• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentable
  PTAB · Nov 25, 2025 · IPR2024-01165 · APJ William V Saindon · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Zhou does not teach the claimed low-light high-pass or stickiness parameter limitations.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “4. Conclusion for the Prior Art Analysis In sum, we find that Zhou does not disclose the low-light high-pass parameter or the stickiness parameter. Petitioner’s grounds for both independent claims 1 and 16 rely on Zhou for teaching a low-light high-pass parameter or a stickiness parameter. Pet. 23–28, 64. Because we find Zhou does not teach these limitations, all of Petitioner’s grounds fall for this reason. III. CONCLUSION For the reasons given above, we determine that Petitioner has not established by a preponderance of the evidence that any claim of the ’840 patent would have been obvious in view of the prior art cited.” slip op. at 18

  • Skill levelSkill level petitioner adoptedOther

    “A person of ordinary skill in the art (POSITA) in the field of the ’840 patent would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras. Alternatively, a POSITA would have four years of experience working on image or video processing, or digital cameras. An advanced graduate degree in the disciplines cited above may make up for the work experience indicated above. Pet. 6 (citing Ex. 1002 ¶ 32). Patent Owner applies the same standard. PO Resp. 26–27. We use this agreed-upon standard for purposes of this Decision.” slip op. at 7

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We review this testimony based on the strength of the underlying factual basis. 37 C.F.R. § 42.65(a); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value . . ..”). Here, the underlying factual basis is not very strong for either witness. That said, we find that Dr. Foroosh’s testimony is more logically sound and consistent with the ’840 patent disclosure. Based on our reading of the specification, we find a clear indication that “stickiness” has to do with the past. In order to control “the extent by which preceding portion(s) . . . impacts determination of the smoothed trajectory” (emphasis added), one must control the degree by which the past frames impact determination. And to control the degree of the past’s influence, one must, as a consequence, favor the past over the future. That is, the frame of reference of the stickiness parameter is the past. The specification could have used a time-agnostic term, like a “nearness” or “adjacency” parameter, but it did not. Thus, the fact that “stickiness” is used in conjunction with “preceding” indicates that it deals with a preference for preceding frames. On this basis, we find Dr. Katsaggelos’s testimony less persuasive than Dr. Foroosh’s.” slip op. at 10

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

    “That said, we do not construe a stickiness parameter as prohibiting consideration of future frames. Instead, we determine that the stickiness parameter’s value determines the impact of the preceding portions, versus the following portions. The ’840 patent recognizes this, when it says that a stickiness parameter value of “1,” representing a “lazy” stabilizer that maximally favors the past, would not override a violation of the margin constraint based on the look-ahead (i.e., would not allow the viewing window to fall out of bounds in the event of large future motion). See Ex. 1001, 22:26–30; see also id. at 12:61–13:29 (acknowledging that favoring the past may lead to a conflict with the viewing window determination), 15:39–60 (adjusting the viewing window to ensure it does not violate a margin constraint). Thus, while a past-favoring parameter by necessity favors the past over the future, it does not prohibit consideration of the future. In view of the above, we construe the claimed “stickiness parameter” as a parameter that controls the extent by which preceding portions of the trajectory impacts determination of the smoothed trajectory, with an understanding that in order to favor preceding portions, to some extent, the parameter must relatively disfavor following portions.” slip op. at 10

  Patent outcomesUS 10,958,840 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,958,840
• Hanwha Solutions Corporation / Hanwha Q Cells USA, Inc. v. Rec Solar Pte. Ltd.No claims unpatentable
  PTAB · Dec 9, 2022 · IPR2021-00989 · APJ Brian D Range · IPR · Final written decision

  Claims 1–6, 11, and 13 were not shown unpatentable under either obviousness ground because Petitioner did not establish a motivation to combine Yagiura and Shimasaki.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s position is persuasive. We agree that documents from the Japanese Patent Office are self-authenticating official government documents. The technical issues regarding missing pages in the originally filed version of the document do not cause us to question authenticity. We also agree that Petitioner uses the documents to establish what the documents teach rather than establishing the truth of what the documents teach. In Reply, Patent Owner argues that Petitioner relies on the date printed on the document to prove up the truth of when the document was published. Mot. Excl. Reply 1–2. To the extent this is the case, an exception to hearsay applies because the document is a record of a public office. Fed. R. Evid. 803(8)(B) (a record of public office is an exception to the hearsay rule if the opponent does not show that the source of information or other circumstances “indicate a lack of trustworthiness”). Here, Patent Owner does not persuasively demonstrate a lack of trustworthiness; Patent Owner does not identify any substantively meaningful distinction in the missing pages of the originally filed document and does not identify any evidence to suggest that the missing pages were anything more than a harmless clerical error. For the reasons above, Patent Owner’s motion to exclude is denied with respect to these documents. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “Petitioner’s proposal is too broad. PO Resp. 8. For example, a person who merely installs solar panels for three years (satisfying “professional experience in solar energy”) while having some familiarity with module manufacturing would not be of ordinary skill in the design aspects of the ’060 patent as, for example, reflected by the claims at issue and the ’060 patent’s text and figures. See, e.g., Ex. 1101, Figs. 2a, 2b, 3a, 3b, 4a, 4b, 3:22–7:44. On the other hand, we also determine that Patent Owner’s proposal is too narrow. A person could, for example, have ordinary skill in the art of the ’060 patent by virtue of non-professional experience (for example, academic experience). When assessing relevant experience, research work done for a university (beyond mere classroom study) would have been just as valuable as research work done for a corporation. Also, ordinary skill in the art could be demonstrated by work that requires understanding of the ’060 patent’s field even if not “designing, developing, and/or researching” in the field itself We, thus, determine that a person of ordinary skill in the art of the ’060 patent would have been someone with a bachelor’s degree in electrical engineering, applied physics, or the like, and at least two years of (a) experience designing, developing, and/or researching in the field or (b) experience in solar energy that required an understanding of the ’060 patent’s field. Alternatively, that person would have had an advanced degree in electrical engineering, applied physics, or the like and at least one year of” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “qualifies as evidence in this matter. The Federal Circuit has held that expert testimony about the perspective of person of ordinary skill in the art (as Dr. Kimball provides here) must come from a person having at least ordinary skill in the art. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022) (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)) (holding that ITC Administrative Law Judge abused discretion by admitting expert testimony of witness who lacked the experience of a person having ordinary skill in the art); see Mot. Excl. 6–7 (arguing this point). Patent Owner, however, cites no authority that expert testimony on such matters come from a person having ordinary skill in the art at the time of the invention. Cf. Scentair Tech., LLC v. Prolitiec Inc., IPR2021-00012, Paper 22 at 61 (PTAB Apr. 22, 2022) (similarly noting a party’s lack of authority on this point). Beyond needing to come from a person of ordinary skill in the art, expert testimony is admissible if the expert has the “scientific, technical, or other specialized knowledge [that] will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. Furthermore, “[t]here is … no requirement of a perfect match between the expert’s experience and the relevant field.” USPTO, Patent Trial and Appeal Board Consolidated Trial Practice Guide, 34 (Nov. 2019). Here, Petitioner adequately establishes that Dr. Kimball qualifies as a” slip op. at 12

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

    “The Petition argues that all claim terms should be given their plain and ordinary meaning. Pet. 18. Patent Owner does not dispute this. PO Resp. 13. We determine that no claim term requires express construction for purposes of this Final Written Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the” slip op. at 15

  Patent outcomesUS 10,749,060 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,749,060
• Platinum Optics Technology Inc. v. Viavi Solutions Inc.No claims unpatentable
  PTAB · Oct 3, 2022 · IPR2021-00631 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–3, 5–8, 10–12, 14, 16–21, and 23 were not shown unpatentable because the asserted combinations did not establish the claimed hydrogenated silicon properties.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Supported by Mr. Willey’s testimony, Petitioner proposes that a person of ordinary skill in the art would have had “a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with at least 5 years of experience in optical coating design and the manufacturing of optical filters, including various deposition techniques.” Pet. 13 (citing Ex. 1002 ¶¶ 66–68). According to Petitioner, “[a]dditional education (e.g., a Master’s degree with exposure to coating design and manufacturing) may substitute for some industrial experience in optical thin film design, and more industrial experience can substitute for a different educational background. Id. (citing Ex. 1002 ¶ 66). Patent Owner neither directly addresses Petitioner’s proposal nor provides its own proposal. See Tr. 35:15–18 (Patent Owner confirming for the record that it has not proposed a different level of ordinary skill than Petitioner’s proposal). Petitioner’s proposal is reasonable and consistent with the prior art presented. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We accordingly adopt Petitioner’s proposal.” slip op. at 11

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on the statements Dr. Clemens made under oath in his Declaration, we find that he qualifies as a person having at least ordinary skill in the art according to our adopted definition. The questions Petitioner raises about Dr. Clemens’s qualifications were insufficiently explored on cross-examination to impeach that testimony. With respect to Petitioner’s further complaint that Dr. Clemens “did not review all the evidence in rendering his opinions, did not select the materials he reviewed, and did no independent research on the question of enablement,” we agree with Patent Owner that Petitioner cites no authority for the propositions that expert witnesses must review all exhibits or perform independent research. Sur-reply 27. Indeed, we do not find it particularly unusual for an expert witness to focus his analysis and opinions on specific issues identified by counsel, and Dr. Clemens properly discloses the underlying facts and data upon which his opinions are based. See 37 C.F.R. § 42.65(a). We thus accord due weight to Dr. Clemens’s testimony.” slip op. at 15

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

    “Petitioner contends that “the claims do not need an express construction to resolve the issues presented in this proceeding” but nevertheless “provides its proposed interpretations of two terms [namely, ‘center wavelength’ and ‘passband’] to clarify how Petitioner is applying the prior art to the claims.” Pet. 13. Patent Owner does not directly address Petitioner’s proposed constructions for these terms, and appears generally to treat the terms in a manner consistent with Petitioner’s proposals. We conclude that no express claim construction is necessary for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16

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

    “One difficulty with Petitioner’s position is that it treats the refractive index and extinction coefficient as independent variables in its argument. But the prior art is clear that the adjusting the hydrogen content of Si:H to achieve a desired extinction coefficient necessarily affects the refractive index—and, as we discuss above, that such adjustments do so in a direction counterproductive to the combination of parameters the inventors sought. And we agree with Patent Owner that the refractive index and extinction coefficient “are not parameters subject to simple adjustment, but properties resulting from the parameters of the fabrication process.” PO Resp. 52 (citing Ex. 2001 ¶¶ 121–122; Ex. 1016, Figs. 2–3). At the Oral Hearing, Petitioner conceded that Patent Owner’s characterization is accurate when considering the hydrogenated silicon material. See Tr. 65:7– 12. When Petitioner refers to the refractive index and extinction coefficient as result-effective variables, Petitioner means that those parameters are variables that can affect the properties of the claimed optical filter. See id. at 64:6–65:12. As we note above, Petitioner’s argument thus presumes that the refractive index and extinction coefficient can be independently adjusted to achieve desired filter properties—but the asserted prior art teaches against such independence because the known method of adjusting the hydrogen content of Si:H not only affects both the refractive index and extinction coefficient, but does so in a manner counterproductive to the inventors’ objective.” slip op. at 35

  Patent outcomesUS 9,354,369 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,354,369
• 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
• Elekta, Inc. v. Varian Medical Systems, Inc.No claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00380 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, and 4–9 were not shown unpatentable under either § 103 ground; claims 13 and 18 were canceled after Patent Owner’s motion to amend was granted.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Although a claim term that does not include the word “means” is presumed not to invoke a means-plus-function analysis, that presumption may be overcome if the limitation does not “recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’703 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we refer to the pre-AIA version of § 112. 1339, 1349 (Fed. Cir. 2015). Petitioner’s expert, Russell J. Hamilton, Ph.D., testifies that “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed functions,” and that “[l]ogic can be implemented in software, in hardware, and in combinations of hardware and software.” Ex. 1021 ¶ 122. The parties provide sufficient reasoning to overcome the presumption against a means-plus-function construction, and we accordingly construe “first logic” and “second logic” in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9

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

    “untenable because its broad identification only of “computer software and/or computer hardware” as structure for performing the recited function is too generic. The law regarding construction of means-plus-function limitations as applied to computer-implemented elements is well-established: For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, . . . , or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations omitted). Patent Owner’s proposed construction is superior because it identifies the algorithm through explicit reference to the flow chart of Figure 4 and related disclosure in the Specification. Patent Owner’s position is supported by testimony of its expert, Sasa Mutic, Ph.D., who refers to those disclosures in opining that “the [’703] patent describes a process of steps for obtaining the result of properly positioning a patient to begin a treatment” and that “Fig. 4 of the [’703] patent provides a flowchart of a process for use of an embodiment of the invention.” Ex. 2012 ¶ 69. Petitioner takes the position that the ultimate scope of the corresponding algorithm “does not matter” because Petitioner contends that the challenged claims are unpatentable even under Patent Owner’s proposed construction. Pet. Reply 315, 3. Nevertheless, Petitioner attacks Patent Owner’s proposed construction as “implicitly adopt[ing]” two “additional but unreasonable limitations.” Id. First, Petitioner contends that “the claims do not require the performance of the function of the second logic to be fully automated and instead permit human interaction with the second logic.” Id. Second, Petitioner contends that blocks 520 (“Position Patient”), 525 (“Register Treatment Image Data with Simulator/Reference Image Data and Reposition Patient”), and 530 (“Position Clinical Treatment Machine”) of Figure 4 “need not be performed in their entirety by logic so long as the second logic is used for some step in each block.” Id. at 4. We find no inconsistency in these positions with Patent Owner’s proposed construction. In light of the foregoing considerations, we adopt Patent Owner’s proposed construction.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Petitioner contends that the claims canceled in IPR2016-00341 “were directed to methods that recited the function performed by the second logic,” and that “Patent Owner is now estopped from arguing the subject matter of the same scope is patentable.” Pet. Reply 315, 1. Petitioner cites no authority to support this position, which improperly focuses on only one limitation of the claims, divorced from the claims’ other limitations. We reject Petitioner’s contention because the method claims canceled in IPR2016-00341 do not constitute “subject matter of the same scope” as the apparatus claims challenged in these proceedings.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’703 patent “would be a person with a graduate degree (MS or PhD) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology beyond the completion date of their degree.” Ex. 1021 ¶ 17. Patent Owner’s expert, Dr. Mutic, expresses a level of ordinary skill that is generally similar to Petitioner’s expert, but accounts for the possibility of a medical education instead of a medical-physics education: [A] person of ordinary skill in the art . . . would be a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications. Alternatively, one of ordinary skill in the art might have an M.D. degree in the same relevant fields and two or more years of practical experience with image processing and the use of computer systems that is related to medical applications. Ex. 2012 ¶ 36. The similarity in the experts’ opinions is reinforced by Dr. Mutic’s assertion that he has “considered Dr. Hamilton’s definition of the level of ordinary skill in the art and determined that it does not differ from [his] own expressions of this concept in any way that is relevant to the opinions” he expresses in his Declaration. Id. ¶ 38. Based on the expert testimony in the record, we agree with and adopt the level of skill expressed by Dr. Hamilton.” slip op. at 17

  Patent outcomesUS 8,867,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,867,703
• Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 17, 2017 · IPR2016-00956 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 not shown unpatentable because the asserted combinations did not teach dynamically building a parse tree while receiving incoming code.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We have considered these constructions in light of the full trial record. We see no compelling reason to alter these constructions in light of the parties’ 4 We repeat our observation from the Institution Decision that claim 9 recites “detecting any one of a plurality of programming languages in which the incoming stream is written” (emphasis added), but requires instantiating the scanner “in response to said determining” (emphasis added), without apparent antecedent basis. We consider “said determining” in claim 9 as intended to refer to the previously recited “detecting,” in parallel with the structure of claims 1 and 22. Dec. 11 n.4. positions as developed during the trial, and we therefore adopt them for this Final Written Decision. See PO Resp. 12–13 (“Although Patent Owner maintains that the terms ‘dynamically building’ and ‘dynamically detecting’ do not require construction, it does not contest these constructions for purposes of this proceeding, and they are, therefore, controlling.”); Reply 3 (noting Patent Owner does not contest the preliminary constructions of “dynamically building” and “dynamically detecting”).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18

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

    “Consequently, Dr. Medvidovic opines, and we agree, that “simply because Chandnani’s tokenizer operates on a data stream does not demand or even imply that the data stream is being received while being tokenized.” Id. As Patent Owner contends, because Chandnani discloses that operation of the tokenizer “only occurs on the second pass through the data stream, . . . the data stream must have already been received before the stream of tokens is generated.” PO Resp. 21. “[W]hile it is conceivable (though not explicitly disclosed) that a data stream might be ‘incoming’ while Chandnani uses the ‘language check data to select the language definition data to use for the detection process,’ it is not possible for the data stream to still be ‘incoming’ when the data stream ‘is lexically analyzed again, this time using the language definition data, to generate a stream of tokens.’” Id. (citing Ex. 1003, col. 8, ll. 4–17; Ex. 2007 ¶¶ 73–74).” slip op. at 20

  Patent outcomesUS 8,225,408 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,225,408
• Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 17, 2017 · IPR2016-00157 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 not shown unpatentable under the instituted §103 grounds because the art did not teach dynamically building a parse tree while receiving the code …

  RulingsFinal written decision

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

    “The dispositive issue is whether Petitioner demonstrates, by a preponderance of the evidence, that the combination of Chandnani and Kolawa teaches or suggests “dynamically building” a parse tree “while” receiving an incoming stream of program code. Although the specific language differs in immaterial respects by reciting or omitting the structural elements of a “computer” or a “receiver,” such a limitation appears in each of independent claims 1, 9, 22, 23, 29, and 35 through a combination of recitations that include receipt of the incoming stream of programming code and “dynamically building” the parse tree “while” receiving the incoming stream. Petitioner contends that all limitations of independent claims 1, 9, 22, 23, 29, and 35 are taught by Chandnani “except for the use of a parse tree to store and analyze programming code,” and that “[i]t would have been obvious to combine Chandnani’s scanner with the parse-tree teachings of Kolawa” to meet the full set of limitations of each independent claim. Pet. 2001, 19–20. Although the parties agree that Chandnani describes lexical analysis of a “data stream” to generate a stream of tokens, they disagree whether Chandnani discloses that such lexical analysis occurs while receiving the incoming data stream, as recited in each of the independent claims. That is, the parties disagree whether Chandnani discloses a time period for generation of the token stream that overlaps a time period during which the incoming stream is received, as required by our construction of “dynamically building.”” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “At the oral hearing, we expressed surprise that a party would seek to exclude the cross-examination testimony of its own expert witness. See Tr. 49:19–52:8. Patent Owner’s counsel explained that it “provided a motion to exclude based on the way that the evidence was used in the reply.” Tr. 50:1–6. But the Board has previously explained that “neither a motion to strike nor a motion to exclude is a proper mechanism to present argument that a reply contains new arguments.” Ultratec, Inc. v. Sorenson Communications, Inc., Case IPR2013-00288, Paper 38 at 2 (PTAB May 23, 2014). Rather, an evaluation of the propriety of, and weight to be accorded to, arguments made in a reply is left to the determination of the Board, with parties afforded various opportunities to provide context for the evidence. See 37 C.F.R. §§ 42.23, 42.65. We, therefore, consider Patent Owner’s arguments as going to the weight that should be given to the cross-examination testimony and related deposition exhibit, not to the admissibility of that evidence. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). As indicated above, we have considered and weighed the testimony provided by Dr. Medvidovic and have not relied on the testimony of Dr. Bims in reaching our decision. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 25

  Patent outcomesUS 8,225,408 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,225,408
• Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 15, 2017 · IPR2016-00151 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–8, 10, and 11 were not shown unpatentable over Ross because Ross does not teach or suggest content including a call to a first function.

  RulingsFinal written decision

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

    “first function.” But the Specification uses the phrase “function call” in stating that “before the client computer invokes a function call that may potentially dynamically generate malicious code, the client computer passes the input to the function to the security computer for inspection.” Ex. 1001, 4:3842. The Specification also states that “the present invention operates by replacing original function calls with substitute function calls within the content, at a gateway computer, prior to the content being received at the client computer.” Id. at 4:5760. From such examples, we understand the Specification to use the phrase “function call” in the same sense that the claims recite in the phrase “call to a [] function.” That is, a “call” is part of the recited “content,” as a statement or instruction containing the function that, when executed, causes the function to provide a service. Thus, we find the dictionary definition of the term “function call” applicable here and indicative of the meaning of the term to a person of ordinary skill in the art.” slip op. at 7

  • Skill levelSkill level board ownOther

    “of ordinary skill that is different from Petitioner’s. Ex. 2035 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year’s experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 39. Accordingly, we determine that in this case no express articulation of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

  • Expert testimonyPatent owner expert creditedOther

    “Ross describes the combined hook script and the original script as using an “assignment,” not a “call” for invoking the first function. PO Resp. 2324 (citing Ex. 2035 ¶61). We credit this testimony. Ross illustrates in Figure 4, reproduced below, a combined script, which shows more detail regarding how Ross formulates the hook script and the included hook function. See Ex. 1003, Fig. 4. Figure 4 illustrates combined script 402 including hook script 404 and original script 302. Id. Dr. Medvidovic identifies the hook function in hook script 404 as “function HookedActiveXObject(objname).” Ex. 2035 ¶ 61. The combined script does not include a call to the function “HookedActiveXObject.” Instead, as Dr. Medvidovic explains, Ross’s hook script includes a call to the original function, not the hook function, as shown below in Patent Owner’s annotated Figure 4. The annotated Figure 4 of Ross, above, annotates Ross’s script by pointing out: (1) in brackets, that a group of instructions comprise the function “Hooked ActiveXObject(objname);” and (2) that the body of the function is the “Hook Function.” See PO Resp. 23. The annotations also show that the instruction “Req=new ActiveXObject(“Microsoft.XMLHTTP”)” is the “Call to Original Function.” Id. Dr. Medvidovic explains that the call to “new ActiveXObject(“Microsoft.XMLHTTP”) indirectly invokes “function HookedActiveXObject,” using Ross’s assignment technique. See Ex. 2035 ¶ 61. Ross’s description of the hook functions confirms this technique. For example, Ross states that “[t]he hook function corresponding to the data content original function is executed when the original function is called.” Ex. 1003, Abstract; see also ¶ 13 (“executing a hook function when a corresponding original function is called in the data content”). Ross further states that the “hook function is configured to supersede a corresponding original function.” Id. ¶¶ 1012.” slip op. at 14

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

    “the first function, the issue is not simply whether Ross executes or processes the first function first, before the second function. The issue is whether the content in Ross includes a “call to a first function,” as claimed. We find that Ross does not. Patent Owner’s explanation of Ross is consistent with Ross’s description of how the hook script is generated and processed. Ross’s hook script generator creates new functions to replace the original functions, such as the JavaScript function embedded in a web page. Id. ¶ 26. When the web page is received, the script filter injects “the JavaScript that hooks the critical functions and methods before any other HTML in a loading page.” Id. ¶ 29. To implement these “hooks,” Ross states that it replaces the original function with a new replacement function or that it substitutes an original function with a filtered function by instantiating a “hooked” process. Id. ¶¶ 33, 34. These statements of “replacement” and “substitution,” however, refer to how the hook functions are implemented when the script executes. Neither of these statements explains whether a “call” to a hook function is included in the script. That is, the replacement or substitution may result in invoking the hook function, without the content actually including a call. And this indirect invocation—not using a call—of the hooked function is what Ross tends to show. For instance, Ross describes the method of processing the content as follows: (1) generating a hook script with a hook function; (2) loading the hook script; (3) loading the data content having the original function; and (4) executing a hook function when a corresponding original function is called in the data content. Id. ¶ 38. Thus, the hook function is loaded before anything else is loaded in order to define the hook function and to effectuate the replacement. The replacement, or the method of superseding, is accomplished by the assignment that results from the use of the instruction ActiveXObject=HookedActiveXObject. As Dr. Medvidovic explains, by way of assignment of ActiveXObject (original function) to HookedActiveXObject (substitute or first function), a call to the original function indirectly invokes the substitute or first function. See Ex. 1011, 10:2013:21. This understanding is further confirmed by Ross’s description of the hook functions, as stated above, and when it refers to them as “new objects that will be used as replacements when the appropriate constructor is invoked.” Ex. 1003 ¶ 35 (emphasis added). In sum, Ross’s content does not include a “call to a first function” because the hook function is not directly called. There is no instruction or statement in the hook script that requests the service of the hook function. See also Ex. 2043 at 88:1116 (Dr. Rubin, Petitioner’s expert, testifying that “in the pseudocode in figure 4 [of Ross] there’s no explicit call to a hooked function.”). The hook function is invoked only when the call to the original function in the data content, which has been assigned via the hook script to a hook function, is executed. See id. (“These hooks are installed before any other script on the web page loads, ensuring that any script provided as a part of the data content 602, such as a web page, will call the new hooked functions.”).” slip op. at 17

  Patent outcomesUS 8,141,154 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,141,154
• Broad Ocean Technologies, LLC v. Nidec Motor CorporationNo claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 7–13 were not shown unpatentable because Beifus did not disclose the claimed torque table with alternate torque settings.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Beifus states that Figure 6 “is a chart illustrating an induction motor speed-torque curve that is programmed into a memory of an ECM.” Ex. 1007 ¶ 11. Because “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference,” the dispositive issue in this proceeding is well defined: does Figure 6 (and related disclosure) of Beifus teach “selecting a torque table associated with the adjustment factor, the torque table including alternate torque settings,” as recited in independent claim 7? See Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “reasoning of Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015). Petitioner contends that “[u]pon reading Beifus, a person of ordinary skill would immediately recognize that the ECM control circuit could handle the torque values in two ways – storing a set of torque values in a memory or by calculating the torque values ‘on the fly.’” Reply 18. Kennametal explains that “a reference can anticipate a claim even if it ‘do[es] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal at 1381 (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). Petitioner did not raise the Kennametal theory of anticipation in its Petition, and the argument based on it in the Reply is, therefore, improper. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”) (emphasis added); CBS Interactive, Inc. v. Helferich Pat. Lic., LLC, Case IPR2013-00033, slip op. at 3 (PTAB Aug. 9, 2013) (Paper 79) (“Should there be improper arguments or evidence presented with a reply, the Board, exercising its discretion, may exclude the reply and related evidence in their entirety, or alternatively, decline to consider the improper arguments and/or related evidence.”). Although Patent Owner addressed this theory in its Response (PO Resp. 21–24), Patent Owner appears to have done so only prophylactically after the theory was raised by Petitioner in redirect examination of Dr. Sidman. See PO Resp. 21 (“During Dr. Sidman’s redirect examination by [Petitioner’s] counsel, he was asked the following leading question . . . .”) (“The Board should disregard any of this new evidence and argument if [Petitioner] intends to rely on it.”). Because this is a new argument, not raised in the Petition, we do not consider it.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “the ambiguity when Figure 6 is actually described in detail in the specification.” Id. at 16. As Patent Owner asserts, “Beifus makes it clear that Figure 6 is a plot of values derived from key characteristics which are motor parameters of the emulated motor.” Id. (citing Ex. 1007 ¶ 36; Ex. 2002 ¶¶ 15–16, 31). This understanding of Beifus is confirmed by testimony of Patent Owner’s expert, Mark N. Horenstein, Ph.D. Ex. 2002 ¶¶ 15–16. Dr. Horenstein explains that a person of ordinary skill in the art would understand that the parameters stored in the ECM are key parameters used with the formula reproduced above to describe the torque-speed curve of the induction motor being emulated, namely the no-load speed, breakdown speed, and shape description number n. Id. ¶ 15. Dr. Horenstein further testifies that, “although square and diamond symbols appear along the curves in Figure 6, nowhere does Beifus describe the storing of these individual points.” Id. ¶ 16. Rather, Dr. Horenstein expresses his opinion that “a person of skill would understand these symbols to be included simply to identify which curve applies to Option 1 and which to Option 2 [i.e., different options for the induction motor breakdown speed], as indicated by the legend to the right of the plots.” Id. Petitioner challenged Dr. Horenstein’s opinion at his deposition, in part by comparing a drawing from one of Dr. Horenstein’s own patents that included a series of curves with data marked by different symbols: Q. So if a person of ordinary skill in the art looking at Figure 6 of the Beifus patent sees diamonds and squares, wouldn’t they come to an understanding that those are data points? A. I don’t think so. And the reason is that a formula is given that explains how the curves are computed. Figure 19 of [Dr. Horenstein’s patent], those are discretely measured points performed by experiment, and there really is no formula that applies to those curves per se, they’re just data points that have some scatter relative to each other and they happen to be connected by lines, but those lines do not represent a formula. Ex. 1013, 54:2–16. We disagree with Petitioner’s characterization of this testimony as explaining that “the reason a person of ordinary skill in the art would understand that the diamonds and squares appearing in Figure 19 of [Dr. Horenstein’s] patent are data points, as opposed to mere curve identifiers, is because the diamonds and squares are connected by lines.” Reply 15. Rather, Dr. Horenstein’s testimony makes clear that his opinion is grounded in Beifus’s disclosure of a formula that allows calculation of the illustrated points and that connection of data points measured by experiment with lines is incidental. Dr. Horenstein’s testimony is more persuasive than the testimony of Petitioner’s expert, Michael D. Sidman, Ph.D., on the identification of “key characteristic points” disclosed by Beifus. For example, Dr. Sidman appeared to suggest at his deposition that the entire speed-torque curve of Beifus’s Figure 6 is itself a “key characteristic point,” but qualified that position when challenged by Patent Owner. See Ex. 2001, 23:22–25:15. Nevertheless, Dr. Sidman agrees that (1) a curve can be generated from a mathematical formula and graphed (Ex. 2001, 30:8–11); (2) Beifus’s two formulas correspond to the formulas for “Option 1” and “Option 2” shown in Figure 6 (id. at 33:12–36:19); (3) operating speed, breakdown speed, no load speed, and shape-description number n are variables used in the formula disclosed by Beifus (id. at 22:23–23:10); (4) the calculation disclosed by Beifus could be performed on the fly in a motor controller (id. at 47:6–14); and (5) Beifus does not explicitly disclose that any precalculations are performed (id. at 43:1–23). These aspects of Dr. Sidman’s testimony are consistent with Patent Owner’s reading of Beifus.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We see no compelling reason to modify these constructions based on the positions of the parties as developed during the trial, and adopt them for this Decision. With respect to the construction of “torque table,” Patent Owner asserts: If the Board’s construction means that the table need not be in any particular format in the memory, but the table must still store the alternative torque values required by the claim “in a memory connected to the motor,” then Patent Owner accepts this interpretation for the purposes of this proceeding. However, if the Board’s construction including reference to “a torque curve graphically representing a set of torque values” does not require the torque values shown on the curve to be stored in memory, it is erroneous. PO Resp. 9. We agree with Patent Owner’s position, namely that “[t]he broadest reasonable interpretation of ‘table’ still must require the torque values to be stored in the table.” Id. As Patent Owner points out, “[t]he only intrinsic evidence available in this proceeding demonstrates a ‘torque table’ stores alternative torque settings.” Id. In particular, the ’092 patent consistently uses “table” to refer to discrete data that are stored in a memory, such as in the “speed tables” described as alternatives to “torque tables.” See Ex. 1001, col. 11, ll. 5–24, col. 16, ll. 63–66 (“Instead of adjusting the torque as described above, the motor controller 18 could store a plurality of different torque or speed tables and select one of the torque/speed tables based on an input provided by the torque adjustment mechanism.”). This aspect of the construction of “torque table” is reflected in its reference to including a graphical representation of “a set” of torque values in a memory connected to a motor.” slip op. at 7

  Patent outcomesUS 7,990,092 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,990,092
• Securus Technologies, Inc. v. Global Tel*link CorporationNo claims unpatentable
  PTAB · Apr 7, 2016 · IPR2015-00155 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under §103(a) over Susen and Gainsboro because Susen did not disclose steps within the construed access-attempt scope and the combination rationale was insufficient.

  RulingsFinal written decision

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

    “Petitioner does not proffer an explicit construction of any term, contending that “no construction is necessary of the ’243 patent claim terms,” but responds in its Reply to constructions proposed by Patent Owner for “public telephone network” and “access attempt to said public telephone network.” Pet. 8; Reply 4–7. 1. “public telephone network” Patent Owner contends that “public telephone network,” as recited in the phrase “access attempt to said public telephone network,” should be construed interchangeably with the term “public switched telephone network” as “a network of telephone communication links and switches, not associated with any particular person or facility, that carries telephone signals of the general public.” PO Resp. 10–13. Petitioner responds that the term “is well understood” without explicit construction and that Patent Owner’s proposed construction “unnecessarily and improperly limits the meaning” of the term. Reply 5. We agree with Petitioner that no express construction is necessary. Patent Owner’s expert testified at his deposition that a person of ordinary skill would understand what is meant by “public telephone network” and that the ’243 patent does not apply any definition of the term outside of its normally understood definition. Ex. 1009, 110:5–111:9.” slip op. at 6

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

    “We agree with Petitioner that “access attempt to said public telephone network” is not appropriately construed as a “period of time.” Nevertheless, disagreement between the parties over the scope of the fuller phrase, “during each access attempt to said public telephone network by said potential caller,” requires resolution—specifically, which of the steps that follow recitation of the “during” phrase must be performed “during each access attempt.” A grammatically rigid reading of the claim, which includes two colons and two instances of the word “and,” suggests an illogical construction in which the scope of “during each access attempt” includes the “prompting,” first “recording,” “matching,” “comparing,” “granting,” “monitoring,” and second “recording” limitations. The parties agree that such a construction is inappropriate, and we find it inconsistent with the Specification of the ’243 patent because at least the “monitoring” and second “recording” limitations logically require a connection established within the public telephone network before they can be performed. See PO Resp. 15– 16; Reply 19–20; Tr. 39:18–40:3 (Patent Owner acknowledging “sloppy draftsmanship”). Petitioner contends that, because “during each access attempt . . . ” is followed by a colon without further punctuation or indentation, “[t]he broadest reasonable interpretation of the claims would apply this limitation to only the first step following the colon: ‘prompting.’” Reply 19. Patent Owner contends instead that the “granting” limitation provides a logical conclusion to the “access attempt” so that each of the “prompting,” first “recording,” “matching,” “comparing,” and “granting” limitations are within the scope of “during each access attempt.” PO Resp. 15–16; see Tr. 38:7–20 (confirming Patent Owner’s position that the “granting” limitation is within scope). Patent Owner supports its position with testimony by Leonard J. Forys, Ph. D., who testifies as follows: Simply put, it is my opinion that an “access attempt” is defined by a starting point (e.g., the beginning of the attempt) and the point at which the “attempt” either succeeds or fails. In this case, because the claim recites an “access attempt to said public telephone network”, the “attempt” will succeed or fail (and thus conclude) when the caller is granted access to, or ultimately denied access from, the public telephone network. The period in between these two events comprises some calling procedure in which the caller may be asked to provide certain information, dial the outgoing number, authenticate himself/herself, etc. The above construction is thus supported by this common sense approach. Ex. 2004 ¶ 47. We credit this testimony, and afford it greater weight on this point than the testimony of Petitioner’s witness, Robert Akl, Ph. D., who declined at his deposition to provide meaningful details explaining how he arrived at his opinion that the scope of the recited “during each access attempt . . . ” is more limited. See Ex. 2003, 46:24–48:22. We also agree with Patent Owner that a construction that affords greater scope to “during each access attempt” is consistent with the Specification of the ’243 patent. See PO Resp. 14–15. Accordingly, we construe the scope of “during each access attempt to” slip op. at 7

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

    “The key to supporting a conclusion of unpatentability under 35 U.S.C. § 103(a) is the clear articulation of reasons why the claimed invention would have been obvious. The Supreme Court has clarified the requirements that must be met to establish a prima facie case of obviousness, emphasizing that the “analysis should be made explicit.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Although the reasoning may draw from numerous intrinsic and extrinsic sources, conclusions of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 15

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Petitioner supports its statements with testimony by Dr. Akl, but that testimony repeats the statements made in the Petition with only minimal surface changes. See Ex. 1005 ¶¶ 60, 75, 94.4 As Patent Owner contends, these statements are also made within the context of a broad characterization of the art, namely “managing institutional calls.” See PO Resp. 21–22. The cursory assertion that the prior-art references are drawn from the same 4 With respect to the third statement, addressing claim 6, Dr. Akl provides the additional conclusory assertion that “One skilled in the art would understand that combining these references would be obvious and beneficial in that it would enhance the security of the system.” Ex. 1005 ¶ 94. broadly characterized field provides insufficient analysis concerning why and how a person of ordinary skill in the art would have modified or combined the prior art in the manner asserted, and inadequately articulates “reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine elements in the way the claimed new invention does.”). Furthermore, Petitioner’s perfunctory analysis is effectively rebutted by Dr. Forys, who testifies that “Susen and Gainsboro are directed to unrelated concepts” and “directed to very different architectures that are not easily combined.” Ex. 2004 ¶¶ 53, 56. We credit the testimony of Dr. Forys more strongly than that of Dr. Akl because Dr. Forys provides explicit reasoning to support his opinion that Susen and Gainsboro are concerned with different implementation settings, rely on different architecture structures, have technical incompatibilities, and are drawn from different fields. See id. ¶¶ 52–61; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 16

  Patent outcomesUS 7,853,243 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,853,243

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.