- Netflix, Inc. v. Divx, LLCRehearing deniedPTAB · Dec 2, 2020 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied DivX’s rehearing request, leaving the institution decision in place because the rule remained effective and Dr. McDaniel’s testimony was supported on the record.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“assertions regarding Dr. McDaniel’s testimony. Dr. McDaniel testified that (a) Chen teaches video data streams, (b) “[a]s was widely known in the art, for example as disclosed by Grab-333,[1] a [person of ordinary skill in the art] would have understood that video data streams were comprised of a series of video frames,” and (c) a person of ordinary skill in the art “would have understood that Chen teaches a plurality of frames of video are encrypted using at least one scrambling key/control word.” Ex. 1003 ¶ 112;” slip op. at 3
NonePatents in suitUS 9,184,920 - Apple Inc. / HTC Corporation et al. v. Invt Spe LLCAll claims unpatentablePTAB · Apr 8, 2020 · IPR2018-01476 · APJ J John Lee · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Paulraj, Walton, and Huang; the Wallace and Walton ground does not establish the required simultaneity.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in electrical engineering or an equivalent as well as three years of experience working with “multi-antenna wireless communication systems,” or one year of such experience with a master’s degree in electrical engineering focusing on communications systems. Pet. 7–8 (citing Ex. 1003 ¶ 41). Patent Owner does not dispute Petitioner’s 2 U.S. Patent No. 6,067,290, issued May 23, 2000 (Ex. 1005, “Paulraj”). 3 H. Huang et al., Achieving High Data Rates in CDMA Systems Using BLAST Techniques, in CONFERENCE RECORD, IEEE GLOBAL TELECOMMUNICATIONS CONFERENCE 2316 (1999) (Ex. 1006, “Huang”). 4 U.S. Patent No. 7,095,709 B2, issued Aug. 22, 2006 (Ex. 1008, “Walton”). 5 U.S. Patent Application Pub. No. 2002/0193146 A1, published Dec. 19, 2002 (Ex. 1009, “Wallace”). formulation of the level of skill in the art, and applies it for its arguments. PO Resp. 10. Based on the information presented in the Petition and Dr. Singer’s testimony, we agree with Petitioner’s formulation, which is supported by the record and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). B.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“limiting. See Pet. Reply 5; PO Sur-reply 7–8; Tr. 8:5–15. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, 182 F.3d at 1305). On the other hand, a preamble generally is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). For example, if “deletion of the preamble phrase does not affect the structure or steps of the claimed invention,” the preamble is not limiting. Id. at 809 (citing IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000)). Here, we are persuaded the preamble is limiting. Although the parties dispute whether spatial multiplexing and transmit diversity occur simultaneously, it is undisputed that spatial multiplexing is part of the claimed invention. See Pet. 2; PO Resp. 6; Tr. 6:13–26 (Petitioner indicating “we agree that the claims require transmit diversity and signal multiplexing”). The Specification supports this view. For example, the Specification states that “i[t] is an object of the present invention to improve reception performance of specific data on a receiving side while maintaining the transmission efficiency of a communication system.” Ex. 1001, 2:3–6 (emphasis added). The technique for improving transmission efficiency disclosed in the Specification is spatial multiplexing. See id. at 5:13–17 (describing “two transmission systems to transmit different items of data, [which] maintains high transmission efficiency”), Figs. 3, 4; see also id. at 1:42–47 (indicating “signals sent from a plurality of transmission antennas at the same timing and same frequency in substream units” help “realize a high-speed, high-volume communication”). Further, the only part of claim 1 that recites spatial multiplexing is the preamble. See Pet. Reply 3–6; PO Sur-reply 4; Ex. 1020, 21:22–22:18. Neither party indicates that any other claim language captures spatial multiplexing. Thus, if the preamble is not limiting, claim 1 would not incorporate spatial multiplexing at all, which is inconsistent with how the invention is described in the Specification. Consequently, we determine that the preamble of claim 1 recites “essential structure or steps” and, thus, is “necessary to give life, meaning, and vitality” to the claim. See Catalina Mktg., 289 F.3d at 808.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The final limitation of claim 1 (the “wherein” clause) recites “generat[ing] a replica data item by replicating a specific data item of the plurality of data items, and map[ping] the plurality of data items to the at least one of the plurality of antennas such that the specific data item and the replica data item are transmitted from different antennas at a same time.” It is undisputed that this limitation recites transmit diversity. Critically, as Patent Owner observes, this limitation recites “a specific data item of the plurality of data items” (emphasis added), i.e., the “specific data item” that is replicated for transmit diversity is part of the same “plurality of data items” recited in the preamble for spatial multiplexing. See PO Resp. 7 (“Therefore, the specific data item described in transmit diversity (TD) with the replica data item, is also involved in spatial multiplexing (SM) at the same time . . . with other data items of the plurality [of] data items . . . .”); PO Sur-reply 4 (asserting that the “same ‘plurality of data items’ are subject to spatial multiplexing in the preamble and transmit diversity in [the ‘wherein’ clause]”); Tr. 44:22–45:2. Consequently, in order for both the preamble limitations and the “wherein” clause limitations to be met, a plurality of data items, including the specific data item, must be transmitted via spatial multiplexing, i.e., using a plurality of antennas in parallel. In other words, both the specific data item and at least one other data item that is different (i.e., the recited “plurality”) must be transmitted at the same time. In addition, both the specific data item and its replica data item must also be transmitted at the same time, as recited in the “wherein” clause, for transmit diversity. Thus, at least three data items—the specific data item, its replica, and another different data item—must be transmitted at the same time to satisfy the claim because both spatial multiplexing (preamble) and transmit diversity (“wherein” clause) must occur. See PO Resp. 7; Pet. Reply 2–3; Ex. 1020, 12:17–21. As a result, the claim requires simultaneity.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Based on the complete trial record, we agree with Petitioner’s reasoning and evidence discussed above. Consequently, we find that a preponderance of the evidence indicates that the combination of Paulraj, Walton, and Huang teaches each limitation of claims 1 and 6, including the requirement of simultaneity. Patent Owner advances several arguments opposing Petitioner’s contentions, which we find unpersuasive for the reasons explained below.” slip op. at 23
Patent outcomesUS 7,764,711 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,764,711 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00840 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied because it did not show error in the Board’s § 325(d) analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts. Petitioner’s Rehearing Request (page 8) cites to the Petition at page 20 and Exhibit 1054. Page 20 of the Petition, however, contains Petitioner’s argument that FIPA97 was made publicly available as a single document, as discussed above. It does not include any argument or suggestion that FIPA97 was released as individual parts. Additionally, Exhibit 1054 is not cited on page 20 of the Petition in the discussion of FIPA97 nor does it appear that Exhibit 1054 was cited anywhere in the Petition. Thus, because Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts, we could not have overlooked that argument. Petitioner’s contention of error in our determination that FIPA97 was involved during examination of the ’128 patent application is premised upon finding that FIPA97 existed as individual parts. Because Petitioner fails to demonstrate that we overlooked an argument that was not made, we are not persuaded of error.” slip op. at 4
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied under § 325(d) because Microsoft did not show the Board overlooked arguments made in the petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00839 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft's rehearing request, leaving institution denied under § 325(d) because it did not show the Board overlooked arguments about FIPA97 or misweighed the Becton factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Mylan Pharmaceuticals Inc. v. Sanofi-Aventis Deutschland GmbHAll claims unpatentablePTAB · Apr 2, 2020 · IPR2018-01670 · APJ Hyun J Jung · IPR · Final written decision
Claim 1 is unpatentable as obvious over Burroughs and Steenfeldt-Jensen; Petitioner’s motion to exclude is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, or an equivalent degree” and “would have understood the basics of medical-device design and manufacturing, and the basic mechanical elements (e.g., gears, pistons) involved in drug-delivery devices.” Dec. to Inst. 15 (quoting Pet. 15).” slip op. at 11
- ExcludeMotion to exclude, deniedDenied
“Therefore, we are not persuaded to exclude the exhibits or expressly limit their purpose pursuant to FRE 105 and Petitioner’s Motion is denied with respect to these exhibits.” slip op. at 93
Patent outcomesUS 8,679,069 unpatentableNonecites Phillips · KSR · GrahamPatents in suitUS 8,679,069 - Apple Inc. / HTC Corporation et al. v. Invt Spe LLCAll claims unpatentablePTAB · Mar 25, 2020 · IPR2018-01475 · APJ Thu A Dang · IPR · Final written decision
Claims 1–18 are unpatentable under §103 over Tomlinson and Malkamaki; claims 1, 2, 4, 10, and 11 are also unpatentable over Davis and Wei.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Although we agree with Patent Owner that the broadest reasonable interpretation does not simply mean the broadest interpretation (PO Resp. 13), we are not persuaded by Patent Owner’s contention that the broadest reasonable claim construction for “first information sequence” should be “important information.” Id. at 15. As Petitioner points out during oral arguments, the claims are not specific as to what “first information” is other than “first” is merely used to “differentiate” it from “second” information, “a very common thing when it comes to patent claim drafting.” Tr. 18. As Petitioner points out, “the Federal Circuit said the use of terms first and second is a common patent law convention to distinguish between repeated 12 instances of an element or limitation, which is exactly how Patent Owner has used it here.” Id. (citing 3M Innovative, 350 F.3d at 1371). Further, as Petitioner points out, dependent claims 5–6 and 13–14 limit the “first information sequence” from the respective independent claims to “specific types of information,” including “retransmission information” and information “used for an error control.” Pet. Reply 1–2. That is, “where the applicant intended to limit an information sequence to a specific type, it made those narrowing characteristics express.” Id. at 2 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“Other claims . . . can also be valuable sources of enlightenment as to the meaning of a claim term.”)). As Petitioner points out, here, Applicant chose not to limit (at least in the independent claims) the sequences of bits “to any particular type.” Id. Accordingly, we are unpersuaded by Patent Owner’s contention that the Specification shows that (1) “features of the present invention as a whole” limit the scope of the claims and (2) the Specification’s repeated descriptions mapping “important information” to “the first and second bits.” PO Sur-reply 5. Given the broadest reasonable interpretation in view of the Specification, we construe the term “first” information sequence as a particular information sequence, and “second” information sequence as another information sequence distinguishable from the “first.” The Specification, including the claim language and the prosecution history, do not compel any different conclusion. We also are persuaded by Petitioner’s contention that adding a subjective term such as “important” into the claim construction would 13 introduce ambiguity. Tr. 20–21. Thus, we agree that we should not adopt a construction that replaces an unambiguous claim limitation with one that depends on purely subjective opinion. See Intellectual Ventures, 902 F.3d at 1381. Thus, we conclude “first information sequence” can be any information sequence that if different from a “second information sequence,” wherein “a sequence of bits” are generated including “at least one bit” of each of the first and second information sequences. Ex. 1001, 10:50–67.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“As for the other claim limitations, we determine that we need not further construe expressly any other claim terms to resolve the arguments before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge the Petition’s definition of the level of skill of a POSITA. See generally PO Resp. We adopt and apply Dr. Singer’s assessment of the level of ordinary skill in the art, which is 3 Neither party has presented arguments regarding objective evidence of nonobviousness in the instant proceeding. 16 consistent with the level of ordinary skill in the art to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art).” slip op. at 16
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Although Petitioner acknowledges that Patent Owner relies on Dr. Nettleton to dispute that Tomlinson’s 12-bit sequence of symbol words is a “sequence of bits,” Petitioner contends that “Dr. Nettleton later recanted that opinion.” Pet. Reply 13 (citing Ex. 1021, 18:23–19:22). In particular, Petitioner contends that Dr. Nettleton “confirmed” that Tomlinson’s signal organizer “recombines bits from the base and overlay stream into ‘a sequence of bits,’ i.e., the symbol words.” Id. at 14 (citing Ex. 1021, 48:10– 20). That is, in Dr. Nettleton’s deposition, he confirmed that in Figure 3 of Tomlinson, “the information bits from the base stream and the overlay stream are . . . recombined back into a sequence of bits,” wherein “that sequence of bits” are the “symbol words.” Ex. 1021, 48:10–20. We agree with Petitioner that Tomlinson’s signal organizer 16 is arranged to receive the base and overlay streams and to generate “a succession of symbol words of binary form.” See Ex. 1007, 16:54–56. Based on this teaching by Tomlinson, and the deposition of Dr. Nettleton (Ex. 1021, 48:10–20), we are persuaded by Petitioner’s contention that Tomlinson’s signal organizer generates 12 bits per frame including 8 bits from the base stream and 4 bits from the second/overlay stream. Pet. 17.” slip op. at 26
Patent outcomesUS 7,760,815 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,760,815 - Apple Inc. / HTC Corporation et al. v. Invt Spe LLCNo claims unpatentablePTAB · Mar 25, 2020 · IPR2018-01473 · APJ Thu A Dang · IPR · Final written decision
Claims 1–3, 5–9, and 11 were not shown unpatentable under § 103 over Keskitalo and Lindell because Petitioner did not adequately explain why a skilled artisan would combine their teachings.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Petitioner contends that “[c]laim 1 includes limitations in means-plus[-]function format, which creates a rebuttable presumption that the [Applicant] intended to invoke 35 U.S.C. § 112, ¶ 6.”3 Pet. 7; see also Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). In the Decision on Institution, we addressed Petitioner’s proposed constructions of the means-plus-function terms (Pet. 10–12), and we determined that Petitioner has set forth proposed structures that support these limitations. Dec. on Inst. 8–12; see 37 C.F.R. § 42.104(b)(3) (2018).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As for the other claim limitations of independent claims 1, 6, and 7, and claims 2, 3, 5, 8, 9 and 11 depending therefrom, neither party has proposed a construction of any other term. See Pet. 6–7; PO Resp. 12–13. We determine that we need not further construe expressly any other claim terms to resolve the arguments before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. to an inter partes review).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). In that regard, Petitioner’s expert, Andrew C. Singer, Ph.D., testifies that a POSITA at the time of the invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with digital communication systems or in network engineering or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 4–5; Ex. 1003 ¶ 35. Patent Owner does not dispute Dr. Singer’s assessment of the level of ordinary skill in the art. See generally PO Resp. We adopt and apply Dr. Singer’s assessment of the level of ordinary skill in the art, which is consistent with the level of ordinary skill reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“position of Patent Owner. In particular, we are unpersuaded by Petitioner’s contention that it would have been obvious to modify Keskitalo such that its predetermined thresholds for transmission power are average transmission power values in accordance with the teachings of Lindell. Pet. 26. That is, we are not persuaded that Petitioner has demonstrated by the preponderance of the evidence that it would have been obvious to have used Lindell’s average transmission power values as Keskitalo’s predetermined thresholds for transmission power. See Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); Magnum Oil Tools, 829 F.3d at 1380 (holding that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”).” slip op. at 24
Patent outcomesUS 6,611,676 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,611,676 - Intel Corporation v. VLSI Technology LLCNo claims unpatentablePTAB · Feb 26, 2020 · IPR2018-01661 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–5, 15, and 16 were not shown unpatentable because the asserted combinations failed to establish the claimed power gain and power loss relationship used to determine whether to power down.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“B. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Raghunathan, Petitioner proposes that a person of ordinary skill in the art at the time of the alleged invention of the ’014 patent “would have had at least an M.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience), and would have three years of experience with computer hardware and software power management design techniques.” Pet. 24 (citing Ex. 1102 ¶¶ 57–58). In our Institution Decision, we adopted Petitioner’s proposal with a modification to the level of education based on Patent Owner’s proposal in its Preliminary Response. Inst. Dec. 7 (citing Prelim. Resp. 5). Specifically, we determined that “a person of ordinary skill in the art would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and three years of experience with computer hardware and software power management design techniques.” Id. Neither party argues during trial that our definition of the level of ordinary skill in the art was incorrect. See PO Resp. 2–3. See generally Pet. Reply. Because our preliminary determination is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that a person of ordinary skill in the art would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and three years of experience with computer hardware and software power management design techniques.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need only construe claim terms that are in controversy, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In this proceeding, neither party proposes a formal construction for any term. See Pet. 23; PO Resp. 3. We find it unnecessary to construe expressly any claim terms to resolve the controversy before us.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Weighing the parties’ arguments and evidence on the complete record now before us, we find Petitioner has not shown that a person of ordinary skill in the art would have understood Takahashi’s “predetermined value” to be an estimated power gain. Patent Owner, with the support of Dr. Wolfe’s credible testimony, persuasively argues that Takahashi’s “predetermined value” is a previous value of the cache-miss rate. Petitioner, on the other hand, does not point to anything in Takahashi that describes the “predetermined value” as an estimated power gain, nor does Petitioner cite any testimony from Dr. Raghunathan in support of its position other than a portion of his declaration that is substantially the same as the discussion in the Petition. See Pet. 33–34 (citing Ex. 1102 ¶ 80); see also Ex. 1102 ¶¶ 72– 80 (testimony substantially the same as pages 29–34 of the Petition). Without any suggestion in Takahashi that the “predetermined value” relates to an estimated power gain, Takahashi’s stated goal of reducing power consumption is not sufficient to show that Takahashi’s “predetermined value” is representative of an estimated power gain. For these reasons, we find that Petitioner has not established that Takahashi teaches or suggests an estimated power gain or determining whether to power down a portion of a device component in response to a relationship between an estimated power gain and an estimated power loss, as recited in independent claim 1. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Takahashi.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We focus on one argument we find particularly persuasive—that Hu does not teach using the L2Access:leak ratio to “determin[e] whether to power down” a cache or a portion of a cache, as required by claim 1, even if the L2Access:leak ratio can be considered a relationship between an estimated power gain and an estimated power loss. See PO Resp. 24; PO Sur-reply 16–18. In its Reply, Petitioner alleges that “Hu explicitly discloses using the L2Access:leak ratio to determine when to power down the L1 cache.” Pet. Reply 16 (emphasis added) (citing Ex. 1102 ¶¶ 97–98). Petitioner, however, does not support this proposition by quoting or citing specific language in Hu, relying only on Dr. Raghunathan’s declaration, which provides substantially the same discussion as the Petition. Compare Ex. 1102 ¶¶ 97–98, with Pet. 39–40. We agree with Patent Owner that the portion of Hu cited in the Petition and Dr. Raghunathan’s declaration does not teach using the L2Access:leak ratio to determine whether to power down the L1 cache, as Petitioner contends. See PO Sur-reply 16–18; Pet. 39–41; Ex. 1102 ¶¶ 97– 99. Rather, Hu discloses determining values of the normalized cache leakage energy for different decay intervals at four values of the L2Access:leak ratio—5, 10, 20, and 100. Ex. 1104, 175–76; see PO Sur-reply 17. Hu uses these assumed values of the L2Access:leak ratio as inputs to generate simulation data, not to determine whether to power down a cache or portion of a cache. Ex. 1104, 175, see PO Resp. 24; PO Sur-Reply 15–16. Petitioner argues that Hu teaches that the higher the L2Access:leak ratio, the longer the system should wait before powering down the cache. Pet. 39–41; Pet. Reply 16–17. Hu, however, does not expressly compare the effect of different L2Access:leak ratios other than to state that when the L2Access:leak ratio is 100, a small decay interval is detrimental to performance and power. Ex. 1104, 175. As Patent Owner correctly asserts, Hu does not describe using the L2Access:leak ratio to determine an appropriate decay interval, nor does Hu describe using the L2Access:leak ratio to determine whether to power down a portion of a cache. See PO Sur-Reply 17–18.” slip op. at 24
Patent outcomesUS 8,020,014 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,020,014 - Apple Inc. / HTC Corporation et al. v. Invt Spe LLCAll claims unpatentablePTAB · Feb 21, 2020 · IPR2018-01472 · APJ Thu A Dang · IPR · Final written decision
Claims 1–3, 5, 6, 12, 13, 15, and 16 are unpatentable under § 103 over Nakamura and Okumura, and independently over Bhagalia and Abe.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“With respect to claim 1, according to Petitioner, the claim includes “limitations in means-plus function format, which creates a rebuttable presumption that the [Applicant] intended to invoke § 112, ¶ 6.”2 Pet. 8–9; see also Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). In the Decision on Institution, we addressed Petitioner’s proposed constructions of the means-plus-function (“MPF”) terms, and we determined that Petitioner had set forth proposed structures that support these limitations. Dec. on Inst. 9–12 (citing Pet. 9–11); see 37 C.F.R. § 42.104(b)(3). As we noted in the Decision on Institution, Petitioner’s constructions presume that the meaning of specific functions, such as “generating” a frame, for example, are generally known. Dec. on Inst. 10. Patent Owner 2 Applicant is Matsushita Electric Industrial Co., Ltd. 9 has not rebutted this presumption. Petitioner’s proposed constructions of the means-plus-function terms in the claims (Pet. 9–11) are as follows:” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“As for the other claim limitations of independent claims 1, 5, 12, and 15, and claims 2, 3, 6, 13, and 16 depending respectively therefrom, for the reasons set forth below, the explicit requirements set forth in claims themselves sufficiently limit the claims without requiring further construction. Thus, we determine that we need not further construe expressly any other claim terms to resolve the arguments before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. We consider the level of ordinary skill in the art to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding 14 that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art). In general, we agree with the areas of agreement in the parties’ proposals. Patent Owner has not explained sufficiently why researching or working particularly with “cellular radio communication systems” is necessary (PO Resp. 12), and so we adopt Petitioner’s proposed general experience of working with “digital communication systems or in network engineering” (Pet. 6), which comports with the level of ordinary skill in the art reflected in the prior art of record. Accordingly, we determine that a person of ordinary skill would have a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with digital communication systems or in network engineering or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“original); also Pet. 24–25). Even Patent Owner concedes that Claim 12 of Nakamura discloses that “necessary signals could include ‘one or more’ of pilot signals, synchronization information, order number, and TPC information.” Sur-Reply 4 (citing 1004, 15:51–61). The Supreme Court has stated that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416; Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 550 U.S. at 416). According to Petitioner, “[t]he proposed modification to Nakamura would be straightforward, not requiring undue experimentation, and would produce predictable results.” Pet. 25. That is, “it would have been natural and an application of nothing more than ordinary skill and common sense.” Id. at 25–26. Here, the question is whether combining Okumura’s teaching of using both pilot and TPC symbols in the same necessary signal with Nakumura’s necessary signals comprising control data, such as pilot symbols and TPC symbols, was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters, 485 F.3d at 1162 (citing KSR, 550 U.S. at 421). As Petitioner points out, Patent Owner’s Expert, “Dr. Vojcic admitted that no technical barriers would have prevented a POSITA from modifying the expressly disclosed embodiments of Nakamura to combine pilot and TPC symbols.” Reply 11 (citing Ex. 1016, 34:14–35:20). We view Petitioner’s combination as being akin to a simple substitution of Okumura’s use of both pilot and TPC 34 symbols in Nakamura’s necessary signals. Cf. KSR, 550 U.S. at 417 (indicating determining obviousness is easier when the claimed subject matter involves “a simple substitution for one known element for another or the mere application of a known technique to a piece of prior art ready for improvement.”). We are unpersuaded by Patent Owner’s contention that “[t]he Petition’s proposed combination of Nakamura and Okumura is guided by the ’563 patent and driven by hindsight.” PO Resp. 32. Rather, we agree with Petitioner that Nakamura and Okumura provide sufficient motivation for combining the references in the manner required by the claims. Pet. 24–25 (citing Ex. 1004, 15:53–61; Ex. 1005, 14, 18, Fig. 2; Ex. 1003 ¶¶ 53–54). First, although Patent Owner contends that “there is no discussion of the benefits gained by sending both pilot and power control symbols” (PO Resp. 32 (citing Pet. 21), we agree with Petitioner that Nakamura explains that pilot symbols permit ‘coherent detection with interpolation at a receiving side’ and that power control symbols permit ‘carrying out a transmission power control’” and this provides a reason one of ordinary skill in the art would make Petitioner’s proposed combination. Ex. 1004, 11:48–50 (“In this eighth embodiment, the necessary signal generation unit 10 includes pilot signals to be used in carrying out the coherent detection with interpolation at a receiving side”), 13:11–14 (“In this eleventh embodiment, the necessary signal generation unit 10 includes a transmission power control information which is necessary in carrying out a transmission power control.”); Pet. 21 (quoting Ex. 1004, 11:48–50, 13:11–14)). Thus, although Patent Owner contends that Nakamura “does not” slip op. at 34
Patent outcomesUS 6,466,563 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,466,563
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.