• The Boeing Company v. The Regents Of The University Of CaliforniaNo claims unpatentable
  PTAB · Oct 2, 2025 · IPR2024-00761 · APJ Alyssa A Finamore · IPR · Final written decision

  The Board held claims 1–24 not unpatentable because the asserted references did not show the glass element propagating a modified stress wave to generate tensile stress at the interface.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’684 patent “would have had an M.S. in Mechanical Engineering or a related field, and at least five years of experience using laser systems to characterize and test mechanical behavior in materials” and that “[m]ore education may supplement practical experience or vice versa.” Pet. 5 (citing Ex. 1003 ¶ 38). Patent Owner” slip op. at 8

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

    “Both parties maintain that no claim term needs to be construed. Pet. 4 (citing Ex. 1003 ¶ 40); PO Resp. 20. Patent Owner, however, provides an express construction for limitation [1.d] of independent claim 1 and the similar limitation of independent claim 13, namely limitation [13.c]. PO Resp. 20 (citing Ex. 2011 ¶ 25). To resolve the controversy before us, we determine that these limitations require express construction. 1. “the glass element is configured to propagate and modify a stress wave to the coating/substrate interface to generate a tensile stress between the substrate and the coating” (limitation [1.d]) and “propagating and modifying a stress wave through the glass element to the coating/substrate interface to generate a tensile force between the substrate and the coating” (limitation [13.c]) Patent Owner argues these limitations mean “changing the profile of the laser generated compressive wave and propagating the wave profile as modified to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface.” PO Resp. 20 (citing Ex. 2011 ¶ 25). Petitioner does not refute this proposed construction and, during the oral argument, Petitioner confirmed it agrees with the proposed construction. Tr. 8:16–9:12. We so no reason to depart from the parties agreed-upon construction of limitations [1.d] and [13.c]. Accordingly, for purposes of this Final Written Decision, we adopt the parties’ construction of limitations [1.d] and [13.c].” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “a shock in the compression wave in the fused silica substrate. Even if we were to agree with Petitioner that Wang-Dissertation’s fused silica substrate modifies the compression waveform, we would not be persuaded that the fused silica substrate propagates the modified wave to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface, as limitation [1.d] requires. In view of the presence of tension-wave-1 in Wang-Dissertation’s experiments, we find Petitioner has not demonstrated persuasively that the fused silica substrate propagates a modified stress wave to the free surface of the coating to generate a tensile stress at the coating/substrate interface. Also, we find credible Dr. Gupta’s unrebutted testimony that any modified compression wave would attenuate in the substrate and not propagate to the free surface coating or generate a tensile stress at the coating/substrate interface. Ex. 2011 ¶¶ 93–98. Petitioner does not dispute that the experiments in Wang-Dissertation include tension-wave-1. See Ex. 1005, 65 (“The experimental picture is complicated somewhat by the presence of a tensile wave, reflected from the back of the confining layer.”). Nor does Petitioner dispute that Wang-Dissertation discloses that the tension-wave-1 propagates faster than the compression-wave-1 and eventually overtakes compression-wave-1. See id. at 65–66 (“Being tensile, it propagates faster that the peak compressive stress, and faster than the low stress tail of the main pulse. It eventually overtakes the compressive pulse and linear dissipative mechanisms govern the final thickness of the shock.”). Rather, Petitioner relies on Dr. Wang’s testimony regarding the timing of the waves through the sample and argues that tension-wave-1 does not overtake compression-wave-1 in the fused silica substrate. Pet. Reply 17 (citing Ex. 1038 ¶ 5). Dr. Wang testifies that the peak stress from tension-wave-1 is about 2 ns behind the peak of compression-wave-1 and will not reach the interface before the reflected tensile peak of compression-wave-1 reaches the interface in 0.3 ns. Ex. 1038 ¶ 5. However, as Dr. Gupta persuasively explains, the delay between tension-wave-1 and compression-wave-1 depends on the properties of the confining layer, and Wang-Dissertation acknowledges that these properties are not well controlled. Ex. 2011 ¶ 54; see also Ex. 1005, 65 (“The surface properties of that confining layer are not well controlled.”).” slip op. at 19

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

    “claimed subject matter. Pet. 35–38; Pet. Reply 23–24. In doing so, Petitioner continues to rely on Wang-Dissertation to disclose limitation [1.d] of independent claim 1 and limitation [13.c] of independent claim 13. Pet. 35–38; Pet. Reply 23–24. Petitioner does not put forth any further obviousness rationale in this ground based on Wang-Dissertation for teaching these limitations. For the same reasons discussed in sections II.C.2–3, Petitioner has not persuaded us that Wang-Dissertation teaches or suggests limitations [1.d] and [13.c]. Thus, Petitioner has not shown, by a preponderance of the evidence, that Wang-Dissertation renders obvious the subject matter set forth in claims 4, 6, 9, 15, 17, 20, 23, and 24, which depend from independent claims 1 and 13.” slip op. at 24

  Patent outcomesUS 7,487,684 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,487,684
• Apple Inc. / Snap Inc. et al. v. Uniloc Luxembourg S.A.No claims unpatentable
  PTAB · May 23, 2018 · IPR2017-00225 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–6 and 8 were not shown unpatentable because the Petition did not establish a persuasive reason to add a client-side message database to the asserted prior-art combinations.

  RulingsFinal written decision

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

    “We do not agree with Petitioner. Although the ’433 patent Specification provides for a message database at the transport server, that database is for storing the messages of the one or more recipients that are not available, and, therefore, cannot receive instant voice messages. Ex. 1001, 22:5363. When a user becomes available, database (storage) manager 710 retrieves the undelivered instant voice messages from the database, and client manager 706 delivers the messages to the designated, now available, recipients. Id. Thus, message database 710 at the transport server stores and retrieves instant voice messages upon command from the client manager 706, whereas message database 310, of Figure 3, stores and retrieves instant voice messages upon command of file manager 308. This distinction is significant because claims 1 and 6 directly link the recited “message database” to the “file manager,” and no other component of the disclosed system. Further, the recited “file manager” performs the “storing,” for example, “in response to a user request,” according to the claim language of claims 1 and 6. The ’433 patent Specification lacks any description of the transport server’s message database or database manager storing instant voice messages in response to a user request. Indeed, the transport server does not store instant voice messages in the database in response to a user’s request, because it only stores messages in the database when the recipient is unavailable. In fact, the message database of the transport server stores messages at the request of client manager 706, and on condition that a recipient is not available. Ex. 1001, 22:5363; see also id. at 8:3843 (describing the local server in a similar manner, delivering messages to the available recipients and temporarily storing the instant voice messages for unavailable recipients). Further, the Specification contains no disclosure of “distributed” applications or programs or any other indication that the “instant voice messaging application” is a “distributed” application with components placed throughout the system (at clients and servers). Petitioner’s reliance on Figure 7 as supporting the contention of a “distributed” application, as discussed above, is unavailing. Other than having the same name, the message database of the transport servers (Figure 7) is a different message database from the one recited in claims 1 and 6 and described in Figure 3.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proffered level of ordinary skill in the art focuses too generally on experience in “communications technology.” The enunciation of such experience is too generic to be useful in determining the level of ordinary skill in the art under any of the GPAC factors. For instance, experience with “communications technology” is untethered to addressing problems and solutions in facilitating short messaging services, such as in Vuori, or to whether active workers in the appropriate field would manifest such a general experience in “communications technology.” Vuori, for instance, focuses on facilitating short messaging service in the context of a wireless telecommunication network. See Ex. 1005 ¶¶ 57. Therefore, we cannot ignore that the field of work would be more narrow than generally “communications technology.” We find that Petitioner’s assessment is proper and consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For example, Vuori (Ex. 1009) is directed to an instant messaging system in the context of telecommunication and computer networks, such as a Global System for Mobile Communications (“GSM”), General Packet Radio Service (“GPRS”), Universal Mobile Telecommunication Systems (“UMTS”), and the Internet. Ex. 1005 ¶¶ 3539, Figs. 3, 6; see also Ex. 1005 ¶¶ 14 (addressing messaging systems that use the Internet as a telecommunication and/or computer network). Thus, it is evident from the prior art that Petitioner’s assessment is appropriate because, in addition to a certain degree, a person of ordinary skill in the art would have experience in communications systems, particularly in messaging systems, data networks including VoIP and mobile telephony, or comparable industry experience. Consequently, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 23

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We find Petitioner’s rationale wanting. Petitioner proffers expert testimony of a reason to combine: “to improve the organization and retrieval of audio messages stored on a user’s device.” Ex. 1003 ¶ 109. Dr. Forys also states that “it would have been obvious to incorporate Holtzberg’s database structure into Abburi because such incorporation amounts to nothing more than applying a known technique (e.g., storing voice messages in a database) to a known device (e.g. the message recipient’s device in Abburi) ready for improvement to yield predictable results (a user device storing audio messages in a database).” Id. None of the proffered testimony is persuasive, and because it is not supported by either explanation or supporting facts, we give it little to no weight. 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.”). First, there is no explanation as to why a person of ordinary skill in the art would either de-centralize Abburi or relocate the database in Holtzberg to achieve the “user device storing audio messages in a database.” Dr. Forys’s conclusion that the claimed message database would have been obvious is unexplained and belies the specific teachings in both Abburi and Holtzberg that rely on the architecture of their systems as having centralized storage. Without “a reasoned explanation that avoids conclusory generalizations,” Dr. Forys’s testimony is not sufficient. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) (quoting Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)).” slip op. at 34

  • Strike new argumentNew argument disregardedDecided for patent owner

    “provides “specifics of how and why” Holtzberg is integrated into the system of Abburi. Reply 15. The argument and citations are not persuasive. The Reply Forys Declaration (Ex. 1019 ¶¶ 1214) provides new reasons for a motivation to combine (for example, motivation to provide storage at both the client and server for sent and received messages). This testimony does not just explain the rationale provided in the Petition (focused on incorporation of Holtzberg’s database at the user device of Abburi). Rather, Dr. Forys’s reply explanation provides an expanded rationale that is different from the rationale stated in the Petition. For example, Dr. Forys opines that a person of ordinary skill in the art “would understand that the communication link between the user device and the server system may be down or disrupted from time to time, and the recorded audio messages to be sent to the system must be stored until communication is reestablished.” Ex. 1019 ¶ 13. Dr. Forys’s opinion does not respond appropriately to the argument by Patent Owner that the teachings of Abburi and Holtzberg would have led away from incorporating a database at the client device. Rather, the reply opinion testimony diverges from the Petition’s rationale of improving organization and retrieval of audio at the client device. Put another way, the reasoning of redundancy of storage to account for communication failures between the server and the client is another rationale—different and distinct from the rationale asserted in the Petition.3 The Reply is not responsive to the teaching away argument, and it has come too late in the proceeding. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition or patent owner response”); Office Trial Practice 3 We find the further reasons in the Reply Forys Declaration similarly problematic. For instance, Dr. Forys opines that it would be convenient to playback older messages to recall their content, and would enable the user to track messages and avoid repeated queries to the audio message store. Ex. 1019 ¶ 13. Again, the Petition and the First Forys Declaration neither state nor explain a rationale based on convenience of local storage or of conservation of server resources. Indeed, the only reason or explanation timely provided addresses the generic benefit of organization and retrieval of data. Pet. 29. Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned.”). Accordingly, we will not consider the new theories of obviousness in the Reply and Reply Forys Declaration. See Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367–68 (Fed. Cir. 2015) (finding reasonable the Board’s judgment about when a Reply contention crosses the line from the responsive to the new); see also Tr. 89:590:5 (counsel for Petitioner offering argument regarding whether Reply falls outside the permissible scope and responding that “you could eliminate our petitioner reply entirely and we still think that there is a complete showing that all claim elements are rendered obvious under all five grounds, both combinations”).” slip op. at 37

  Patent outcomesUS 8,995,433 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,995,433
• RPX Corporation v. Chanbond LLCNo claims unpatentable
  PTAB · May 25, 2017 · IPR2016-00234 · APJ Jacqueline T Harlow · IPR · Final written decision

  RPX did not prove claims 1–31 unpatentable under § 103: the record lacked an adequate reason to combine the cited references.

  RulingsFinal written decision

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

    “The broadest reasonable interpretation of the claim terms “digital stream” and “digital information stream” includes no requirement, however, that the packets of the recited stream must be differentiated from other packets by more than destination address. As explained above, independent claims 1 and 19 of the ’822 patent describe the “digital stream” as the product of the combiner combining demodulated channels identified as having information addressed to an addressable device. Ex. 1001, 12:29–40, 15:11–23. Claims 1 and 19 additionally state that the digital stream is output to the addressable device. Id. Neither claim 1 nor claim 19 recites further detail concerning the characteristics of the packets of the “digital stream.” Id. Moreover, the dependent claims of the ’822 patent suggest that a “stream” may include unrelated content from different sources that is 9 addressed to different destinations. For example, claims 14 and 28, which depend indirectly from claims 1 and 19, respectively, recite that the “combiner is configured to combine the digital information demodulated by the wireless demodulator unit with digital information received from at least one addressable device, and output the combined digital information as the outgoing digital information stream to the wideband distribution unit.” Ex. 1001, 14:14–19, 16:49–54. Thus, by their plain language, these claims contemplate that the digital information to be combined may be received from more than one addressable device, and remain agnostic regarding the relationship between the packets in a stream, or the ultimate destination of those packets. See Ex. 1020, 96:11–97:8 (testimony by Dr. Nettles that claims 13 and 14 of the ’822 patent refer to a “digital information stream” that may include packets from different devices, relating to different content, going to different destinations). The specification of the ’822 patent is likewise consistent with an understanding of the claim terms “digital stream” and “digital information stream” as being free from any requirement that the packets of the recited stream be differentiated from other packets by more than destination address. Aside from the claims themselves, the specification of the ’822 patent uses the term “digital stream” in only a single instance, to describe signal throughput (the specification nowhere uses the term “digital information stream”). Ex. 1001, 10:10–14. The specification explains that “the channel width can, for example, be increased from 6 MHz per channel to 12 MHz per channel in order to accommodate, for example, the” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “2. Other Claim Terms In the Decision on Institution, we concluded that the claim terms “when,” “detector,” “additive signal,” and “channel identification information,” for which RPX proffered constructions in its Petition (Pet. 7– 9), did not require express construction, and should be given their plain and ordinary meaning. Dec. 6. Neither RPX nor ChanBond challenges our determination that the plain and ordinary meaning of each of these terms applies in the instant proceedings. Pet. Reply 1 (“RPX agrees with the Board that affording those terms their ordinary and customary meaning is appropriate for the purposes of these proceedings.”); PO Resp. 21 (“[T]he term ‘when’ requires only its ‘ordinary and customary meaning.’ . . . [T]he term ‘detector’ is used in accordance with its regular and customary meaning[.]”), 25 (“Insofar as this construction is consistent with the ‘ordinary and customary meaning’ of this term, Patent Owner agrees, however, it should not be limited unnecessarily by the cited examples from the specification referenced by Petitioner.”), 26 (“[T]he claim is plain in meaning as written, no further construction is necessary.”). Accordingly, we conclude that none of the claim terms “when,” “detector,” “additive signal,” and “channel identification information,” requires express construction, and afford each term its plain and ordinary meaning.” slip op. at 12

  • BurdenNot shown unpatentable

    “We find that the preponderance of the evidence does not support a conclusion that an artisan of ordinary skill would have had reason to combine the network gateway of Rakib with the protocols and formatting disclosed in DOCSIS 1.1.4. We are mindful that obviousness inquiry requires “an expansive and flexible approach.” KSR, 550 U.S. at 415. Such analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. It is axiomatic, however, that a determination of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Kahn, 441 F.3d at 988.” slip op. at 18

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

    “RPX does not offer adequate explanation as to why a relevant skilled artisan would have sought to combine Rakib with DOCSIS 1.1.4, when Rakib is addressed to DOCSIS 1.2, and makes no mention of DOCSIS 1.1.4. Nor does RPX explain why an ordinarily skilled artisan would have understood Rakib’s references to “DOCSIS 1.2 compatible,” “DOCSIS modem,” or “DOCSIS data” as suggesting combination with DOCSIS 1.1.4. In this regard, we highlight that RPX does not present evidence sufficient to establish any relationship between the cited portions of DOCSIS 1.1.4 and DOCSIS 1.2, or otherwise demonstrate a rationale for combining Rakib with 20 DOCSIS 1.1.4. Rather, RPX relies solely on Mr. Koperda’s unsupported, conclusory testimony (in a footnote) that any differences between DOCSIS 1.1.4 and DOCSIS 1.2 are “not relevant to the downstream/upstream RF channel management” (Ex. 1002 ¶ 104 n.3); testimony to which we give little weight (37 C.F.R. § 42.65(a)).” slip op. at 20

  Patent outcomesUS 7,941,822 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,941,822
• Amazon.Com, Inc. / HTC Corporation et al. v. Cellular Communications Equipment, LLCNo claims unpatentable
  PTAB · Jan 6, 2016 · IPR2014-01134 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1, 6, 9, 14, 18, and 19 were not shown unpatentable because Baker did not anticipate them and Reed with Baker or Love did not establish obviousness.

  RulingsFinal written decision

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

    “Whether a party is a real party in interest is a “highly fact-dependent question” that is evaluated “on a case-by-case basis.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Some of the common considerations for determining whether a party is a real party in interest include whether the party funds, directs, or controls the petition or proceeding. Id. at 48,760. Here, Patent Owner does not identify any evidence indicating that HTC America funds, directs, controls, or otherwise is involved in this petition or proceeding. Patent Owner’s argument that HTC America and HTC Corporation acted jointly in other cases and that HTC America is named as a real party in interest in other cases does not indicate that HTC America is a real party in interest in this case. Similarly, Patent Owner’s argument that an employee of HTC America is identified on the power of attorney for HTC Corporation in IPR2014-01135 does not indicate that HTC America is a real party in interest in this case.3 Finally, Patent Owner’s argument that HTC America and HTC Corporation share counsel does not indicate that HTC America funds, directs, controls, or otherwise is involved in this case.” slip op. at 7

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

    “Patent Owner’s proposed interpretation is supported by the claim language and the specification. In the challenged claims, the disputed phrase “at a start of a message transmission using a first one of the codes” immediately follows the phrase “a total transmit power of the subscriber station for the codes.” Ex. 1001, col. 9, ll. 62–64, col. 10, ll. 38–40, col. 12, ll. 8–10. Further, the specification explains that a “transmit power difference” is a difference between “a first and a second transmit power.” Id. at col. 2, ll. 41–43. According to the specification, the first transmit power is “the total maximum transmit power of the subscriber station for the plurality of codes” (id. at col. 2, ll. 45–47), and “[t]he second of the two transmit powers is the total transmit power of the subscriber station for the plurality of codes at the start of a message transmission using a first of the codes” (id. at col. 2, ll. 59–61 (emphasis added)). Thus, the specification indicates that the phrase “at a start of a message transmission using a first one of the codes” modifies the total transmit power. Other portions of the specification also support Patent Owner’s interpretation. See, e.g., id. at col. 6, ll. 42–47 (“The transmit power difference . . . is required to exist between the total transmit power for the two codes DCH and EDCH at the start of the transmission of an EDCH message and the maximum transmit power for the two codes DCH and EDCH.” (emphasis added)), col. 8, ll. 51–63. Therefore, we determine that, when given the broadest reasonable interpretation, the phrase “at a start of a message transmission using a first one of the codes” in the challenged claims modifies the phrase “a total transmit power of the subscriber station for the codes.”” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner does not identify any express disclosure in Baker indicating that the boundary of the frame or timeslot immediately preceding the ACK or NACK signal is the start of a message transmission. Pet. 23–26; Pet. Reply 9–10; Tr. 11:3–10. Petitioner instead argues that “an EDCH message as described in the ’174 patent can be a single frame,” and, thus, “maintaining a transmit power difference at a start of a frame (i.e., at a start of an EDCH message transmission) must be equivalent to maintaining a transmit power difference at a start of a message.” Pet. Reply 9; Tr. 13:15– 19. In other words, Petitioner argues that the start of a frame of an EDCH message inherently is the start of a message transmission.4 Petitioner’s argument is not persuasive. First, Petitioner only argues that the mobile station in the ’174 patent transmits an EDCH message. Pet. Reply 9. Petitioner does not argue or identify evidence indicating that the mobile station in Baker transmits an EDCH message. Id. at 9–10; Tr. 12:6– 4 Petitioner argued at the oral hearing that the term “message transmission” in the challenged claims refers to any frame in a message because the EDCH message described in the ’174 patent can be a single frame. Tr. 61:2–62:10. Petitioner’s argument is improper because it was presented for the first time at the oral hearing. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Further, we are not persuaded that, because an EDCH message sometimes can be a single frame, the phrase “at a start of a message transmission” refers to the start of any frame in a message transmission. 16. Therefore, Petitioner’s argument that the start of a frame of an EDCH message inherently is the start of a message transmission does not demonstrate that the start of a frame in Baker inherently is the start of a message transmission. Tr. 12:6–16. Second, Petitioner does not identify evidence indicating that the start of a frame of an EDCH message necessarily is the start of a message transmission. Pet. Reply 9–10. Petitioner argues that an EDCH message can be a single frame, and, thus, the start of a frame of an EDCH message can be the start of a message transmission. Id. at 9; Ex. 1015 ¶ 11. However, the mere possibility that the start of a frame may correspond to the start of a message transmission is not sufficient to show that Baker anticipates the challenged claims. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). Further, Petitioner acknowledges that a message transmission in Baker may include more than one frame, and, as a result, the start of a frame in Baker does not necessarily correspond to the start of a message transmission. Tr. 12:6–16, 16:19–19:13. Therefore, because Petitioner has not shown that Baker expressly or inherently discloses determining a transmit power difference between a maximum transmit power for the codes and a total transmit power for the codes at a start of a message transmission using a first one of the codes, Petitioner has not shown by a preponderance of the evidence that Baker anticipates claims 1, 6, 9, 14, 18, and 19.” slip op. at 12

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

    “As discussed above, Petitioner argues that Reed teaches a mobile station that can transmit two or more data streams. Pet. 28–29 (citing Ex. 1004, col. 4, ll. 14–21). The portion of Reed cited by Petitioner states that: If the mobile station desires to send two or more data streams (or hold voice and data connections at the same time), an addition [sic] degree of freedom allows the mobile station to deliberately increase the headroom on one of the data streams to de-prioritize that data stream. This would result in, for example, a longer time to transmit a text message from the mobile station but allow a digital picture to be transmitted at an optimum data rate. Ex. 1004, col. 4, ll. 14–21 (emphases added). This portion of Reed indicates that the headroom for one data stream can be adjusted independently of the headroom for the other data streams, and, thus, demonstrates that each data stream has its own headroom. Id.; Ex. 1003 ¶ 110; Ex. 2022 ¶¶ 100–101. As a result, assuming that each data stream in Reed is assigned a different code, Reed teaches determining a separate headroom for each code, not determining a single headroom for a plurality of codes. Ex. 1003 ¶ 110; Ex. 2022 ¶¶ 101–104.” slip op. at 16

  Patent outcomesUS 7,941,174 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,941,174
• HTC Corporation / HTC America et al. v. Cellular Communications Equipment, LLCNo claims unpatentable
  PTAB · Jan 4, 2016 · IPR2014-01133 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1, 2, 4, 5, 8, 24, 25, and 31 were not shown unpatentable because the cited references did not establish the distinct diverting and controlling components required by the claims.

  RulingsFinal written decision

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

    “Patent Owner instead waited until after we granted the Motion to Terminate and dismissed NEC America and NEC Mobile from this case to argue that NEC Corporation had controlled their participation. Ex. 2002, 19:18–25:18. The result of Patent Owner’s delay is that the parties whose conduct is in question no longer are involved in this case. Patent Owner previously assured the remaining parties and the Board that “NEC’s termination from the IPRs [would] have little, if any, impact on the remaining parties or the Board.” Paper 13, 5. Yet, now, Patent Owner seeks the extraordinary remedy of terminating this case in its entirety based on statements made in the documents that secured the dismissal of NEC America and NEC Mobile (documents which the remaining parties did not sign). Given Patent Owner’s delay and previous assurances regarding the dismissal of NEC America and NEC Mobile, we decline to terminate this case with respect to the remaining parties. See 37 C.F.R. § 42.12. 2. HTC America Patent Owner argues that HTC America should have been identified as a real party in interest in the Petition because of the relationship between HTC America and HTC Corporation. PO Resp. 13–19. Patent Owner’s argument is not persuasive because the Petition already identifies HTC America as a real party in interest. Pet. 1.” slip op. at 6

  • ExcludeMotion to exclude, deniedOther

    “E. Petitioner’s Motion to Exclude Petitioner filed a Motion to Exclude Exhibits 2006–2019 (Paper 41), to which Patent Owner filed an Opposition (Paper 43), and Petitioner filed a Reply (Paper 45). Petitioner’s Motion to Exclude Exhibits 2006–2019 is dismissed as moot because this Decision does not rely on Exhibits 2006– 2019.” slip op. at 13

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

    “B. Claim Construction The claims of an unexpired patent are interpreted using the broadest reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). We determine that no claim terms require express construction.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “The claims of the ’923 patent indicate that the diverting and controlling steps in claim 1 are performed by separate components, and that the diverting unit and controlling entity in claim 24 are separate components. Claim 24, for example, recites the diverting unit and the controlling entity separately, and, thus, indicates that those elements are distinct components. Ex. 1001, col. 10, l. 62–col. 11, l. 3; see Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.”). Claim 24 also specifies that the diverting unit is configured to divert a message “to” the controlling entity, which further indicates that the diverting unit is separate from the controlling entity. Ex. 1001, col. 10, ll. 62–65; see Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1299 (Fed. Cir. 2015) (“Not only are the ‘two other computers’ recited independently from, and in addition to, the gateway and caching computer, the word ‘other’ denotes a further level of distinction.”).3 Similarly, claim 1 recites diverting a message “to” a controlling entity and then controlling the application program “in” the controlling entity, which indicates that the diverting step is performed by something other than the controlling entity.4 Ex. 1001, col. 9, ll. 15–22; see NTP, Inc. v. Research in Motion, Ltd., 419 F.3d 1282, 1300 (Fed. Cir. 2005) (holding that the “originating processor” and “gateway switch” are separate components because, inter alia, the claim language shows that information “is transmitted from an ‘originating processor’ to a gateway switch), abrogated on other grounds by IRIS Corp. v. Japan Airlines Corp., 769 F.3d 1359, 1361 n.1 (Fed. Cir. 2014).” slip op. at 8

  Patent outcomesUS 7,218,923 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,218,923
• HTC Corporation / ZTE (USA) et al. v. Cellular Communications Equipment LLCNo claims unpatentable
  PTAB · Jan 4, 2016 · IPR2014-01135 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1 and 3–9 were not shown unpatentable because neither Sasuta nor Lawrence disclosed the home network preference limitation explicitly or inherently.

  RulingsFinal written decision

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

    “Whether a party is a real party in interest is a “highly fact-dependent question” that is evaluated “on a case-by-case basis.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Some of the common considerations for determining whether a party is a real party in interest include whether the party funds, directs, or controls the petition or proceeding. Id. at 48,760. Here, Patent Owner does not identify any evidence indicating that HTC America funds, directs, controls, or otherwise is involved in this petition or proceeding. Patent Owner’s argument that HTC America and HTC Corporation acted jointly in other cases and that HTC America is named as a real party in interest in other cases does not indicate that HTC America is a real party in interest in this case. Similarly, Patent Owner’s argument that HTC America and HTC Corporation share counsel does not indicate that HTC America funds, directs, controls, or otherwise is involved in this case. The only evidence specifically related to this proceeding is that an employee of HTC America is identified on the power of attorney for HTC Corporation. PO Resp. 12–18; see also, Ex. 2022, 24:20–25:6 (Transcript of conference call with the Board: counsel for Patent Owner “So if we want to talk about evidence specific to these cases, it’s this power of attorney in the 1135 case.”). We are not persuaded that this evidence, by itself, is sufficient to indicate that HTC America is a real party in interest in this case. There is no dispute that the actual signature on the power of attorney is from an employee of HTC Corporation. See PO Resp. 14; Paper 33 (“Reply”) 23. And Petitioner represents that the reference to an HTC America employee on the document was a simple oversight. Reply 23. Patent Owner does not provide evidence to the contrary.” slip op. at 9

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

    “preamble “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.” Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation marks omitted). Id. A preamble, however, “limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” For example, “dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.” Id. Both parties agree that, although it is part of the preamble, the term “home network” acts as a limitation of claim 1. PO Resp. 25; Paper 42 (“Tr.”), 5–6 (Petitioner’s counsel: “We think that home network is limiting.”), 12–13 (Petitioner’s counsel: “Since the preamble, we agreed, is limiting . . .”). We agree that the preamble limits the scope of the challenged claims. The body of claim 1 refers to “said first network,” which refers to the “first . . . mobile telephone network[]” recited in the preamble. The preamble further defines “said first network is the home network of the mobile communication device.” We are persuaded that this language “indicates a reliance on both the preamble and claim body to define the claimed invention” and is not merely a statement of intended purpose or intended use. Catalina Marketing, 289 F.3d at 808 (citing Bell Comm’s Research, Inc. v. Vitalink Comm’s Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Patent Owner proposes a broadest reasonable interpretation of “home network”—“the network that the mobile communication device is preconfigured to access first.” PO Resp. 25. According to Patent Owner, several examples described in the ’804 patent, including those illustrated by Figures 3, 4a, and 4b, support this interpretation by showing a mobile station that is “preconfigured to access [the] home network first.” Id. at 25–27 (citing Ex. 1001, Figs. 3, 4a, 4b, 3:22–29, 3:61–65). Petitioner proposes a competing interpretation for the term—“the network to which the mobile stations subscribe.” Reply 3. Petitioner argues that there is “a clear and unambiguous definition” of the term in the specification. Id. (quoting Ex. 1001, 1:41–42 (“the ‘home’ network (i.e. the network to which the mobile stations subscribe”)). We agree with Petitioner that the broadest reasonable interpretation of “home network” is “the network to which a mobile station subscribes,” as explicitly defined in the specification. Ex. 1001, 1:40–47. Nothing in the ’804 patent indicates that the patentee intended to modify this definition. In particular, the word “preconfigure” in Patent Owner’s proposed construction is never recited in the ’804 patent. We, therefore, are not persuaded that limiting the term “home network” in such a way is proper.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Nothing in Sasuta’s description requires that in choosing a service provider from the catalog of service providers, a provider must be chosen in any particular order. In fact, Sasuta is silent on whether any particular network, such as a home network, has priority and should be chosen first. The Petition relies, primarily, on Figures 3 and 4, and the corresponding descriptions, for support of anticipation by Sasuta. Pet. 31–32, 49 (citing Ex. 1010, 3:44–4:8, 6:1–10). These portions of Sasuta, however, do not describe a home network or any other type of network that is selected first among those networks listed in the catalog. To the contrary, the language corresponding with Figure 3 describes communication unit 1001 choosing service provider 103 for its telephone interconnect service, without any explanation, despite the fact that service provider 101 also includes that service. The language corresponding with Figure 4, similarly, does not shed any light on whether there is a home network that is always chosen first from the catalog of service providers. The only language relating to how a network is chosen in this portion of Sasuta states that “the communication unit uses this service characteristic information by comparing them against corresponding threshold values for these characteristics . . . [i]n this manner, the communication unit can determine whether a particular service provider should be considered for providing a particular service.” Ex. 1010, 5:5–14. Thus, Sasuta does not disclose explicitly the home network preference limitation. Petitioner also has not met its burden to show that the home network preference limitation is disclosed inherently by Sasuta. “To serve as anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Petitioner acknowledges that its inherency argument was not made until, at the earliest, the Reply brief, and that it did not proffer evidence on the issue. Tr. 14:16–18 (“JUDGE WEINSCHENK: What evidence have you provided us that shows us that [the home network preference limitation is] so well-known that we don’t need it in the reference? MR. THILL: In terms of the record, I don’t know that we made an explicit argument, and that was not part of the testimony of our expert.”); see also Reply 3–4 (asserting that “[a]bsent a [home network] cellular telephone is inoperable” and that it “is inherent in the definition of a working cellular telephone” to have a home network, but providing no citations to supporting evidence for these assertions).” slip op. at 15

  Patent outcomesUS 6,377,804 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,377,804
• Facebook, Inc. v. Rembrandt Social Media, L.P.No claims unpatentable
  PTAB · Jun 22, 2015 · IPR2014-00415 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1, 4, 17, 18, 20, and 26 were not held unpatentable because the prior-art combinations did not teach the claimed privacy level information.

  RulingsFinal written decision

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

    “The ’316 patent uses the term “privacy level” in two contexts: it describes a diary page “operating” at a privacy level (Ex. 1001, 10:37–41), and it describes content objects “having” a privacy level (id. at 11:25–29). The “privacy level information” being claimed is part of “configuration information for controlling behavior of a cohesive diary page.” Ex. 1001, Claims 1, 17. The ’316 patent discloses that an owner can assign a “privacy level” to pages, sections, and content objects to control whether they are visible at the privacy level at which the diary page is operating. Ex. 1001, 18:12–15 (“[T]he owner of the diary can control what is presented to various classes of persons via his diary” by “identify[ing] various pages, sections, or content objects as having a certain privacy level.”). Only content data with a privacy level lower than or equal to the privacy level at which the diary page is operating is displayed. Id. at 18:17–20 (“[T]he diary applet generates HTML only for those portions of the diary that have a privacy level lower than or equal to the privacy level of the viewer who is viewing the diary.”).2 Specifically, “[t]he person viewing a diary page can only view that content marked as appropriate for him and other people at his privacy level.” Id. at 18:23–25. Similarly, “[a]ll users must enter an appropriate password before diary applet 112 will generate HTML (for content objects) or otherwise reveal the existence of objects having those privacy levels (e.g., for named sections in the named section list 404).” Id. at 11:25–29. The privacy level information for a content object, therefore, specifies the privacy level at or above which the diary page must be operating in order for that content object to be displayed. Accordingly, we construe “privacy level information” to mean “configuration information that describes or specifies a level at, or above, which particular content data is displayed as part of a cohesive diary page.”” slip op. at 10

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

    “We are persuaded by Patent Owner’s arguments. As discussed above, we construe “privacy level information” to mean “configuration information that describes or specifies a level at, or above, which particular content data is displayed as part of a cohesive diary page.” Salas teaches that file metadata includes “access information such as which users may open, view, and edit the file.” Ex. 1005, 13:54–55 (emphasis added). As Patent Owner correctly points out, the file is not “particular content on a cohesive diary page,” as our construction requires; the only “content on a cohesive diary page” related to the file is an icon. Even if the file was “content on a cohesive diary page,” Salas’s access information would still not be “privacy level information” because it does not describe or specify a level at, or above, which the file is displayed as part of a cohesive diary page. In that regard, Petitioner relies upon Parker’s teaching of visually indicating a user’s access level by ghosting out, greying out, shading, or hiding a folder icon and name. Pet. 43–46. According to Petitioner, This would predictably result in the eRoom system of Salas in which the ActiveX control running in the web browser obtains the file metadata identifying the access privileges of the user (Salas, 13:52‐57), and then uses it to generate the eRoom page with an item box (408) listing each file with a visual indication consistent with the viewing user’s access privileges (e.g.[,] fully visible, ghosted, grayed out, with a “lock icon,” etc.). (Tittel Decl. ¶ 88.) Pet. 46. Thus, Petitioner contends that by specifying a category of users permitted to open/view/edit non-content (i.e., a file), Salas’s access information also specifies a level (e.g., users-with-view-privileges level) at, or above, which the file is displayed as part of a cohesive diary page. For example, the technique of Parker may be used to hide the icon of a file whose file metadata specifies that the user does not have view privileges (i.e., is not at, or above, the users-with-view-privileges level). Ex. 1011, Figs. 6, 7, 11:4-47. As an initial matter, Salas’s user-based privileges are inconsistent with the description of a “privacy level” in the ’316 patent. As discussed above when construing “privacy level information,” neither the privacy level at which a content object is viewable nor the the privacy level at which a diary is operating depend upon the identity of a particular user. Ex. 1001, 10:29– 33, 10:41–43, 11:24–29, 17:22–23, 18:25–27. The “privacy level information” for a content object specifies a level at which, not a user to whom, the object becomes visible. Id. Salas’s access information, in contrast, specifies users to whom the file is openable, viewable, and/or editable. Ex. 1005, 13:52–57. Even assuming that the group of users who can view a file constitutes” slip op. at 18

  Patent outcomesUS 6,415,316 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,415,316
• Osram GmbH v. E. Fred SchubertNo claims unpatentable
  PTAB · Jan 21, 2015 · IPR2013-00459 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1, 2, 4, 11–14, and 16 were not shown unpatentable because neither Akasaki nor Sonobe disclosed crystallographic etching.

  RulingsFinal written decision

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

    “Patent Owner argued in its Preliminary Response that “substrate” had a meaning to the person of ordinary skill as the substrate upon which epitaxial layers are supported. Prelim. Resp. 7–11 (citing Ex. 20024 ¶¶ 19– 25). We adopted Patent Owner’s proposed construction in the Decision to Institute. Dec. Inst. 9–10. Neither party objects to the construction of “substrate” from the Decision to Institute. The ’475 patent does not define the term “substrate.” On this record, we are not presented with any reason to change our construction of “substrate” from the Decision to Institute and we find that “substrate” has its ordinary and customary meaning as would be understood by one with ordinary skill. Accordingly, “substrate” means “support material for epitaxial layers.” Id.” slip op. at 7

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

    “Neither party objects to our construction of “epitaxial layer system” from the Decision to Institute. Dec. Inst. 10–11. The McGraw-Hill Dictionary of Scientific & Technical Terms 690 (5th ed. 1994) defines “epitaxial layer” as “[a] semiconductor layer having the same crystalline orientation as the substrate on which it is grown.” Ex. 1028. The Specification is consistent with the dictionary definition. See Ex. 1001, 3:15–17. On this record, we are not presented with any reason to change our construction of “epitaxial layer system” substrate” from the Decision to Institute and thus we construe “epitaxial layer system” as “at least one semiconductor layer having a crystalline relationship to the substrate on which it is grown.” See Dec. Inst. 10–11.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We are not persuaded that Figure 2 of the ’475 patent discloses an “embodiment” that includes defect etching as “crystallographic etching,” as we have construed that term above in section II.A.5. The ’475 patent does differentiate defect etching from “crystallographic etching.” See Ex. 1001, 3:17–31. For example the ’475 patent acknowledges that “[M]olten KOH is known to form pits at dislocations in the c-plane of GaN.” Id. at 3:18–19. Further, exposing a defect pit that has planar surfaces by wet etching is not “etching that proceeds in directions dictated by the crystallographic planes of the material being etched.” Dec. Inst. 11–12. Petitioner points to Figure 2 as showing that the faces produced in the defect pits are “two or more competing etch planes.” Pet. Reply 2–3 (citing Ex. 1001, 3:40–44; see also Ex. 1041 ¶¶ 7–9). However, this disclosure does not support the position that Figure 2 is an example of “crystallographic etching.” “Crystallographic etching” is directed to creating a “crystallographic plane surface” (see claim 1) and not multiple “competing etch planes.” Dr. Shealy also testifies that Figure 2 shows “many, many crystal planes” and is not “crystallographic etching.” Deposition of James R. Shealy, Ex. 1040, 48:13–22. Dr. Wetzel’s Reply Declaration does not dictate a different result. Ex. 1041 ¶¶ 7–9. As discussed above, Petitioner argues Akasaki expressly, or at least inherently, discloses “crystallographic etching.” Petitioner argues the smooth mirror faces which result from the wet etching in Akasaki are evidence that “crystallographic etching” necessarily results. Tr. 59:14–18; see Ex. 1006 ¶ 4. However, Akasaki states clearly that the wet etch step removes damage caused by the dry etch, “thus improving the degree of mirror surfacing of the end faces.” Ex. 1006 ¶ 5. Smooth surfaces alone do not necessarily imply “crystallographic etching” because the smooth surface may result from only the removal of damage caused by the dry etch. Petitioner has produced no evidence that would lead us to conclude that the wet etch in Akasaki goes beyond the damage produced by the dry etch—i.e., the amorphous layer (Patent Owner’s Layer A)—to actually etch the epitaxial layer system (Patent Owner’s Layer B). “Crystallographic etching” might possibly then occur, but Petitioner has not shown that it necessarily occurs.” slip op. at 17

  Patent outcomesUS 6,294,475 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,294,475
• Redline Detection, LLC v. Star Envirotech, Inc.No claims unpatentable
  PTAB · Jun 30, 2014 · IPR2013-00106 · APJ James B Arpin · IPR · Final written decision

  Claims 9 and 10 were not shown unpatentable because the evidence did not establish a reason to combine the references to create the claimed inert environment.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner, however, does not cite precedent to support its position, and, during the oral hearing, Petitioner acknowledged that it was unaware of any supporting case law. Id. at 28:14-17. Moreover, we note that Dr. Checkel has “worked on automotive research projects with all of the ‘Big Three’ North American manufacturers as well as various suppliers to the industry.” Ex. 2018 ¶ 3. We are not persuaded on this record and with respect to this art that Petitioner has shown that a relevant distinction may be drawn between persons of ordinary skill in the United States and in Canada.” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on the present record, including Dr. Checkel’s unrebutted testimony, we are not persuaded that Petitioner has provided sufficient evidence to show that a person of ordinary skill in the art would have had reason to substitute the air used in Gilliam with inert gas alone from the mixture disclosed in Stoyle to achieve the invention recited in claim 9. Specifically, Dr. Checkel opines that: 136. The Stoyle apparatus heater relies on a high pressure process to heat oil to a temperature so as to enable flash evaporation and thus generate a large output of smoke. The Stoyle apparatus heats and forces a foam of oil and inert carbon dioxide gas under pressure through narrow annular passages in a heated metal assembly. This construction allows the oil to be pressurized and superheated above its atmospheric boiling temperature without significant degradation because of the uniform heating temperature and lack of oxygen. At the end of Stoyle’s heater tube, the superheated liquid oil is released to ambient conditions to form a mist. 137. A smoke generator relying on high pressure and flash evaporation to generate large volumes of smoke would be inappropriate and dangerous to use with the closed volume of an EVAP system, which is typically restricted to pressure of 1 psi (7kPa) or less. Even if the smoke generator had some modifications, the use of high pressure in generating the smoke and the production of large volumes of smoke at a rapid rate would risk damaging EVAP and fuel system components, possibly to the point of rupture. A person of skill would not consider Stoyle to be an analogous reference to add features missing from Gilliam. Ex. 2018 ¶¶ 136-137 (emphasis added; citations omitted). Dr. Checkel’s analysis of the differences between Stoyle and claim 9 of the ’808 patent is specific, well-supported, and persuasive. Therefore, we do not find sufficient evidence to support Petitioner’s argument for relying on Stoyle’s ventilation testing apparatus, in combination with Gilliam’s vacuum system leak-testing apparatus, to make the asserted substitution. We determine that the evidence of record is not sufficient to conclude that Gilliam and Stoyle provide a reason for one skilled in the relevant art to create an inert environment within a closed smoke-producing chamber and, subsequently, within a closed EVAP system during leak testing. In view of the differences between Stoyle’s and Gilliam’s apparatus, as detailed by Dr. Checkel, we are persuaded that a person of ordinary skill in the relevant art would not have reason to choose only the inert gas from Stoyle’s air/inert gas mixture and substitute inert gas alone for Gilliam’s use of air to achieve the invention recited in claim 9.” slip op. at 25

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

    “iii. Combination of Gilliam and Stoyle For the reasons discussed below, we agree with Patent Owner, and we are not persuaded by Petitioner’s evidence or Petitioner’s reasoning that a person of ordinary skill would have had reason to substitute Stoyle’s use of inert gas, forced into the narrow compressed space between a bore and a plug, in place of the air used in Gilliam’s temperature-regulated, spark arrestor-governed system to generate smoke in a closed smoke-producing chamber. See Pet. 41-42. It is not sufficient for prior art references to teach or suggest the recited limitations of a claim. There must be some reasoning supported by rational underpinnings to combine the references to achieve the invention recited in the challenged claims. As the U.S. Supreme Court explained, “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “guard against slipping into use of hindsight”).” slip op. at 22

  • ExcludeMotion to exclude, deniedMixed

    “Exhibits 2020, 2022, and 2024-2036: Referenced in Dr. Checkel’s Declaration, and Exhibits 2008, 2013, 2015, and 2017: Referenced in Mr. Saffie’s Declaration Petitioner seeks to exclude Exhibits 2020, 2022, and 2024-2036, referenced in Dr. Checkel’s Declaration, and Exhibits 2008, 2013, 2015, and 2017, referenced in Mr. Saffie’s Declaration, as allegedly irrelevant under FRE 403 and hearsay under FRE 801 and 802. Pet. Mot. Excl. 15. Petitioner, however, fails to identify any allegedly improper portions of any of these exhibits with any particularity. Id.; see Pet. Reply Mot. Excl. 5 (“For the reasons set forth in [Petitioner’s] motion, the remainder of [Patent Owner’s] evidence should be excluded.”). Such a general objection to these exhibits does not provide us with the information necessary to assess Petitioner’s reasons for seeking exclusion of these exhibits. Therefore, on this record, Petitioner’s motion to exclude Exhibits 2008, 2013, 2015, 2017, 2020, 2022, and 2024-2036 is denied. V. CONCLUSION Petitioner has not presented sufficient evidence to show by a preponderance” slip op. at 38

  Patent outcomesUS 6,526,808 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 6,526,808
• ABB, Inc. v. Roy-G-Biv CorporationNo claims unpatentable
  PTAB · May 16, 2014 · IPR2013-00063 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1-5 were not shown unpatentable as obvious over Gertz, Stewart, and Morrow because the evidence did not establish the claimed component function and component code.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “As discussed in the ’062 Decision, we give significant weight to the testimony of Patent Owner’s expert, Dr. Stewart, that actions in Gertz are not the same as the claimed component functions and that Gertz does not describe any code (i.e., the claimed component code) that associates component functions with driver functions, as claimed. ʼ062 Decision 22- 25. Petitioner does not provide sufficient evidence to rebut this testimony. Thus, as described below, we are not persuaded that Petitioner has established, by a preponderance of the evidence, that the combination of Gertz, Stewart, and Morrow renders claims 1-5 unpatentable under 35 U.S.C. § 103(a).” slip op. at 11

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

    “1. “component function” The parties present the same opposing views on the construction of this term as those discussed in the ’062 Decision at page 14. See PO Resp. 19; Pet. Reply 8. For the reasons set forth in the ’062 Decision at pages 14- 15, we conclude that the broadest reasonable interpretation of the term “component function” requires an action carried out by a program or routine, regardless of whether the action is defined by executable code. This is consistent with the Specification of the ’058 patent, which explains that “[t]he application program 26 comprises a sequence of component functions arranged to define the motion control operations necessary to control a motion control device to move an object in a desired manner.” Ex. 1001, col. 7, ll. 54-58. 2. “component code” The parties have the same disagreement on the construction of this term as that discussed in the ’062 Decision at page 15. See PO Resp. 20; Pet. Reply 8. For the reasons discussed in the ’062 Decision at pages 15-16, we determine that the term “component code” requires program instructions. This is consistent with the Specification of the ’058 patent, which explains that “the software system designer writes component code that associates at least some of the component functions with at least some of the driver functions.” Ex. 1001, col. 7, ll. 17-20.” slip op. at 10

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

    “IPR2013-00062. Petitioner relies on Gertz’s “actions” to meet this claim limitation. Pet. 26; Transcript 17:21-24. Patent Owner contends that Gertz’s “actions” are not component functions. PO Resp. 19, 27 (citing Stewart’s Declaration, Ex. 2013 ¶ 40). For the reasons set forth in the ’062 Decision, we agree with Patent Owner and determine that Petitioner has not persuasively explained why information regarding the arrangement of control tasks defines an “action carried out by a program or routine,” as required by a component function. ʼ062 Decision 23. Thus, Petitioner has not established, by a preponderance of the evidence, that Gertz teaches the claimed component functions.” slip op. at 12

  Patent outcomesUS 6,513,058 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,513,058

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.