• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2022-00362 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable because the evidence did not establish the sensors were fixed relative to each other.

  RulingsFinal written decision

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

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

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

    “C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8

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

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2022-00092 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8

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

    “district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8

  • BurdenMixed

    “We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18.” slip op. at 34

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2021-00921 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.

  RulingsFinal written decision

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

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

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

    “We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18. 6. Dependent Claims 2, 3, 5–7, 9, 10, 12, and 14–17 Petitioner provides reasonable and detailed explanations, supported by the testimony of Dr. Bederson, indicating where in the references the limitations of claims 2, 3, 5–7, 9, 10, 12, and 14–17 are disclosed. Pet. 33– 43, 44, 47, 49. Further, Patent Owner offers no arguments particularly directed to these dependent claims. PO Resp. 22, 25, 28. We have considered the evidence and arguments of record and determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 2, 3, 5–7, 9, 10, 12, and 14–17 for the reasons discussed in the Petition and as supported by the testimony of Dr. Bederson.” slip op. at 34

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

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,750,486
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01220 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–5 and 12–17 are unpatentable as obvious; claims 7, 9–11, and 18–26 were not shown unpatentable on the asserted combinations.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Thus, Patent Owner has not introduced evidence reasonably bringing into question Petitioner’s identification of the real party-in-interest in this proceeding. Accordingly, the evidence of record does not support a determination that American Securities had a role in funding or controlling this proceeding, or could have exercised control over this proceeding. 11 For these reasons, we determine that a preponderance of the evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. As such, we determine that Petitioner’s real party-in-interest identification at the time of filing the Petition remains valid.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “For these additional reasons, we determine that, even without excluding Exhibits 2006 and 2011, the preponderance of evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. Accordingly, Petitioner’s Second Motion to Exclude Exhibits 2006 and 2011 is dismissed as moot.” slip op. at 15

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

    “construed also undermine Petitioner’s position. “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). On the other hand, a preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. The only limitations in the body of independent claim 22—the two biometric sensors—are not structurally complete in themselves. Rather, the telephone handset is required to describe a structurally complete invention that includes two biometric sensors. Without the telephone handset as an element, the claim merely recites two unconnected biometric sensors without any structure—a structurally incomplete invention. Furthermore, the telephone handset recited in the preamble does not duplicate the biosensor limitations in the body of the claim. Thus, we conclude that the telephone handset is essential structure and is necessary to give life, meaning, and vitality to the claim. This weighs toward a determination that independent claim 22 requires a telephone handset. See Catalina Mktg. Int’l, 389 F.3d at 808–09.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner, however, does not acknowledge that both Dr. Beigi and Dr. Caloyannides include electrical engineering as a field of study in the respective level of ordinary skill. Thus, we do not agree with Patent Owner’s statement that Dr. Beigi’s proposed “academic requirements do not provide this background. See Ex. 1003 ¶ 34 (Dr. Beigi opining that “one of ordinary skill in the art (a “POSA”) would have a Bachelor of Science (B.S.) degree in electrical engineering, computer science, or an equivalent or related field”). Because both experts specify electrical engineering as an academic field of study but only Dr. Beigi specifies computer science, we understand the disagreement of the parties to be whether computer science is a relevant academic field of study. We do not agree with Patent Owner’s contention that “bachelor’s level degree in electrical engineering or physics is necessary to understand both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric systems.” See PO Resp. 7. Contrary to Patent Owner’s contention, the invention as claimed recites elements and functions using a high-level of abstraction with little, if any, technical detail regarding “the data/network communication aspects of the claimed invention.” For example, independent claims 1 and 12 recite methods that include broad functional steps of authorizing, continuously monitoring, verifying, and monitoring a biometric training with 30 little, if any, technical detail. Similarly, the call processing system recited in independent claim 13 and the biometric telephone handset recited in independent claim 22 recite elements that perform broad functions with little, if any, technical detail. Thus, the plain language of the claims undermines Patent Owner’s contention that an understanding of “both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric system” necessitate an electrical engineering or physics academic degree.” slip op. at 30

  Patent outcomesUS 7,494,061 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,494,061
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00825 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 are unpatentable as obvious; the petition did not prove claims 2, 5, 8, 9, 11, 12, and 14–18 unpatentable.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “Applying these principles to the instant case, in an inter partes review, the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See Dynamic Drinkware, 800 F.3d at 1379. (explaining petitioner “had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 13–36.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “Even if we were to find that Petitioner’s citation to two pages of its declarant’s testimony, without explanation, does not amount to improper incorporation by reference, the testimony of Petitioner’s declarant, Leonard J. Forys, Ph.D., is insufficient to show one of ordinary skill in the art was in possession of the subject matter of the claims at issue. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). First, the testimony of Petitioner’s declarant, Dr. Forys, is conclusory, merely quoting some portions of the ’357 patent without adequately explaining how the quoted portions relate to the subject matter recited by the claims. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, during cross-examination Dr. Forys explained his analysis, “I just went through the ’167 patent and just picked a few things out that seem to indicate that they are already there. . . . So it was illustrative. It’s not a detailed analysis. It is just suggestive.” Ex. 2006, 48:1–7.” slip op. at 20

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

    “The ’357 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system of Claim 1 would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is 25 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8 (emphasis omitted). Therefore, in light of the plain language of the claim, the Specification of the ’357 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 25

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony14 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least three years of academic or industry experience in telephony systems.” slip op. at 29

  Patent outcomesUS 7,529,357 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,529,357
• Google Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Nov 20, 2015 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 19–22 and 24–30 are unpatentable as anticipated by Gough; claims 1–3, 5, 7–10, 12–14, and 21 are not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

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

    “We agree with Petitioner. Although Figures 4 and 5 of the ’960 patent show keys that are partially surrounded by shadowing or shading, there is no suggestion in the Specification that the “blended shadow” recited in the claims should be limited to only this shadowing. The claim language itself, referring to a blended shadow of the representation of at least one key and the main image (see claim 24), indicates explicitly that the blended shadow incorporates both the key image and the main image and, thus, should not be limited to the shadowing surrounding the keys. Accordingly, based on the full record, we adopt Petitioner’s proposed construction of “blended shadow” as “a portion of a composite image in which the main image is visible through the overlaid image as a result of combining the data from corresponding pixels from the main and overlaid images” for the purpose of this Final Written Decision. B.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner. Petitioner does not explain adequately where the detailed analysis set forth in the Reply is made in the Petition, and, in any event, we do not find the arguments persuasive. “A patent claim is anticipated if a single prior art reference expressly or inherently discloses every limitation of the claim.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed. Cir. 2014). Here, Petitioner does not describe sufficiently how Gough expressly discloses using logical operators to accomplish the blending process.6 We do not agree that either Gough’s description of the blending process depicted in Figures 10a–10f (Ex. 1007, 10:23–41) or Gough’s description of using the color look-up table (id. at 14:9–19) expressly discloses using logical operators, and such express disclosure is required for anticipation. At best, Petitioner’s arguments suggest how Gough could be envisioned as using logical operators, but do not explain adequately where or how Gough expressly discloses using logical operators to carry out the blending process. For these reasons, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that independent claim 1, and claims 2, 3, 5, 7–10, and 12–14 depending therefrom, are anticipated by Gough.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “3. Harrison Petitioner also argues Harrison teaches certain limitations. Pet. 44, 48, 52–55. Petitioner does not explain what Harrison adds to what is taught by Buxton. See id. at 48 (“[t]o the extent that these features may not be fully disclosed in Buxton, they are clearly disclosed in Harrison”). For purposes of this Final Written Decision, we determine the teachings of Harrison are cumulative to the teachings of Buxton, and therefore, do not address Harrison further.7 4. Claims 1–3, 5, 7–10, and 12–14 Petitioner argues that “Buxton discloses nearly all of the elements and limitations” of the challenged claims. Pet. 42. With respect to claim 1, Petitioner argues that Buxton discloses using alpha blending in accordance with the equation I = αI1 + (1-α)I2, where I is the resulting color intensity, I1 is the color intensity of the foreground image pixel, I2 is the color intensity of the background image pixel, and α is the specified transparency level between 0 and 1. Id. at 43–44 (citing Ex. 1009, 17:17–28). Petitioner argues that Buxton’s alpha blending “permits pixels to be ‘dedicated simultaneously’ to both images in order to produce a composite image” and is an “example of an operation using logical operators to provide different blending effects.” Id. at 44 (citing Ex. 1009, 16:63–17:4). Petitioner contends that although “Buxton may lack explicit disclosure of . . . a touchactivated device (required in claims 1 and 26),” Bier discloses that a touch screen is interchangeable with a mouse. Id. at 44–45. Petitioner also contends that Bier discloses a keyboard superimposed over a display. Id. at 7 Because the asserted ground includes Harrison, we continue to include it as part of our overall analysis.” slip op. at 23

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

    “After considering all evidence and arguments, we agree with Patent Owner. In particular, we determine that Petitioner’s arguments do not persuade us that Buxton’s alpha blending equation uses operators that manipulate binary values at the bit level, consistent with our construction of “logical operators.” The alpha blending equation unquestionably involves arithmetic operations, which we find differ from logical operations. Furthermore, Petitioner has not shown persuasively whether any logical operations overlap with any arithmetic operations. Therefore, we agree with Patent Owner’s contention that Buxton’s alpha blending equation does not use logical operators.” slip op. at 24

  Patent outcomesUS 6,121,960 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,121,960
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 2, 2015 · IPR2014-00810 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–3 and 5–7 are unpatentable as anticipated by Silberschatz; Petitioner did not show claims 4 and 8 unpatentable because Silberschatz does not disclose allocating or de-allocating a specific telecommunications resource.

  RulingsFinal written decision

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

    “In this case, the ’637 patent discloses multiple embodiments of telephony and telecommunication resources being allocated and de-allocated, but during prosecution, the applicant removed the modifying limitation of “telecommunication”3 leaving only the term “resource” in the issued claims. Compare Ex. 1004, 60–69 (Application No. 09/072,436) with Ex. 1002, 44–47. The claims, thus, recite “resource” and do not recite “telecommunications resource” nor do they recite “computer resource.” The lack of a limiting term modifying “resource” indicates a scope broader than the scope encompassed by a “resource” that is limited to only a “telecommunications resource” or “computer resource.” Moreover, the Examiner characterized the claims of the application that issued as the ’637 patent as “broader in scope than the claims [in] the parent patent.” Ex. 1002, 95. The Applicant did not dispute the Examiner’s characterization of the claims. Id. at 107. Although the ’637 patent discloses embodiments using “resources,” the ’637 patent does not define explicitly the term “resource.” Therefore, we look to the ordinary meaning of the term as would be understood by one of 3 The term “telecommunication” was recited in the proposed claims of earlier-filed parent Application No. 09/072,436. The ’637 patent claims priority to patent Application No. 09/072,436. See Ex. 1002, 1. ordinary skill in the art. A technical dictionary, IEEE Dictionary4, defines “resource” as “[a]ny capability that must be scheduled, assigned, or controlled by the underlying implementation to assure non[-]conflicting usage by processes.” Id. at 976. As shown by the dictionary definition, one of ordinary skill in the art would understand “resource” is not limited to a telecommunications resource or a computer resource.5 Thus, the ordinary meaning of “resource” is consistent with the term’s use in the ’637 patent, which readily interchanges the term “resources” with “components” and “capability” in the context of computer telephony resources. Ex. 1001, 1:27–29. For example, in one embodiment in the ’637 patent, the telecommunication “resource” is a telephony line card that is coupled to a telephone. Id. at 9:12–15. In other embodiments, the telecommunication “resources” are components or ports coupled via a data bus to a central processing unit system, a data port system, a video system, a network system, a storage controller, and a high speed communication system. Id. at 8:1–27, 10:64–11:10, 11:14–22. In every embodiment in the ’637 patent, 4 IEEE 100: The Authoritative Dictionary of IEEE Standards Terms: Seventh Edition (Standards Information Network, IEEE Press ©2000) (Ex. 3001) (hereinafter “IEEE Dictionary”). 5 Petitioner’s Declarant, Dr. Forys, testified on cross-examination that a person of ordinary skill in the art would have telecommunications experience because all of the embodiments in the ’637 patent are directed to telecommunications. Ex. 2002, 47:2–14. Based on this testimony, Patent Owner argues that the ’637 patent would be understood by a person of ordinary skill in the art in the context of a telecommunications systems. PO Resp. 8–9. We agree the ’637 patent may have been understood in the context of a telecommunications system, however, that does not indicate that a skilled artisan would have understood “resource” to have been limited to only a telecommunications resource. resources are a component or capability of a system that is managed (i.e., identified, allocated, de-allocated) by some module in the service kernel. Id. at 9:27–39, 10:10–14, 10:64–11:10, 11:14–22. Accordingly, we do not agree with Patent Owner’s position, because” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s Declarant, Dr. Forys, opines that a person of ordinary skill in the art relevant to the ’637 patent “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field and one year to two years of industry experience in telecommunications.” Ex. 1003 ¶ 32. Patent Owner does not disagree with Petitioner’s assertions regarding the level of skill in the art, nor does Patent Owner’s Declarant, Dr. Akl, offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’637 patent. PO Resp. 9–10; Ex. 2003 ¶ 42. Based on our review of the ’637 patent, the types of problems and solutions described in the ’637 patent and cited prior art, and the testimony of Petitioner’s Declarant, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least a Bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, and at least one year of work experience in telecommunications technologies. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We do agree with Patent Owner’s argument, however, with regards to dependent claims 4 and 8, which require the return of “the allocated telecommunications resources to control of the management module.” Ex. 1001, 21:52–22:6, 22:44–52; see supra, Section II.A.3. Petitioner has not indicated a disclosure in Silberschatz that demonstrates the allocation or de-allocation of a specific telecommunications resource. Therefore, we determine that Petitioner has failed to meet its burden to show Silberschatz anticipates dependent claims 4 and 8.” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not agree with Patent Owner’s position, because Petitioner identifies CPU time as a specific resource that is requested (Pet. 23–24), allocated (id. at 25), used (id. at 25), and de-allocated (id. at 26). We credit the testimony of Dr. Forys, who explains how and where Silberschatz discloses each element of the challenged claims. See Ex. 1003 ¶¶ 64–80. Specifically, Dr. Forys testifies regarding the request, allocation, use, and de-allocation of a single type of resource (e.g., CPU time), thereby meeting the limitations of the challenged claims. Id. ¶¶ 74–80. Although Patent Owner correctly points out that Petitioner discusses multiple types of resources, we do not agree that Petitioner discusses or applies the disclosure of Silberschatz inconsistently, because Petitioner at least consistently identifies CPU time as a resource requested, allocated, used, and de-allocated.” slip op. at 21

  Patent outcomesUS 7,324,637 mixed
  Claim construction§ 102 anticipationcites Graham
  Patents in suitUS 7,324,637
• Motorola Mobility LLC v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00501 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–3, 7, 9–12, and 16–18 were held unpatentable; claims 4–6, 8, 13–15, and 19–21 were patentable because the cited art did not disclose the required transmission behavior.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “With respect to entitlement to any earlier effective priority date, a party must identify, specifically, the disclosure in ancestral applications “which do not share the same disclosure,” and which allegedly show § 112 support for the relied-upon priority date. See, e.g., Polaris Wireless, Inc. v. TruePosition, Inc., Case IPR2013-00323, slip. op. at 29 (PTAB Nov. 15, 2013) (Paper 9). To link the Ayyagari Provisional with Ayyagari ’508, Petitioner relates the claims of the ’392 patent to Ayyagari ’508, and then, separately, relates the claims of the ’392 patent to the Ayyagari Provisional. This triangulation does not meet Petitioner’s burden of showing that Ayyagari ’508 is entitled to the earlier filing date of the Ayyagari Provisional. Specifically, while the cited portions of the Ayyagari Provisional and Ayyagari ’508 may each disclose a certain claim limitation, the disclosures may be in different embodiments or contexts such that the cited portion of the Ayyagari Provisional does not provide an adequate ancestral basis for the cited portion of Ayyagari ’508. Petitioner should not expect the Board to search the record and cull the evidence necessary to support Petitioner’s arguments. Amazon.com, Inc. v. Personalized Media Comm., LLC, Case IPR2014-01533, slip op. at 6 (PTAB April 20, 2015) (Paper 16); cf., DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). Petitioner has not, in its case-in-chief, linked the Ayyagari Provisional disclosure with the Ayyagari ’508 disclosure in a sufficient manner to meet its burden. Petitioner has not shown that Ayyagari ’508 is entitled to a priority date any earlier than its actual filing date of February 22, 2001.” slip op. at 8

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “explain the alleged reduction to practice embodied in Exhibit F. In evaluating a Patent Owner’s reliance on a declaration, we take into consideration whether Petitioner has had an opportunity to cross-examine the declarant. Amneal Pharms., LLC v. Endo Pharms. Inc., Case IPR2014- 00360, slip op. at 4 (PTAB December 3, 2014) (Paper 39). If Patent Owner does not produce a declarant for cross-examination, we will give that declaration little to no weight. See Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., Case IPR2013-00576, slip op. at 3 (PTAB Sept. 5, 2014) (Paper 36). Petitioner, upon requesting deposition availability for Mr. Wentink, was informed by Patent Owner that “[w]ith respect to Mr. Wentink, Patent Owner does not believe it is required, under the rules, to produce Mr. Wentink for deposition.” Ex. 1017 (corrected), 1. No further explanation of Patent Owner’s interpretation of the rules, or regarding availability of Mr. Wentink for deposition, is before us. Although we have no reason to question Dr. Tewfik’s credentials, his value as a witness is compromised heavily by his distance from and post hoc evaluation of the circumstances of the alleged reduction to practice of the invention. Patent Owner is correct that it was not required, under the rules, to make Mr. Wentink available for cross-examination. Under these circumstances, however, we accord Mr. Wentink’s declaration little weight.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “Although the ultimate determination of whether a document is a printed publication is a question of law, it is a question that is closely based on the underlying facts and circumstances surrounding the disclosure of a document to members of the public. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014); SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-bycase basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). “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.” SRI Int’l, 511 F.3d at 1194 (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).” slip op. at 16

  • ExcludeMotion to exclude, deniedMixed

    “The moving party has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion to exclude is neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply or supporting evidence is of appropriate scope. Zynga Inc. v. Personalized Media Commc’ns, LLC, IPR2013-00162, slip op. at 3 (PTAB Aug. 28, 2013) (Paper 15); Berk-Tek LLC v. Belden Tech., Inc., IPR2013-00057, slip op. at 3 (PTAB Oct. 31, 2013) (Paper 39). Patent Owner’s objections to Exhibits 1005, 1006, 1010, 1013, 1014, and 1017 go more to the weight that the information disclosed therein should be afforded, rather than to its admissibility. It is within our discretion to assign the appropriate weight to be accorded to the information in Exhibits 1005, 1006, 1010, 1013, 1014, and 1017. The Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. Gnosis S.P.A. v. S. Ala. Med. Sci. Found., IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). We, thus, decline to exclude Exhibits 1005, 1006, 1010, 1013, 1014, and 1017. Moreover, we agree with Petitioner that Exhibits 1010, 1013, and 1014 are evidence that properly responds to arguments made by Patent Owner in its Response. Resp. to Mot. to Excl. 11, 12–14; 37 C.F.R. § 42.23. Regarding Exhibit 1006, we are persuaded by Petitioner’s arguments that the testimony of Mr. Worstell (Ex. 1010) authenticates Exhibit 1006. Resp. to Mot. to Excl. 7–8. Similarly, we are persuaded that Exhibit 1010, paragraphs 13–15, reflect testimony based on Mr. Worstell’s personal knowledge and should not be excluded. Accordingly, the Motion to Exclude is dismissed as to paragraphs 23 and 59 of Exhibit 1008, paragraph 6 of Exhibit 1019, and Exhibit 1016, and denied as to Exhibits 1005, 1006, 1010, 1013, 1014, and 1017.” slip op. at 31

  Patent outcomesUS 7,136,392 mixed
  § 102 anticipation
  Patents in suitUS 7,136,392
• Square, Inc. v. Rem Holdings 3, LLCSome claims unpatentable
  PTAB · Jul 7, 2015 · IPR2014-00312 · APJ Denise M Pothier · IPR · Final written decision

  Claims 1, 2, 6, 7, and 10–17 are unpatentable under §103 over Lekernel and Padilla, alone or with Wallner; claims 3–5, 8, and 9 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12

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

    “§§ “Requisites,” “Hardware,” and “Improvements” and Ex. 1015 ¶¶ 39–42). Patent Owner does not dispute these findings related to Padilla or reasons to combine the references. See generally PO Resp. The record also reflects that conditioning signals within a circuit to achieve a desired result was known and, given the combined Lekernel/Padilla system, one skilled in the art would have conditioned signals sent from the card reader to the microphone input based on the cell phone’s characteristics. See Dec. on Inst. 12, 14–15 (citing Pet. 17–18 (discussing proving an analog signal in an acceptable processing range) and citing Ex. 1015 ¶ 29). In the Decision to Institute, we discussed cell phone characteristics, such as Padilla’s, and how these characteristics relate to whether signal attenuation is needed for the phone’s input. See Dec. on Inst. 14 (citing Ex. 1015 ¶ 29). For example, Padilla suggests using phones other than “the Siemens MC60” to turn a mobile phone into a magnetic stripe reader. Ex. 1010 § “Foreword.” Accordingly, based on the cell phone selected and its characteristics, we determine that one skilled in the art would have recognized that conditioning signals inputted and received by a cell phone’s microphone input may be necessary. Dec. on Inst. 12 (citing Pet. 17), 14. Specifically, we concluded that “an ordinarily skilled artisan would have recognized that the characteristics of the cell phone’s microphone input impact whether attenuation between the read head and the cell phone’s microphone input is needed.” Dec. on Inst. 14; see also Pet. 21–22, 24–25. The record includes two particular examples where one skilled in the art would have added resistance to Lekernel’s circuit and attenuated the signal received by the phone of the combined Lekernel/Padilla system. See Dec. on Inst. 14 (citing to Ex. 1015 ¶ 29). First, Dr. McLaughlin describes a known technique of providing the microphone input an acceptable level for the cell phone using a voltage divider by placing a resistor at the output of coil 24 or the read head. Ex. 1015 ¶ 16. To be clear, in this scenario, the resistor would be added outside Figure 2’s amplifier in Lekernel to achieve a voltage drop and to “to ensure the signal falls within a range of signals detectable and usable by a cell phone,” preventing damage to a recipient device. See Ex. 1015 ¶¶ 9, 14. Dr. McLaughlin further discusses impedance matching the card reader circuit with the cell phone’s microphone input when the cell phone has internal amplification. Dec. on Inst. 14 (citing Ex. 1015 ¶ 29); Ex. 1015 ¶¶ 28–29. Given the background knowledge of an ordinary artisan, one skilled in the art would have understood to add resistance to the combined Lekernel/Padilla system (e.g., after the amplifier in Lekernel’s Figure 2) for attenuating the signal sent to the microphone input in order to achieve an acceptable level for the cell phone and/or to impedance match the read head device with the cell phone.” slip op. at 18

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “In the context of this proceeding, we do not agree with Patent Owner’s contention that when the marketed product embodies and is coextensive with the claimed features, a secondary consideration factor (e.g., commercial success) is a presumptively attributed to the claimed invention. PO Resp. 49–50. For example, In re Huang, 100 F.3d 135 (Fed. Cir. 1996) states “that [commercial] success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention-as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” Id. at 140 (emphasis added); see also In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (indicating there is no nexus where the evidence results from something other than what is both claimed and novel in the claim). Thus, in establishing a nexus with a secondary consideration in this proceeding, Patent Owner needs to show a specific feature of the claim is attributable to the commercial success of Square’s card reader and not just that the device is coextensive with the claimed features. Patent Owner points to an interview of Mr. Jack Dorsey, described as Square’s CEO. PO Resp. 51–52. In the interview and in response to asking what Square was, Mr. Dorsey states “OK, well [ah] Square is [ahh] a very simple little device that plugs into your iPhone or Android device and allows anyone to accept credit card immediately wherever they are.” PO Resp. 52 (citing Ex. 2047). Patent Owner asserts that this discussion establishes a nexus to the claimed “output plug” feature. Id. Yet, this statement just describes the plug and does not relate the plug itself to any of Square’s commercial success. The statement is also vague as how the device plugs into a phone, such that there is an insufficient tie to the recited “output plug, adapted to be inserted into a jack associated with a microphone input associated with a cell phone” in claim 1. Ex. 1001, 6:66– 67 (emphasis added). Although stating the reader is “very simple” and “little,” Patent Owner has not demonstrated these features are claimed and are a novel or unique feature of the claims — a requisite needed to outweigh the case for obviousness based on commercial success.” slip op. at 25

  Patent outcomesUS 8,584,946 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,584,946

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.