- PTAB · Dec 28, 2016 · IPR2015-01037 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing in both proceedings because Petitioner did not show that Su was publicly accessible by the critical date or that the Board overlooked or misapprehended a petition argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner fails to recognize that our Decision was based on Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A 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.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The sole evidence cited in the Petition is a print-out of a record created in 2008 by Theses Canada. Ex. 1013 (“TH-Su”). As we noted in our Decision Denying Institution, TH-Su includes an active PDF link to Su, identifies Su as resident on two microfiches, indicates the publisher is the Ottawa: National Library of Canada [1999], and includes an abstract. Dec. Denying Inst. 7. TH-Su also includes an AMICUS No. (20672380)1, an international standard book number (ISBN 0612312569), a Canadian Number (992099080) and the following information “Copies: NL Stacks – Mic. TJ- 31256.” Id. at 7-8. However, TH-Su is a document created and modified on July 18, 2008, not in 1999. Id. at 7–8. Petitioner failed to tie 3 We agree with Petitioner’s assertion that it did not concede any of the argument set forth in Patent Owner’s Preliminary Response. Req. Reh’g. 6, fn 4. However, our inquiry during the conference of August 4, 2016 concerned facts and evidence. any of these numerical designations in TH-Su to public accessibility prior to 2008. Thus, Petitioner failed to meet its burden to demonstrate that Su was publically accessible in 1999.” slip op. at 4
§ 102 anticipationPatents in suitUS 8,122,141 - PTAB · Dec 28, 2016 · IPR2015-01033 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing of the institution denials because Petitioner did not show that Su was publicly accessible before the patents’ critical dates.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. 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 reply. Id. For the reasons discussed below, the Request for Rehearing is DENIED.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A 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.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
§ 102 anticipationPatents in suitUS 8,327,011 - Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentablePTAB · Dec 21, 2016 · IPR2015-01226 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–28 are unpatentable under § 103 over the specified combinations; the motion to amend with substitute claims 29–50 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Id. at 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Id. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between American Securities and Petitioner were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Id. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Id.” slip op. at 11
- ExcludeNot reached
“Similar to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly recount statements made by Petitioner’s CEO during settlement discussions between Patent Owner and GTL. Mot. Exc. 2nd 1–2.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s declarant, Mr. James R. Bress, testifies that one of ordinary skill in the art “would have a [Bachelor of Science] B.S. degree in Electrical Engineering, Computer Science, or an equivalent or related field (or comparable industry experience), as well as at least 2–3 years of academic or industry experience with call monitoring or recording.” Ex. 1003 ¶ 30; see Pet. 11 (citing Ex. 1003 ¶ 30). Patent Owner’s declarant, Dr. Michael A. Caloyannides, proposes that Petitioner’s definition be 21 adopted. Ex. 2013 ¶ 24. We adopt Mr. Bress’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We determine that Petitioner has articulated sufficient reasoning with some rational underpinning to support the combinations of (1) Schrage and Koga; (2) Schrage, Koga, Creamer, and Peterson; (3) Schrage, Koga, and Glowny; (4) Schrage, Koga, Glowny, Peterson, and Creamer; and (5) Schrage, Koga, Glowny, and Ostrover. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). We also credit Mr. Bress’ testimony that one of ordinary skill in the art would have had reason to combine the cited references. Ex. 1003. For these reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that the combination of Schrage and Koga would have conveyed to one of ordinary skill in the art the limitations recited in claim 15. We also determine that Petitioner demonstrates by a preponderance of the evidence articulated reasoning with some rational underpinning to support the legal conclusion that the subject matter of claim 15 would have been obvious to one of ordinary skill in the art in view of the teachings of Schrage and Koga as combined in the manner proposed by Petitioner.” slip op. at 33
Patent outcomesUS 8,135,115 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,135,115 - Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentablePTAB · Dec 15, 2016 · IPR2015-01222 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–11 and 13–15 are unpatentable as obvious over Strubbe and Rae; claims 12 and 16–20 were not shown unpatentable because the petition did not tie the connection-fee limitation to those references.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between American Securities and Petitioner 9 were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9. Third, we found ambiguous and unreliable statements made by a non- lawyer CEO during settlement negotiations covering “ongoing intellectual property disputes” (see Discovery Motion 1) failed to demonstrate that American Securities funded and controlled the instant proceeding. Discovery Order 9; see Exs. 2006, 2011.” slip op. at 9
- ExcludeMotion to exclude, deniedDenied
“Similarly to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly recount statements made by Petitioner’s CEO during settlement discussions between Patent Owner and GTL. Mot. Exc. 2nd, 1–2.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. One portion of the Specification cited by Patent Owner details: “[t]he list of items displayed for the inmate may be selected based upon data stored in the inmate's profile on JAMS database 115.” Ex. 1001, 3:61–63 (emphasis added). The conditional nature of the selection need not be incorporated into claim 8. In addition, the instant claim language would also read on a display of all items, with indications of 18 availability with each item for the inmate, such that all items would be displayed instead of Patent Owner’s truncated listing. As such, we conclude that Patent Owner’s proposed construction of the language of claim 8 is overly narrow and is not adopted in the analysis that follows.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s declarant, Dr. Leonard J. Forys, testifies that one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 2–3 years of academic or industry experience in a call center technology particularly computer telephony integration and in telephone networks in general.” Ex. 1003 ¶ 30; see Pet. 10 (citing Ex. 1003 ¶¶ 29–30). Patent Owner’s declarant, Mr. Ivan Zatkovich, proposes that Petitioner’s definition be adopted. Ex. 2012 ¶ 31. As such, we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 21
Patent outcomesUS 8,750,486 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,750,486 - Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01225 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–4 and 6–8 are unpatentable as obvious over the instituted combinations; claim 5 was not shown unpatentable over Magee, Nussbaum, and Juang.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10; Inst. Dec. 18. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8; Inst. Dec. 18. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8; Inst. Dec. 18.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“In the Decision to Institute, after considering constructions of SCF rating proffered by Petitioner and Patent Owner, we determined that the ’663 patent did not provide the requisite clarity, deliberateness, and precision necessary to define the term SCF rating, and we declined to read the limitation from the preferred embodiment into claim 1. Inst. Dec. 10–14 (citing Paulsen, 30 F.3d at 1480; Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); Am. Academy of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004); Van Geuns, 988 F.2d at 1184). We credited the testimony of Petitioner’s declarant, Homayoon Beigi, D. Eng’g Sci., that “[t]here is no definition of ‘Suspicious Call Finder (SCF) rating’ that would be immediately known to a person of ordinary skill in the art.” Inst. Dec. 14 (quoting Ex. 1003 ¶ 45).” slip op. at 24
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownOther
“data from said selected portion of speech.” In the Decision to Institute, we determined that “prosody” needed express construction, although neither party had proffered an express construction for the term. Inst. Dec. 15–16. We identified an express definition of “prosody” in the Specification: The word “prosody” (defined at Princeton University as ‘the patterns of stress and intonation in a language’) is often used in the field of affective computing (computing relating to emotion) to refer to emotion-indicating characteristics of speech.” Ex. 1001, 6:36–40; see Inst. Dec. 15 (quoting Ex. 1001, 6:36–40). Based on that definition, we preliminarily construed “prosody data” to mean “data reflecting emotion-indicating characteristics of speech” in our Decision to Institute and further determined that, on the partially-developed, pre-institution record, that the prosody construction was consistent with the plain language of claim 8. Inst. Dec. 15.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s declarant, Dr. Beigi, testifies that one of ordinary skill in the art “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent or related field (or comparable industry experience), as well as at least 1–3 years of academic or industry experience in speech processing.” Ex. 1003 ¶ 23; see Pet. 9–10 (citing Ex. 1003 ¶ 32) (asserting level of ordinary skill in the art). Patent Owner adopts Petitioner’s definition without contesting it. PO Resp. 10. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1007–1011), we also adopt the level of ordinary skill in the art employed by both Petitioner and Patent Owner.” slip op. at 30
Patent outcomesUS 8,886,663 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,886,663 - Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01359 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–3 and 5–7 were not shown unpatentable because Petitioner failed to establish that Hiroi taught the claimed voice delay for synchronizing voice and text.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“address the qualifications of one of ordinary skill in the art, but instead assert only that the relevant field of endeavor for the ’426 patent is “telephone communications.” PO Resp. 2; Ex. 2098 ¶ 25. This contention appears to relate to Patent Owner’s argument that Hiroi is not analogous art rather than to the level of ordinary skill in the art for assessing obviousness. See PO Resp. 36–49; Ex. 2098 ¶¶ 123–41. Thus, Patent Owner and its expert do not expressly dispute the level of skill in the art proffered by Petitioner and Mr. Occhiogrosso. In addition, although he does not offer his own opinion regarding the qualifications of a person having ordinary skill in the art, Mr. Zatkovich acknowledges Mr. Occhiogrosso’s definition and states that unless otherwise noted, the opinions expressed in his declaration testimony would not change under Mr. Occhiogrosso’s definition. Ex. 2098 ¶ 25 (citing Ex. 1012 ¶ 29). Based on our review of the record, including the experts’ testimony, the ’426 patent, and the prior art involved in this proceeding, we find that Petitioner’s proposal, as set forth by Mr. Occhiogrosso, accurately describes the qualifications of a person having ordinary skill in the art. Accordingly, we adopt Mr. Occhiogrosso’s characterization of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may provide a meaning for a term that is different from its ordinary meaning by defining the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the Institution Decision, we adopted Petitioner’s proposed construction of “assisted user,” recited in claims 1 and 5, as “a user who may be deaf or hard of hearing, but who also may be a normally hearing person who simply wants text assistance for some reason.” Dec. 5–6. Patent Owner does not challenge that construction. After considering the complete record, we maintain this construction of “assisted user” for this Final Written Decision. No other claim terms require express construction.” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree with and adopt Petitioner’s contentions as to how the combination of Engelke ’482 and Engelke ’405 teaches the identified limitations of claim 1. See Pet. 21–30. We also determine that a person of ordinary skill in the art at the time of the invention would have combined Engelke ’482 and Engelke ’405 in the manner asserted. In particular, we agree with Petitioner that combining the disclosure in Engelke ’405 of sending both voice and text to an assisted user who is hard of hearing with the re-voicing relay of Engelke ’482, which only provides text to an assisted user, would have been the application of a known technique to improve similar devices in the same way, and a combination of prior art elements according to known methods to yield predictable results. See Pet. 37–42, 44–45 (citing KSR, 550 U.S. at 416; Ex. 1012 ¶¶ 62–69).” slip op. at 13
Patent outcomesUS 6,493,426 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,493,426 - Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01357 · APJ Lynne E Pettigrew · IPR · Final written decision
Claim 1 was not shown unpatentable because the asserted combination did not establish that Hiroi taught or motivated the claimed voice delay.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“address the qualifications of one of ordinary skill in the art, but instead assert only that the relevant field of endeavor for the ’366 patent is “telephone communications.” PO Resp. 2; Ex. 2098 ¶ 25. This contention appears to relate to Patent Owner’s argument that Hiroi is not analogous art rather than to the level of ordinary skill in the art for assessing obviousness. See PO Resp. 35–48; Ex. 2098 ¶¶ 122–40. Thus, Patent Owner and its expert do not expressly dispute the level of skill in the art proffered by Petitioner and Mr. Occhiogrosso. In addition, although he does not offer his own opinion regarding the qualifications of a person having ordinary skill in the art, Mr. Zatkovich acknowledges Mr. Occhiogrosso’s definition and states that unless otherwise noted, the opinions expressed in his declaration testimony would not change under Mr. Occhiogrosso’s definition. Ex. 2098 ¶ 25 (citing Ex. 1012 ¶ 29). Based on our review of the record, including the experts’ testimony, the ’366 patent, and the prior art involved in this proceeding, we find that Petitioner’s proposal, as set forth by Mr. Occhiogrosso, accurately describes the qualifications of a person having ordinary skill in the art. Accordingly, we adopt Mr. Occhiogrosso’s characterization of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In the Institution Decision, we adopted Petitioner’s proposed construction of “assisted user” as “a user who may be deaf or hard of hearing, but who also may be a normally hearing person who simply wants text assistance for some reason.” Dec. 5–6. Patent Owner does not challenge that construction. After considering the complete record, we maintain this construction of “assisted user” for this Final Written Decision. No other claim terms require express construction.” slip op. at 6
- ExcludeNot reached
“Under the circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude. As discussed above, even without excluding Mr. Occhiogrosso’s testimony, we have determined that Petitioner has not demonstrated by a preponderance of the evidence that the challenged claims are unpatentable. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
Patent outcomesUS 6,934,366 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,934,366 - Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01355 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–13, 15, and 18 are unpatentable under § 103 over the stated combinations of Liebermann, Aronow, O’Toole, and McLaughlin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge directly Mr. Occhiogrosso’s testimony. See generally PO Resp. 5. Mr. Ivan Zatkovich, Patent Owner’s declarant, does not propose a level of ordinary skill in the art to be adopted, but he does testify that the opinions set forth in his declaration would not change if he “assumed that [one of ordinary skill in the art] had the qualifications set forth in Mr. Occhiogrosso’s declaration.” Ex. 2098 ¶ 24 (citing Ex. 1008 ¶ 27). Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1002–1005), we determine that the level of ordinary skill proposed by Petitioner’s declarant and employed by both declarants is consistent with the challenged patent and the referenced prior art, and we adopt Mr. Occhiogrosso’s definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 11
- ExcludeMotion to exclude, deniedDenied
“Turning to the merits of the Motion to Exclude, we find Patent Owner’s assertion that a person of ordinary skill in the art “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4) lacks sufficient factual corroboration or explanation. For example, Patent 10 Mr. Zatkovich is referring to the level of ordinary skill discussed previously and which we adopted for this proceeding. 14 Owner does not address the sentence that immediately precedes the single citation in the challenged patent on which Patent Owner relies: “[t]he present invention relates to the general field of telephone communications.” Ex. 1001, 1:13–14. Nor does Patent Owner discuss the level of ordinary skill reflected in the prior art of record or other factors that may be considered, including the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Okajima, 261 F.3d at 1355. Even if we were to adopt Patent Owner’s definition of a person of ordinary skill in the art, we find Mr. Occhiogrosso meets Patent Owner’s proffered level of ordinary skill: “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4). Mr. Occhiogrosso’s experience providing expert testimony in proceedings regarding assistive technologies for the deal or hard of hearing is uncontroverted. See Mot. Exc. 4–5 (identifying three inter partes reviews); Ex. 2105, 5:23–6:10 (deposition on August 9, 2016 indicating Mr. Occhiogrosso has been deposed between twelve and twenty times concerning Patent Owner’s patents). Furthermore, the five prior art references Mr. Occhiogrosso considered for this case (Ex. 1008 ¶ 28) all involve telephone technology for the deaf and HOH and support his qualification under the definition of a person of ordinary skill in the art now offers for the first time in its Motion to Exclude (and after it relied on the testimony of its declarant as to a different level). 15” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Mr. Occhiogrosso testifies that one of ordinary skill in the art “would consider the screen in Figure 6 [shown on a cellular phone] as analogous to the screen depicted in Figure 8.” Ex. 1043 ¶ 6; see Pet. Reply 9–10 (citing Ex. 1043 ¶ 4–7). Mr. Occhiogrosso’s testimony relies on, and better comports with, Liebermann’s description of Figure 8 as illustrating “a layout for the visual display to present multiple information to the deaf person.” Ex. 1002, 6:29–36; Ex. 1043 ¶ 6. Mr. Occhiogrosso opines that the layout in Figure 8 “can be applied to different devices with displays of varying dimensions,” including the cellular embodiment of Figure 6, the personal computer embodiment in Figure 5a, and the kiosk embodiment in Figure 5c. Ex. 1043 ¶ 6. Mr. Occhiogrosso explains that Figure 8 depicts a “three-part, logical screen layout [that would be] identical and would be scaled appropriately, depending on display size.” Id. We credit Mr. Occhiogrosso’s testimony over that of Mr. Zatkovich because Mr. Occhiogrosso’s testimony better comports with the express disclosure of Liebermann—Figure 8 is not described as being limited to the embodiments in Figures 5a–5c or otherwise not being applicable to the cellular phone embodiment shown in Figure 6. Rather, Figure 8 is described more generally as being “a layout for the visual display.” Ex. 1002, 6:31– 34 36. In addition, Mr. Zatkovich opines that one of ordinary skill in the art purportedly would not incorporate the display shown in Figure 8—that is, the three-part display. At issue here, however, is only a small portion of that display—the incoming text screen—showing the text communication representing a transcription of the voice of the person speaking to a user of the personal interpreter device.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“skill in the art would combine Aronow’s initiation switch into Liebermann’s device to save power. PO Resp. 35–36. We agree with Patent Owner that, because the initiation switch is not an “on/off switch” that would enable a user to turn off the device and save power, Mr. Occhiogrosso’s power saving rationale (Ex. 1008 ¶¶ 58–59) is an insufficient motivation to combine the initiation switch. PO Resp. 35–36 (citing Ex. 2098 ¶ 62; Ex. 2097, 141:21– 142:12). Similarly, we also agree with Patent Owner’s challenge regarding Mr. Occhiogrosso’s testimony that Aronow’s switch improves Liebermann’s communicator by making it a “low cost, self contained telephonic interface device requiring no programming for operation.” Id. at 36. Relying on Mr. Zatkovich’s testimony, Patent Owner indicates “the communicator/cellular phone embodiment of Fig. 6 of Liebermann[] already appears to be a self-contained device.” Id. (citing Ex. 2098 ¶ 61). Nevertheless, we note that there is no dispute that Liebermann’s communicator and cellular telephone implementations provide for a user initiating a call to the center by dialing the center. See, e.g., PO Resp. 36 (“As a special case of a telephone, Liebermann can initiate a call simply by dialing a stored number to the Center.”). We disagree with Patent Owner that the addition of Aronow’s switch would not simplify the communicator 48 of Liebermann. Id. Common sense suggests that a single initiation switch is a simpler way to initiate a call than by dialing the multiple digits of a telephone number. Furthermore, we credit Mr. Occhiogrosso’s testimony of the simplifying benefits of a user-operated initiation switch, which is based on Aronow’s discussion about the benefits of the initiation switch to simplify operations of the telephonic device, especially for elderly people who are hard of hearing. Ex. 1008 ¶ 58. For these reasons, we determine that Petitioner has provided sufficient” slip op. at 48
Patent outcomesUS 5,974,116 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,974,116 - Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentablePTAB · Dec 9, 2016 · IPR2015-01358 · APJ William V Saindon · IPR · Final written decision
Claim 1 was not shown unpatentable because Petitioner did not establish a sufficient rationale to combine Engelke ’482 and Engelke ’405.
RulingsFinal written decision- Skill levelOther
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“reasonable interpretation in light of the specification of the patent. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Under the broadest reasonable interpretation standard, claim terms are presumed to have their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation foundNot shown unpatentable
“We understand Patent Owner’s argument to be that a person of ordinary skill in the art would not have considered it obvious to follow the teachings of Engelke ’405 in this particular situation, because one of the main benefits taught by Engelke ’405 is to provide voice in addition to text so that non-deaf users can benefit more from voice-to-text services. Here, however, an assisted user does not need the hearing user’s voice to be provided because the assisted user already can hear the hearing user, as they are in close physical proximity (in order to use the personal interpreter). Thus, although a person of ordinary skill in the art might consider Engelke ’405 because it teaches to improve devices for the deaf such as Engelke ’482, we are not persuaded that a person of ordinary skill in the art would have considered it obvious to apply it in this situation. The reason is that the hearing user’s voice would already be present, such that providing that voice again, i.e., when applying the teaching of Engelke ’405, appears to be unnecessary and, as Patent Owner’s declarant suggests, potentially disruptive. Ex. 2098 ¶ 58. Engelke ’405 would not provide the solution to the problem it was intended to solve—the voice is there already. Petitioner offers insufficient reason or evidence explaining why a person of ordinary skill in the art would have considered it obvious to proceed to combine the references nonetheless, in view of this situation.” slip op. at 10
- Obviousness (§103) › KSR rationalesMotivation not foundNot shown unpatentable
“design need or market pressure that indicates it would have been obvious to try to modify the personal interpreter of Engelke ’482 to have simultaneous voice and text as shown in Engelke ’405. An obvious to try rationale generally requires some identification of “a design need or market pressure to solve a problem” before looking at the “finite number of identified, predictable solutions.” See KSR, 550 U.S. at 421. A key of the obvious to try rationale is that the design need or market pressure is what drives a person of ordinary skill in the art to consider the identified, predictable solutions. In other words, the need is addressed by the solutions. Here, the need identified by Petitioner is to upgrade devices previously intended for the deaf to be used for the hard of hearing. See Pet. 38. We agree that this is an identified need in the art. The solutions identified by Petitioner, however, are text alone, VCO, and text-enhanced telephony. Id. at 38–39. Notably, only one of these solutions, text-enhanced telephony, actually addresses the identified need of upgrading devices to include features specifically for hard of hearing users. Text only and VCO are for deaf users. Ex. 1003, 1:25–40 (describing text-only devices for the deaf); Ex. 1012 ¶ 64 (Mr. Occhiogrosso testifying that VCO “allowed a deaf but speaking person to . . . respond directly to the hearing user in voice”). The problem with Petitioner’s rationale is that it is based upon the identification of a finite set of identified, predictable solutions to a need where, in fact, two out of the three so-called solutions in the set are not actually solutions at all, because they do not address the need. In this way, Petitioner’s articulated rationale, as a whole, is internally inconsistent and, for that reason, unpersuasive.” slip op. at 13
Patent outcomesUS 7,006,604 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,006,604 - Global Tel*link Corporation v. Securus Technologies, Inc.All claims unpatentablePTAB · Dec 9, 2016 · IPR2015-01219 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–32 are unpatentable as obvious over Rae, Sulmar, and Falcone; the motion to amend with substitute claims 33–57 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We disagree that Patent Owner has introduced evidence reasonably bringing into question the accuracy of GTL’s identification of the real parties-in-interest in its Petition. First, in its Patent Owner Response, Patent Owner makes conclusory assertions, without explaining how any evidence of record supports Patent Owner’s contentions, such as that the “private equity firm American Securities . . . has the ability to control GTL in general and in [this] proceeding[].” PO Resp. 41 (citing generally Exs. 2002–2011, Discovery Motion, Prelim. Resp.); id. at 41–43 (asserting that its evidence “reasonably brings into question the accuracy” of Petitioner’s identification of the real party-in-interest in its Petition).” slip op. at 10
- ExcludeNot reached
“Similar to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We agree with Petitioner. The subject limitation of claim 1 is “determining whether a charge for message service using message service communication protocol can be billed to the cellular telephone.” As we discussed in the Institution Decision, the Specification discusses two determinations, and we are not persuaded that both determinations must be satisfied to satisfy claim 1. See Dec. 16–17. As understood at the time of the invention of the ’118 Patent, and as understood today, the physical cellular phone may receive a message or call, but does not receive a charge, per se. Patent Owner has not provided any examples of mobile devices that “do their own billing,” i.e., that internally bill a charge and/or process payments, and we are unaware of such mobile devices. Rather, the charges are handled by a mobile carrier, and can follow a myriad of billing arrangements, which can be purely business agreements, subject to negotiation and not subject to technical requirements. We credit the testimony of Dr. Forys, providing that the ’118 Patent focuses on the ability to charge the phone when a message is transmitted to it, not on the ability of the phone to receive a message. Ex. 1026 ¶¶ 25–28. Furthermore, we determine that focusing on technical capabilities of the called party’s phone 21 ignores the role of the carrier, which is the essential entity in the billing process. As such, we maintain our interpretation of the “determining” step of claim 1, and apply it in our consideration of the ground below.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s declarant, Dr. Leonard J. Forys, testifies that one of ordinary skill in the art “would have a [Bachelor of Science] B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in communications systems, or comparable industry experience.” Ex. 1003 ¶ 30; see Pet. 9 (citing Ex. 1003 ¶ 30). Patent Owner’s declarant, Mr. Bradley O. Walton, contends one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field and at least three years of academic or industry experience in telecommunications 25 systems.” Ex. 2012 ¶¶ 37. We determine the differences in the declarants’ assertions to be negligible and that both definitions are consistent with the ’118 Patent and the referenced prior art, and we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 25
Patent outcomesUS 8,626,118 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,626,118
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.