• LG Electronics, Inc. v. Broadcom CorporationInstitution denied
  PTAB · Dec 19, 2017 · IPR2017-01624 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Diaz did not disclose internally reprogrammable hardware accelerators, and the other grounds did not cure that deficiency.

  RulingsInstitution decision

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

    “3. Construction of “configurable” In construing this term, we have considered the specification of the ’353 patent and its prosecution history. Microsoft Corp. v. Proxycinn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In accord with these portions of the ’844 patent specification and file history discussed supra, we conclude that a hardware accelerator is configurable only if its functionality can be internally reprogrammed. Thus, under our construction, an accelerator selected by an API or other instrumentality would not itself be “configurable.” This will be discussed further infra.” slip op. at 8

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

    “However, as Patent Owner argues, Diaz ’353 does not explicitly or inherently disclose hardware accelerators that are configurable to perform decoding functions according to a plurality of decoding methods. In Diaz ’533 the overall decoder — as opposed to the constituent hardware accelerators — is configurable in that the processor controls which hardware accelerators are activated. Prelim. Resp. 2, 5–8. We see no meaningful distinction in this respect between Diaz ’353 and Sullivan ’021 which, as discussed above, discloses an API that is configurable to select various hardware accelerators, but which are not themselves configurable, to assist in the decoding process. See Prelim. Resp. 6. In sum, the functionality of the hardware accelerators of Diaz ’353 cannot be internally reprogrammed, but rather can only be bypassed or reused for various operations. Therefore, in accord with our claim construction set forth above, we determine that those hardware accelerators are not “configurable” as required by claim 1. Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

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

    “C. Obviousness of Claims 8 and 14 over Diaz ’353 and Purcell ’483, and of Claim 12 over Diaz ’353 and Fandrianto ’459 or Kim As discussed above, Petitioner has not demonstrated a reasonable likelihood of prevailing on the issue of whether Diaz ’353 discloses the claim 1 requirement of configurable hardware accelerators. Claims 8, 12, and 14 depend from claim 1 and so also include this requirement by virtue of their dependency. Petitioner’s obviousness grounds directed to these claims is premised on Petitioner’s arguments with respect to claim 1 that Diaz ’353 discloses configurable hardware accelerators. Pet. 51–63. Petitioner does not provide argument or evidence — aside from the above-considered anticipation arguments based on Diaz ’353 alone — that the combination of Diaz ’353 with Purcell ’483, Fandrianto ’459 or Kim teaches or suggests “a hardware accelerator . . . configurable to perform the decoding function according to a plurality of decoding methods.” Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 8 and 14 as obvious over Diaz ’353 and Purcell ’483, or of claim 12 as obvious over Diaz ’353 and Fandrianto ’459 or Kim.” slip op. at 12

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

    “Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,284,844
• NXP USA, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00684 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 13–15, 18–20, 23–25, 36, 37, 40, 42, 43, and 46 are unpatentable under § 103 over Ritter combined with either version of the RFID Handbook.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 2–5). Under the broadest reasonable construction standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony 12 Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The case for not reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 2–5). Under the broadest reasonable construction standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony 12 Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The case for not reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “three to five years of industrial or academic experience in working with wireless communication technology, including radio frequency identification (RFID) devices and systems. Pet. 12–13 (citing Ex. 1303 ¶¶ 28-30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 24). We see no compelling reason to apply a different level of skill than that accepted by both parties, and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 16

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “unsupported. For example, NFCT identifies Dr. Mihran’s testimony that Ritter’s device “simulates a CIC transponder” as conclusory. Id. at 21–22 (citing Ex. 1303 ¶¶ 44, 46). To the contrary, Dr. Mihran provides sufficient explanation for his opinion and identifies enough supporting evidence. Dr. Mihran explains that Ritter describes an operating mode where a mobile 27 device is “inductively fed” by another mobile device, which indicates that the second device “generates the magnetic field that powers” the first device. Ex. 1303 ¶¶ 46–47 (citing Ex. 1304A, 11, 13). He further explains that Ritter discloses this operating mode may be used to “exchange data inductively” between the devices, indicating that the second device generating the magnetic field is operating as a “reader” that powers the first device, which operates as a “transponder.” Id. ¶ 47 (citing Ex. 1304A, 13). Further, Dr. Mihran identifies specific disclosures in Ritter, as well as similar disclosures in the RFID Handbook, regarding both “passive” and “active” load modulation. See id. ¶¶ 47, 50–54, 74. In Dr. Mihran’s expert7 opinion, a person of ordinary skill in the art consequently would have understood Ritter to teach that the mobile device acts as a transponder and transmits data via load modulation, i.e., by disturbing the magnetic field generated by the device acting as a reader. See id. Upon review, we disagree with NFCT that Dr. Mihran’s testimony is “conclusory, unsupported, and inconsistent with the cited references.” See PO Resp. 20– 21. To the contrary, we find Dr. Mihran’s expert testimony to be credible and persuasive.” slip op. at 27

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. Inside Secure And NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00683 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–3, 6–8, 10, 11, 28–31, 34, and 35 are unpatentable under § 103 over Ritter and the RFID Handbook, with Bashan added for claims 10, 28–31, 34, and 35.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “conclude that the broadest reasonable construction of “contactless integrated circuit reader” is simply “device configured to read data from a contactless integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 1–5). Under the broadest reasonable construction standard, claim terms generally are 12 given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The case for not 13 reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including radio frequency identification (RFID) devices and systems. Pet. 13 (citing Ex. 1203 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 24). 16 We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 16

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “unsupported. For example, NFCT identifies Dr. Mihran’s testimony that Ritter’s device “simulates a CIC transponder” as conclusory. Id. at 21–22 (citing Ex. 1203 ¶¶ 44, 46). To the contrary, Dr. Mihran provides sufficient explanation for his opinion and identifies enough supporting evidence. Dr. Mihran explains that Ritter describes an operating mode where a mobile 28 device is “inductively fed” by another mobile device, which indicates that the second device “generates the magnetic field that powers” the first device. Ex. 1203 ¶¶ 46–47 (citing Ex. 1204A, 11, 13). He further explains that Ritter discloses this operating mode may be used to “exchange data inductively” between the devices, indicating that the second device generating the magnetic field is operating as a “reader” that powers the first device, which operates as a “transponder.” Id. ¶ 47 (citing Ex. 1204A, 13). Further, Dr. Mihran identifies specific disclosures in Ritter, as well as similar disclosures in the RFID Handbook, regarding both “passive” and “active” load modulation. See id. ¶¶ 47, 50–54, 76. In Dr. Mihran’s expert7 opinion, a person of ordinary skill in the art consequently would have understood Ritter to teach that the mobile device acts as a transponder and transmits data via load modulation, i.e., by disturbing the magnetic field generated by the device acting as a reader. See id. Upon review, we disagree with NFCT that Dr. Mihran’s testimony is “conclusory, unsupported, and inconsistent with the cited references.” See PO Resp. 20– 21. To the contrary, we find Dr. Mihran’s expert testimony to be credible and persuasive.” slip op. at 28

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

    “NXP also articulates sufficient reasoning with a rational underpinning why a person of ordinary skill would have been led to combine the relevant teachings of these references. Pet. 22; see KSR, 550 U.S. at 418. Supported by the testimony of Dr. Mihran, NXP contends a person of ordinary skill would have understood Ritter to teach an RFID system for communication via inductive coupling and that the RFID Handbook is “a compendium 27 describing the fundamentals and applications” of such systems. Pet. 22 (citing Ex. 1203 ¶¶ 44–49, 101) (internal quotation marks omitted). NXP asserts that the RFID Handbook describes the advantages of the elements of inductively coupled RFID systems and that those advantages would have motivated a person of ordinary skill to combine its teachings with the Ritter system. Id. Further, the evidence of record supports a finding that a person of ordinary skill would have found implementing such a combination to be “routine” and “straightforward,” recognizing that it would have yielded expected, predictable results. See id. (citing Ex. 1203 ¶ 101).” slip op. at 27

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. Inside Secure And NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00682 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 13–15, 18–20, 23–25, 36, 37, 40, 42, 43, and 46 are unpatentable as obvious over Gunnarsson combined with either RH-E or RH-G.

  RulingsFinal written decision

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

    “In light of the fully developed record before us, including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 30–33) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1116 ¶¶ 7–21) cited by NXP, we continue to agree with NFCT that the broadest reasonable construction of “antenna circuit” requires a coil. Nonetheless, for the reasons discussed above, we remain unpersuaded that it would be necessary or proper additionally to include “for radiating and/or receiving a magnetic field” in the construction of “antenna circuit.” Thus, we determine that the broadest reasonable construction of 12 “an antenna circuit,” as recited in the challenged claims, is “a circuit, including a coil.”” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including RFID devices and systems. Pet. 13–14 (citing Ex. 1103 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 4–5 (citing Ex. 2004 ¶ 26). 22 We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 22

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Regardless whether Gunnarsson describes a single method of performing backscatter or two separate methods, we are persuaded by NXP’s argument, supported by Dr. Mihran’s testimony, that Gunnarsson’s disclosure of “varying the impedance . . . in accordance with a pattern that corresponds to [a] transmitted data stream . . . by switching on and off [a] modulation circuit[] . . . intended to modulate the carrier wave for writing data into the transponder” teaches data-carrying or data representative pulses of an alternating signal, as recited in claims 14 and 24, or an excitation signal, as recited in claims 37 and 43. We credit, in particular, Dr. Mihran’s testimony, cited in the Petition, that a person of ordinary skill in the art would have understood Gunnarsson’s teaching of switching on and off its modulator to mean that it alternately applies and does not apply a carrier signal to the antenna—i.e., produces pulses or bursts of the excitation signal—and that a person of ordinary skill would have understood that this method applies data representative pulses of the excitation signal to the antenna circuit in the same way as the “pseudo active load modulation” method of the ’770 patent. Ex. 1103 ¶ 117 (cited at Pet. 34–35). Further, as explained in the above discussion of claim 1, we are persuaded that the 59 combination of Gunnarsson and the RFID Handbook would have rendered obvious implementing Gunnarsson’s reader using inductive coupling. We additionally credit Dr. Mihran’s testimony that it would have been routine for a person of ordinary skill in the art, in such an implementation, to use the RFID Handbook’s teaching of using a “subcarrier” to carry encoded data in implementing this method, as well as that “it would have been clear to a person of ordinary skill in the art that such a combination would work and provide the expected functionality.” Ex. 1103 ¶ 120 (cited at Pet. 35).” slip op. at 59

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

    “NFCT’s argument and Dr. Apsel’s opinion that Gunnarsson is not from the same field of endeavor both rest on an overly narrow definition of the field of the invention as “inductive coupling” systems. PO Resp. 59; Ex. 2004 ¶¶ 110–115. Although the specification and independent claims 13, 23, 36, and 42 of the ’770 patent recite inductive coupling, we remain persuaded by NXP’s evidence that the microwave-based communication system described by Gunnarsson is within the same field of endeavor as the inductive coupling system of the ’770 patent, namely, “contactless ID” or “RFID” systems. We also remain persuaded by that evidence that a person of ordinary skill in the RFID art would have regarded the selection of one technology over the other merely as being guided by the principles set forth in the cited prior art, such as based on a system’s desired communication range. See, e.g., Ex. 1106, 11–13, 21–22 (providing an overview of RFID systems, and explaining that systems with write and read ranges of up to 1 m “are based upon an inductive (magnetic) coupling between reader and transponder,” whereas systems “for ranges typically between 1 m and 10 m . . . operate using electromagnetic waves in the microwave range”); Ex. 1108A, 8, 11–14, 21 (same). As we previously explained (Dec. on Inst. 33), Bigio does not limit the field of endeavor to only what is recited in the claims. In that case, in spite of the claims at issue being explicitly limited to a “hair brush,” the court held that the Board had correctly concluded that “Flemming’s toothbrush was in Bigio’s field of endeavor because ‘the structural similarities between toothbrushes and small brushes for hair would have led 43 one of ordinary skill in the art working in the specific field of hairbrushes to consider all similar brushes including toothbrushes.’” Bigio, 381 F.2d at 1323, 1326; see also Wyers v. Master Lock, 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly . . . .”). Similarly, we conclude that the similarities between inductive coupling and microwave-based RFID systems would have led one of ordinary skill in the art working with inductive coupling systems to consider microwave-based prior-art systems as being in the same field of endeavor. Although NFCT has pointed out differences between those systems, we are persuaded that the identified distinctions are such that one of ordinary skill working with one system still would have considered the other system. Having determined that Gunnarsson is analogous art under the first” slip op. at 43

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00681 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–3, 6–8, 10, 11, 28–31, 34, and 35 are unpatentable under § 103 over Gunnarsson and the RFID Handbook, with Bashan added for claims 10, 28–31, 34, and 35.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “previously presented by NFCT in its Preliminary Response filed in this case (Paper 10, 7–9), we explained that we agreed with NFCT and the District Court that, in view of the inventors’ statements during prosecution, the inventors disclaimed devices having antenna circuits that do not include a coil, but that that point did not appear to be in dispute on the record before us, and we determined that there was no need to construe further the term “antenna circuit” at that stage of the proceeding. Dec. on Inst. 13 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”)). We further explained that, because challenged independent claims 1 and 28 already explicitly recite “an antenna circuit to generate a magnetic field” and “an antenna circuit that generates a magnetic field,” respectively (Ex. 1001, 12:29, 15:22), NFCT’s proposed inclusion of 12 “for radiating . . . a magnetic field” would not add meaningfully to the broadest reasonable interpretation of the term “antenna circuit.” Dec. on Inst. 13. Finally, we explained that although the specification of the ’770 patent describes an embodiment in which a magnetic field sent by a CIC reader appears by induction in the antenna circuit of another CIC reader (see, e.g., Ex. 1001, 9:10–13), we were not persuaded on the record then before us that the broadest reasonable interpretation of the term “antenna circuit” requires the language “for . . . receiving a magnetic field.” Dec. on Inst. 13– 14. In light of the fully developed record before us, including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 30–33) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1016 ¶¶ 7–21) cited by NXP, we continue to agree with NFCT that the broadest reasonable construction of “antenna circuit” requires a coil. Nonetheless, for the reasons discussed above, we remain unpersuaded that it would be necessary or proper additionally to include “for radiating and/or receiving a magnetic field” in the construction of “antenna circuit.” Thus, we determine that the broadest reasonable construction of “an antenna circuit,” as recited in the challenged claims, is “a circuit, including a coil.”” slip op. at 12

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

    “In light of the fully developed record now before us, particularly including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 34–47) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1016 ¶¶ 22–35) cited by NXP, as well as further consideration of the claim differentiation arguments presented in connection with claims 29 and 30, we are persuaded that “load modulation signal” is a term of art in the context of RFID systems, specifically referring to a signal that transmits data by disturbing the magnetic field of another device in an inductive coupling system, and that NFCT’s proposed construction, accordingly, is the broadest reasonable construction of that term. We also agree with NFCT that this construction does not conflict with the presumption that a limitation added by a dependent claim is not found in its base claim. See Liebel-Flarsheim, 358 F.3d at 910. Claim 29 depends from claim 28 and adds the limitation “wherein the reader is configured to apply a load modulation signal with two states to the antenna circuit when the reader operates in the second operating mode and when data is to be transmitted to the other reader.” Ex. 1001, 15:36–40. The consequence of applying NFCT’s construction to that claim, thus, is that the reader must be configured to apply a signal that transmits data by disturbing the magnetic field of another, unspecified device. Claim 30, however, additionally requires the reader to be configured to apply to the antenna circuit not merely such a “signal that transmits data by disturbing the magnetic field of 20 another,” but more specifically a signal “comprising pulses of an alternating signal, the duration of each pulse being longer than the period of the alternating signal” and that is “configured to disturb the magnetic field generated by the second reader and being configured to be detected by the second reader as if [it] were a load modulation signal applied to an antenna load modulation switch of a contactless integrated circuit.” Id. at 15:41–50. Because NFCT’s proposed construction does not simply read narrowing limitations from claim 30 into claim 29, we disagree with NXP’s contention that the claims of the ’770 patent do not support NFCT’s construction. Pet. Reply 3. Thus, we determine that the broadest reasonable construction of “load modulation signal,” as recited in challenged claims 1–3, 6, 8, and 29–31, is a “signal that transmits data by disturbing the magnetic field of another device.”” slip op. at 20

  • PTAB / AIA Trials › Real party in interest / privityOther

    “Semiconductors Netherlands B.V. as real parties in interest with itself for this proceeding. Paper 20, 1. NFCT identifies France Brevets, S.A.S., as a real party in interest with itself for this proceeding. Paper 8, 2; see supra note 2. evidence to support these assertions, namely documents that purport to be license agreements between NFCT and Inside Secure. See Ex. 2001; Ex. 2002. In light of NFCT’s representations, we have treated NFCT as Patent Owner throughout this proceeding and continue to do so for purposes of this Decision, as reflected by the caption.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including RFID devices and systems. Pet. 14 (citing Ex. 1003 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 26). We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 23

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. Inside Secure And NFC Technology, LLCNo claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00692 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3, 7, 11, 12, 14, 18, and 22 not shown unpatentable over either § 103 combination because Petitioner failed to establish key routing-table and header-field limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contends that a person of ordinary skill in the art at the time of the claimed invention would have “a minimum of a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field, and approximately two years of professional experience with data communications and routing, including in the context of wireless communications as applied to RFID systems, or other relevant industry experience.” Pet. 13 (citing Ex. 1003 ¶ 30). Patent Owner does not dispute” slip op. at 11

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

    “Although the Federal Circuit has endorsed application of the broadest reasonable interpretation in construing claims during postgrant proceedings before the Board, it has cautioned that such endorsement “is not to say, however, that the Board may construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). “Rather, ‘claims should always be read in light of the specification and teachings in the underlying patent.’” Id. (quoting Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)). In addition, “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Id. (citing Tempo Lighting Inc. v. Tivoli LLC, 742 F.3d 973, 978 (Fed. Cir. 2014)). The Federal Circuit has emphasized that, even under the broadest reasonable interpretation, “the Board’s construction ‘cannot be divorced from the specification and record evidence,’” id. (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)), and “‘must be consistent with the one that those skilled in the art would reach,’” Id. (quoting In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). With these principles in mind, we determine that Patent Owner’s proposed construction conforms with the broadest reasonable interpretation of “header field,” which excludes the “routing parameters” that are saved in the “routing table.” At the oral hearing, Patent Owner conceded that “if you look at the term header field in a vacuum without any context, it could mean” slip op. at 14

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

    “unpatentability, we determine that there are multiple deficiencies with Petitioner’s showing with respect to the proposed combination as related to specifically recited claim limitations. See 35 U.S.C. § 316(e); 35 U.S.C. § 312(a) (requiring the petition to identify “in writing and with particularity . . . the grounds on which the challenge to each claim is based”); see also 37 C.F.R. § 42.104(b) (requiring “a statement of the precise relief request”). Because we find that even the combination, if effected in the manner proposed by Petitioner, does not meet all limitations recited in the challenged claims, we do not reach the issue of whether Petitioner articulates sufficient reasoning with rational underpinning to effect the combination. See Pet. 21–28; PO Resp. 21–47. First, we agree with Patent Owner that Petitioner insufficiently shows that the combination it proposes teaches or suggests “using the routing channel number as an index to select the destination point to which the 7 Although we rely on illustrations of Petitioner’s proposed combination as set forth in the Reply because they are more clear, we find those illustrations consistent with the position taken by Petitioner in the Petition. See Pet. 24– 27. controller subsequently sends the data.” PO Resp. 59–61. This limitation is recited in both independent claims 1 and 12 in the context of searching for a destination point of the data in the routing table. Ex. 1001, col. 19, ll. 6–9, col. 20, ll. 40–43. In articulating how it draws a correspondence between elements recited in the claims and entries of its proposed routing table, Petitioner makes the following identifications: (1) the recited “routing channel number” corresponds to the channel identifier in the inbound VCI allocated to a first data path defined by the card access module and router; (2) the recited “source point” corresponds to “an identifier of the SAP associated with a smart card application on the contact smart card . . . in the inbound ‘VPI’; and (3) the recited “destination point” corresponds to “an identifier of an SAP associated with software . . . in the outbound VPI.” Pet. 36. With these correspondences, we agree with Patent Owner that the channel identifier in the inbound VCI cannot function as an “index to select the destination point” as the claims require because there is no unique association of the outbound VPI with the inbound VCI.8 PO Resp. 59. This is evident from the table provided in the Reply, and reproduced above, in 8 Although we agree with Petitioner, as explained above in Section II.C.3, that a construction of “routing table” does not require a “one-to-one correspondence between the routing channel number and each corresponding routing parameter,” see PO Resp. 57 (emphasis added), the nature of an “index” nevertheless requires a unique association of the index with what it indexes. That is, an “index to select the destination point” must uniquely identify the selected destination point, even if the same destination point can be selected by multiple indexes. A “one-to-one” correspondence would additionally require that each destination point be selected only by a single index. which the same VCIin value of “Chin 1” is associated with different values of VPIout, namely “CPU SAP 1” in the first row and “RF SAP 1” in the third row.” slip op. at 29

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner also contends that “even under [Patent Owner’s] improper interpretation, it would have been an obvious implementation choice to use unique channel numbers as discussed in §V.B [of the Reply], such that the destination point is selected only with the channel number.” Reply 27–28 (citing Ex. 1024 ¶ 123). We do not consider this argument because it goes beyond the scope of argument made in the Petition. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’ [as required by 35 U.S.C. § 312(a)(3)].”).” slip op. at 31

  Patent outcomesUS 7,905,419 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,905,419
• Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing granted
  PTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing

  Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8

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

    “a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21

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

    “be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9

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

    “1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,079,086
• Enforcement Video LLC D/B/A Watchguard Video v. Evicam International Inc.Rehearing denied
  PTAB · Jul 6, 2017 · IPR2017-00245 · APJ Melissa A Haapala · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, leaving institution on claims 52, 58, 60, and 61 and denial of institution on the remaining challenged claims unchanged.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “instituting an inter partes review of claims 52, 58, 60, and 61 of U.S. Patent No. 6,950,013 (“the ’013 patent”) and denying institution of claims 1, 4, 8– 12, 17, 18, 27, 28, 34, 35, and 45 of the ’013 patent. Paper 11 (“Req. Reh’g”), 1. On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously address in a motion, an opposition, or a reply.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” See 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “differentiation analysis constitutes error, much less an abuse of discretion. Specifically, under any standard, we disagree that merely because claim 13 sets forth “said download trigger is adapted to require input of an electronic access code,” that the information datalink is able to access the captured data without an authorization code. Even if we were to agree with Petitioner that the “electronic access code” recited in claim 13 is synonymous or related to the “authorization code” recited in claim 1 (see id. at 7), an assertion that itself is dubious given the differences in express claim language, claim 13 merely sets forth a specific technique for inputting the electronic access code via the download trigger. Claim 13 does not negate claim 1’s specific requirement that the captured data is inaccessible without the authorization code — in other words, if the authorization code is not required to be input in the download trigger, it must be provided in another way to access the data. We similarly disagree with Petitioner that the limitations set forth in claim 47 dictate that the data can be transferred (accessed) without an authorization code. Claim 47 merely sets forth the transfer is “in response” to the receipt of the access code, and does not mandate an interpretation that the data can be transferred (accessed) without the authorization code.” slip op. at 3

  • BurdenDecided for patent owner

    “In our Decision, we concluded that Petitioner did not adequately explain or map how either Joao or Mackey discloses captured/stored data being inaccessible without the use of the authorization code. Dec. 10, 15. Petitioner asserts that in reaching our conclusion, we incorrectly interpreted “the captured data being inaccessible without the authorization code” to” slip op. at 2

  Claim construction
  Patents in suitUS 6,950,013
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Jun 16, 2017 · IPR2016-00547 · APJ Garth D Baer · IPR · Final written decision

  Claims 57–59 are unpatentable as anticipated by Jaffray MICCAI 2001 and the Jaffray Publication, and as obvious over the identified Jaffray combinations.

  RulingsFinal written decision

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

    “communication system that facilitates communication between many devices and that uses a networking protocol to selectively route messages to their intended devices.’” PO Resp. 9 (internal quotation marks omitted). Petitioner proposes a broader construction: “a link between two or more components of the radiation treatment system that allows information to be shared between them.” Reply 2. In our Final Written Decision in Elekta, Inc. v. Varian Medical Systems, Inc., IPR2015-01401 (PTAB Dec. 23, 2016) (Paper 56, “IPR2015- 01401 FWD”), we construed the same term based on nearly identical arguments and substantially the same evidence. See IPR2015-01401 FWD 7–8. In our Decision, we rejected the same argument Patent Owner presents in this case—that a “communications network” requires a networking protocol to selectively route messages to their intended devices. See id. We did so because neither the term’s plain language nor the specification supported imposing such a requirement. See id. For the same reasons explained in IPR2015-01401, we maintain our agreement with Petitioner. Under the broadest reasonable construction, a communications network is simply a link between two or more components of the radiation treatment system that allows information to be shared between them.” slip op. at 7

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

    “i. Jaffray MICCAI 2001 Teaches “a computing unit, coupled to the rotatable gantry via a communications network, to store the image projection data captured by the flat-panel imager” Claim 57 (and, by dependence, claims 58 and 59) requires “a computing unit, coupled to the rotatable gantry via a communications network, to store the image projection data captured by the flat-panel imager.” We agree with Petitioner one skilled in the art would understand Jaffray MICCAI 2001 includes this feature. Jaffray MICCAI 2001 teaches “[p]rototypes of the hardware and software of the system have been constructed.” Ex. 1020, 1077. It further describes “[b]ecause the bone matching can be performed accurately on fairly low resolution CT and the prostate matching only requires a small part of the cone-beam CT volume, the complete image analysis can be performed in less than 10 s on a 700 MHz PC.” Id. at 1078. As Petitioner’s expert, Dr. Hamilton, explains, because Jaffray MICCAI 2001’s computing unit performs image reconstruction, it “necessarily stores the projection image data captured by the flat-panel imager.” Ex. 1037 ¶ 20 (citing Ex. 1020, 1077; Ex. 1022 ¶ 162). Further, as Dr. Hamilton, explains, “[t]he outcome of [the computing unit’s] analysis is used with treatment planning data to control the treatment delivery,” which “necessarily requires controlling the gantry.” Id. (citing Ex. 1020, 1077; Ex. 1022 ¶ 163); see also Ex. 1020, 1077 (describing that “[t]he selected treatment plan will be delivered by means of a step-and-shoot intensity delivery technique using 5 beam angles and about 20 treatment segments”).” slip op. at 12

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

    “In addition to demonstrating these alternative prior-art disclosures, Petitioner identified sufficient reasons that would have prompted a person of ordinary skill in the relevant field to combine the elements as the claimed invention does. See KSR, 550 U.S. at 418. Specifically, Petitioner explains—with support from Dr. Hamilton—that one skilled in the art would have been motivated to combine the computers disclosed in Jaffray MICCAI 2001, Jaffray JRO 1999, and Jaffray 2001 into an interconnected network because doing so would increase the efficiency of delivering radiation therapy to a patient. See Pet. 38 (citing Ex. 1022 ¶ 181). In addition, Petitioner explains a person of ordinary skill in the art would have been motivated to combine the claimed radiation energies (as disclosed in Jaffray JRO 1999) with the linear accelerator of Jaffray MICCAI 2001 to achieve a therapeutic response. Id. at 39 (citing Ex. 1022 ¶ 181). Thus, in addition to demonstrating the necessary disclosures in the prior art, Petitioner articulated sufficient reasoning with some rational underpinning to support the legal conclusion that its proffered combination would have been obvious to one of ordinary skill in the art. In disputing obviousness based on Jaffray MICCAI 2001, Jaffray 2001, and Jaffray JRO 1999, Patent Owner relies on its narrow construction for “communications network” as requiring a networking protocol and message routing. See PO Resp. 35–38, 43–45. In particular, Patent Owner asserts that, given added complexity associated with addressing data, communications networks are slower and more complex than dedicated physical connections, so one skilled in the art would not have been motivated to use a communications network as opposed to a direct connection. See id. at 43–44. We find Patent Owner’s arguments unpersuasive because, as explained above, we do not construe a communications network as requiring a networking protocol to selectively route messages to their intended devices, as Patent Owner contends. Instead, a communications network requires only a link between two or more components that allows information to be shared between them. Based on our review of the arguments and evidence in the Petition, Response, and Reply, we determine Petitioner has shown, by a preponderance of the evidence, that claims 57–59 are unpatentable under 35 U.S.C. § 103(a) over Jaffray MICCAI 2001, Jaffray 2001, and Jaffray JRO 1999. 3. Anticipation of Claims 57–59 Based on the Jaffray Publication” slip op. at 17

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Petitioner contends “[t]o the extent they are not found to be anticipated by the Jaffray Publication, claims 57–59 are unpatentable because they would have been obvious over the Jaffray Publication in view of the general knowledge of a person of ordinary skill in the art.” Pet. 54– 55. In light of our findings on anticipation based on Jaffrey Publication, and absent any assertions of secondary considerations supporting non-obviousness, we are persuaded Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claims 57–59 would have been obvious over the Jaffray Publication. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that ‘anticipation is the epitome of obviousness.’”); cf. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (distinguishing anticipation from obviousness because “obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation”).” slip op. at 22

  Patent outcomesUS 7,945,021 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,945,021
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Jun 16, 2017 · IPR2016-00476 · APJ Garth D Baer · IPR · Final written decision

  Claim 6 is unpatentable over Jaffray MICCAI 2001 under §§ 102(a), 102(b), and 103(a); claims 1–3, 7–10, and 12 are canceled on Patent Owner’s granted motion to amend.

  RulingsFinal written decision

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

    “construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 2. “communications network”” slip op. at 7

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

    “i. Jaffray MICCAI 2001 Teaches “a translatable treatment couch coupled to the rotatable gantry via a communications network” Claim 6 requires “a translatable treatment couch coupled to the rotatable gantry via a communications network.” As Petitioner explains, the linear accelerator in Jaffray MICCAI 2001 is an Elekta SL-20. Pet. 16 (citing Ex. 1021, 1076; Ex. 1026 ¶ 167), 24 (citing Ex. 1021, 1076, Fig. 1; Ex. 1026 ¶¶ 156, 167). A technical note describing the SL-20 explains as follows: “The hardware/software interaction of the SL-20 makes it particularly suitable for automated data collection. Communication between the control processor and the accelerator, gantry and patient couch is handled by a pair of high-speed serial links. These are daisy-chained through three separate control areas distributed throughout the machine.” Ex. 1015, 220. “[R]ecourse to extrinsic evidence is proper to determine whether a feature, while not explicitly discussed, is necessarily present in a reference.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1328 (Fed. Cir. 2001). In light of Exhibit 1015, we agree with Petitioner one skilled in the art would understand Jaffray MICCAI 2001’s translatable treatment couch and rotatable gantry are coupled via a communications network—i.e., a link between the two components that allows information to be shared between them. See Pet. 24 (citing Ex. 1021, 1076, Fig. 1; Ex. 1015, 220; Ex. 1026 ¶¶ 156, 167); see also Reply 7–12; Ex. 1031 ¶¶ 19– 29.” slip op. at 10

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

    “Petitioner asserts “to the extent [claim 6 is] not found to be anticipated by Jaffray MICCAI 2001, [claim 6] would have been obvious in view of Jaffray MICCAI 2001.” Pet. 27. In light of our findings on anticipation based on Jaffray MICCAI 2001, and absent any assertions of secondary considerations supporting non-obviousness, we are persuaded Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 6 would have been obvious over Jaffray MICCAI 2001. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that anticipation is the epitome of obviousness.”); cf. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (distinguishing anticipation from obviousness because “obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation”). 3. Anticipation of Claim 6 Based on the Jaffray Publication” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “We agree with Patent Owner that using a computer-controlled treatment couch does not necessarily mean the treatment couch is connected to the gantry via a communications network, as claim 6 requires. See PO Resp. 28. As Patent Owner explains, controlling the couch with a computer “says nothing about how, if at all, the table would be coupled to the rotatable gantry.” Id. In addition, Petitioner’s standard-feature argument, even if correct, is not enough to show the Jaffray Publication necessarily discloses the disputed communications network feature. See Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1355 (Fed. Cir. 2013) (explaining that “anticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation”). Thus, we find Petitioner has not shown the Jaffray Publication expressly or inherently discloses “a translatable treatment couch coupled to the rotatable gantry via a communications network,” as claim 6 requires, and consequently has not met its burden to show the Jaffray Publication anticipates claim 6. 4. Obviousness of Claim 6 Based on the Jaffray Publication” slip op. at 14

  Patent outcomesUS 8,116,430 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,116,430

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.