• Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Rehearing denied
  PTAB · Oct 22, 2020 · IPR2019-01484 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Everstar’s rehearing request, leaving in place the denial of institution on claims 1–30 because it had not shown an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3

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

    “As Petitioner points out, the ’097 patent characterizes reinforcing strands 102a–c as “extend[ing] axially through the center portion of wire 10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central portion,” which requires strands to be positioned in the wire so as to occupy at least the center of the wire, is consistent with both the description of strands 102a–c as extending through the center portion of the wire in the ’097 patent specification and the depiction of strands 102a–c in the center of wire 100 in Figure 5. Petitioner appears to argue that because reinforcing strands 102a–c occupy a space that is larger than “simply the central axis of the wire,” any strands disposed inside the wire (i.e., within the outer insulating layer of the wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5. Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however, supports a construction of “disposed at a central portion” that means simply “disposed inside the wire.” To the contrary, Petitioner’s argument is undermined by the fact that the ’097 patent expressly refers to the reinforcing strands 102a–c as extending through the central portion, but does not use the same language to characterize the position of conducting strands 104.” slip op. at 5

  • Expert testimonyDecided for patent owner

    “We are not persuaded by Petitioner’s argument that a genuine dispute of material fact exists with regard to the parties’ proposed construction of “disposed at a central portion.” Petitioner acknowledges that its declarant, Dr. Fantone, testified that none of the claim terms required a specific construction and that the claim terms “would be understood by one of ordinary skill in the art.” Req. Reh’g 13–14 (citing Ex. 1009 ¶ 22). As Petitioner points out, Dr. Brown, Patent Owner’s declarant, did not offer any “statement of disagreement with Petitioner’s position that the terms should be afforded their ordinary and customary meaning.” Req. Reh’g 14. As a result, there is no “conflicting” testimony from the declarants on this point. Nor is there any conflicting testimony from the declarants regarding the ordinary and customary meaning of “disposed at a central portion.” Although Dr. Fantone testified generally that a person of ordinary skill in the art would understand what “disposed at a central portion” means, Dr. Fantone never explained what that understanding would be. Thus, there is no dispute of material fact on this record regarding the plain and ordinary meaning of the claim term.” slip op. at 9

  Claim construction
  Patents in suitUS 9,671,097
• Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Rehearing denied
  PTAB · Jun 30, 2020 · IPR2019-01484 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution for claims 1–30, finding no abuse of discretion in its claim-construction analysis or treatment of factual disputes.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “strands 102a–c as “extend[ing] axially through the center portion of wire 10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central portion,” which requires strands to be positioned in the wire so as to occupy at least the center of the wire, is consistent with both the description of strands 102a–c as extending through the center portion of the wire in the ’097 patent specification and the depiction of strands 102a–c in the center of wire 100 in Figure 5. Petitioner appears to argue that because reinforcing strands 102a–c occupy a space that is larger than “simply the central axis of the wire,” any strands disposed inside the wire (i.e., within the outer insulating layer of the wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5. Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however, supports a construction of “disposed at a central portion” that means simply “disposed inside the wire.” To the contrary, Petitioner’s argument is undermined by the fact that the ’097 patent expressly refers to the reinforcing strands 102a–c as extending through the central portion, but does not use the same language to characterize the position of conducting strands 104.” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “construction of “plurality of reinforcing strands” contradicts the ’097 patent specification. Req. Reh’g 10–12. In our Decision, however, we never expressly construed this term. Instead, we noted that the ’097 patent addresses the possibility that yarn, which itself comprises multiple strands, can be used to form a single reinforcing strand. Dec. 34–35. We did not, as Petitioner contends, determine that “twisted strands must only be one reinforcing strand.” Req. Reh’g 10–11. To the contrary, as Petitioner itself points out, we expressly noted that the ’097 patent distinguishes between embodiments having a single reinforcing strand and those having multiple reinforcing strands. Req. Reh’g 10; Dec. 35. In view of this, we are not persuaded by Petitioner’s argument that we adopted a claim construction of “plurality of reinforcing strands” that contradicts the ’097 patent’s specification, which in turn “led to a clearly erroneous Institution Decision with respect to claims 16–22.” Req. Reh’g 12.” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We first note that Petitioner presents new evidence for the first time in the Request for Rehearing. Pursuant to 37 C.F.R. § 42.104(b)(3), a petition must set forth how the challenged claims are to be construed. In this proceeding, the Petition contains one paragraph addressing claim construction. Pet. 7. In the paragraph, Petitioner states a claim should be “accorded its ‘ordinary and customary meaning . . . as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent’” and, in a single sentence within that paragraph, indicates that “no terms require a specific construction.” Pet. 7. Petitioner thus had the opportunity to present its claim construction arguments and supporting evidence in its Petition, and chose not to do so. By way of contrast, in the Request for Rehearing, Petitioner allocates seven pages to the construction of the term “disposed at a central portion.” Req. Reh’g. 2–8. Petitioner is attempting to use the Request for Rehearing as an opportunity to reply to our Decision and present new arguments and evidence on claim construction. A request for rehearing, however, is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or for Petitioner to present new arguments or evidence.” slip op. at 3

  Claim construction
  Patents in suitUS 9,671,097
• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCAll claims unpatentable
  PTAB · Apr 8, 2020 · IPR2018-01476 · APJ J John Lee · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over Paulraj, Walton, and Huang; the Wallace and Walton ground does not establish the required simultaneity.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in electrical engineering or an equivalent as well as three years of experience working with “multi-antenna wireless communication systems,” or one year of such experience with a master’s degree in electrical engineering focusing on communications systems. Pet. 7–8 (citing Ex. 1003 ¶ 41). Patent Owner does not dispute Petitioner’s 2 U.S. Patent No. 6,067,290, issued May 23, 2000 (Ex. 1005, “Paulraj”). 3 H. Huang et al., Achieving High Data Rates in CDMA Systems Using BLAST Techniques, in CONFERENCE RECORD, IEEE GLOBAL TELECOMMUNICATIONS CONFERENCE 2316 (1999) (Ex. 1006, “Huang”). 4 U.S. Patent No. 7,095,709 B2, issued Aug. 22, 2006 (Ex. 1008, “Walton”). 5 U.S. Patent Application Pub. No. 2002/0193146 A1, published Dec. 19, 2002 (Ex. 1009, “Wallace”). formulation of the level of skill in the art, and applies it for its arguments. PO Resp. 10. Based on the information presented in the Petition and Dr. Singer’s testimony, we agree with Petitioner’s formulation, which is supported by the record and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). B.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “limiting. See Pet. Reply 5; PO Sur-reply 7–8; Tr. 8:5–15. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, 182 F.3d at 1305). On the other hand, a preamble generally is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). For example, if “deletion of the preamble phrase does not affect the structure or steps of the claimed invention,” the preamble is not limiting. Id. at 809 (citing IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000)). Here, we are persuaded the preamble is limiting. Although the parties dispute whether spatial multiplexing and transmit diversity occur simultaneously, it is undisputed that spatial multiplexing is part of the claimed invention. See Pet. 2; PO Resp. 6; Tr. 6:13–26 (Petitioner indicating “we agree that the claims require transmit diversity and signal multiplexing”). The Specification supports this view. For example, the Specification states that “i[t] is an object of the present invention to improve reception performance of specific data on a receiving side while maintaining the transmission efficiency of a communication system.” Ex. 1001, 2:3–6 (emphasis added). The technique for improving transmission efficiency disclosed in the Specification is spatial multiplexing. See id. at 5:13–17 (describing “two transmission systems to transmit different items of data, [which] maintains high transmission efficiency”), Figs. 3, 4; see also id. at 1:42–47 (indicating “signals sent from a plurality of transmission antennas at the same timing and same frequency in substream units” help “realize a high-speed, high-volume communication”). Further, the only part of claim 1 that recites spatial multiplexing is the preamble. See Pet. Reply 3–6; PO Sur-reply 4; Ex. 1020, 21:22–22:18. Neither party indicates that any other claim language captures spatial multiplexing. Thus, if the preamble is not limiting, claim 1 would not incorporate spatial multiplexing at all, which is inconsistent with how the invention is described in the Specification. Consequently, we determine that the preamble of claim 1 recites “essential structure or steps” and, thus, is “necessary to give life, meaning, and vitality” to the claim. See Catalina Mktg., 289 F.3d at 808.” slip op. at 10

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

    “The final limitation of claim 1 (the “wherein” clause) recites “generat[ing] a replica data item by replicating a specific data item of the plurality of data items, and map[ping] the plurality of data items to the at least one of the plurality of antennas such that the specific data item and the replica data item are transmitted from different antennas at a same time.” It is undisputed that this limitation recites transmit diversity. Critically, as Patent Owner observes, this limitation recites “a specific data item of the plurality of data items” (emphasis added), i.e., the “specific data item” that is replicated for transmit diversity is part of the same “plurality of data items” recited in the preamble for spatial multiplexing. See PO Resp. 7 (“Therefore, the specific data item described in transmit diversity (TD) with the replica data item, is also involved in spatial multiplexing (SM) at the same time . . . with other data items of the plurality [of] data items . . . .”); PO Sur-reply 4 (asserting that the “same ‘plurality of data items’ are subject to spatial multiplexing in the preamble and transmit diversity in [the ‘wherein’ clause]”); Tr. 44:22–45:2. Consequently, in order for both the preamble limitations and the “wherein” clause limitations to be met, a plurality of data items, including the specific data item, must be transmitted via spatial multiplexing, i.e., using a plurality of antennas in parallel. In other words, both the specific data item and at least one other data item that is different (i.e., the recited “plurality”) must be transmitted at the same time. In addition, both the specific data item and its replica data item must also be transmitted at the same time, as recited in the “wherein” clause, for transmit diversity. Thus, at least three data items—the specific data item, its replica, and another different data item—must be transmitted at the same time to satisfy the claim because both spatial multiplexing (preamble) and transmit diversity (“wherein” clause) must occur. See PO Resp. 7; Pet. Reply 2–3; Ex. 1020, 12:17–21. As a result, the claim requires simultaneity.” slip op. at 13

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

    “Based on the complete trial record, we agree with Petitioner’s reasoning and evidence discussed above. Consequently, we find that a preponderance of the evidence indicates that the combination of Paulraj, Walton, and Huang teaches each limitation of claims 1 and 6, including the requirement of simultaneity. Patent Owner advances several arguments opposing Petitioner’s contentions, which we find unpersuasive for the reasons explained below.” slip op. at 23

  Patent outcomesUS 7,764,711 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,764,711
• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCAll claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01475 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–18 are unpatentable under §103 over Tomlinson and Malkamaki; claims 1, 2, 4, 10, and 11 are also unpatentable over Davis and Wei.

  RulingsFinal written decision

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

    “Although we agree with Patent Owner that the broadest reasonable interpretation does not simply mean the broadest interpretation (PO Resp. 13), we are not persuaded by Patent Owner’s contention that the broadest reasonable claim construction for “first information sequence” should be “important information.” Id. at 15. As Petitioner points out during oral arguments, the claims are not specific as to what “first information” is other than “first” is merely used to “differentiate” it from “second” information, “a very common thing when it comes to patent claim drafting.” Tr. 18. As Petitioner points out, “the Federal Circuit said the use of terms first and second is a common patent law convention to distinguish between repeated 12 instances of an element or limitation, which is exactly how Patent Owner has used it here.” Id. (citing 3M Innovative, 350 F.3d at 1371). Further, as Petitioner points out, dependent claims 5–6 and 13–14 limit the “first information sequence” from the respective independent claims to “specific types of information,” including “retransmission information” and information “used for an error control.” Pet. Reply 1–2. That is, “where the applicant intended to limit an information sequence to a specific type, it made those narrowing characteristics express.” Id. at 2 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“Other claims . . . can also be valuable sources of enlightenment as to the meaning of a claim term.”)). As Petitioner points out, here, Applicant chose not to limit (at least in the independent claims) the sequences of bits “to any particular type.” Id. Accordingly, we are unpersuaded by Patent Owner’s contention that the Specification shows that (1) “features of the present invention as a whole” limit the scope of the claims and (2) the Specification’s repeated descriptions mapping “important information” to “the first and second bits.” PO Sur-reply 5. Given the broadest reasonable interpretation in view of the Specification, we construe the term “first” information sequence as a particular information sequence, and “second” information sequence as another information sequence distinguishable from the “first.” The Specification, including the claim language and the prosecution history, do not compel any different conclusion. We also are persuaded by Petitioner’s contention that adding a subjective term such as “important” into the claim construction would 13 introduce ambiguity. Tr. 20–21. Thus, we agree that we should not adopt a construction that replaces an unambiguous claim limitation with one that depends on purely subjective opinion. See Intellectual Ventures, 902 F.3d at 1381. Thus, we conclude “first information sequence” can be any information sequence that if different from a “second information sequence,” wherein “a sequence of bits” are generated including “at least one bit” of each of the first and second information sequences. Ex. 1001, 10:50–67.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “As for the other claim limitations, we determine that we need not further construe expressly any other claim terms to resolve the arguments before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge the Petition’s definition of the level of skill of a POSITA. See generally PO Resp. We adopt and apply Dr. Singer’s assessment of the level of ordinary skill in the art, which is 3 Neither party has presented arguments regarding objective evidence of nonobviousness in the instant proceeding. 16 consistent with the level of ordinary skill in the art to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art).” slip op. at 16

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Although Petitioner acknowledges that Patent Owner relies on Dr. Nettleton to dispute that Tomlinson’s 12-bit sequence of symbol words is a “sequence of bits,” Petitioner contends that “Dr. Nettleton later recanted that opinion.” Pet. Reply 13 (citing Ex. 1021, 18:23–19:22). In particular, Petitioner contends that Dr. Nettleton “confirmed” that Tomlinson’s signal organizer “recombines bits from the base and overlay stream into ‘a sequence of bits,’ i.e., the symbol words.” Id. at 14 (citing Ex. 1021, 48:10– 20). That is, in Dr. Nettleton’s deposition, he confirmed that in Figure 3 of Tomlinson, “the information bits from the base stream and the overlay stream are . . . recombined back into a sequence of bits,” wherein “that sequence of bits” are the “symbol words.” Ex. 1021, 48:10–20. We agree with Petitioner that Tomlinson’s signal organizer 16 is arranged to receive the base and overlay streams and to generate “a succession of symbol words of binary form.” See Ex. 1007, 16:54–56. Based on this teaching by Tomlinson, and the deposition of Dr. Nettleton (Ex. 1021, 48:10–20), we are persuaded by Petitioner’s contention that Tomlinson’s signal organizer generates 12 bits per frame including 8 bits from the base stream and 4 bits from the second/overlay stream. Pet. 17.” slip op. at 26

  Patent outcomesUS 7,760,815 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,760,815
• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCNo claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01473 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–3, 5–9, and 11 were not shown unpatentable under § 103 over Keskitalo and Lindell because Petitioner did not adequately explain why a skilled artisan would combine their teachings.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Petitioner contends that “[c]laim 1 includes limitations in means-plus[-]function format, which creates a rebuttable presumption that the [Applicant] intended to invoke 35 U.S.C. § 112, ¶ 6.”3 Pet. 7; see also Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). In the Decision on Institution, we addressed Petitioner’s proposed constructions of the means-plus-function terms (Pet. 10–12), and we determined that Petitioner has set forth proposed structures that support these limitations. Dec. on Inst. 8–12; see 37 C.F.R. § 42.104(b)(3) (2018).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “As for the other claim limitations of independent claims 1, 6, and 7, and claims 2, 3, 5, 8, 9 and 11 depending therefrom, neither party has proposed a construction of any other term. See Pet. 6–7; PO Resp. 12–13. We determine that we need not further construe expressly any other claim terms to resolve the arguments before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. to an inter partes review).” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). In that regard, Petitioner’s expert, Andrew C. Singer, Ph.D., testifies that a POSITA at the time of the invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with digital communication systems or in network engineering or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 4–5; Ex. 1003 ¶ 35. Patent Owner does not dispute Dr. Singer’s assessment of the level of ordinary skill in the art. See generally PO Resp. We adopt and apply Dr. Singer’s assessment of the level of ordinary skill in the art, which is consistent with the level of ordinary skill reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “position of Patent Owner. In particular, we are unpersuaded by Petitioner’s contention that it would have been obvious to modify Keskitalo such that its predetermined thresholds for transmission power are average transmission power values in accordance with the teachings of Lindell. Pet. 26. That is, we are not persuaded that Petitioner has demonstrated by the preponderance of the evidence that it would have been obvious to have used Lindell’s average transmission power values as Keskitalo’s predetermined thresholds for transmission power. See Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); Magnum Oil Tools, 829 F.3d at 1380 (holding that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”).” slip op. at 24

  Patent outcomesUS 6,611,676 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,611,676
• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCAll claims unpatentable
  PTAB · Feb 21, 2020 · IPR2018-01472 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–3, 5, 6, 12, 13, 15, and 16 are unpatentable under § 103 over Nakamura and Okumura, and independently over Bhagalia and Abe.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “With respect to claim 1, according to Petitioner, the claim includes “limitations in means-plus function format, which creates a rebuttable presumption that the [Applicant] intended to invoke § 112, ¶ 6.”2 Pet. 8–9; see also Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). In the Decision on Institution, we addressed Petitioner’s proposed constructions of the means-plus-function (“MPF”) terms, and we determined that Petitioner had set forth proposed structures that support these limitations. Dec. on Inst. 9–12 (citing Pet. 9–11); see 37 C.F.R. § 42.104(b)(3). As we noted in the Decision on Institution, Petitioner’s constructions presume that the meaning of specific functions, such as “generating” a frame, for example, are generally known. Dec. on Inst. 10. Patent Owner 2 Applicant is Matsushita Electric Industrial Co., Ltd. 9 has not rebutted this presumption. Petitioner’s proposed constructions of the means-plus-function terms in the claims (Pet. 9–11) are as follows:” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “As for the other claim limitations of independent claims 1, 5, 12, and 15, and claims 2, 3, 6, 13, and 16 depending respectively therefrom, for the reasons set forth below, the explicit requirements set forth in claims themselves sufficiently limit the claims without requiring further construction. Thus, we determine that we need not further construe expressly any other claim terms to resolve the arguments before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. We consider the level of ordinary skill in the art to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding 14 that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art). In general, we agree with the areas of agreement in the parties’ proposals. Patent Owner has not explained sufficiently why researching or working particularly with “cellular radio communication systems” is necessary (PO Resp. 12), and so we adopt Petitioner’s proposed general experience of working with “digital communication systems or in network engineering” (Pet. 6), which comports with the level of ordinary skill in the art reflected in the prior art of record. Accordingly, we determine that a person of ordinary skill would have a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with digital communication systems or in network engineering or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering.” slip op. at 14

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

    “original); also Pet. 24–25). Even Patent Owner concedes that Claim 12 of Nakamura discloses that “necessary signals could include ‘one or more’ of pilot signals, synchronization information, order number, and TPC information.” Sur-Reply 4 (citing 1004, 15:51–61). The Supreme Court has stated that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416; Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 550 U.S. at 416). According to Petitioner, “[t]he proposed modification to Nakamura would be straightforward, not requiring undue experimentation, and would produce predictable results.” Pet. 25. That is, “it would have been natural and an application of nothing more than ordinary skill and common sense.” Id. at 25–26. Here, the question is whether combining Okumura’s teaching of using both pilot and TPC symbols in the same necessary signal with Nakumura’s necessary signals comprising control data, such as pilot symbols and TPC symbols, was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters, 485 F.3d at 1162 (citing KSR, 550 U.S. at 421). As Petitioner points out, Patent Owner’s Expert, “Dr. Vojcic admitted that no technical barriers would have prevented a POSITA from modifying the expressly disclosed embodiments of Nakamura to combine pilot and TPC symbols.” Reply 11 (citing Ex. 1016, 34:14–35:20). We view Petitioner’s combination as being akin to a simple substitution of Okumura’s use of both pilot and TPC 34 symbols in Nakamura’s necessary signals. Cf. KSR, 550 U.S. at 417 (indicating determining obviousness is easier when the claimed subject matter involves “a simple substitution for one known element for another or the mere application of a known technique to a piece of prior art ready for improvement.”). We are unpersuaded by Patent Owner’s contention that “[t]he Petition’s proposed combination of Nakamura and Okumura is guided by the ’563 patent and driven by hindsight.” PO Resp. 32. Rather, we agree with Petitioner that Nakamura and Okumura provide sufficient motivation for combining the references in the manner required by the claims. Pet. 24–25 (citing Ex. 1004, 15:53–61; Ex. 1005, 14, 18, Fig. 2; Ex. 1003 ¶¶ 53–54). First, although Patent Owner contends that “there is no discussion of the benefits gained by sending both pilot and power control symbols” (PO Resp. 32 (citing Pet. 21), we agree with Petitioner that Nakamura explains that pilot symbols permit ‘coherent detection with interpolation at a receiving side’ and that power control symbols permit ‘carrying out a transmission power control’” and this provides a reason one of ordinary skill in the art would make Petitioner’s proposed combination. Ex. 1004, 11:48–50 (“In this eighth embodiment, the necessary signal generation unit 10 includes pilot signals to be used in carrying out the coherent detection with interpolation at a receiving side”), 13:11–14 (“In this eleventh embodiment, the necessary signal generation unit 10 includes a transmission power control information which is necessary in carrying out a transmission power control.”); Pet. 21 (quoting Ex. 1004, 11:48–50, 13:11–14)). Thus, although Patent Owner contends that Nakamura “does not” slip op. at 34

  Patent outcomesUS 6,466,563 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,466,563
• Everstar Merchandise Co. Ltd. v. Willis Electric Co. Ltd.Institution denied
  PTAB · Feb 13, 2020 · PGR2019-00055 · APJ Stacey G White · PGR · Institution

  The Board denied institution because Petitioner did not show that claims 1–10 were more likely than not unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a).” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “the invention “would have had at least a Bachelor of Science degree (or equivalent) in Electrical Engineering, or a comparable field, and at least five years of experience in the fields of design of electrical wiring and/or decorative lighting.” Pet. 9 (citing Ex. 1009 ¶ 21). Patent Owner argues that Petitioner’s proposed definition recites an unnecessarily high level of skill. Prelim. Resp. 21. Patent Owner contends that the appropriate level of ordinary skill “would have been (1) a technician with at least two years of experience in the design of electrical wiring and/or decorative lighting, or (2) a person with at least a bachelor’s degree in mechanical engineering, electrical engineering, or an equivalent field, and a basic familiarity with circuits used in decorative lighting.” Id. (citing Ex. 2001 ¶¶ 14–15). At this stage in the proceeding, we determine that the current record supports Patent Owner’s description of an ordinarily skilled artisan. For purposes of this Decision, therefore, we adopt Patent Owner’s description of an ordinarily skilled artisan.7 We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither party offers any proposed constructions for any claim terms. Pet. 8–9; Prelim. Resp. 20. Specifically, Petitioner indicates, “no terms require a specific construction, as they would be readily understandable to a [person of ordinary skill in the art].” Pet. 9 (citing Ex 1009 ¶ 22). Patent Owner also indicates, for purpose of its Preliminary Response, that no claim construction is necessary at this stage, but reserves the right to propose constructions should trial be instituted. Prelim. Resp. 20. On this record and for purposes of this decision, we determine that no claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “gauge of Sylvania’s net lights. Prelim. Resp. 24. Petitioner provides Exhibit 1007, which is a series of photographs of the Sylvania net lights, its packaging, and its inserts from the box. See Ex. 1007; see also Ex. 1010 ¶ 7 (describing Ex. 1007 as “a collection of photographs”). Petitioner also submitted Exhibit 1010, which is a declaration from William Shelleman describing the purchase of Sylvania. See Ex. 1010. Finally, Dr. Fantone’s declaration includes a description of Sylvania. Ex. 1009 ¶ 28. We have reviewed Petitioner’s evidence and we agree with Patent Owner that Petitioner has not established the wire gauge of Sylvania’s net lights because none of these documents purport to indicate the gauge of the wires in Sylvania. Thus, the question is whether the recited wire gauge teaches the asserted combination.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,119,664

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.