of reference cells” fails to support Patent Owner’s narrow reading of claim 9. See PO Resp. 27; 223 F.3d at 1356.” slip op. at 8

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

    “reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Under this standard, absent any special definitions, claim terms or phrases carry their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Most of the claim terms do not require express construction because they do not raise a controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy” and noting that “the stage at which the claims are construed may vary with the issues, their complexity, the potentially dispositive nature of the construction, and other considerations of the particular case”).” slip op. at 7

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

    “rows). Therefore, Petitioner shows persuasively that the combination suggests the disputed claim 9 limitation under the adopted claim construction––a row decoder selecting at least one row of reference cells (transistors in Seligson) that have the analog signal applied thereto––in order to save converter space and to convert different analog ranges into digital signals based on the row arrangement in a predictable fashion. See Pet. 28– 29, 37–39, 49–54. Moreover, Petitioner shows that the combination renders claims 9 and 10 unpatentable for obviousness under both Patent Owner’s and Petitioner’s proposed claim constructions. Seligson’s transistors include reference voltages and inputs, which function similarly to the reference resistors and inputs in Yonemaru, and Yonemaru discloses select switches ultimately to provide different selected rows of voltage references for comparisons. See Ex. 1005, Fig. 4; Ex. 1006, Fig. 1; Inst. Dec. 23; Ex. 1030 ¶¶ 27–31. Petitioner explains that Yonemaru’s “SW switches select rows within the resistor array depending on the value of the upper bits, i.e., depending on the range of the analog signal.” Pet. 38 (citing Ex. 1006, 5:52–6:37); see also Pet. 53–54 (similar showing). Petitioner shows persuasively that modifying Yonemaru’s decoder and select switches to select at least one row of programmable reference transistors in Seligson’s circuit to attach an input voltage to a row would have been obvious for the purpose of sensing different analog ranges, while providing a known array configuration for utilizing available chip space. See Pet. 28–29, 37–39, 49–54.9” slip op. at 33

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

    “Regarding this prior art pulse counter, Bucklen states that “the desired digital output can be obtained as the sum of the individual comparator outputs.” Ex. 1007, 1:27–28. Nevertheless, as Patent Owner points out, Bucklen also states that using such an “adder . . . is not a simple matter . . . and virtually all higher-resolution parallel analog-to-digital converters built today rely on the detection of a single transition” method. Id. at 1:33–38 (emphases added). But, as Petitioner persuasively argues, describing the known, single pulse count method as “not a simple matter” and describing better “higher-resolution” alternatives for parallel converters does not amount to teaching away. See Pet. Reply 25–26 (stating just because “better alternatives” may exist in the prior art “does not mean that an inferior combination is inapt for obviousness purposes” (quoting In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012)). “A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” Meiresonne v. Google, Inc., 849 F.3d 1379, 1383 (Fed. Cir. 2017) (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013))) (also reasoning “Finseth does not say or imply that text descriptions are ‘unreliable,’ ‘misleading,’ ‘wrong, or ‘inaccurate,’ which might lead one of ordinary skill in the art to discard text descriptions completely”). The “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 50

  Patent outcomesUS 6,169,503 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,169,503
• Alarm.Com Inc. v. Vivint, Inc.Some claims unpatentable
  PTAB · May 10, 2017 · IPR2016-00161 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 9, 10, 14, and 27 are unpatentable as obvious; claims 17, 18, 22, 25, 26, and 28 were not shown unpatentable because the cited combination did not teach the claimed normal status message.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “patent “would have had at least a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and at least two years of experience in supervisory and control systems.” Pet. 8. Alarm.com’s declarant, Mr. Zatarain, assumes this skill level assessment in his declaration and opines that he was a person of ordinary skill, under this assessment, at the time of the invention. Ex. 1107 ¶ 11. Vivint does not dispute Alarm.com’s assessment in its Response, but we note that Vivint’s declarant, Mr. Denning, opines that a person of ordinary skill in the art of the ’654 patent would have had “at least a bachelor’s degree in electrical engineering or computer science and at least four years of experience in remote monitoring and control systems,” with the possibility of less experience being compensated for by more education. Ex. 2010 ¶ 15. We do not discern a material difference between the assessments advanced by the declarants, nor does either party premise its arguments exclusively on its assessment of the level of skill in the art. Moreover, each party’s declarant appears to meet or exceed both parties’ assessments (see Ex. 1107 ¶¶ 2–4, Attachment A; Ex. 2011), and either assessment of the level of skill in the art is consistent with the ’654 patent and the asserted prior art. We adopt Mr. Zatarain’s assessment and apply it to our obviousness evaluation below, but note that our conclusions would be the same under Mr. Denning’s assessment.” slip op. at 18

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

    “skill in the art would have had sufficient reason to combine the teachings of Levac with Shetty and Garton, we note that the Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry is whether Alarm.com has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Supreme Court elaborated that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. After considering the record in its entirety, we are persuaded that Alarm.com’s rationale for combining the teachings of Shetty, Levac, and Garton suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness. When, as here, a technique has been used to improve one device (i.e., Levac’s messaging system creates an .msa file that may incorporate a particular message and a list of destination parameters, such as a recipient site location, required for transmitting a message to a particular destination), and one of ordinary skill in the art would have recognized that it would improve similar devices in the same way (i.e., using the aforementioned disclosure in Levac to improve Shetty’s system), using the technique is obvious unless its actual application is beyond the skill level of an ordinarily skilled artisan. See KSR, 550 U.S. at 417; Pet. 31–33; Ex. 1107 ¶¶ 125–128; see also In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (Our reviewing court has recognized “[t]he normal desire of artisans to improve upon what is already generally known.”). Apart from generally asserting that neither Alarm.com nor Mr. Zatarain provides the “what,” “how,” and “why” for the asserted combination of Shetty and Levac (see PO Resp. 51–52), Vivint does not present credible evidence that combining the teachings of these references in the manner proposed by Alarm.com would have been uniquely challenging or otherwise beyond the skill level of an ordinarily skilled artisan.” slip op. at 49

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

    “Mintz to support its argument that Alarm.com must look to the problem solved by the ’654 patent in its obviousness evaluation, we do not agree. In KSR, the Supreme Court made clear that it is error to “hold[] that courts and [petitioners] should look only to the problem the patentee was trying to solve.” KSR, 550 U.S. at 420. The Supreme Court explained that [t]he question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. Id. Here, as we explain above, Alarm.com provides sufficient reasoning as to why one of ordinary skill in the art would have understood that Shetty allows a user to remotely access user profile database 106 via user interface 110 to configure profiles stored therein. See Pet. 21–23; Pet. Reply 14–16. Alarm.com’s reasoning in this regard is directed specifically to the subject matter at issue in independent claims 9 and 27, and Alarm.com provides sufficient evidence in the record to support its reasoning. As a result, instead of presenting reasoning that is based on impermissible hindsight reconstruction, as asserted by Vivint, Alarm.com has articulated sufficient reasoning as to why one of ordinary skill in the art would have had reason to extend Shetty’s teaching of user access to user profile database 106 via user interface 110 to provide for remote configuration of the profiles stored therein.” slip op. at 42

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

    “Alarm.com’s explanations and supporting evidence as to how the combination of Shetty and Garton teaches or suggests the remaining limitations recited in independent claims 9 and 27, nor does Vivint address the reasons provided by Alarm.com as to how or why a person of ordinary skill in the art would have combined the teachings of Shetty and Garton. See generally PO Resp. 14–42. We have reviewed Alarm.com’s explanations and supporting evidence in this regard, and we are persuaded that the combination of Shetty and Garton teaches or suggests each such limitation (see Pet. 17–23, 29–31, 33–37, 40–41, and evidence cited therein), as well as that Alarm.com’s rationale for combining the teachings of Shetty and Garton suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness (id. at 31–33; Ex. 1007 ¶ 128). (4) Conclusion We conclude that Alarm.com has demonstrated by a preponderance of the evidence that the subject matter of independent claims 9 and 27 would have been obvious over the combined teachings of Shetty.” slip op. at 45

  Patent outcomesUS 6,462,654 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,462,654
• Alarm.Com Inc. v. Vivint, Inc.Some claims unpatentable
  PTAB · May 2, 2017 · IPR2016-00173 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1, 2, 4–6, 10, 13, and 15–17 were held unpatentable under § 103; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the knowledge level of a person of ordinary skill in the art. Alarm.com’s declarant, Mr. Zatarain, testifies that a person of ordinary skill in the art as of January 1999 would be an individual who possesses (1) at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or equivalent coursework; and (2) at least two years of experience in remote monitoring and control systems. Ex. 1106 ¶ 11; Pet. 7 (stating the same). Vivint’s declarant, Mr. Denning, testifies that a person of ordinary skill in the art as of January 1999 would be an individual who possesses (1) at least a bachelor’s degree in electrical engineering or computer science; and (2) at least four years of experience in remote monitoring and control systems. Ex. 2010 ¶ 15. We do not discern a material difference between the assessments advanced by the declarants, nor does either party premise its arguments exclusively on its assessment of the level of skill in the art. Moreover, each party’s declarant appears to meet or exceed both parties’ assessments (see Ex. 1106 ¶¶ 2–4, Attachment A; Ex. 2011), and either assessment of the level of skill in the art is consistent with the ’123 patent and the asserted prior art. We, therefore, adopt Mr. Zatarain’s assessment and apply it to our obviousness evaluation below, but note that our conclusions would be the same under Mr. Denning’s assessment.” slip op. at 22

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “In our claim construction section above, we construe the claim term “communication device identification codes” as including either a device ID or serial number of a device. See supra Section II.A.2. Shetty’s telephone numbers and email addresses are not consistent with this construction because they do not identify uniquely a specific device. See Ex. 1103, 2:18– 21, 3:18–20. We also credit Vivint’s declarant, Mr. Denning’s, testimony on this particular issue. See Ex. 2010 ¶¶ 127–130. In particular, Mr. Denning testifies that “[Shetty’s] system can dial a particular phone number, and it will reach whatever device is tied to that phone number at the moment. It is not device-specific.” Id. ¶ 129 (emphasis added). He also testifies that, “[s]imilarly, [Shetty’s] system could send an email, and the recipient would be able to retrieve that email from nearly any Internet-accessible computer device. Again, this is not device-specific.” Id. ¶ 130 (emphasis added). We, therefore, agree with both Vivint and Mr. Denning that Shetty does not teach or suggest the claimed “communication device identification codes.” See PO Resp. 36–37; Ex. 2010 ¶¶ 127–130.” slip op. at 48

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

    “patent, we discern no reason to modify the construction of the claim phrase “message profile containing outgoing message routing instructions” set forth in the Decision on Institution. As we explained in that Decision, we interpret the statement in the ’123 patent that “a list of who to contact via what means depending on which fault has occurred may be referred to as a ‘message profile’” (Ex. 1101, 2:34–36 (emphasis added)), at most, reflects that “a list of who to contact via what means depending on which fault has occurred” could be an example of a message profile, and does not necessarily require “a list of who to contact.” Dec. on Inst. 10. Although we acknowledge Vivint’s interpretation of the phrase “may be referred to as a ‘message profile’” as indicating that “message profile” simply is one of “many” names that could be given to “a list of who to contact via what means depending on which fault has occurred” (see PO Resp. 3, 31), we do not agree with Vivint that its proposed construction of “message profile” represents the broadest reasonable interpretation in light of the Specification of the ’123 patent. As we pointed out in the Decision on Institution, the ’123 patent includes embodiments, in which, for example, multiple messages are sent to multiple recipients via differing media for the same exception condition (Ex. 1101, 4:8–11), or the same person is contacted by different means (e.g., fax or personal communication service) at different times (id. at 6:17–18). Dec. on Inst. 10–11. Vivint’s proposed construction, requiring the message profile to specify “which communication device associated with which individuals” (PO Resp. 31), would exclude such embodiments. In view of the full record developed during trial, we remain unpersuaded by Vivint’s argument that the statement in the specification of the ’123 patent that “a list of who to contact via what means depending on which fault has occurred may be referred to as a ‘message profile’” (Ex. 1101, 2:34–36) provides the requisite “clarity, deliberateness, and precision” to indicate that the patentees intended to act as their own lexicographer and disclaim the embodiments identified above. See Dec. on Inst. 10–11; In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”); Paulsen, 30 F.3d at 1480 (an inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision” and, if done, must “‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning). Accordingly, we again conclude that the broadest reasonable interpretation of “message profile containing outgoing message routing instructions” is a “data record including instructions specifying at least one communication device to which an outgoing message can be routed in response to an incoming exception message.” This construction is consistent with the ordinary and customary meaning of this claim phrase, as would be understood by one with ordinary skill in the art, in light of the claims and specification of the ’123 patent. See Ex. 1101, 2:34–36, 4:8–11, 6:17–18.” slip op. at 13

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

    “Shetty and Levac, we note that the Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry is whether Alarm.com has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Supreme Court elaborated that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. When considering the record in its entirety, Alarm.com’s rationale for combining the teachings of Shetty and Levac suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness. When, as here, a technique has been used to improve one device (i.e., Levac’s messaging system creates an .msa file that may incorporate a particular message and a list of destination parameters, such as a recipient site location, required for transmitting a message to a particular destination), and one of ordinary skill in the art would have recognized that it would improve similar devices in the same way (i.e., using the aforementioned disclosure in Levac to improve Shetty’s system), using the technique is obvious unless its actual application is beyond the skill level of an ordinarily skilled artisan. See KSR, 550 U.S. at 417; Pet. 27–28; Ex. 1106 ¶¶ 96–98; see also In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (The Federal Circuit previously has recognized “[t]he normal desire of artisans to improve upon what is already generally known.”). Apart from generally asserting that neither Alarm.com nor Mr. Zatarain provide the “what,” “how,” and “why” for the asserted combination of Shetty and Levac (see PO Resp. 38–40), Vivint does not present credible evidence that combining the teachings of these references in the manner proposed by Alarm.com would have been uniquely challenging or otherwise beyond the skill level of an ordinarily skilled artisan. Based on the record developed during trial, we conclude that Alarm.com has demonstrated by a preponderance of the evidence that the subject matter of dependent claims 5 and 16 would have been obvious over Shetty and Levac.” slip op. at 53

  Patent outcomesUS 6,535,123 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,535,123
• Alarm.Com Inc. v. Vivint, Inc.All claims unpatentable
  PTAB · Mar 22, 2017 · IPR2015-01977 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1–9, 14–18, and 22–38 are unpatentable under § 103(a) over the combinations of Johnson ’950 and Moriya, with the additional references specified for certain claims.

  RulingsFinal written decision

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

    “As an initial matter, the parties do not argue, nor could we find, that the specification of the ’727 patent includes an explicit definition of a “terminal identifier.” We, therefore, determine the ordinary and customary meaning of this claim term, as would be understood by one of ordinary skill in the art, in the context of the claims and specification of the ’727 patent. See Translogic, 504 F.3d at 1257. In our view, the key inquiry in resolving the parties’ dispute regarding how a “terminal identifier” should be construed under the broadest reasonable interpretation standard is determining whether a terminal identifier that enables communication with a terminal necessarily requires identification of the terminal. Based on our review of the claims and specification of the ’727 patent, we determine that using a terminal identifier to communicate with a terminal necessarily requires identifying the terminal.” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “the knowledge level of a person of ordinary skill in the art. Alarm.com’s declarant, Dr. Rhyne, testifies that a person of ordinary skill in the art as of September 2000 would be an individual who possesses (1) a bachelor’s degree in computer science, electrical engineering, computer engineering, or equivalent coursework; and (2) at least two years of experience in remote monitoring and control systems. Ex. 1009 ¶ 20. Vivint’s declarant, Mr. Cole, testifies that that a person of ordinary skill in the art as of September 2000 would be an individual who possesses (1) at least a bachelor’s degree in mathematics, physics, computer science, electrical engineering, computer engineering, or a related field; and (2) either a master’s degree in one of the related fields, or at least two years of industry experience in controlling and communicating with remote systems. Ex. 2026 ¶ 27. Mr. Cole’s assessment of level of skill in the art is different from that of Dr. Rhyne insofar as it permits one of ordinary skill in that art to have a master’s degree in lieu of experience. Mr. Cole’s assessment of the level of skill in the art also permits one of ordinary skill in the art to have a degree in math or physics, rather than just computer science, electrical engineering, or computer engineering. Because Mr. Cole’s assessment of the level of skill in the art is consistent with the ’727 patent and the asserted prior art, we adopt it and apply it to our obviousness evaluation below, but note that our conclusions would be the same under Dr. Rhyne’s assessment.” slip op. at 18

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

    “When considering the record in its entirety, Alarm.com’s rationale for combining the teachings of Johnson ’950 and Moriya suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness. When, as here, a technique has been used to improve one device (i.e., Moriya discloses connecting central facility 2 to a plurality of terminals 1 that differ from each other in their respective display capabilities), and one of ordinary skill in the art would have recognized that it would improve similar devices in the same way (i.e., using the aforementioned disclosure in Moriya to improve Johnson ’950’s home monitoring system), using the technique is obvious unless its actual application is beyond the skill level of an ordinary skilled artisan. See KSR, 550 U.S. at 417; Pet. 22–26; Ex. 1009 ¶¶ 59, 60, 65.” slip op. at 41

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

    “The U.S. Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry is whether Alarm.com has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Supreme Court elaborated that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. When considering the record in its entirety, Alarm.com’s rationale for combining the teachings of Johnson ’950 and Moriya suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness. When, as here, a technique has been used to improve one device (i.e., Moriya discloses connecting central facility 2 to a plurality of terminals 1 that differ from each other in their respective display capabilities), and one of ordinary skill in the art would have recognized that it would improve similar devices in the same way (i.e., using the aforementioned disclosure in Moriya to improve Johnson ’950’s home monitoring system), using the technique is obvious unless its actual application is beyond the skill level of an ordinary skilled artisan. See KSR, 550 U.S. at 417; Pet. 22–26; Ex. 1009 ¶¶ 59, 60, 65.” slip op. at 41

  Patent outcomesUS 6,924,727 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,924,727

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