- LG Electronics, Inc. v. Broadcom CorporationInstitution deniedPTAB · Dec 19, 2017 · IPR2017-01624 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because Diaz did not disclose internally reprogrammable hardware accelerators, and the other grounds did not cure that deficiency.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“3. Construction of “configurable” In construing this term, we have considered the specification of the ’353 patent and its prosecution history. Microsoft Corp. v. Proxycinn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In accord with these portions of the ’844 patent specification and file history discussed supra, we conclude that a hardware accelerator is configurable only if its functionality can be internally reprogrammed. Thus, under our construction, an accelerator selected by an API or other instrumentality would not itself be “configurable.” This will be discussed further infra.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“However, as Patent Owner argues, Diaz ’353 does not explicitly or inherently disclose hardware accelerators that are configurable to perform decoding functions according to a plurality of decoding methods. In Diaz ’533 the overall decoder — as opposed to the constituent hardware accelerators — is configurable in that the processor controls which hardware accelerators are activated. Prelim. Resp. 2, 5–8. We see no meaningful distinction in this respect between Diaz ’353 and Sullivan ’021 which, as discussed above, discloses an API that is configurable to select various hardware accelerators, but which are not themselves configurable, to assist in the decoding process. See Prelim. Resp. 6. In sum, the functionality of the hardware accelerators of Diaz ’353 cannot be internally reprogrammed, but rather can only be bypassed or reused for various operations. Therefore, in accord with our claim construction set forth above, we determine that those hardware accelerators are not “configurable” as required by claim 1. Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“C. Obviousness of Claims 8 and 14 over Diaz ’353 and Purcell ’483, and of Claim 12 over Diaz ’353 and Fandrianto ’459 or Kim As discussed above, Petitioner has not demonstrated a reasonable likelihood of prevailing on the issue of whether Diaz ’353 discloses the claim 1 requirement of configurable hardware accelerators. Claims 8, 12, and 14 depend from claim 1 and so also include this requirement by virtue of their dependency. Petitioner’s obviousness grounds directed to these claims is premised on Petitioner’s arguments with respect to claim 1 that Diaz ’353 discloses configurable hardware accelerators. Pet. 51–63. Petitioner does not provide argument or evidence — aside from the above-considered anticipation arguments based on Diaz ’353 alone — that the combination of Diaz ’353 with Purcell ’483, Fandrianto ’459 or Kim teaches or suggests “a hardware accelerator . . . configurable to perform the decoding function according to a plurality of decoding methods.” Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 8 and 14 as obvious over Diaz ’353 and Purcell ’483, or of claim 12 as obvious over Diaz ’353 and Fandrianto ’459 or Kim.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,284,844 - Unified Patent Inc. v. Plectrum LLCRehearing deniedPTAB · Dec 12, 2017 · IPR2017-01430 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution for claims 1–6, 12–14, and 21–24 because the petition did not show a reasonable likelihood of success on obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“The Request for Rehearing repeatedly refers to alleged mischaracterizations in Patent Owner’s assertions. However, as discussed in the Decision, it is the failure of the Petition to demonstrate a reasonable likelihood of prevailing on its assertion that the challenged claims are obvious—and not the Patent Owner’s assertions—that was determinative. See Dec. 14–16. We are aware, as the Petitioner argues (see Req. Reh’g 4–5), that there is no requirement under § 103 that claim terms be described verbatim in a prior art reference. As discussed in the Decision, however, the issue of an explicit disclosure of the term “row” in Cheriton was not in itself determinative. See Dec. 14–16. The Decision states that institution was denied because the Petition failed demonstrate a reasonable likelihood of prevailing on the obviousness challenge based on lack of adequate support in Cheriton for the alleged teaching of a comparison of values associated with a row in a cache, as well as the lack of support for the expert’s view that it would have been obvious to one of skill in the art to compare the cache value by row. Id. The disclosures in Cheriton that Petitioner relied upon fail to disclose or suggest the use of rows in caches. Id. at 14–15. And, Petitioner expert’s testimony regarding the knowledge of one of skill in the art concerning row comparisons in caches is conclusory and, therefore, deserved little to no credit. Id. at 15; see Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). Petitioner’s argument that Fujishima’s disclosure of 4-way set associative cache organized by rows, which corroborates its expert’s testimony, misses the point. Although the use of rows in 4-way set associative caches may have been known, the Petition fails to provide sufficient support to identify why one of skill in the art would view Cheriton as teaching or suggesting the specific limitations associated with the use of rows.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“requirement under § 103 that claim terms be described verbatim in a prior art reference. As discussed in the Decision, however, the issue of an explicit disclosure of the term “row” in Cheriton was not in itself determinative. See Dec. 14–16. The Decision states that institution was denied because the Petition failed demonstrate a reasonable likelihood of prevailing on the obviousness challenge based on lack of adequate support in Cheriton for the alleged teaching of a comparison of values associated with a row in a cache, as well as the lack of support for the expert’s view that it would have been obvious to one of skill in the art to compare the cache value by row. Id. The disclosures in Cheriton that Petitioner relied upon fail to disclose or suggest the use of rows in caches. Id. at 14–15. And, Petitioner expert’s testimony regarding the knowledge of one of skill in the art concerning row comparisons in caches is conclusory and, therefore, deserved little to no credit. Id. at 15; see Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). Petitioner’s argument that Fujishima’s disclosure of 4-way set associative cache organized by rows, which corroborates its expert’s testimony, misses the point. Although the use of rows in 4-way set associative caches may have been known, the Petition fails to provide sufficient support to identify why one of skill in the art would view Cheriton as teaching or suggesting the specific limitations associated with the use of rows.” slip op. at 3
NonePatents in suitUS 5,978,951 - Apple Inc. v. California Institute Of TechnologyInstitution deniedPTAB · Sep 12, 2017 · IPR2017-00703 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on claims 1–14, exercising § 325(d) discretion and finding no reasonable likelihood that the ’710 patent and MacKinnon rendered them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute an inter partes review, we, acting on behalf of the Director, may take into account whether, and reject a petition to institute on a particular ground because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the ultimate burden of proving unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this stage, we assess, based on the information presented in the Petition and Patent Owner’s Preliminary Response, whether Petitioner has demonstrated a reasonable likelihood of eventually satisfying that burden. 35 U.S.C. § 314(a). To be entitled to the benefit of the filing date of an earlier application, the claims at issue must have written description support in that earlier application. See 35 U.S.C. § 120. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for patent owner
“To be entitled to the benefit of the filing date of an earlier application, the claims at issue must have written description support in that earlier application. See 35 U.S.C. § 120. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted).” slip op. at 10
§ 112 disclosureDiscretionary denialPatents in suitUS 8,284,833 - Apple Inc. v. California Institute Of TechnologyInstitution deniedPTAB · Sep 12, 2017 · IPR2017-00702 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Apple did not show the Pfister Slides were a prior art printed publication, defeating its sole obviousness challenge to claims 1–14.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“With respect to the Pfister Slides, Petitioner fails to meet the burden imposed under § 314(a) to establish in its Petition a reasonable likelihood of success, which includes, among other things, making a threshold showing that the Pfister Slides qualify as a prior art printed publication. Accordingly, we determine that Petitioner has not demonstrated a likelihood of showing that claims 1–14 would have been obvious over the Pfister Slides and MacKinnon. III. CONCLUSION Petitioner has not demonstrated that there is a reasonable likelihood of establishing the unpatentability of any of the claims of the ’833 patent. IV. ORDER For the foregoing reasons, it is ORDERED that the Petition is denied as to the challenged claims, and no trial is instituted.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“We look to the underlying facts to make a legal determination as to whether a reference is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a given reference qualifies as a prior art “printed publication” involves a caseby-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); see In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). With respect to slide presentations, Federal Circuit case law and a prior opinion from our Board have found that the mere presentation of slides at a professional conference is not per se a prior art printed publication. Klopfenstein, 380 F.3d at 1349 n.4; Temporal Power Ltd. v. Beacon Power, LLC, Case IPR2015-00146, slip op. at 8–11 (PTAB April 27, 2015) (Paper 10). In the present case, Petitioner cites to specific paragraphs of Mr. Siegel’s declaration that do not support a conclusion that the Pfister Slides qualify as a printed publication. Pet. 31 (citing Ex. 1023 ¶¶ 5–6). Mr. Siegel’s declaration in its entirety does not address the factors cited in In re Klopfenstein as to whether the slides in question qualify as a printed publication. See Ex. 1023. The Petition and Mr. Siegel’s declaration merely support the assertion that a presentation took place, but fail to provide sufficient evidence or argument regarding whether the Pfister Slides were published or how the Pfister Slides were made accessible to the relevant public, among other issues raised by slide presentations. See, e.g., Klopfenstein, 380 F.3d at 1350; Temporal Power Ltd., IPR2015-00146, Paper 10 at 8–11. With respect to the Pfister Slides, Petitioner fails to meet the burden imposed under § 314(a) to establish in its Petition a reasonable likelihood of success, which includes, among other things, making a threshold showing that the Pfister Slides qualify as a prior art printed publication. Accordingly, we determine that Petitioner has not demonstrated a likelihood of showing that claims 1–14 would have been obvious over the Pfister Slides and MacKinnon.” slip op. at 7
§ 102 anticipationPatents in suitUS 8,284,833 - NXP USA, Inc. v. NFC Technology, LLCAll claims unpatentablePTAB · Aug 30, 2017 · IPR2016-00684 · APJ Charles J Boudreau · IPR · Final written decision
Claims 13–15, 18–20, 23–25, 36, 37, 40, 42, 43, and 46 are unpatentable under § 103 over Ritter combined with either version of the RFID Handbook.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 2–5). Under the broadest reasonable construction standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony 12 Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also 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.”). The case for not reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 2–5). Under the broadest reasonable construction standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony 12 Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also 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.”). The case for not reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“three to five years of industrial or academic experience in working with wireless communication technology, including radio frequency identification (RFID) devices and systems. Pet. 12–13 (citing Ex. 1303 ¶¶ 28-30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 24). We see no compelling reason to apply a different level of skill than that accepted by both parties, and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 16
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“unsupported. For example, NFCT identifies Dr. Mihran’s testimony that Ritter’s device “simulates a CIC transponder” as conclusory. Id. at 21–22 (citing Ex. 1303 ¶¶ 44, 46). To the contrary, Dr. Mihran provides sufficient explanation for his opinion and identifies enough supporting evidence. Dr. Mihran explains that Ritter describes an operating mode where a mobile 27 device is “inductively fed” by another mobile device, which indicates that the second device “generates the magnetic field that powers” the first device. Ex. 1303 ¶¶ 46–47 (citing Ex. 1304A, 11, 13). He further explains that Ritter discloses this operating mode may be used to “exchange data inductively” between the devices, indicating that the second device generating the magnetic field is operating as a “reader” that powers the first device, which operates as a “transponder.” Id. ¶ 47 (citing Ex. 1304A, 13). Further, Dr. Mihran identifies specific disclosures in Ritter, as well as similar disclosures in the RFID Handbook, regarding both “passive” and “active” load modulation. See id. ¶¶ 47, 50–54, 74. In Dr. Mihran’s expert7 opinion, a person of ordinary skill in the art consequently would have understood Ritter to teach that the mobile device acts as a transponder and transmits data via load modulation, i.e., by disturbing the magnetic field generated by the device acting as a reader. See id. Upon review, we disagree with NFCT that Dr. Mihran’s testimony is “conclusory, unsupported, and inconsistent with the cited references.” See PO Resp. 20– 21. To the contrary, we find Dr. Mihran’s expert testimony to be credible and persuasive.” slip op. at 27
Patent outcomesUS 7,098,770 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,098,770 - NXP USA, Inc. v. Inside Secure And NFC Technology, LLCAll claims unpatentablePTAB · Aug 30, 2017 · IPR2016-00683 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–3, 6–8, 10, 11, 28–31, 34, and 35 are unpatentable under § 103 over Ritter and the RFID Handbook, with Bashan added for claims 10, 28–31, 34, and 35.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“conclude that the broadest reasonable construction of “contactless integrated circuit reader” is simply “device configured to read data from a contactless integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 1–5). Under the broadest reasonable construction standard, claim terms generally are 12 given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also 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.”). The case for not 13 reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including radio frequency identification (RFID) devices and systems. Pet. 13 (citing Ex. 1203 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 24). 16 We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 16
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“unsupported. For example, NFCT identifies Dr. Mihran’s testimony that Ritter’s device “simulates a CIC transponder” as conclusory. Id. at 21–22 (citing Ex. 1203 ¶¶ 44, 46). To the contrary, Dr. Mihran provides sufficient explanation for his opinion and identifies enough supporting evidence. Dr. Mihran explains that Ritter describes an operating mode where a mobile 28 device is “inductively fed” by another mobile device, which indicates that the second device “generates the magnetic field that powers” the first device. Ex. 1203 ¶¶ 46–47 (citing Ex. 1204A, 11, 13). He further explains that Ritter discloses this operating mode may be used to “exchange data inductively” between the devices, indicating that the second device generating the magnetic field is operating as a “reader” that powers the first device, which operates as a “transponder.” Id. ¶ 47 (citing Ex. 1204A, 13). Further, Dr. Mihran identifies specific disclosures in Ritter, as well as similar disclosures in the RFID Handbook, regarding both “passive” and “active” load modulation. See id. ¶¶ 47, 50–54, 76. In Dr. Mihran’s expert7 opinion, a person of ordinary skill in the art consequently would have understood Ritter to teach that the mobile device acts as a transponder and transmits data via load modulation, i.e., by disturbing the magnetic field generated by the device acting as a reader. See id. Upon review, we disagree with NFCT that Dr. Mihran’s testimony is “conclusory, unsupported, and inconsistent with the cited references.” See PO Resp. 20– 21. To the contrary, we find Dr. Mihran’s expert testimony to be credible and persuasive.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“NXP also articulates sufficient reasoning with a rational underpinning why a person of ordinary skill would have been led to combine the relevant teachings of these references. Pet. 22; see KSR, 550 U.S. at 418. Supported by the testimony of Dr. Mihran, NXP contends a person of ordinary skill would have understood Ritter to teach an RFID system for communication via inductive coupling and that the RFID Handbook is “a compendium 27 describing the fundamentals and applications” of such systems. Pet. 22 (citing Ex. 1203 ¶¶ 44–49, 101) (internal quotation marks omitted). NXP asserts that the RFID Handbook describes the advantages of the elements of inductively coupled RFID systems and that those advantages would have motivated a person of ordinary skill to combine its teachings with the Ritter system. Id. Further, the evidence of record supports a finding that a person of ordinary skill would have found implementing such a combination to be “routine” and “straightforward,” recognizing that it would have yielded expected, predictable results. See id. (citing Ex. 1203 ¶ 101).” slip op. at 27
Patent outcomesUS 7,098,770 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,098,770 - NXP USA, Inc. v. Inside Secure And NFC Technology, LLCAll claims unpatentablePTAB · Aug 30, 2017 · IPR2016-00682 · APJ Charles J Boudreau · IPR · Final written decision
Claims 13–15, 18–20, 23–25, 36, 37, 40, 42, 43, and 46 are unpatentable as obvious over Gunnarsson combined with either RH-E or RH-G.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“In light of the fully developed record before us, including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 30–33) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1116 ¶¶ 7–21) cited by NXP, we continue to agree with NFCT that the broadest reasonable construction of “antenna circuit” requires a coil. Nonetheless, for the reasons discussed above, we remain unpersuaded that it would be necessary or proper additionally to include “for radiating and/or receiving a magnetic field” in the construction of “antenna circuit.” Thus, we determine that the broadest reasonable construction of 12 “an antenna circuit,” as recited in the challenged claims, is “a circuit, including a coil.”” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including RFID devices and systems. Pet. 13–14 (citing Ex. 1103 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 4–5 (citing Ex. 2004 ¶ 26). 22 We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 22
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Regardless whether Gunnarsson describes a single method of performing backscatter or two separate methods, we are persuaded by NXP’s argument, supported by Dr. Mihran’s testimony, that Gunnarsson’s disclosure of “varying the impedance . . . in accordance with a pattern that corresponds to [a] transmitted data stream . . . by switching on and off [a] modulation circuit[] . . . intended to modulate the carrier wave for writing data into the transponder” teaches data-carrying or data representative pulses of an alternating signal, as recited in claims 14 and 24, or an excitation signal, as recited in claims 37 and 43. We credit, in particular, Dr. Mihran’s testimony, cited in the Petition, that a person of ordinary skill in the art would have understood Gunnarsson’s teaching of switching on and off its modulator to mean that it alternately applies and does not apply a carrier signal to the antenna—i.e., produces pulses or bursts of the excitation signal—and that a person of ordinary skill would have understood that this method applies data representative pulses of the excitation signal to the antenna circuit in the same way as the “pseudo active load modulation” method of the ’770 patent. Ex. 1103 ¶ 117 (cited at Pet. 34–35). Further, as explained in the above discussion of claim 1, we are persuaded that the 59 combination of Gunnarsson and the RFID Handbook would have rendered obvious implementing Gunnarsson’s reader using inductive coupling. We additionally credit Dr. Mihran’s testimony that it would have been routine for a person of ordinary skill in the art, in such an implementation, to use the RFID Handbook’s teaching of using a “subcarrier” to carry encoded data in implementing this method, as well as that “it would have been clear to a person of ordinary skill in the art that such a combination would work and provide the expected functionality.” Ex. 1103 ¶ 120 (cited at Pet. 35).” slip op. at 59
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“NFCT’s argument and Dr. Apsel’s opinion that Gunnarsson is not from the same field of endeavor both rest on an overly narrow definition of the field of the invention as “inductive coupling” systems. PO Resp. 59; Ex. 2004 ¶¶ 110–115. Although the specification and independent claims 13, 23, 36, and 42 of the ’770 patent recite inductive coupling, we remain persuaded by NXP’s evidence that the microwave-based communication system described by Gunnarsson is within the same field of endeavor as the inductive coupling system of the ’770 patent, namely, “contactless ID” or “RFID” systems. We also remain persuaded by that evidence that a person of ordinary skill in the RFID art would have regarded the selection of one technology over the other merely as being guided by the principles set forth in the cited prior art, such as based on a system’s desired communication range. See, e.g., Ex. 1106, 11–13, 21–22 (providing an overview of RFID systems, and explaining that systems with write and read ranges of up to 1 m “are based upon an inductive (magnetic) coupling between reader and transponder,” whereas systems “for ranges typically between 1 m and 10 m . . . operate using electromagnetic waves in the microwave range”); Ex. 1108A, 8, 11–14, 21 (same). As we previously explained (Dec. on Inst. 33), Bigio does not limit the field of endeavor to only what is recited in the claims. In that case, in spite of the claims at issue being explicitly limited to a “hair brush,” the court held that the Board had correctly concluded that “Flemming’s toothbrush was in Bigio’s field of endeavor because ‘the structural similarities between toothbrushes and small brushes for hair would have led 43 one of ordinary skill in the art working in the specific field of hairbrushes to consider all similar brushes including toothbrushes.’” Bigio, 381 F.2d at 1323, 1326; see also Wyers v. Master Lock, 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly . . . .”). Similarly, we conclude that the similarities between inductive coupling and microwave-based RFID systems would have led one of ordinary skill in the art working with inductive coupling systems to consider microwave-based prior-art systems as being in the same field of endeavor. Although NFCT has pointed out differences between those systems, we are persuaded that the identified distinctions are such that one of ordinary skill working with one system still would have considered the other system. Having determined that Gunnarsson is analogous art under the first” slip op. at 43
Patent outcomesUS 7,098,770 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,098,770 - NXP USA, Inc. v. NFC Technology, LLCAll claims unpatentablePTAB · Aug 30, 2017 · IPR2016-00681 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–3, 6–8, 10, 11, 28–31, 34, and 35 are unpatentable under § 103 over Gunnarsson and the RFID Handbook, with Bashan added for claims 10, 28–31, 34, and 35.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“previously presented by NFCT in its Preliminary Response filed in this case (Paper 10, 7–9), we explained that we agreed with NFCT and the District Court that, in view of the inventors’ statements during prosecution, the inventors disclaimed devices having antenna circuits that do not include a coil, but that that point did not appear to be in dispute on the record before us, and we determined that there was no need to construe further the term “antenna circuit” at that stage of the proceeding. Dec. on Inst. 13 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”)). We further explained that, because challenged independent claims 1 and 28 already explicitly recite “an antenna circuit to generate a magnetic field” and “an antenna circuit that generates a magnetic field,” respectively (Ex. 1001, 12:29, 15:22), NFCT’s proposed inclusion of 12 “for radiating . . . a magnetic field” would not add meaningfully to the broadest reasonable interpretation of the term “antenna circuit.” Dec. on Inst. 13. Finally, we explained that although the specification of the ’770 patent describes an embodiment in which a magnetic field sent by a CIC reader appears by induction in the antenna circuit of another CIC reader (see, e.g., Ex. 1001, 9:10–13), we were not persuaded on the record then before us that the broadest reasonable interpretation of the term “antenna circuit” requires the language “for . . . receiving a magnetic field.” Dec. on Inst. 13– 14. In light of the fully developed record before us, including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 30–33) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1016 ¶¶ 7–21) cited by NXP, we continue to agree with NFCT that the broadest reasonable construction of “antenna circuit” requires a coil. Nonetheless, for the reasons discussed above, we remain unpersuaded that it would be necessary or proper additionally to include “for radiating and/or receiving a magnetic field” in the construction of “antenna circuit.” Thus, we determine that the broadest reasonable construction of “an antenna circuit,” as recited in the challenged claims, is “a circuit, including a coil.”” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“In light of the fully developed record now before us, particularly including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 34–47) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1016 ¶¶ 22–35) cited by NXP, as well as further consideration of the claim differentiation arguments presented in connection with claims 29 and 30, we are persuaded that “load modulation signal” is a term of art in the context of RFID systems, specifically referring to a signal that transmits data by disturbing the magnetic field of another device in an inductive coupling system, and that NFCT’s proposed construction, accordingly, is the broadest reasonable construction of that term. We also agree with NFCT that this construction does not conflict with the presumption that a limitation added by a dependent claim is not found in its base claim. See Liebel-Flarsheim, 358 F.3d at 910. Claim 29 depends from claim 28 and adds the limitation “wherein the reader is configured to apply a load modulation signal with two states to the antenna circuit when the reader operates in the second operating mode and when data is to be transmitted to the other reader.” Ex. 1001, 15:36–40. The consequence of applying NFCT’s construction to that claim, thus, is that the reader must be configured to apply a signal that transmits data by disturbing the magnetic field of another, unspecified device. Claim 30, however, additionally requires the reader to be configured to apply to the antenna circuit not merely such a “signal that transmits data by disturbing the magnetic field of 20 another,” but more specifically a signal “comprising pulses of an alternating signal, the duration of each pulse being longer than the period of the alternating signal” and that is “configured to disturb the magnetic field generated by the second reader and being configured to be detected by the second reader as if [it] were a load modulation signal applied to an antenna load modulation switch of a contactless integrated circuit.” Id. at 15:41–50. Because NFCT’s proposed construction does not simply read narrowing limitations from claim 30 into claim 29, we disagree with NXP’s contention that the claims of the ’770 patent do not support NFCT’s construction. Pet. Reply 3. Thus, we determine that the broadest reasonable construction of “load modulation signal,” as recited in challenged claims 1–3, 6, 8, and 29–31, is a “signal that transmits data by disturbing the magnetic field of another device.”” slip op. at 20
- PTAB / AIA Trials › Real party in interest / privityOther
“Semiconductors Netherlands B.V. as real parties in interest with itself for this proceeding. Paper 20, 1. NFCT identifies France Brevets, S.A.S., as a real party in interest with itself for this proceeding. Paper 8, 2; see supra note 2. evidence to support these assertions, namely documents that purport to be license agreements between NFCT and Inside Secure. See Ex. 2001; Ex. 2002. In light of NFCT’s representations, we have treated NFCT as Patent Owner throughout this proceeding and continue to do so for purposes of this Decision, as reflected by the caption.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including RFID devices and systems. Pet. 14 (citing Ex. 1003 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 26). We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 23
Patent outcomesUS 7,098,770 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,098,770 - NXP USA, Inc. v. Inside Secure And NFC Technology, LLCNo claims unpatentablePTAB · Aug 30, 2017 · IPR2016-00692 · APJ Patrick M Boucher · IPR · Final written decision
The Board held claims 1, 3, 7, 11, 12, 14, 18, and 22 not shown unpatentable over either § 103 combination because Petitioner failed to establish key routing-table and header-field limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person of ordinary skill in the art at the time of the claimed invention would have “a minimum of a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field, and approximately two years of professional experience with data communications and routing, including in the context of wireless communications as applied to RFID systems, or other relevant industry experience.” Pet. 13 (citing Ex. 1003 ¶ 30). Patent Owner does not dispute” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Although the Federal Circuit has endorsed application of the broadest reasonable interpretation in construing claims during postgrant proceedings before the Board, it has cautioned that such endorsement “is not to say, however, that the Board may construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). “Rather, ‘claims should always be read in light of the specification and teachings in the underlying patent.’” Id. (quoting Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)). In addition, “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Id. (citing Tempo Lighting Inc. v. Tivoli LLC, 742 F.3d 973, 978 (Fed. Cir. 2014)). The Federal Circuit has emphasized that, even under the broadest reasonable interpretation, “the Board’s construction ‘cannot be divorced from the specification and record evidence,’” id. (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)), and “‘must be consistent with the one that those skilled in the art would reach,’” Id. (quoting In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). With these principles in mind, we determine that Patent Owner’s proposed construction conforms with the broadest reasonable interpretation of “header field,” which excludes the “routing parameters” that are saved in the “routing table.” At the oral hearing, Patent Owner conceded that “if you look at the term header field in a vacuum without any context, it could mean” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“unpatentability, we determine that there are multiple deficiencies with Petitioner’s showing with respect to the proposed combination as related to specifically recited claim limitations. See 35 U.S.C. § 316(e); 35 U.S.C. § 312(a) (requiring the petition to identify “in writing and with particularity . . . the grounds on which the challenge to each claim is based”); see also 37 C.F.R. § 42.104(b) (requiring “a statement of the precise relief request”). Because we find that even the combination, if effected in the manner proposed by Petitioner, does not meet all limitations recited in the challenged claims, we do not reach the issue of whether Petitioner articulates sufficient reasoning with rational underpinning to effect the combination. See Pet. 21–28; PO Resp. 21–47. First, we agree with Patent Owner that Petitioner insufficiently shows that the combination it proposes teaches or suggests “using the routing channel number as an index to select the destination point to which the 7 Although we rely on illustrations of Petitioner’s proposed combination as set forth in the Reply because they are more clear, we find those illustrations consistent with the position taken by Petitioner in the Petition. See Pet. 24– 27. controller subsequently sends the data.” PO Resp. 59–61. This limitation is recited in both independent claims 1 and 12 in the context of searching for a destination point of the data in the routing table. Ex. 1001, col. 19, ll. 6–9, col. 20, ll. 40–43. In articulating how it draws a correspondence between elements recited in the claims and entries of its proposed routing table, Petitioner makes the following identifications: (1) the recited “routing channel number” corresponds to the channel identifier in the inbound VCI allocated to a first data path defined by the card access module and router; (2) the recited “source point” corresponds to “an identifier of the SAP associated with a smart card application on the contact smart card . . . in the inbound ‘VPI’; and (3) the recited “destination point” corresponds to “an identifier of an SAP associated with software . . . in the outbound VPI.” Pet. 36. With these correspondences, we agree with Patent Owner that the channel identifier in the inbound VCI cannot function as an “index to select the destination point” as the claims require because there is no unique association of the outbound VPI with the inbound VCI.8 PO Resp. 59. This is evident from the table provided in the Reply, and reproduced above, in 8 Although we agree with Petitioner, as explained above in Section II.C.3, that a construction of “routing table” does not require a “one-to-one correspondence between the routing channel number and each corresponding routing parameter,” see PO Resp. 57 (emphasis added), the nature of an “index” nevertheless requires a unique association of the index with what it indexes. That is, an “index to select the destination point” must uniquely identify the selected destination point, even if the same destination point can be selected by multiple indexes. A “one-to-one” correspondence would additionally require that each destination point be selected only by a single index. which the same VCIin value of “Chin 1” is associated with different values of VPIout, namely “CPU SAP 1” in the first row and “RF SAP 1” in the third row.” slip op. at 29
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner also contends that “even under [Patent Owner’s] improper interpretation, it would have been an obvious implementation choice to use unique channel numbers as discussed in §V.B [of the Reply], such that the destination point is selected only with the channel number.” Reply 27–28 (citing Ex. 1024 ¶ 123). We do not consider this argument because it goes beyond the scope of argument made in the Petition. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’ [as required by 35 U.S.C. § 312(a)(3)].”).” slip op. at 31
Patent outcomesUS 7,905,419 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,905,419 - Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing grantedPTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing
Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedMixed
“a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,079,086
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.