• Samsung Electronics America, Inc. / Asus Computer International, Inc. v. James B. GoodmanSome claims unpatentable
  PTAB · Oct 29, 2019 · IPR2017-02021 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1, 5, 10, and 16 are unpatentable over Ooishi and Palaniswami, with Abe added for claims 10 and 16; claims 2–4, 6–9, and 11–15, 17–20 were not shown unpatentable.

  RulingsFinal written decision

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

    “reasonable construction consistent with the Specification of a control device “for selectively electrically isolating said memory devices from respective address lines and respective control lines so that when said memory devices are electrically isolated, any signals received on said respective address lines and respective control lines do not reach said memory devices” as recited in independent claims 1 and 10 requires that the control device electrically isolate the memory devices from all address and control lines that communicate with the memory devices.10” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co, 383 U.S. 1, 17 (1966). Petitioner contends a person of ordinary skill in the art at the time of the alleged invention of the ’315 patent (a “POSITA”) would have had, inter alia, a bachelor’s degree in electrical, electronics, computer engineering; or the equivalent training, and would have had approximately 2 to 3 years of experience in computer systems, circuits, electronics, or a related discipline. Pet. 9; Ex. 1002 ¶¶ 27–30. Patent Owner does not contest Petitioner’s description of the level of ordinary skill. See PO Resp. 8. Based on our review of the ’315 patent, the cited prior art, and Dr. Wolfe’s testimony, we determine a specific finding regarding ordinary skill level is not required as the prior art reflects an appropriate level. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). However, to the extent a specific finding regarding the level of skill is required, we find Petitioner’s articulation of a person of ordinary skill in the art is consistent with the teachings of the prior art and adopt Petitioner’s description of a POSITA as someone who “would have had a bachelor’s degree in electrical, electronics, or computer engineering; or the equivalent training, and would have had approximately two to three years of experience in computer systems, circuits, electronics, or a related discipline.” See Pet. 9.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). A reference is deemed publically accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it. Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008). Petitioner asserts JESD21-C was published January 1997 and is prior art under pre-AIA 35 U.S.C. § 102(b). Pet. 37–38. As support, Petitioner relies upon the Declaration of John J. Kelley (“the Kelley Declaration”), the current President of the Solid State Technology Association of the Joint Electron Device Engineering Council (“JEDEC”). See Ex. 1007 ¶ 2. Mr. Kelly states that JEDEC specification JESD21-C, Configurations for Solid State Memories, Release 7 (January 1997), a copy of which is attached to his declaration as Exhibit 17, “was made publicly available in January 1997.” Id. ¶¶ 4, 7. Mr. Kelley testifies that in January 1997 copies of the entire JESD21-C volume “would . . . have been available for purchase by anyone in the public” and that “pages comprising the specifically updated modules would have been sent to those who subscribed to the annual updating service for JESD21-C.” Id. ¶ 6. Patent Owner does not dispute that JESD21-C qualifies as prior art under 35 U.S.C. § 102(b). See PO Resp. 7. Based on the current record, we determine JESD21-C qualifies as a prior art printed publication under § 102(b).” slip op. at 19

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

    “We agree with Patent Owner that Petitioner has not persuasively shown that Dell discloses a control device that electrically isolates the memory devices as required under the claim construction set forth above in devices even when the devices are in a low-power or self-refresh mode, Petitioner has not shown that Dell’s memory devices are electrically isolated from “respective control lines” such that “any signals received on said . . . respective control lines do not reach said memory devices” as required by claims 1 and 10. Accordingly, we determine Petitioner has not shown by a preponderance of the evidence that claim 1 of the ’315 patent is unpatentable over Dell or that claim 10 is unpatentable over the combined teachings of Dell and Abe.” slip op. at 21

  Patent outcomesUS 6,243,315 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,243,315
• Feit Electric Company, Inc. v. Signify Holding B.V. F/K/A Philips Lighting Holding B.V.Some claims unpatentable
  PTAB · Oct 18, 2019 · IPR2018-00921 · APJ Jason M Repko · IPR · Final written decision

  Claims 1, 22, and 30 are unpatentable as obvious over Biebl; claims 7 and 14 were not shown unpatentable because the proposed combinations lacked sufficient support.

  RulingsFinal written decision

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

    “The Specification supports the construction that an oscillating signal is periodically varying. For instance, the Specification states that “the low frequency oscillating signal changes from low to high.” Ex. 1001, 2:35–37. In another example, “the oscillating signal can be a square wave oscillating between 0 and 16 volts with a frequency of 200 to 300 Hertz.” Id. at 4:17– 20. In these examples, the ’890 patent uses term “oscillating” to describe signals having periodic variation or change. Thus, we construe “an oscillating signal” as a signal with periodic variation. generating an oscillating signal. Petitioner’s definition from a technical dictionary merely adds that an oscillator is (1) an electronic circuit and (2) “converts energy from a direct-current source.” Pet. Reply 4 (citing Ex. 1021, 3 (McGraw-Hill Dictionary of Scientific and Technical Terms 1341–40 (4th ed. 1989))). There is no dispute about a direct-current source. The Specification discusses an “oscillator” in terms of its function. See Ex. 1001, 2:17–19, 26–27; 44–48. Thus, we determine that “oscillator” means an electronic circuit that generates an oscillating signal.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner

    “We agree with Patent Owner that the Patent indicates that either set of resistors can perform the claimed function. Prelim. Resp. 12. For instance, R1A1, R1A2, and R1A3 appear in the schematic diagram in Figure 2A. This diagram shows a first power supply 112 that supplies current to LED array 114. Ex. 1001, 3:11–12. LED array 114 responds to signals for the STOP input 104 or TURN input 102. Id. at 3:12–14. The resistors are between the first power supply 112 and LED array 114 to sense current. Id. at 3:31–35. By contrast, R1B1, R1B2, and R1B3 appear in the schematic diagram in Figure 2C. This diagram shows a second power supply (130) that supplies power to LED array 126. Id. at 3:55–56. LED array 126 responds to signals for the STOP input 104 or TAIL input 106, depending on the input mode. Id. at 3:56–59. Figure 2C shows the resistors connected to the second power supply 130. Id., Fig. 2C. So the two sets of resistors perform the same function but are connected to different power supplies. Thus, the structures disclosed in the Specification as corresponding to the claimed function are (1) R1A1, R1A2, or R1A3 or (2) R1B1, R1B2, or corresponding structure because it is immaterial to our analysis below.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Any difference between Petitioner’s and Patent Owner’s proposed levels of ordinary skill in the art are immaterial because, as Dr. Zane explains, “applying Dr. Shackle’s standard for the level of ordinary skill in the art would not affect [Dr. Zane’s] analysis and conclusion regarding the patentability of any challenged claim.” Id. ¶ 27. So we apply Petitioner’s proposed definition, which appears to be consistent with the level of skill reflected in the asserted references. See Okajima v. Bordeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of skill in the art).” slip op. at 22

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

    “Yet nothing in the claim suggests that visual characteristics are relevant. Rather, claim 1’s system uses the recited states for a purpose unrelated to viewing waveforms—i.e., to determine whether to supply power or not. See Ex. 1001, 5:24–27. So we are unpersuaded by Patent Owner’s argument that slope or other visual characteristics should be the only basis for defining the states. See PO Resp. 15. Thus, Petitioner has shown that Biebl teaches “an oscillating signal having a first state and a second state.”” slip op. at 26

  Patent outcomesUS 6,586,890 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 6,586,890
• Microsoft Corporation v. Uniloc 2017 LLCInstitution denied
  PTAB · Oct 9, 2019 · IPR2019-00976 · APJ Sean P O’Hanlon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 7–10, 12, 15–18, 20, 23, and 24 were obvious over the asserted references.

  RulingsInstitution decision

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

    “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner will prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review. slip op. at 2

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

    “Id. ¶ 157. These maps/threads provide “[t]he capability to mine/gather the data associated with the digital content 320.” Id. ¶ 162 (emphasis added). Thus, Kobata’s super-distribution threads are stored as part of digital content 320 and provide a history of digital asset transfers—the “history of identities of computer devices that manipulated and/or forwarded the digital content 320.” Id. ¶ 152. However, the threads do not detect when such a transfer occurs. Nor do the cited paragraphs of the Golbeck Declaration relied upon by Petitioner explain how Kobata detects a transfer of the digital asset as required by claim 1. See Ex. 1003 ¶¶ 63–65 (discussing tracking, but not addressing detecting); see also Pet. 37 (citing same). Thus, Kobata does not support Petitioner’s assertion that Kobata’s super-distribution allows the “digital content [to] be tracked when transferred” as asserted by Petitioner. See Pet. 36.” slip op. at 18

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Kobata discloses an asset identification embedded within an “other portion” of the digital asset that does not include digital content, as required by claim 1. Petitioner asserts that ID portion 418 does not include digital content. Pet. 33–34 (citing Ex. 1003 ¶¶ 57, 60–65). The cited portions of the Golbeck Declaration, however, do not address the recited other portion. See Ex. 1003 ¶¶ 57, 60–65 (discussing the form of the digital content and tracking digital content, but not discussing the recited other portion). Paragraph 53 of the declaration does, noting that “the digital content package 320 can include a viewer module 416, the digital content data 410, the ID portion 418, the local digital rights database 412, [and] the personal rights manager module 414,” and summarily stating that “[t]hus, Kobata’s system includes . . . at least one other portion that does not include digital content.” Ex. 1003 ¶ 53 (citing Ex. 1005 ¶¶ 208–09). The cited portions of Kobata, however, do not address the components cited by Petitioner’s declarant. See Ex. 1005 ¶¶ 208–09 (discussing loading a file onto the recipient’s computer device, decrypting the file, and running the file, but not discussing the contents of ID portion 418). As Dr. Golbeck does not direct us to any other evidence to support her assertions, we accord her testimony little weight. See 37 C.F.R. § 42.65(a).” slip op. at 20

  • Skill levelSkill level board ownOther

    “Based on the Specification and the prior art of record, we find Petitioner’s definition reasonable and, for purposes of this Decision, adopt it as our own.” slip op. at 9

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,606,856
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 4, 2019 · IPR2018-01457 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied ZTE’s rehearing request and left institution denied, finding no abuse of discretion under § 325(d) or § 314(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner

    “Petitioner appears to limit the inquiry to evaluation of the prior art by a particular examiner, namely the ’069 examiner. However, § 325(d) provides that “the Director may take into account whether . . . the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d) (emphasis added). Moreover, the Becton Dickinson factors are non-exclusive, and factor 4 considers, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Becton Dickinson at 17 (emphasis added). Neither Section 325(d) nor Becton Dickinson appears to limit the inquiry to a particular examiner as Petitioner argues. Consideration of the asserted prior art by the Office during previous examination of the patent at issue or closely related patents is, therefore, a relevant consideration under Section 325(d).” slip op. at 5

  • Other 314aDecided for patent owner

    “The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. We further note that district court has completed claim construction. See Ex. 2038. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 16 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9

  Discretionary denial
  Patents in suitUS 8,976,069
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 2, 2019 · IPR2018-01455 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution under § 325(d) and § 314(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner

    “similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4

  • Other 314aInstitution denied discretionary otherDecided for patent owner

    “litigation is stayed. Opp. 1. Patent Owner advises, “on March 15, 2019, the court issued a claim construction order reaffirming the earlier construction of the terms relevant to the present proceeding. Id. (citing Ex. 2028, passim). Patent Owner argues, “the claim construction order evidences the new court’s clear intent to proceed with the case.” Id. Patent Owner also advises that “[o]n April 12, 2019, the parties submitted a Joint Notice Regarding Scheduling Conference (1) requesting a trial date predating any conclusion to an instituted IPR, (2) confirming that fact discovery has completed, and (3) requesting a close to expert discovery on May 31, 2019.” Id. (citing Ex. 2029, 1–3). The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2029. We further note that district court has completed claim construction. See Ex. 2028. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”).” slip op. at 8

  Discretionary denial
  Patents in suitUS 7,394,432
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 1, 2019 · IPR2018-01451 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied ZTE’s rehearing request and maintained denial of institution under § 325(d) and § 314(a), finding no abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner

    “similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8–9. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4

  • Other 314aDecided for patent owner

    “The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2030. We further note that district court has completed claim construction. See Ex. 2029. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9

  Discretionary denial
  Patents in suitUS 7,397,431
• Huawei Device Co., Ltd. v. Optis Wireless Technology, LLCAll claims unpatentable
  PTAB · Sep 9, 2019 · IPR2018-00655 · APJ John P Pinkerton · IPR · Final written decision

  Claims 1–10, 21–30, 41, and 42 are unpatentable under § 103 over Wallace and Ishikawa.

  RulingsFinal written decision

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

    “reason. In particular, in regard to Wallace’s disclosure of obtaining temporal diversity by transmitting data over multiple time slots, Wallace states that as shown in Figure 2, “data 1 transmission at time slot 7 is a portion (e.g., new or repeated) of the data 1 transmission at time slot 2.” Ex. 1106, 11:55–57. Dr. Wells testifies that to perform this teaching, “Wallace has to determine in advance whether to repeat a particular transmission (e.g., data 1 transmission in time slot 2), and where to repeat it (e.g., data 1 transmission in time slot 7). In other words, the two groups of data 1 symbols need to be defined before mapping takes place.” Ex. 1120 ¶ 35. Thus, we determine that, at least in this particular instance of temporal diversity, contrary to Patent Owner’s argument, Petitioner has shown that there is a valid reason for defining two groups of data 1 symbols before mapping data. Accordingly, we also determine that Wallace’s teaching of transmitting data” slip op. at 56

  • RehearingDecided for petitioner

    “11. Patent Owner contends that we should not have instituted trial in this proceeding “in light of a jury verdict [in the related district court action] finding claims 11 and 17 valid over the very same prior art and the very same invalidity theories presented here.” See PO Resp. 54–60. On September 24, 2018, Patent Owner filed a Request for Rehearing Regarding Institution Decision under 37 C.F.R. § 42.71(d). Paper 14 (“Request for Rehearing”). Patent Owner’s arguments in its Response as to why we should not have instituted trial here are substantially the same as those made by Patent Owner in the Request for Rehearing. At the time Patent Owner filed its Response, the Request for Rehearing was pending, as Patent Owner states. See PO Resp. 58. However, on March 13, 2019, we entered the Decision Denying Patent Owner’s Request for Rehearing. Paper 27. For the same reasons set forth in the Decision Denying Patent Owner’s Request for Rehearing, which we adopt and incorporate herein, we are not persuaded by Patent Owner’s arguments in its Response that we should not have instituted trial in this proceeding. See id. at 4–15.” slip op. at 96

  Patent outcomesUS 8,208,569 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,208,569
• Huawei Device Co., Ltd. v. Optis Wireless Technology, LLCAll claims unpatentable
  PTAB · Sep 9, 2019 · IPR2018-00653 · APJ John P Pinkerton · IPR · Final written decision

  Claims 11–20, 31–40, 43, and 44 are unpatentable as obvious over Wallace and Ishikawa under § 103.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “factually unsupported and, as Petitioner argues, “does not cite any intrinsic evidence.” See Pet. Reply 7–8 (citing Ex. 2003 ¶¶ 67–68). Accordingly, it is entitled to little or no weight. See 37 C.F.R. § 42.65(a). In addition, we determine that Dr. Womack’s testimony is insufficient to demonstrate that mapping data to “symbols” is different than mapping data to “groups of symbols” because, as Petitioner also argues, although the applicant for the ’569 patent identified Figures 4A–4F and 5 as support for the mapping of “first data,” “[a]t his deposition, Dr. Womack could not identify any examples of data in Figures 4A–4F and 5 that is mapped on a symbol-by-symbol basis.” Id. at 8 (citing Ex. 1021, 10:12–18, 26:14–27:20).” slip op. at 25

  • Skill levelOther

    “F. Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of” slip op. at 11

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

    “reason. In particular, in regard to Wallace’s disclosure of obtaining temporal diversity by transmitting data over multiple time slots, Wallace states that as shown in Figure 2, “data 1 transmission at time slot 7 is a portion (e.g., new or repeated) of the data 1 transmission at time slot 2.” Ex. 1006, 11:55–57. Dr. Wells testifies that to perform this teaching, “Wallace has to determine in advance whether to repeat a particular transmission (e.g., data 1 transmission in time slot 2), and where to repeat it (e.g., data 1 transmission in time slot 7). In other words, the two groups of data 1 symbols need to be defined before mapping takes place.” Ex. 1020 ¶ 35. Thus, we determine that, at least in this particular instance of temporal diversity, contrary to Patent Owner’s argument, Petitioner has shown that there is a valid reason for defining two groups of data 1 symbols before mapping data. Accordingly, we also determine that Wallace’s teaching of transmitting data 1 over different time slots suggests to a person of ordinary skill in that art that data would have been mapped to groups of symbols that are defined prior to mapping as Patent Owner’s proposed construction of “mapped to groups of symbols” would require.” slip op. at 56

  Patent outcomesUS 8,208,569 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,208,569
• Unified Patents Inc. v. Uniloc 2017 LLCRehearing denied
  PTAB · Aug 16, 2019 · IPR2019-00480 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Unified Patents’ rehearing request, leaving institution denied because Petitioner did not show a persuasive reason to combine Boykin with the other asserted references.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3

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

    “(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because Petitioner’s arguments concerning Boykin1 were not persuasive and that a person of ordinary skill in the art would not have had reason to combine Boykin’s teachings with the other asserted references. Dec. on Inst. 14−21. Petitioner has filed a Request for Rehearing. Paper 9 (“Req. Reh’g”). Petitioner argues several points, but in particular, Petitioner argues that our Decision misapprehended Boykin in concluding that the Petition failed to show an adequate reason to combine. Id. at 9. According to Petitioner, Boykin supports the contention Petitioner presented in the Petition that Boykin triggers the incentive of awarding users with points or credits, which a person of ordinary skill in the art would find beneficial. Id. Petitioner then points to Dr. Vijay Madisetti’s testimony of the alleged benefit. Id. (citing Ex. 1004 ¶ 116). Petitioner faults our Decision for weighing Patent Owner’s arguments, which Petitioner criticizes as constituting attorney argument, and concludes that our Decision’s reasoning misapprehends that Boykin would provide a benefit despite our determination that a person of ordinary skill in the art would not derive the alleged benefit given the teachings of the other asserted references.” slip op. at 2

  • BurdenNot shown unpatentable

    “point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3

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

    “point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3

  § 103 obviousness
  Patents in suitUS 8,606,856
• Apple Inc. / LG Electronics, Inc. v. Uniloc 2017 LLCRehearing denied
  PTAB · Aug 9, 2019 · IPR2018-00361 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 2, 6-9, 12, 14, and 15 unpatentable over Riggins and Devarakonda and claim 20 not shown unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Patent Owner to show we misapprehended or overlooked the matter it requests that we review. We are not persuaded that Patent Owner has shown that we misapprehended or overlooked the matter raised in the Request for Rehearing.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
  § 103 obviousness
  Patents in suitUS 6,216,158

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.