- 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 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing deniedPTAB · Dec 4, 2017 · IPR2017-00649 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution on claims 1–30 because Petitioner did not show that the Board overlooked or misapprehended its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The Decision Denying Institution considered Petitioner’s argument regarding combining Bonella’s power reduction technique and Bonella’s power loss algorithm as it was presented in the Petition. Thus, Petitioner has not established the proposition that the Board overlooked or misapprehended some evidence in the record. A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. Thus, we are not persuaded by this argument.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“disclosed the specific feature alleged to be obvious. Req. Reh’g 12. We disagree. The Decision Denying Institution found that Long and Ashmore did not provide motivation for the specific combination advanced by Petitioner, stating “Petitioner does not point to a motivation to adjust the frequency of the memory banks specifically, simply a general motivation to reduce battery power during power loss.” Inst. Dec. 13. Thus, the Decision Denying Institution stated “we are not persuaded Ashmore [or Long] supports that contention that running at the frequency associated with Power Level 4 during a power loss would have been obvious.” Id. 13–14. “[T]o establish obviousness based on a combination of the elements disclosed in the prior art, there must be some motivation, suggestion or teaching of the desirability of making the specific combination that was made by the applicant.” In re Kotzab, 217 F.3d 1365, 1370 (Fed.Cir.2000) (citation omitted)(emphasis added)). “A determination of obviousness cannot be reached where the record lacks ‘explanation as to how or why the references would be combined to produce the claimed invention.’” Hyundai Motor Co. v. Blitzsafe Texas, LLC, Case IPR2016-01476, slip op. at 32 (PTAB Jan. 24, 2017) (Paper 12) (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)). The Decision Denying Institution properly followed this precedent in requiring a specific motivation to make the combination alleged by Petitioner to meet the claimed combination.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“CONCLUSION The Request for Rehearing does not demonstrate that we misapprehended or overlooked any matters raised in the Petition declining to institute review of claims 1–30.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,301,833 - Composite Materials Technology, Inc. v. Greatbatch, Ltd.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01441 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Contrary to Petitioner’s arguments, the fact that two references relate to the same general subject matter is not, by itself, sufficient to explain why one of ordinary skill in the art would have sought to modify one reference in view of the other; it demonstrates at most that the two references are in the same field of endeavor. See In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). Nor is an alleged admission that Fife and Stephenson are prior art to the ’075 patent sufficient to explain why these two references would be combined in a manner necessary to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 389, 418–19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”). In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”). As Petitioner provides insufficient rationale to explain why one of ordinary skill in the art would have combined the disclosures of Fife and Stephenson in a manner necessary to achieve the claimed invention, it has not demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over those references. And, because challenged claims 2–11 and 13–18 each depend from claim 1, and because the deficiencies in Petitioner’s arguments and evidence regarding claim 1 are not remedied by Petitioner’s arguments and evidence regarding claims 2–11 and 13–18, Petitioner has likewise not demonstrated a reasonable likelihood that the subject matter of those claims would have been obvious over Fife and Stephenson.6” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,312,075 - 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 - PTAB · Sep 8, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 unpatentable over Shuen and RFC1234, and claim 19 unpatentable over Bellovin.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successDecided for petitioner
“mapping for the network address translation” under the Board’s construction of that phrase, i.e., “a property associated with the mapping in which the mapping expires after it has not been used in the translation of a packet for a period of time associated with the mapping,” the Petition cites the following language from Shuen:” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Disclaimer not foundDecided for petitioner
“from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000) (citations omitted). “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Id. (citations omitted). Whether and to what extent material has been incorporated by reference into a host document is a question of law. Id.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for petitioner
“Id. at 3 (emphasis omitted). Notably, Patent Owner did not raise this argument (i.e., that Shuen’s “time to live” does not satisfy the recited “time out . . .” under the Board’s construction) in its Patent Owner Response. Patent Owner asserts, however, it “noted this deficiency of Petitioner’s proofs in the January 18, 2017 hearing” and “[t]his deficiency of Shuen was first raised in Patent Owner’s Preliminary Response.” Req. Reh’g. 4. However, our rules do not allow Patent Owner to incorporate arguments by reference from its Preliminary Response (see 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference form one document into another document”)), and our Scheduling Order provides that any arguments and evidence not contained in the Patent Owner Response will be “deemed waived” (Paper 9, 3). Petitioner asserted at the oral hearing that the argument was new and, as such, Petitioner did not have a reasonable ability to respond to the argument. Tr. 43:8–14. We determine Patent Owner has waived its argument that Shuen does not disclose the “has not been used” portion of our construction of the phrase “time out of the mapping for the network address translation.”” slip op. at 3
Claim construction§ 103 obviousnessPatents in suitUS 8,544,079 - 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
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.