• Apple Inc. v. Fintiv, Inc.No claims unpatentable
  PTAB · May 23, 2024 · IPR2023-00399 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–22 were not shown unpatentable under § 103 over Dill, Vadhri, and Akashika because Dill did not teach or render obvious the hardware SIM card and integration tier limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we determined that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting” and “working knowledge of mobile payment systems and techniques,” as Petitioner proposes. Inst. Dec. 9 (quoting Pet. 3–4). We stated that “this definition generally comports with the level of skill necessary to understand and implement the teachings of the ’488 patent and the asserted prior art.” Id. (citing Ex. 1003 ¶ 22; Ex. 2001 ¶ 35).” slip op. at 10

  • Expert testimonyPetitioner expert discountedMixed

    “In addition, Petitioner’s reliance on Dr. Houh’s testimony (see Pet. 23–24) is unavailing. Although Dr. Houh agrees with the arguments in the Petition and includes quotes from the cited portions of Dill and Bykov (see Ex. 1002 ¶¶ 95–97), he provides no additional analysis or explanation beyond what was provided in the Petition. As a result, his testimony suffers the same deficiencies as the Petition. Also, we do not credit his conclusion that Dill includes the requisite disclosure (see id. ¶ 97) because he fails to provide sufficient supporting explanation or evidence (see 37 C.F.R. § 42.65(a)). Finally, we note that Petitioner misrepresents Dr. Shamos’s testimony by stating that Dr. Shamos “agrees that if a mobile device executes a mobile wallet over a cellular network, the mobile device has a SIM card for the mobile wallet.” Pet. Reply 22 (emphasis added) (citing Ex. 1022, 29:4–7, 40:9–10). In the cited testimony, Dr. Shamos agrees that mobile devices have SIM cards, but he does not address where a mobile wallet application would be installed. Ex. 1022, 29:4–7, 40:9–10. Thus, contrary to Petitioner’s argument, we determine that Dr. Shamos’s testimony does not support Petitioner’s position.” slip op. at 27

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

    “for the term “hardware SIM card” because the important points are undisputed. In particular, the parties agree that a “hardware SIM card” is a SIM card implemented in hardware rather than software. See Pet. Reply 9 (citing Ex. 1021 ¶ 36); Tr. 40:25–41:2 (Patent Owner’s counsel explaining that the language in its proposed construction was “to differentiate it from a software SIM card”); see also PO Resp. 16, 19 (asserting that the term refers to a specific type of hardware, namely a “chip” or a “smart card”) (citing Ex. 2003 ¶¶ 32–33). The parties also agree that an ordinarily skilled artisan would have known that a “SIM card” is a component in a mobile device involved in identifying and authenticating a user to a mobile network. See Tr. 30:23–31:3 (Petitioner’s counsel stating “a SIM card, just as known in the art . . . would allow the user to be able to access the mobile network” 10 Each page in Exhibit 2021 includes at least two page numbers. For clarity, we refer to the page number of the exhibit (shown in the bottom right corner), and we have adjusted Patent Owner’s citation accordingly. given “the user’s identification information on it”), 39:24–40:2 (Patent Owner’s counsel stating that “I think everyone is in agreement that the critical aspect of what makes a SIM card a SIM card is that it can authenticate a mobile device to a wireless network”). The evidence supports the parties’ understanding. The word “SIM” is an acronym for “subscriber identity module” (see, e.g., Ex. 1001, 6:58–67; Ex. 2021, 5), and the record shows that a SIM is a specific component in a mobile device that is involved in identifying and authenticating a user to a mobile network (see Ex. 2003 ¶¶ 30–31; see also e.g., Ex. 2021, 7 (stating that a SIM’s “primary function” is “to authenticate the subscriber to the network”); Ex. 2025, 3 (describing the SIM)).11 Consequently, we determine that an ordinarily skilled artisan would have understood a “hardware SIM card” to be a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. We do not need to further construe the term, or determine whether the additional requirements proposed by Patent Owner are appropriate, because Petitioner fails to show that the prior art teaches or suggests the claimed “hardware SIM card,” as explained below. See infra § II.D.2.a (analyzing the parties’ substantive contentions).” slip op. at 13

  • BurdenNot shown unpatentable

    “Petitioner has not shown, by a preponderance of the evidence, that Dill discloses “a mobile wallet application installed on a hardware SIM card,” as required by element 1.3B. See Pet. 23–24. In particular, even assuming that Dill teaches installing a mobile wallet application somewhere on a mobile device (see Pet. 23),14 Dill does not teach installing it on a hardware SIM card,15 as specifically required by the claim. Petitioner relies upon paragraph 106 of Dill (see Pet. 23), but that paragraph does not disclose this claim limitation (see Ex. 1005 ¶ 106). In relevant part, that paragraph of Dill simply states: 14 Patent Owner disagrees with this premise, arguing that Dill does not disclose a mobile device that includes a mobile wallet application. See PO Resp. 52–56. We need not resolve that dispute because, even assuming Petitioner’s premise (as we have done in this Decision), Petitioner still fails to show that the claims are unpatentable. 15 As noted above, a “hardware SIM card” is a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. See supra § II.C.1 (addressing meaning of term). It should also be appreciated that the methods described above may be performed by hardware components or may be embodied in sequences of machine-executable instructions, which may be used to cause a machine such as a general-purpose or special-purpose processor or logic circuits programmed with the instructions to perform the methods. These machine-executable instructions may be stored on one or more machine readable mediums, such as CD-ROMs or other type of optical disks, floppy diskettes, ROMs, RAMs, EPROMs, EEPROMs, magnetic or optical cards, flash memory, or other types of machine-readable mediums suitable for storing electronic instructions. Alternatively, the methods may be performed by a combination of hardware and software. Ex. 1005 ¶ 106 (emphases added). This teaches storing instructions on “other types of machine-readable mediums,” but it fails to teach storing instructions on a hardware SIM card, much less storing Dill’s mobile wallet application there. In short, Dill is silent with respect to this issue, and silence is not disclosure. Notably, Petitioner does not contend (or show) that a mobile wallet application installed on a mobile device would necessarily be installed on a hardware SIM card. See Pet. 23–24; Ex. 1003 ¶¶ 95–97. Indeed, the record indicates that a mobile wallet application installed on a mobile device could instead be installed on a different component. See, e.g., Ex. 1001, 7:1–3, 9:33–35 (identifying device memory as alternate component); Ex. 2021, 5 (describing SIM as the “smaller of two computer chips inside a GSM mobile handset”); cf. Pet. Reply 9 (distinguishing between hardware SIM cards and software ones). Thus, Petitioner fails to show that this claim limitation is inherent in Dill. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (explaining that inherency requires a showing that “the limitation at issue necessarily must be present”).” slip op. at 22

  Patent outcomesUS 9,208,488 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,208,488
• ROKU, Inc. v. Universal Electronics, Inc.Some claims unpatentable
  PTAB · Nov 28, 2023 · IPR2022-00943 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–7, 9–13, 15, and 16 are unpatentable as obvious; claims 8 and 14 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that: On or before 7/12/2017, [one of ordinary skill in the art] would have had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately three years of experience or equivalent study in voice-controlled devices in smart home systems. Additional graduate education could 2 Neither party presents arguments or evidence relating to such objective evidence of nonobviousness. in the field could substitute for formal education. Pet. 18. We adopted this definition for the purposes of the Decision on Institution. Dec. on Inst. 8–9. Patent Owner adopts Petitioner’s definition. PO Resp. 4. We again adopt Petitioner’s definition, which is consistent with the level of skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “Absent a recitation of order, or an order mandated by grammar or logic, the steps of a method claim are not construed to require a particular order. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). Patent Owner argues that the steps of claim 1, a method claim, must be performed in sequential order. PO Resp. 13–16. Without commenting on or conceding Patent Owner’s proposal, Petitioner contends that “the trial grounds meet this proposed construction.” Pet. Reply 24–25; Tr. 8:25–11:16. Our record does not reflect any indication that Patent Owner’s proposed construction requiring the sequential ordering of the method steps is not at least encompassed by the correct construction of claim 1. Because of this, and because Petitioner agrees that the arguments in the Petition meet this construction, we accept Patent Owner’s construction as correct for the purposes of this Decision.” slip op. at 10

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

    “We do not agree with Patent Owner that Petitioner’s showing uses the same sound data to teach the “first sound data” of limitation 1.a and the “second sound data” of limitation 1.c. Patent Owner is correct that Rosenberg’s claim 5 describes the determination of a volume threshold based on the volume of the ambient audio signal in which characteristic form(s) (e.g., the name of the user of the media player) are present. Ex. 1006, 13:66–21, 14:28–30. However, the Petition describes using Fu’s “predetermined threshold” in combination with Hart-787’s device, which attenuates audio output of a device upon detecting a user’s utterance intended to gain the attention of the device, in order to “include adjusting the audio output volume of a wirelessly-linked audio-producing device when the voice-controlled device determines that the ambient noise level at the time a Ex. 1004, 2:22–37, 5:61–6:10, 9:18–25; Ex. 1005 ¶¶ 24, 32, 54; Ex. 1003 ¶¶ 88–89). Petitioner further proposes including a threshold that is advantageously based on the environment in which the device is operating as described in Fu, for example to respond to differing levels of noise at different times of day. Id. at 26, 29–30, 40 (citing Ex. 1006, 10:42–67, 14:28–30; Ex. 1003 ¶¶ 48–53, 55, 58, 87, 91, 107–109). We agree with Petitioner that Patent Owner’s arguments address the references individually instead of addressing the combination of the teachings proposed in the Petition. See Pet. Reply 8, 13–14; see also Dec. on Inst. 21–22, 23–24, 25–26. The Petition relies upon a combination of elements of Hart-787 with the predetermined threshold as taught in Fu and with establishing such a threshold based on the operating environment of a device as in Rosenberg. Pet. 26–31, 34–41. Patent Owner is correct that Rosenberg’s threshold is set at the time of the utterance in Rosenberg’s claim 5 and cites Petitioner’s declarant as “conceding” issues regarding how “Rosenberg’s volume threshold is determined.” PO Resp. 20–21. But this argument and the ostensible concession do not squarely address the proposed combination, which combines Fu’s teaching of an adjustment unit that “compares the volume of the ambient noise received . . . to a predetermined threshold” with Rosenberg’s teaching that such “a threshold may be ‘determined based on the volume of [an] ambient audio signal.’” Pet. 39, 40 (emphasis omitted) (quoting Ex. 1006, 14:28–30). While Patent Owner argues that “Petitioner has not proposed using a predetermined/pre-set threshold or a previously established threshold based on environmental noise in the combination of Hart-787 with F[u] and Rosenberg” (PO Resp. 46), we find, on the contrary, that the Petition describes a combination based predetermined threshold” and on a threshold “determined according to an environmental noise level.” Pet. 29–30. Thus, we find Petitioner’s unpatentability grounds do not suffer from the issues Patent Owner argues are a consequence of the purported use of the same sound data for the “first sound data” of claim limitation 1.a and for the “second sound data” of claim limitation 1.c. We do not agree with Patent Owner’s arguments regarding Fu’s teachings with respect to limitation 1.e’s “transition from a first state having a first volume level to a second state having a second volume level that is less than the first volume level” because these arguments similarly do not address the proposed combination. See PO Resp. 26–30. The Petition cites Hart-787 for attenuating the volume of an audio-producing device when a wake word is issued. Pet. 32–34, 43–44. The Petition cites Fu for adjusting volume of an audio-producing device if the level of ambient noise exceeds a predetermined threshold. Id. at 36–39, 44–45. Thus, even if Fu teaches only increasing the volume of an audio-producing device if the predetermined threshold is exceeded, the Petition relies on the combination of teachings of Hart-787 and Fu, and Patent Owner’s argument that neither reference teaches “decreasing a controllable appliance’s volume output when a previously established volume threshold is exceeded” (PO Resp. 30) does not address the combination proposed. Patent Owner’s argument that “Petitioner has not proposed modifying Fu to decrease a controllable appliance’s volume output when a volume threshold is exceeded” (PO Resp. 30) similarly does not address the combination proposed in the Petition. We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references.” slip op. at 23

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

    “We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references. transmitted volume down control signals as the means for attenuating audio output, Petitioner contends that Hart-787 “broadly teaches” that a device transmits control command signals to the audio-producing device, relying on the testimony of its declarant. See Pet. 23 (citing Ex. 1004, 5:47–51; Ex. 1003 ¶ 82), 43–44 (citing Ex. 1004, 1:67–2:7, 2:26–27, 5:47–51; Ex. 1003 ¶ 118). In addition, Petitioner shows that these control signals were well-known in the art and would have been known to one of ordinary skill in the art at the time of the invention, supporting its showing with additional testimony from its declarant. Id. at 44 (citing Ex. 10183, 2:39–47, 5:35–38; Ex. 10194 ¶¶ 3, 13; Ex. 1003 ¶¶ 44–45, 118). We conclude Petitioner’s evidence regarding the showing in Hart-787 is sufficient with respect to this point. Hart-787 describes altering a signal sent to the speaker to attenuate the audio from that speaker. Ex. 1004, 1:67– 2:1. Petitioner’s declarant testifies that using transmitted control signals to do this would have been known to one of ordinary skill. Ex. 1003 ¶¶ 44–45, 82, 118. We consider Petitioner’s evidence regarding what one of ordinary skill in the art would have understood from Hart-787’s disclosure to be sufficient for the showing regarding the “causing one or more commands to be automatically issued to the controllable appliance to thereby cause” that appliance to transition to a lower volume level, as required in limitation 1.e. While Patent Owner argues that Petitioner’s declarant “concede[s] that Hart- 787 does not disclose or teach how its voice-controlled device decreases the audio output of the controllable appliance,” the cited portion of the” slip op. at 25

  Patent outcomesUS 10,930,276 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,930,276
• Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentable
  PTAB · Jul 6, 2023 · IPR2022-00417 · APJ Brian D Range · IPR · Final written decision

  Claims 1, 2, 4–8, 10–12, and 18 are unpatentable as obvious over Takeda-322.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The Specification of the ’250 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The Specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.5” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. PO Resp. 27–38 (citing Ex. 2003 ¶ 71). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 22–23 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed

    “appears in independent claims 1 and 18) should be construed as “a component in a booster antenna for coupling with a module antenna connected to an integrated circuit.” PO Resp. 15–16. We determine that it is unnecessary to construe this claim term for purposes of this Decision. See, e.g., Nidec Motor Corp., 868 F.3d at 1017 (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). As we explain herein, the preponderance of the evidence supports that Takeda-322 renders the recited “coupler coil” obvious even under Patent Owner’s proposed construction. See Section III(G)(2)(b), infra.” slip op. at 13

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

    “to the extent Takeda-322 does not expressly teach a single wire implementation, such an implementation would have been obvious because it was a known, conventional, technique and because it would lead to obvious and predictable results while avoiding drawbacks of multiple wires. Id. at 11–12 (citing Ex. 1003 ¶¶ 59–63; Ex. 1012, 3:54–60, 4:26–36, 5:35– 60 (Ayala suggesting use of single wire)). Petitioner further argues, with supporting evidence, that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving this implementation. Id. The preponderance of the evidence supports Petitioner’s argument that a person of ordinary skill in the art would have had both reason and a reasonable expectation of success in achieving this implementation, and Patent Owner does not dispute the argument. We, thus, determine that a single-wire embodiment of Takeda-322 would have been obvious.” slip op. at 26

  Patent outcomesUS 9,033,250 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,033,250
• PNC Bank N.A. v. United Services Automobile AssociationSome claims unpatentable
  PTAB · May 10, 2023 · IPR2022-00076 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1 and 8–20 are unpatentable as obvious; claims 2–7 were not shown unpatentable because the petitioner did not establish motivation to combine for their error-processing limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that the level of ordinary skill in the art corresponds to “a bachelor’s degree in electrical engineering, computer science, computer engineering, or equivalent field” and “two years of prior experience with image capturing/scanning technology, involving transferring and processing of image data to and at a server.” Pet. 14 (citing Ex. 1002 ¶ 45). Petitioner further asserts that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Id. For purposes of the Institution Decision, we adopted Petitioner’s proposal (Inst. Dec. 16), and neither party alleges that a different level of ordinary skill should be applied in this proceeding (see PO Resp. 5; Pet. Reply). In this Decision, we again adopt the level of ordinary skill proposed by Petitioner. We are satisfied that it generally comports with the level of and the asserted prior art. Accord Inst. Dec. 15–16.” slip op. at 11

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

    “In the Petition, Petitioner states that it is unnecessary to construe any claim terms or phrases (Pet. 12–14), but for two phrases in claim 1, Petitioner specifically argues that the prior art teaches or suggests the phrase under each of two alternate meanings (id. at 34–35, 37). In the Institution Decision, we agreed with Petitioner’s primary understanding of these phrases and, as a result, did not reach the alternative contentions. Inst. Dec. 33 n.18, 38 n.21. At trial, Patent Owner states that claim construction is unnecessary to resolve the issues disputed in this proceeding. PO Resp. 6; Tr. 46:4–16. Petitioner agrees, but contends that Patent Owner’s arguments regarding dependent claim 3 are premised on a narrowing construction of one of its terms. Tr. 15:4–16:2. Patent Owner contends that the plain and ordinary meaning of the terms in that claim should apply. Id. at 46:12–16. We agree that it is not necessary to expressly construe any claim terms or phrases in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • BurdenNot shown unpatentable

    “motivated to add error processing to Garcia’s mobile phone so that it could address errors before transmitting the check image in order “to avoid wasting communications resources and adding delays.” Pet. 42. But, Petitioner does not support this rationale with a persuasive explanation or evidence. Indeed, we assume that Petitioner’s theory is that the error checking at the mobile device would have conserved bandwidth and reduced delay because it would have allowed the mobile device to identify some unsuitable images before they were sent to the payee bank; however, the Petition does not actually include an explanation to this effect. Rather, it simply states that an ordinary artisan would have known that mobile telephone networks (such as that used by Garcia) “are bandwidth and resource-constrained, and that communications over such networks takes time.” Id.; see also Ex. 1002 ¶ 115. However, all networks have bandwidth and resource constraints, and all communications take time, and neither the Petition nor Dr. Mowry explain why these considerations would have been relevant to an ordinary artisan implementing Garcia. Indeed, the Petition next asserts that “Byrne provides the requisite solution to this problem” (Pet. 42), but neither the Petition nor Dr. Mowry identify any problem. For example, Dr. Mowry does not testify that an ordinary artisan would have expected Garcia’s system to consume excessive bandwidth or incur for claim 2). In addition, Petitioner recognizes that the verification process is performed by the payee bank in Garcia, yet does not address the fact that its proposal would apparently shift a portion of the verification process to the mobile phone. See Pet. 40–44. Dr. Mowry’s trial testimony casts further doubt on Petitioner’s rationale for this claim. Dr. Mowry testifies that conserving bandwidth would “potentially” have been one of the goals of an ordinary artisan “depend[ing] on how precious their resource is.” Ex. 2020, 68:12–24. But Dr. Mowry “wouldn’t necessarily characterize [Garcia] as bandwidth intensive.” Id. at 76:13–23. In addition, he disagreed that “in the Garcia system, the motivation would have been to shift it to the client side for the verification,” noting simply that “[t]here are tradeoffs” associated with doing the verification processing on either the client or the server. Id. at 241:22– 242:13. Petitioner attempts to limit the impact of Dr. Mowry’s answers (Pet. Reply 16); however, the fact remains that Petitioner has the burden of proof, and it does not identify persuasive evidence to support its contention. Petitioner’s Reply asserts that these considerations were “particularly important in 2006, when 3G bandwidth was at a premium” (id. at 22 (citing Ex. 1029 ¶ 49)), but neither Petitioner nor Dr. Mowry provide analysis or evidence to support this conclusory assertion. Moreover, the Petition also fails to address whether the proposed combination would have, in fact, conserved communications resources or reduced delays. In Petitioner’s proposed combination, Byrne’s thin client application would be downloaded to Garcia’s mobile phone at each use (which would require communication resources and incur latency), but the Petition fails to address whether the net result of the proposed combination 148:1 (Dr. Mowry agreeing that the impact of downloading the thin client is not discussed in his report). Moreover, Garcia touts the “speed” of its process, stating that its “immediate processing . . . allows the immediate availability in the user’s account” (Ex. 1003, 7:18–8:3), which indicates that an ordinary artisan would not have perceived a problematic delay in Garcia’s system. Petitioner’s attempt to shift the burden to Patent Owner to determine whether or not its purported benefits would be realized (see Pet. Reply 17) is unavailing. In its Reply, Petitioner cites testimony from Dr. Mowry (see Ex. 1029 ¶ 37), but it simply compares the size of a compressed image with the size of a “large” application. This evidence does not outweigh the other evidence above, and it was submitted too late to remedy the Petition. See supra § II.A.; see also Trial Practice Guide 73 (explaining that a petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability”). Finally, on this record, we are also not persuaded by Petitioner’s” slip op. at 60

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “would have been motivated to implement Garcia’s application by downloading, onto the mobile device, a thin client application, as disclosed by Byrne. See Pet. 19–25. Byrne touts the benefits of downloading a thin client rather than storing an application on a user’s device (Ex. 1004 ¶¶ 45– 46; see also id. ¶¶ 47–48), and Dr. Mowry testifies that an ordinary artisan would have understood downloading a thin client to be a well-known way of distributing software in the relevant time period and suited for mobile devices (Ex. 1002 ¶¶ 64–65, 70). In addition, Dr. Mowry testifies that a thin client improves security and ease of software maintenance. Id. ¶ 65 (citing Ex. 1004 ¶¶ 46–47); see also Ex. 1033, 140:11–141:2 (Dr. Creusere agreeing that thin clients “dramatically simplif[y]” software maintenance), 143:13–20 (agreeing that security is important for financial data); Ex. 1005 ¶¶ 20–21 (evidence that the general background knowledge in the art identifies security as a concern for remote check deposit).14 In addition, we agree with Petitioner (see Pet. 21–22; Ex. 1002 ¶¶ 66, 72) that an ordinary artisan would have understood such an implementation to apply a known 14 Patent Owner’s argument that security and software maintenance would have instead weighed against the proposed combination (see, e.g., PO Sur-reply 9–10) is untimely because it was not advanced in the Response and is not fairly responsive to the Reply. See supra § II.A; Pet. Reply 15–16 (noting that the Response had not addressed these issues). Moreover, even if this argument had been properly raised, it would not be persuasive because Patent Owner does not identify persuasive evidence to support its position. See, e.g., Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). (Garcia’s mobile phone) with predictable results. We are also persuaded that a person of ordinary skill in the art would have been motivated to implement Garcia’s application such that the application provides a user-interface and controls the image capture device, as disclosed by Byrne. See, e.g., Pet. 22–23. Garcia suggests that the application should perform these functions (see Ex. 1003, 5:1–6:10, 9:19– 10:18), and we credit Dr. Mowry’s testimony that an ordinary artisan would find this desirable (see Ex. 1002 ¶¶ 65, 67). Moreover, the references lend themselves to the combination because Garcia and Byrne both describe remotely depositing a check via the Internet using software on a user’s device that opens an interactive session, and both perform substantially similar steps. See Pet. 22–23; Ex. 1003, 9:21–10:3, 10:10–18, 11:7–15; Ex. 1004 ¶¶ 41, 48, 174–175, 177–178. Finally, Dr. Mowry testifies that the ordinary artisan would have had a reasonable expectation of success in implementing the combination, and he provides supporting analysis and evidence. Ex. 1002 ¶¶ 68–72; see also Ex. 1029 ¶¶ 38–39. We credit this testimony from Dr. Mowry because it draws reasonable inferences and is supported by the cited evidence.” slip op. at 25

  Patent outcomesUS 10,769,598 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,769,598
• Gen Digital Inc. v. Kajeet, Inc.Some claims unpatentable
  PTAB · Apr 13, 2023 · IPR2022-00001 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1, 5–15, 18–21, and 27–29 are unpatentable as obvious; claim 2 is not shown unpatentable. The revised motion to amend is denied for claims 31 and 35–45 and dismissed for claim 32.

  RulingsFinal written decision

  • BurdenMixed

    “of independent claim 1 is either taught or suggested by Putzolu. We are also persuaded that an ordinarily skilled artisan would have found it obvious, in view of Putzolu’s teachings, to arrive at the subject matter recited in claim 1. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Putzolu.” slip op. at 40

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “4. Putzolu and Bhat are Analogous Art Patent Owner contends that Putzolu and Bhat cannot be considered in” slip op. at 22

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “his analysis suffers from the same deficiencies as Patent Owner’s arguments and thus fails to sufficiently explain and support his conclusion on this point. See Ex. 2015 ¶¶ 32–40. Moreover, Mr. Sharma testifies that the term “communication device” is “broader” than the term “computing device” because a “communication device . . . might not do any computing,” and we find this to lack credibility. Id. ¶ 36; Ex. 1017, 34:9–35:12. This testimony is premised on Mr. Sharma’s assumption that a “computing” device must have “much more processing and intelligence on that device beyond just transmitting data” (Ex. 1007, 34:25–35:1), but this assumption is neither” slip op. at 16

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

    “4. Support in the Original Disclosure A motion to amend may not introduce new matter. 35 U.S.C.” slip op. at 68

  Patent outcomesUS 8,667,559 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,667,559
• Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedSome claims unpatentable
  PTAB · Feb 22, 2023 · IPR2021-01343 · APJ Nathan A Engels · IPR · Final written decision

  Claims 1, 3–5, 7, 9, 10, 12, 14–16, and 18–20 are unpatentable as obvious over Baldwin; claims 6, 8, 11, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art at the time of the invention would have been a person with a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field with at least two years of experience in digital video signal processing or digital video streaming or had a master’s degree in electrical engineering, computer engineering, computer science, or a similar field with a specialization in digital video signal processing.” Pet. 15 (citing Ex. 1003 ¶¶ 37–39). Petitioner also states that a person of ordinary skill would have been able to, among other things, encode and decode digital video signals, packetize, multiplex, and demultiplex encoded digital video signals for transmission, and implement modulation and channel coding. Pet. 15–16 (citing Ex. 1003 ¶ 40). Patent Owner states that a person of ordinary skill would have had “a bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, with one or two years of experience in this or a related field.” PO Resp. 13 (citing Ex. 2014 ¶ 20). Patent Owner states that its definition of a person of ordinary skill is similar to Petitioner’s definition and that any differences are not material. PO Resp. 13. We determine a person of ordinary skill would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field and two years of experience in digital video signal processing or digital video streaming, which is consistent with the parties’ arguments, the ’014 patent, and the prior art of record.” slip op. at 5

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

    “1. “video information” Petitioner contends a person of ordinary skill would have understood that “video information” means “digital video data.” Pet. 16. Patent Owner disagrees with Petitioner’s proposed construction and contends “video information” should be given its plain and ordinary meaning. PO Resp. 13. Patent Owner also states that the construction of “video information” is immaterial to this proceeding. PO Resp. 13. We do not discern a meaningful dispute between the parties regarding the meaning of “video information,” and we do not expressly interpret the term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (internal quotation omitted).” slip op. at 6

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

    “Among other problems with these arguments, it is not clear how or where Petitioner relies on the proposed combination to satisfy any specific claim limitations. Petitioner argues each of Cooper and Baldwin teaches each limitation of each independent claim, and Petitioner presents its combination of references separate from its comparisons of Cooper and Baldwin to the claims, without clearly stating how the references are to be combined or how those combined teachings satisfy particular limitations. Because Petitioner fails to identify its proposed combination with sufficient clarity, we are also not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have been motivated to combine Cooper and Baldwin to yield the subject matter recited by the challenged claims. We also disagree with Petitioner’s argument that Realtime Data suggests that Petitioner does not need to show a motivation to combine. Reply 27–29 (citing Realtime Data, 912 F.3d at 1373–74). Unlike here, in Realtime Data, the secondary reference was cited for the “sole purpose” of confirming that an element was disclosed in the primary reference. Id. In this case, Petitioner proposes combining some teachings from each of Baldwin and Cooper. See Pet. 19–20; Reply 27. Accordingly, we determine Petitioner has not articulated an adequate rationale to combine the references to arrive at any particular challenged claim.” slip op. at 9

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

    “Patent Owner contends, and we agree, that Cooper does not teach that its receiver identifies which of two streams is expected to result in a lower latency, as required by limitation [1d]. PO Resp. 36–52. Where Cooper describes receiving a multiplexed composite signal, Cooper teaches always identifying the normal mode packet stream for decoding when it is available, without regard to latency, and identifying the robust mode packet stream for decoding only when the normal mode packet stream is not available, such as when normal mode packets are lost. E.g., Ex. 1004, 7:8–8:28. In fact, it would be inconsistent with Cooper’s teachings for the receiver to select the robust mode packet stream when the normal mode packet stream is available: Cooper teaches that “[u]nder normal conditions, the error signal is not active on the error signal line E. In response, the selector 230 couples the normal mode packet stream to the multi-standard decoder 240, and the multi-standard decoder 240 begins to generate the content representative signal from the normal mode packets . . . .” Ex. 1004, 7:32–37 (emphasis added). Although Cooper also teaches that its receiver can decode the robust mode packet stream to avoid “undue delay” “at the beginning of any broadcast or channel change,” we find that Cooper does so only when the normal mode packet stream is not available. Ex. 1004, 17:23–45; see also Ex. 1004, 3:1–3. Specifically, Cooper states that “at the beginning of any broadcast or channel change,” there is a period of time (i.e., Tadv ) when the receiver’s delay device 220 is being filled. Ex. 1004, 17:23–26 (emphasis added). Cooper explains that waiting until delay device 220 is full would cause “undue delay when a receiver is switched on or a channel is changed.” Ex. 1004, 17:26–30. To address this delay, Cooper’s receiver decodes the robust mode packet stream, which “is immediately available,” so that a video signal can be presented until “the normal mode packet stream becomes available,” at which point the receiver switches to decoding the normal mode packet stream. Ex. 1004, 17:30–42. Consequently, we find that Cooper teaches that, at a channel change, its receiver receives (and decodes) the robust mode packet stream until it receives the normal mode packet stream. We disagree with Petitioner’s contrary argument that Cooper’s receiver receives both streams in this situation (see Reply 4–16), and, at a minimum, Petitioner has not persuasively shown that Cooper teaches or suggests this (see Ex. 2015, 82:22–85:13 (describing different scenarios but acknowledging that “Cooper doesn’t really illuminate either of these”)). Further, Cooper’s description of Figure 3 is consistent with our understanding of Cooper description of a channel change. Specifically, that portion of Cooper states: Time t0 may represent the time when the receiver is turned on, or when a user specifies a new content source to receive. During the time, Tadv, between t0 and t4, robust mode packets “a” to “j” are loaded into the delay device 220, and normal mode packets, designated “0” through “9” are received. At time t4, the normal mode packet “A” becomes available from the demultiplexer 210 and delayed robust mode packet “a” becomes available from the delay device 220. Under normal conditions, . . . the selector 230 couples the normal mode packet stream to the multi-standard decoder 240, and the multi-standard decoder 240 begins to generate the content representative signal from the normal mode packets, as described above. This is illustrated by the cross hatching 301 in the normal mode packets “A” through “G”. Ex. 1004, 7:24–39. Cooper includes this description in order to explain its typical operation as well as to illustrate the relative timing of the robust mode packet stream and the normal mode packet stream. See Ex. 1004, 7:24–25, 7:40–8:28. This passage teaches that normal mode packets designated with capital letters (e.g., “A”) are displayed after time t4 under normal conditions; however, it does not address which (if any) packets are displayed between time t0 and time t4. As a result, we understand this passage of Cooper to indicate that “0” to “9” are simply placeholders, which” slip op. at 13

  Patent outcomesUS 8,646,014 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,646,014
• Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedAll claims unpatentable
  PTAB · Feb 15, 2023 · IPR2021-01293 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–5 and 7 are unpatentable under § 103: claims 1 and 2 over Patrick, claim 2 over Patrick and Barrett, claims 3–5 over Patrick and Gringeri, and claim 7 over Patrick and Mahdavi.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the field of art (“POSITA”) of the ’098 patent would have been a person with a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar field with at least two years of experience in video transmission systems, or a person with a master’s degree in computer science, computer engineering, electrical engineering, or a similar field with a specialization in video transmission systems. Pet. 18 (citing Ex. 1003 ¶¶ 55–56). Petitioner further contends that “[a] person with less education but more relevant practical experience may also meet this standard.” Id. (citing Ex. 1003 ¶¶ 55–56). Petitioner further asserts that a person of ordinary skill in the art in 2004 would have known and had the skills necessary to: (1) “Design or implement video transmission systems and applications in compliance with standards such as TCP/IP, UDP, RTP, ATM, DVB, and ATSC;” (2) “Understand video coding and processing in compliance with standards such as MPEG-1, MPEG-2, MPEG-4, and H.26x;” (3) “Implement known techniques for determining available bandwidths between transmitting and receiving systems of media content; and” (4) “Understand common techniques for organizing and” slip op. at 8

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

    “construction standard as applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2021); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (1996)). Petitioner proposes claim constructions for “transmission rate” and “steady-state transmission rate.” See Pet. 19–21. Patent Owner does not agree with Petitioner’s proposed claim constructions. See PO Resp. 16 (citing Ex. 2014 ¶ 20). Patent Owner, however, does not offer alternative proposed claim constructions, but instead asserts these terms should be construed in accordance with their plain and ordinary meanings. See id. As demonstrated in the analysis below, we need not expressly construe “transmission rate” and “steady-state transmission rate.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7

  • Strike new argumentNew argument consideredDecided for petitioner

    “As an initial matter, we do not agree with Patent Owner’s contention that the following Reply argument constitutes an impermissible new argument: “[s]ince [Patent Owner] is unable to dispute paragraph 38 teaches limitations [1b] and [1d] . . . .” Pet. Reply 9; see PO Sur-reply 12–13. Contrary to Patent Owner’s suggestion, we do not understand Petitioner to argue for the first time on Reply that Patrick’s paragraph 38 by itself teaches limitations [1b] and [1d]. Rather, we understand the Reply argument to address the dispute raised by Patent Owner regarding the disclosure of Patrick’s paragraph 38 as applied to limitations [1b] and [1d] in the Petition. See Pet. Reply 9; PO Resp. 38–40, 38 n.7, 52–53 (citing Ex. 2014 ¶¶ 50–51, 63–64, 70); Pet. 30–31, 37. Likewise, we do not agree that the portion of the Reply addressing the second sentence of Patrick’s paragraph 38 is a new argument that attempts to buttress the lack of discussion of paragraph 38 in the Petition. See PO Sur-reply 16; Pet. Reply 11. Instead, we find that these Reply arguments constitute a permissible response to Patent Owner’s arguments addressing how a person of ordinary skill in the art would understand the disclosure of Patrick’s paragraph 38. See PO Resp. 38 n.7 (citing Ex. 2014 ¶ 50), 52–53 (citing Ex. 2014 ¶¶ 63–64, 70; PO Resp. 38 n.7); see also 37 C.F.R. § 42.23(b); Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)8 73–74.” slip op. at 28

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “paragraph 38 uses terms consistent with the terms used in the first sentence of paragraph 38 and terms used in paragraphs 31 and 36 to address act 206 of Figure 3. See id. ¶¶ 31, 36, 38. Moreover, the first sentence of paragraph 38 is consistent with Patrick’s paragraph 37 disclosure that network congestion or other restrictions between the server and client (i.e., a reduction of bandwidth between the server and client) may limit the rate of accelerated streaming. See Ex. 1004 ¶ 37 (quoted in Pet. 30–31). We give weight to Dr. Brody’s testimony that a person of ordinary skill in the art “reading Patrick’s disclosure would have understood that [Patrick’s] later disclosure [in paragraphs 33 through 39] provides additional details and teachings relevant to the invention as a whole,” (Pet. Reply 7 (citing Ex. 1033 ¶ 8)) because it is supported by the aforementioned interrelated teachings of at least Patrick’s paragraphs 31 and 36 through 38. We give minimal weight to Dr. Hayes’s cited supporting testimony regarding the “structure” of Patrick because it is not supported by a sufficient factual basis, and like Patent Owner’s arguments, is inconsistent with Patrick’s disclosure. Accordingly, contrary to Patent Owner’s arguments, we find: (1) Patrick’s paragraph 38 provides additional detail regarding the disclosures of paragraphs 31 through 36 with respect to act 206 of Figure 3; (2) the disclosures of paragraphs 37 through 39 are not limited to describing the period of accelerated streaming of act 208 of Figure 3; and (3) the corresponding disclosure related to act 206 of Figure 3 is not limited to the description of Patrick’s paragraphs 31 through 36.” slip op. at 30

  Patent outcomesUS 9,402,098 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,402,098
• Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedSome claims unpatentable
  PTAB · Feb 6, 2023 · IPR2021-01298 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–29 are unpatentable, principally as obvious over Lee alone, Lee and Glance, or Lee and Smith; claim 30 was not shown unpatentable.

  RulingsFinal written decision

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

    “of independent claim 1 is either taught or suggested by Lee. We are also persuaded that, an ordinarily skilled artisan would have found it obvious, in view of Lee’s teachings, to arrive at the subject matter recited in claim 1. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Lee.” slip op. at 57

  • Strike new argumentNew argument disregardedDecided for petitioner

    “arguments in Patent Owner’s Sur-reply that are allegedly untimely (Paper 38), and Patent Owner responded (Paper 39). For the reasons explained below, we agree with Petitioner that the Sur-reply includes untimely new arguments, but we determine that those arguments would not have been persuasive even if they had been properly raised. See infra § II.E.1.b.ii (addressing Lee’s usage history).” slip op. at 3

  Patent outcomesUS 10,911,938 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,911,938
• PNC Bank, N.A. v. United Services Automobile AssociationAll claims unpatentable
  PTAB · Jan 19, 2023 · IPR2021-01070 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 2, 7–10, and 15–17 are unpatentable as obvious over Acharya and Luo.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Skill in the Art Relying on Dr. Mowry’s testimony, Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or equivalent field, and at least two years of prior experience with image processing or scanning 8 The record does not include allegations or evidence of objective indicia of nonobviousness. server,” and that “[a] person with additional education or additional industrial experience could still be of ordinary skill in the art if that additional aspect compensates for a deficit in one of the other aspects of the requirements stated above.” Pet. 19–20 (citing Ex. 1002 ¶ 44). We adopted this level of skill in the Institution Decision. Dec. 38–39. Patent Owner applies this level of skill in its Patent Owner Response. PO Resp. 30. As Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art, we continue to apply this level of skill.” slip op. at 13

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

    “Dr. Mowry testifies that, “[g]iven these difficulties in using handheld devices to capture suitable images, a person of ordinary skill in the art would have been motivated to implement Acharya using the reference lines and capture techniques described in Luo in order to achieve a high likelihood of obtaining images that were suitable for image processing.” Ex. 1002 ¶ 63. According to Dr. Mowry, Luo’s solution is “directly applicable to capturing check images to predictably increase the likelihood of obtaining images that are suitable for” optical character recognition. Id. Dr. Mowry’s testimony is consistent with the express disclosures in Acharya and Luo and, therefore, is credible. Acharya expressly identifies technology that it uses to capture information from documents, namely optical character recognition, and Luo expressly describes a technique designed to reduce projective distortion when capturing an image of a document, such that optical character recognition can be performed more accurately. Dr. Creusere admitted on cross-examination that “correcting geometric distortion will make it easier to perform automatic text recognition.” Ex. 1037, 89:1–2. Petitioner contends that its proposed combination would have amounted to applying a known technique to a known device ready for improvement to yield predictable results. Pet. 32–34; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”); Ex. 1002 ¶ 64 (“Implementing Acharya’s RCT using Luo’s camera system would have simply involved applying a technique that was known to a device that was known and ready for improvement, to yield predictable results.”). We agree. This appears to be a textbook example of using a technique that improved one device to improve a similar device in the same way. As we preliminarily observed in the Institution Decision (Dec. 54), a combination of Acharya and Luo would have been no more than “[t]he combination of familiar elements according to known methods” and, thus, likely obvious because it “does no more than yield predictable results.” KSR, 550 U.S. at 416.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. Gurley, 27 F.3d at 553.” slip op. at 43

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Acharya’s system would have imposed “additional processing overhead and complexity on the customer’s device as compared to the existing manual capture system” and that “[t]his type of processing, especially when done in real-time, was considered computationally-intensive in 2009.” PO Resp. 53 (citing Ex. 2115 ¶ 35). The only evidence Patent Owner offers to support this assertion is the testimony of its expert, who largely copies Patent Owner’s argument and does not identify the basis for the testimony. As such, the testimony is entitled to little weight. 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.”); see also Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). We note that Luo describes its technique as implemented on conventional computing equipment on portable devices available prior to 2009 without mention of concerns over processing overhead. Ex. 1004, 8. Patent Owner’s evidence is insufficient to establish that concerns over processing overhead would have dissuaded a skilled artisan from pursuing a combination of Acharya and Luo.” slip op. at 44

  Patent outcomesUS 8,699,779 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,699,779
• Infineon Technologies AG v. Amatech Group LimitedInstituted
  PTAB · Dec 2, 2022 · IPR2022-00951 · APJ Stacey G White · IPR · Institution

  Instituted review of claims 1–11 on all asserted §103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.

  RulingsInstitution decision

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

    “unless the information presented in the petition “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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’240 patent on all of the asserted grounds of unpatentability.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “1 We apply the pre-AIA version of 35 U.S.C. § 103 because the claims at issue have an effective filing date prior to March 16, 2013, the effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). See Ex. 1001, code (22). 2 Petitioner does not list claim 1 in its table on page 3, but Petitioner provides argument as to claim 1 in its discussion of the ground. See Pet. 56– 57. 3 Petitioner does not list claims 1and 4 in its table on page 3, but Petitioner provides argument as to claims 1 and 4 in its discussion of the ground. See Pet. 73. 4 Petitioner argues that the Fintiv factors weigh against discretionary denial. Pet. 77–78; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential). Because Patent Owner does not argue for discretionary denial, we see no need to consider the issue further.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “educational level of active workers in the field.” Best Med. Int'l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quotation omitted). The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The specification of the ’240 patent describes its technical field as relating to “‘secure documents’ …having RFID (radio frequency identification) chips …operating in contactless mode (ISO 14443) including dual interface (‘DI’, or ‘DIF’) cards which can also operate in contact mode (ISO 7816-2), and more particularly to improving coupling between components within the smart card …and consequent improvements in interacting with external RFID readers.” Ex. 1001, 1:24–34. The specification discusses both inductive and capacitive coupling. See e.g., id. at 6:55–58. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 20035, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, on the record currently before us, we are not persuaded that the level of 5 Our citations are to the native page numbers in the document and not Patent Owner’s numbering. devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “B. Dr. van der Weide’s Level of Experience Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, because he “lacks relevant experience to provide opinions through the lens of a [person having ordinary skill in the art].” Prelim. Resp. 27–28 (citing Ex. 2001 ¶¶ 71–72. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 27. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Based on the current record, Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 9,165,240

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.