• Avx Corporation v. Greatbatch LtdAll claims unpatentable
  PTAB · Dec 30, 2015 · IPR2014-01361 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–43 are unpatentable under § 103; proposed substitute claims 44 and 45 are not shown patentable, and the Second Motion to Amend is denied.

  RulingsFinal written decision

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

    “In our Decision on Institution, we discussed the meaning of the transitional phrase “consisting essentially of,” but otherwise found that no claim terms required express construction. Dec. on Inst. 4. In its Second Motion to Amend, Patent Owner does not dispute our interpretation of “consisting essentially of,” or propose constructions for any additional claim terms. Upon review of Patent Owner’s evidence and arguments, we conclude that no explicit constructions are required in order to resolve the issues pending before the Board.” slip op. at 6

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “establishing that it is entitled to add proposed substitute claims 44 and 45. 37 C.F.R. § 42.20(c). As part of this showing, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. 37 C.F.R. § 42.121. Upon review of the Second Motion to Amend, we are persuaded that the requirements of 37 C.F.R. § 42.121 have been met. For example, Patent Owner seeks to add only two substitute claims, each of which serves to narrow the scope of original claim 18. Mot. 17–18. Patent Owner also identifies exemplary electrolytes disclosed in the originally-filed application that fall within the scope of proposed substitute claims 44 and 45. Id. at 9 (citing Ex. 1010, 33, 35–36 (disclosing an electrolyte containing ethylene glycol, water, isobutyric acid, and ammonium hydroxide (which results in an ammonium salt of the organic acid) with a pH of 4.9, a conductivity of 7.1 mS/cm, and an anode breakdown voltage of 395 volts)). Thus, we focus on whether Patent Owner has met its burden of proof to show that proposed substitute claims 44 and 45 are patentable over the prior art of record.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable

    “Clark, however, discloses successfully substituting acetic acid in an electrolyte solution with “other low molecular weight paraffin acids,” including butyric, propionic, and lactic acids, as well as forming corresponding ammonium salts of these organic acids. Ex. 1003, 2:40–46, 3:46–61. Likewise, GB 466,193 broadly discloses that acetic acid may be replaced in an electrolyte solution with organic acids of the aliphatic series, including butyric acid and isobutyric acid. Ex. 1015, 3:73–79. In its Second Motion to Amend, Patent Owner does not point to any persuasive evidence to support or explain why a person of ordinary skill in the art would not have considered isobutyric acid, as implied in Clark and expressly identified in GB 466,193, to be a suitable substitute for acetic acid in the electrolyte of Shah. Indeed, similar to the disclosures of Clark and GB 466,193, the ’117 patent discloses that “other relatively weak organic acids of the general formula cnH2+nO2 (where n=2 to 7) are acceptable.”9 Thus, we are not persuaded that Shah, Clark, and GB 466,193 fail to teach or suggest every limitation of proposed substitute claim 44.” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusNot shown unpatentable

    “1 of Shah is ten times higher than electrolyte 2 of the ’117 patent, and the resulting conductivity (47.5 mS/cm) is 6.7 times higher than that of electrolyte 2 of the ’117 patent (7.1 mS/cm). First Mot. to Amend 9 (Table 3); Ex. 1001, 2:14–16 (confirming that the ammonium salt “provides electrical conductivity” in the electrolyte). Given the disclosure of Evans that anode breakdown voltage decreases with increasing conductivity (conductivity being the inverse of resistivity), Patent Owner does not explain persuasively why the 150 volt difference in anode breakdown voltage between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is “contrary to” the teachings of Evans. First Mot. to Amend 9 (Table 3),11; Ex. 2004, 3 (Figure 4). Nor does Patent Owner explain why a person of ordinary skill in the art could not use the disclosure of Evans to modify the resistivity of the electrolyte of Shah, Clark, and GB 466,193 to obtain an anode breakdown voltage within the 370 to 400 volt range of proposed substitute claim 45. Thus, we are not persuaded that the 150 volt difference between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is nonobvious or surprising. Patent Owner also contends that if acetic acid was equivalent to isobutyric acid, such that it could be replaced interchangeably, “a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 Patent electrolyte, both of which have almost identical pH~4.9.” First Mot. to Amend 11. We note, however, that, as set forth in Table 3 above, electrolyte 1 of Shah has a conductivity that is 6.7 times higher than electrolyte 2 of the ’117 patent, as well as ten times the ammonium constituent, two and a half times the acid constituent, half the ethylene glycol, and five times the phosphoric acid as compared to electrolyte 2 of the ’117 patent. In view of the wide difference in constituents and resulting conductivity levels between the two electrolytes, and in view of the teaching of Evans that anode breakdown voltage depends on the resistivity of the electrolyte, Patent Owner provides insufficient argument or evidence to explain why one of ordinary skill in the art would expect that “[i]f acetic acid were equivalent to isobutyric acid . . . a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 patent electrolyte . . . .” First Mot. to Amend 11. Accordingly, even if arguments made in the First Motion to Amend were considered, we would still not be persuaded that proposed substitute claim 45 is patentable over the prior art. Thus, we are not persuaded that Patent Owner has carried its burden to demonstrate, by a preponderance of the evidence, that proposed substitute claim 45 is patentable over the prior art of record.” slip op. at 16

  Patent outcomesUS 6,687,117 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,687,117
• Geox S.P.A. v. Outdry Technologies CorporationAll claims unpatentable
  PTAB · Dec 18, 2015 · IPR2014-01244 · APJ Donna M Praiss · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious under § 103(a); the motion to amend claims 16 and 17 is denied for failure to establish written-description support and patentability.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “difference between Petitioner’s and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Petitioner contends that a person of ordinary skill in the art is evidenced by the references. Pet. 11. Patent Owner asserts that “[w]aterproofing leather is not a sophisticated technology, and the education level of a PHOSITA working in the industry is likely a four year degree.” PO Resp. 30. According to Patent Owner, a PHOSITA likely would have knowledge related to making apparel from leather, waterproofing leather using sprays and liners, as well as knowledge of adhesives and bonding leather apparel, and also knowledge of waterproof breathable membranes of various types. Id. We consider the cited prior art as representative of the level of ordinary skill in the art, which Patent Owner essentially summarizes as the knowledge of a PHOSITA. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton” slip op. at 5

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

    “interpreted to include either a temporary support that is removed, such as a release sheet, or one that becomes part of the final product, such as a liner. Pet. 11. Patent Owner contends that the term should be construed to be limited to “sheets” because “[n]o other material forms are disclosed other than ‘sheets,’ which include paper and fabric support sheets.” PO Resp. 7 (citing Ex. 1001, 2:58–67). According to Patent Owner, the broadest reasonable construction, therefore, “includes any sheet of flexible fabric or fibrous material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Id. at 7–8. In the Decision on Institution, we construed “support sheet” as “includ[ing] any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Dec. on Inst. 6. This construction is based on the Specification, which describes multiple embodiments of the support sheet, including a detachable sheet and an internal liner. Ex. 1001, 2:58–67. The Specification also describes the use of “different materials” to make the support sheet. Id. at 2:63–64. Accordingly, we conclude that the broadest reasonable construction of “support sheet” is not limited to a sheet of fabric or fibrous material as Patent Owner contends, but, rather, explicitly includes “different materials” that can be fastened generally to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane. Therefore, consistent with the Specification, we construe “support sheet” to mean a sheet of any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “required degree of contact between the membrane and the leather in the regions that are between the dots of adhesive. The ’171 patent summarizes the invention as enabling a membrane to be applied directly to leather by providing a surface of the membrane with a glue pattern. Ex. 1001, 1:56–61. The invention is said to “avoid the use of a semipermeable lining and the water penetration between leather and lining.” Id. at 1:60–61. The title of the invention states “Process for Waterproofing Leather” and describes the leather used in the process as “leather waterproofed by said process.” Id. at 2:27–28. These disclosures do not define either the word “waterproof” as used in the Specification or the word “directly” as recited in independent claims 1 and 9 to mean that there is constant contact between the membrane and leather such that no water permeates the leather, as Patent Owner contends. In an embodiment of the invention, heating of the membrane during pressing is said to result in “a perfect adhesion” that does not plug the pores with glue. Id. at 2:31–42–45. Heating of the membrane during pressing is carried out also in the single example disclosed in the ’171 patent. Id. at 3:12. The leather samples in the example are said to have been “waterproofed by the process according to the present invention” and “hot-pressed with a hydrophilic non-porous semi-permeable membrane of polyurethane material having a thickness of 10 µm.” Id. at 3:9–14. These disclosures of an embodiment and an example do not define “directly pressing” or “waterproofing” or even “perfect adhesion” to mean constant contact between the leather and the membrane or that no water permeates the leather. Therefore, we decline to import such limitations into the term “directly pressing” based on Patent Owner’s argument that these properties are present inherently in the embodiment of the example in the ’171 patent. Accordingly, we construe “directly pressing” to mean applying pressure without any intervening materials or layers other than the recited adhesive.” slip op. at 9

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

    “combination of Thornton, Scott, and Hayton. Petitioner has established that Thornton’s process for waterproofing leather by using spaced dots of adhesive in a discontinuous configuration on a semi-permeable membrane that is pressed against the leather meets the requirements of claims 1 and 9 but for the dot density and dot size ranges specified by the claims, respectively. Petitioner also provided a rational underpinning for combining the disclosures of Scott and Hayton, which provide guidance for the density and size of adhesive dots to adhere a semi-permeable membrane to a porous layer. We are not persuaded by Patent Owner’s argument that the teachings of Scott and Hayton are unrelated to the problem of adhering a membrane to a leather layer in view of Thornton’s disclosure that both leather and fabric material are amenable to its process for waterproofing breathable articles of clothing. Ex. 1003, 7:58–62. We also are not persuaded by Patent Owner that the combination of Thornton, Scott, and Hayton does not disclose all of the limitations of claims 1 and 9. The ranges explicitly disclosed in Hayton overlap with the ranges recited in claims 1 and 9. Patent Owner does not argue, and the Specification does not indicate, any criticality associated with the portion of the ranges that are not encompassed by Hayton’s ranges. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Rather, the claimed ranges appear once in the Specification as a preferred embodiment when the pattern of thermoadhesive glue is dots of polyurethane glue. Ex. 1001, 2:37–42. Patent Owner’s arguments distinguishing Thornton on the basis that it does not teach constant contact between the membrane and the leather in the regions between the spaced dots of adhesive is not persuasive for the reasons discussed above in connection with Patent Owner’s claim construction argument that this is required by the claim term “directly pressing.” In addition, we find that Thornton’s semi-permeable membrane completely covers the leather layer in the sense that the leather layer surface faces the membrane surface to form a composite. Thornton explicitly describes drawing the membrane barrier component over a former, applying adhesive to the outer surface of the film, drawing the outer glove layer onto the former, and bonding the layers by pressing. Ex. 1003, 21:64–22:8; Reply 9. Thornton also discloses layers on the former are placed in register (Ex. 1003, 21:33–35) and that the composite can be formed face to face in sheets (id. at 6:62–66, 7:13–31; Reply 8).” slip op. at 15

  Patent outcomesUS 6,855,171 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,855,171
• Global Tel*link Corporation v. Securus Technologies, Inc.Institution denied
  PTAB · Dec 16, 2015 · IPR2015-01223 · APJ Barbara A Benoit · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of establishing claims 1–31 unpatentable under the asserted § 103 grounds.

  RulingsInstitution decision

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

    “for inter partes review of claims 1–31 of U.S. Patent No. 7,961,860 B1 (Ex. 1001, “the ’860 patent”). Paper 5 (“Pet.”). Patent Owner, Securus Technologies, Inc., filed a Preliminary Response. Paper 18 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

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

    “Patent Owner contends that an inter partes review should not be instituted because Petitioner failed to identify all real parties-in-interest. Prelim. Resp. 4–15. Patent Owner raised this argument, prior to the filing of” slip op. at 6

  • Additional discoveryAdditional discovery, deniedDecided for petitioner

    “instituted because Petitioner failed to identify all real parties-in-interest. Prelim. Resp. 4–15. Patent Owner raised this argument, prior to the filing of” slip op. at 6

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Under that standard, claim terms are presumed to be” slip op. at 5

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,961,860
• St. Jude Medical, Inc. / St. Jude Medical S.C., Inc. et al. v. Atlas IP LLCAll claims unpatentable
  PTAB · Dec 3, 2015 · IPR2014-00916 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 6, 11, 14, and 21 are unpatentable: claims 6, 14, and 21 as anticipated by Natarajan 1992 and obvious over Natarajan ’542 and Bantz; claim 11 as obvious over two combinations.

  RulingsFinal written decision

  • BurdenUnpatentable

    “With respect to transmission by the remotes, the proper construction of the “each” limitation requires only that each cycle have one or more intervals during which remotes are allowed to transmit. See supra Section II.A.1. Period B is such an interval, as it contains allocated slots during which individual mobile stations are allowed to transmit packets to the Access Point. See Ex. 1011, 5–6; Pet. 27; Ex. 1002 ¶ 118. The individual slots within Period B are also intervals. See Pet. 27; Ex. 1002 ¶ 122. Patent Owner’s argument that Period B is not an interval meeting the requirements of the claim is unpersuasive because it is premised on an incorrect claim construction requiring at least one interval in which a remote actually transmits to the hub. See PO Resp. 5–7. As explained previously, the Federal Circuit has rejected Patent Owner’s proffered construction of the “each” limitation. See supra Section II.A.1.” slip op. at 16

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

    “the proper construction of the “each” limitation in claims of the ’734 patent. On appeal from summary judgment in the Medtronic case, the Federal Circuit rejected the district court’s so-called “plain meaning” construction, also urged by Patent Owner here. Medtronic, 2015 WL 6550622, at *10. Instead, the Federal Circuit determined that context was necessary to resolve the facial uncertainty of the claim language. Id. at *8. The court analyzed the relevant contextual evidence, including the additional claim language and references to transmission opportunities in the written description that we cited in our claim construction discussion in the Decision on Institution. Id. at *9. With analysis similar to ours, the Federal Circuit held, as we did, that the claim language, properly construed, requires only that each cycle have one or more intervals in which remotes are allowed to transmit frames. Id. Thus, the Federal Circuit, in a precedential opinion, rejected the same “plain meaning” claim construction argument made by Patent Owner in this proceeding. Also, as in this proceeding, Patent Owner provided no extrinsic evidence, so the court construed the disputed limitation based on intrinsic evidence—the claim language and the written description. Moreover, the court used the same Phillips-based claim construction approach that the Board applies when a patent has expired. Accordingly, in our patentability analysis we will apply the Federal Circuit’s construction of the “each” limitation, which, with respect to transmission by remotes, requires only that each cycle have one or more intervals during which remotes are allowed to transmit.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “With respect to transmission by the remotes, the proper construction of the “each” limitation requires only that each cycle have one or more intervals during which remotes are allowed to transmit. See supra Section II.A.1. Period B is such an interval, as it contains allocated slots during which individual mobile stations are allowed to transmit packets to the Access Point. See Ex. 1011, 5–6; Pet. 27; Ex. 1002 ¶ 118. The individual slots within Period B are also intervals. See Pet. 27; Ex. 1002 ¶ 122. Patent Owner’s argument that Period B is not an interval meeting the requirements of the claim is unpersuasive because it is premised on an incorrect claim construction requiring at least one interval in which a remote actually transmits to the hub. See PO Resp. 5–7. As explained previously, the Federal Circuit has rejected Patent Owner’s proffered construction of the “each” limitation. See supra Section II.A.1.” slip op. at 16

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

    “the system of Natarajan 1992 instead utilized Bella’s cancellation method, which revokes a previous transmission allocation when a remote transmits no packets in a communication cycle, we are persuaded by Petitioner’s argument that the combination would result in “the hub revoking a previous transmission opportunity allocation of a remote which has not transmitted more than a predetermined number of frames” (zero) “during a previous number of communication cycles” (one). See Pet. 37–38; Ex. 1002 ¶ 167. Furthermore, if Natarajan 1992 employed the cancellation technique of Bella, the hub would be “monitoring the frames transmitted by each remote during its transmission opportunity.” See Pet. 37; Ex. 1002 ¶¶ 162, 164. Petitioner also has articulated sufficient reasoning with some rational underpinning to support the legal conclusion that the subject matter of claim 11 would have been obvious to one of ordinary skill in the art in view of the combined teachings of the references. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); Pet. 35–37; Ex. 1002 ¶¶ 156–60. According to Petitioner, for example, the combination would simplify the cancellation method of Natarajan 1992 by allowing the hub to revoke a time slot allocation when the remote stops transmitting. Pet. 36; Ex. 1002 ¶ 158. Relying on Dr. Haas’s testimony for support, Petitioner also asserts that using Bella’s cancellation method makes even more sense when the remotes are mobile, as in Natarajan 1992, because they may move outside of the hub’s range abruptly and be unable to cancel their own reservations. Pet. 37; Ex. 1002 ¶ 159. Moreover, we are persuaded by Petitioner’s position that only ordinary skill would be required to implement the reservation and cancellation method of Bella in the Natarajan 1992 system. See Pet. 37; Ex. 1002 ¶ 160. For these reasons, having considered the parties’ contentions and supporting evidence, we determine that Petitioner has shown by a preponderance of the evidence that claim 11 would have been obvious over the combination of Natarajan 1992 and Bella.” slip op. at 24

  Patent outcomesUS 5,371,734 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 5,371,734
• St. Jude Medical, Inc. / St. Jude Medical S.C., Inc. et al. v. Atlas IP LLCAll claims unpatentable
  PTAB · Dec 3, 2015 · IPR2015-00534 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 6, 11, 14, and 21 are unpatentable: claims 6, 14, and 21 as anticipated by Natarajan 1992 and obvious over Natarajan ’542 and Bantz; claim 11 as obvious over two combinations.

  RulingsFinal written decision

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

    “I. INTRODUCTION We have jurisdiction to hear this inter partes review under 35 U.S.C. § 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has shown by a preponderance of the evidence that claims 6, 11, 14, and 21 of U.S. Patent No. 5,371,734 are unpatentable. A. Procedural History St. Jude Medical, Inc., St. Jude Medical S.C., Inc., and Pacesetter, Inc. (collectively, “St. Jude”) filed a Petition for inter partes review of claims 6, 11, 14, 21, and 44 of U.S. Patent No. 5,371,734 (Ex. 1001, “the ’734 patent”). Paper 2 (“Pet.”). Atlas IP LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On December 8, 2014, we instituted an inter partes review of claims 6, 11, 14, and 21 of the ’734 patent on asserted grounds of unpatentability. Paper 7 (“Dec.”).” slip op. at 2

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

    “by the parties as the “each” limitation: “repeating communication cycles, each of which has intervals during which the hub and the remotes transmit and receive frames.” E.g., Ex. 1001, 46:29–31 (claim 6). In the Decision on Institution, we construed this claim limitation “to require that each communication cycle include intervals during which the hub and remotes are allowed to transmit and receive, without requiring actual transmission of frames.” Dec. 12. We based our construction on the language of the claims, including additional language referring to “intervals . . . when the hub is allowed to transmit frames to the remotes [and] when the remotes are allowed to transmit frames to the hub.” Id. at 10 (citing Ex. 1001, 46:36– 39). We also considered the written description of the ’542 patent, which speaks of transmission opportunities during which remotes are provided an opportunity to transmit messages to the hub. Id. (citing Ex. 1001, 12:14– 17).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “With respect to transmission by the remotes, the proper construction of the “each” limitation requires only that each cycle have one or more intervals during which remotes are allowed to transmit. See supra Section II.A.1. Period B is such an interval, as it contains allocated slots during which individual mobile stations are allowed to transmit packets to the Access Point. See Ex. 1011, 5–6; Pet. 27; Ex. 1002 ¶ 118. The individual slots within Period B are also intervals. See Pet. 27; Ex. 1002 ¶ 122. Patent Owner’s argument that Period B is not an interval meeting the requirements of the claim is unpersuasive because it is premised on an incorrect claim construction requiring at least one interval in which a remote actually transmits to the hub. See PO Resp. 5–7. As explained previously, the Federal Circuit has rejected Patent Owner’s proffered construction of the “each” limitation. See supra Section II.A.1.” slip op. at 16

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

    “Petitioner relies on a combination of Bella’s time slot cancellation method with the system of Natarajan 1992 to satisfy the additional limitations of claim 11. Pet. 34–38; Ex. 1002 ¶¶ 161–67. Like Bella, Natarajan 1992 describes a system in which mobile stations make reservation requests for slot allocation. Ex. 1011, 7–8; see Pet. 37–38; Ex. 1002 ¶ 165. If a mobile station requests isochronous service, the requested number of slots will be allocated to the mobile station in Period B of every frame until the mobile station cancels the allocation by sending a cancellation request. Ex. 1011, 8; see Pet. 36, 38; Ex. 1002 ¶ 166. Thus, Natarajan 1992 teaches “revoking a previous transmission opportunity allocation of a remote,” as recited in claim 11, when the hub receives a cancellation request from the remote. See Pet. 37–38; Ex. 1002 ¶ 166–67. If the system of Natarajan 1992 instead utilized Bella’s cancellation method, which revokes a previous transmission allocation when a remote transmits no packets in a communication cycle, we are persuaded by Petitioner’s argument that the combination would result in “the hub revoking a previous transmission opportunity allocation of a remote which has not transmitted more than a predetermined number of frames” (zero) “during a previous number of communication cycles” (one). See Pet. 37–38; Ex. 1002 ¶ 167. Furthermore, if Natarajan 1992 employed the cancellation technique of Bella, the hub would be “monitoring the frames transmitted by each remote during its transmission opportunity.” See Pet. 37; Ex. 1002 ¶¶ 162, 164. Petitioner also has articulated sufficient reasoning with some rational underpinning to support the legal conclusion that the subject matter of claim 11 would have been obvious to one of ordinary skill in the art in view of the combined teachings of the references. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); Pet. 35–37; Ex. 1002 ¶¶ 156–60. According to Petitioner, for example, the combination would simplify the cancellation method of Natarajan 1992 by allowing the hub to revoke a time slot allocation when the remote stops transmitting. Pet. 36; Ex. 1002 ¶ 158. Relying on Dr. Haas’s testimony for support, Petitioner also asserts that using Bella’s cancellation method makes even more sense when the remotes are mobile, as in Natarajan 1992, because they may move outside of the hub’s range abruptly and be unable to cancel their own reservations. Pet. 37; Ex. 1002 ¶ 159. Moreover, we are persuaded by Petitioner’s position that only ordinary skill would be required to implement the reservation and cancellation method of Bella in the Natarajan 1992 system. See Pet. 37; Ex. 1002 ¶ 160.” slip op. at 23

  Patent outcomesUS 5,371,734 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 5,371,734
• 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
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00824 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 19, and 20 are unpatentable over Spadaro and Hodge; claim 13 is unpatentable over Spadaro, Hodge, and Cree. Claims 2, 5, 8, 9, 11, 12, and 14–18 were …

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See id. (explaining petitioner “had the burden of 11 Dynamic Drinkware issued after the time of the trial hearing and post-hearing briefing. 11 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, 19–35.” slip op. at 11

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

    “production under § 103(c)(1), Petitioner contends it carried its burden of production to show that the ’167 patent (grandparent) sufficiently would have conveyed to one of ordinary skill in the art that the Patent Owner had possession of the claimed subject matter and, therefore, the ’260 patent is entitled to the benefit of the filing date of the ’167 patent. Reply 7. As Petitioner recognizes (Reply 6), a claim in an application is entitled, under 35 U.S.C. § 120, to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims in the later application, as required by 35 U.S.C. § 112. 35 U.S.C. § 120; In re Chu, 66 F.3d 292 (Fed. Cir. 1995). Petitioner’s argument consists of a single paragraph identifying claim numbers and locations where the ’167 patent purportedly describes the subject matter of most, but not all, of the claims at issue and a citation to a single paragraph in its declarant’s supplemental declaration supporting Petitioner’s Reply. Reply 7 (listing claims 2, 8, 9, 11, and 14–18, but not listing claims 5 and 12; citing Ex. 1020 ¶ 16).” slip op. at 21

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

    “The ’260 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 26 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 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 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8. Therefore, in light of the plain language of the claim, the Specification of the ’260 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 26

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “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, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The prior art references, like the ’260 patent, relate to telephone communication systems. See Ex. 1001, 1:60–62 (indicating the technical field relates to inmate management and call processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field of the invention relates to telephone communication systems). In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony15 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 15 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2112 (6th ed. 2003) (defining telephony as “[t]he transmission of speech to a distant point by means of electric signals”) (Ex. 3001). 30 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” slip op. at 30

  Patent outcomesUS 8,340,260 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,340,260
• Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentable
  PTAB · Dec 1, 2015 · IPR2014-00780 · APJ William V Saindon · IPR · Final written decision

  Claims 6 and 8 are unpatentable as obvious over Liebermann, Engelke ’405, and Mukherji.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded that the probative value of these Exhibits “is substantially outweighed by a danger” of needlessly presenting cumulative evidence, nor are we persuaded that they are untimely. Patent Owner fails to address the “substantially outweighed” aspect of the Rule. In addition, these Exhibits were presented in response to Patent Owner’s argument that the claims required a certain amount of speed; they tend to show that the prior art was sufficiently speedy. In view of the above, Patent Owner’s Motion to Exclude is denied.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “in this proceeding.” PO Resp. 6–8. Patent Owner alleges the relevant technology is “TRS [(Telephone Relay Systems)] for the deaf and HOH [(Hard of Hearing)].” Id. at 7. We have heard already Patent Owner’s arguments on this issue and ruled against it. See, e.g., CaptionCall, L.L.C., Case IPR2013-00549, Paper 71, 13–14 (upon review of Mr. Occhiogrosso’s qualifications, finding that “he is qualified to testify as to the level of ordinary skill in the art in this proceeding”); see also id. at 8–13 (also discussing the pertinent field and the qualifications for testifying in the pertinent art). As we found in IPR2013-00549: We determine the pertinent art to be telecommunications systems, because any communications technology would be pertinent art to the ’835 patent. While assistive technology may be more pertinent, and assistive technology for the deaf and hearing impaired, using voice-to-text relays, may be most pertinent, anything in the telecommunications technology field would be pertinent to the inventors when considering their problem. Id. at 11–12. This proceeding involves the same patent; the pertinent art is generally the same. Thus, we consider Mr. Occhiogrosso suitably qualified to testify as to the level of ordinary skill in the art, given his background, training, and experience. See Ex. 1010 ¶¶ 10–11 (testifying to experience in “call centers,” “speech recognition algorithms,” “relay services and assistive technologies,” and “captioning of meetings”); see also CaptionCall, L.L.C., Case IPR2013-00549, Paper 71, 8–14 (setting forth in detail why Mr. Occhiogrosso is qualified to testify).” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for petitioner

    “We have construed already several terms in the ’835 patent in a prior decision. CaptionCall, L.L.C., Case IPR2013-00549, Paper 7, 8–12 (PTAB Mar. 5, 2014) (Decision to Institute, discussing “assisted user,” “hearing user,” “directly between,” and the control limitation); id., Paper 71, 7–8 (Final Written Decision, discussing “assisted user,” “hearing user,” “directly between,” and “initiating”). Petitioner submits that those prior constructions should be applied to this proceeding. Pet. 11–13. Patent Owner does not contest our prior constructions. PO Resp. 8. For purposes of this decision, we adopt our prior constructions, which are reproduced below, for convenience. We also address a limitation in claim 8 requiring voice recognition. 1. “assisted user” The individual making use of the transcribed text, regardless of the individual’s actual hearing abilities.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languagePlain and ordinary meaningDecided for petitioner

    “Nothing in the ’835 patent, however, expresses an intention to limit the scope of “using voice recognition software” to only those uses where revoicing is used. It is well settled that claims generally should be construed broadly enough to encompass at least one preferred embodiment but need not be limited to any embodiment, even if there is only one embodiment, absent disclaimer. Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1581 (Fed. Cir. 1996) (claim interpretation that would exclude the inventor’s device is rarely the correct interpretation); Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (discussing cases wherein the court expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment). The claim language is plainly broader than the particular embodiment Patent Owner seeks to incorporate. We recognize that the ’835 patent describes an embodiment utilizing voice recognition for revoicing, but we are not apprised of any disclosure that so limits the claims. Likewise, there is nothing structurally present in the claims that would limit or imply that revoicing is used.” slip op. at 12

  Patent outcomesUS 6,603,835 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,603,835
• Captioncall, L.L.C. v. Ultratec, Inc.Rehearing granted
  PTAB · Dec 1, 2015 · IPR2013-00544 · APJ Lynne E Pettigrew · IPR · Rehearing

  Patent Owner’s rehearing request was granted to modify the Ryan–McLaughlin combination analysis and denied otherwise; claims 7–11 remain unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “II. DISCUSSION 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). 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.” Id.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Patent Owner Response, that for a patent to serve as prior art the patent must be enabled as to its own earliest claimed effective filing date in 1994. Req. 1–4; PO Resp. 15–22. We addressed this argument in the Final Decision and additionally examined the evidence of record as to whether Ryan would have enabled one of ordinary skill in the art to make the invention without undue experimentation prior to the date of invention of the challenged patent. Final Dec. 22–25. We are not persuaded that we overlooked or misapprehended Patent Owner’s prior argument or made an erroneous interpretation of law.” slip op. at 3

  • ExcludeDecided for petitioner

    “transcript is inadmissible because it does not satisfy the requirements that all testimony, other than uncompelled direct testimony, must be in the form of a deposition transcript, 37 C.F.R. § 42.53(a), and that the witness shall be sworn, 37 C.F.R. § 42.53(f)(1). Req. 5. Therefore, according to Patent Owner, the Yamamoto transcript was “not taken, sought, or filed in accordance with these regulations [and] is not admissible.” Id. (citing 37 C.F.R. § 42.61(a)). Rule 42.53, however, is titled “Taking Testimony,” and applies only to testimony taken “during a testimony period set by the Board” for purposes of a particular review proceeding. 37 C.F.R. § 42.53(b); see also 37 C.F.R. § 42.53(c) (providing time limits set by the Board); id. § 42.53(d) (providing notice requirements). As stated in our Final Decision, Petitioner sought to admit the Yamamoto transcript as a deposition taken in the district court proceeding, not as deposition testimony taken in this inter partes proceeding. Final Dec. 32. And based on the parties’ stipulation in district court, we treated the Yamamoto transcript as sworn deposition testimony taken in the district court. Id. at 32–33 (citing Ex. 1067 ¶ 5). Petitioner filed the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b), establishing that the Yamamoto transcript reasonably could not have been obtained earlier and that its consideration was in the interests of justice. Paper 59, 7–8. Therefore, Petitioner’s filing of the Yamamoto transcript complied with Board rules, and we properly relied on it in determining the public accessibility of Yamamoto. See Final Dec. 35–38. Having reviewed Patent Owner’s Request, we are not persuaded we misapprehended or overlooked any matter relating to the admissibility of the Yamamoto transcript.” slip op. at 6

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

    “disclosure in the ’578 patent of “voice pattern.” Id. at 7–9. We disagree that our reliance on the “Brief Summary of the Invention,” which refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 12 (quoting Ex. 1001, 2:44–46 (emphasis added)). Rather, in our Final Decision, we determined that the ’578 patent contemplated software trained to a “voice pattern of the call assistant,” as set forth in the “Brief Summary of the Invention,” as well as software “specifically trained to the voice of [a] particular call assistant,” as described in the context of a particular relay embodiment shown in Figure 1. Final Dec. 12 (quoting Ex. 1001, 2:44–46; Ex. 1002, 5:44–47). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’578 patent did not indicate expressly how training occurs. Id. Giving the claim language its broadest reasonable construction in light of the specification, we concluded we would not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant. Id.” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,213,578
• Captioncall, LLC v. Ultratec, Inc.Rehearing denied
  PTAB · Dec 1, 2015 · IPR2013-00540 · APJ Barbara A Benoit · IPR · Rehearing

  Denied Patent Owner’s request for rehearing of the Final Written Decision, which held claims 1 and 2 unpatentable, and denied its request for an expanded panel.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Patent Owner, as the party challenging the Final Decision, has the burden of showing the decision should be modified. Id.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Ryan1 did not qualify as prior art because it was not enabled (Paper 30, 15– 24 (“PO Resp.”)), we determined that Ryan was enabled prior to the date of invention of the challenged patent in 1997 and, therefore, qualified as prior art to the challenged claims. Final Dec. 18–23.” slip op. at 3

  • ExcludeDecided for petitioner

    “transcript is inadmissible because it does not satisfy the requirements that all testimony, other than uncompelled direct testimony, must be in the form of a deposition transcript, 37 C.F.R. § 42.53(a), and that the witness shall be sworn, 37 C.F.R. § 42.53(f)(1). Req. 7. Therefore, according to Patent Owner, the Yamamoto transcript was “not taken, sought, or filed in accordance with these regulations [and] is not admissible.” Id. (citing 37 C.F.R. § 42.61(a)). Rule 42.53, however, is titled “Taking Testimony” and applies only to testimony taken “during a testimony period set by the Board” for purposes of a particular review proceeding. 37 C.F.R. § 42.53(b); see also 37 C.F.R. § 42.53(c) (providing time limits set by the Board); id. § 42.53(d) (providing notice requirements). As stated in our Final Decision, Petitioner sought to admit the Yamamoto transcript as supplemental information, not as deposition testimony taken in this inter partes proceeding. Final Dec. 31. And based on the parties’ stipulation in district court, we treated the Yamamoto transcript as sworn deposition testimony taken in the district court. Id. at 33–35 (citing Ex. 1062 ¶ 5). Petitioner filed the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b), establishing that the Yamamoto transcript reasonably could not have been obtained earlier and that its consideration was in the interests of justice. Paper 63, 7–8. Therefore, Petitioner’s filing of the Yamamoto transcript complied with Board rules, and we properly relied on it in determining the public accessibility of Yamamoto. See Final Dec. 30– 35.” slip op. at 6

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

    “Specification’s disclosure of “voice pattern.” Req. 10–11. We disagree that our reliance on the Specification’s “Brief Summary of the Invention,” which indicates “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 7 (quoting Ex. 1021, 2:45-48 (emphasis added)). Rather, in our Final Decision, we contrasted the Specification’s use of “voice pattern of the call assistant” in its “Brief Summary of the Invention” with its use of “a voice recognition software package which is specifically trained to the voice of that particular call assistant” in the context of a particular embodiment of the invention shown in Figure 1. Final Dec. 7 (quoting Ex. 1021, 2:45–48, 5:45–48). Based on the evidence in the Specification (including the Specification’s disclosure of “a voice pattern”), we determined that the Specification did not indicate expressly that the voice recognition software is trained to the voice of only that particular call assistant or otherwise indicate that the voice recognition software is trained for the voice of only one call assistant. Final Dec. 7. We concluded that “we will not limit ‘trained to the voice of the call assistant’ to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant.” Id. at 8 (citing Ex. 1021, 2:41–49 (“Summary of the Invention”)).” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,233,314

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.