• Uber Technologies, Inc. v. LBT IP II LLCInstituted
  PTAB · Dec 7, 2022 · IPR2022-00926 · APJ John A Hudalla · IPR · Institution

  The Board instituted IPR on claims 8–10 and 13–15 on all grounds, finding a reasonable likelihood of success on at least one challenged claim.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related positioning techniques.” Pet. 8 (citing, inter alia, Ex. 1002 ¶¶ 27–28, 33). Patent Owner disputes that “two years of work experience is a necessary requirement” for a person of ordinary skill in the art, but Patent Owner nonetheless states that this “distinction is not meaningful or determinative with respect to the issues raised in the petition.” Prelim. Resp. 18 (citing Ex. 2001 ¶¶ 34–35). Patent Owner does not otherwise offer a different definition of the level of ordinary skill in the art. We further note that Patent Owner’s declarant, Dr. Koskinen, applies Petitioner’s definition in his declaration. See Ex. 2001 ¶ 35. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art without the two instances of “at least,” which introduce ambiguity. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’289 patent and the asserted prior art.” slip op. at 8

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

    “On the preliminary record, we do not agree with Patent Owner that the “first identification code” must identify the device to be tracked. As acknowledged by Patent Owner (Prelim. Resp. 22), the Specification of the ’289 patent describes identification codes for both the first tracking device and for a user.3 See, e.g., Ex. 1001, 7:65–8:49. We also see no indication in 3 We note that the ordinal numbers (i.e., “first” and “second”) applied to “identification code” in the Specification do not necessary track the ordinal the Specification that the recited “first identification code” must be limited to these two possibilities. Thus, we decline to limit the “first identification code” in the manner suggested by Patent Owner, and we instead apply the plain and ordinary meaning to this term. We encourage the parties to address the interpretation of “first identification code” at trial to the extent they do not agree with our preliminary determination. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “In summary, all but one of the General Plastic factors either weigh against exercising discretion to deny institution or are neutral. The other factor favors discretionary denial only marginally. Ultimately, we find that the different petitioner entities and the mere three-day gap between the petitions blunt Patent Owner’s suggestion that the instant petition somehow represents an abusive or unfair serial petition. Therefore, based on the present record, we decline to exercise our discretion to deny institution of an inter partes review under § 314(a).” slip op. at 14

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Petitioner’s arguments under § 325(d) are based on its allegations of “substantial overlap relating to Robert” and the two petitioners’ “nearly identical” arguments with respect to secondary references in combination with Robert. Prelim. Resp. 12–13. Yet, even if we were to assume that Patent Owner satisfies the first stage of the Advanced Bionics framework, Patent Owner cannot satisfy the second stage because the Office has not yet adjudicated the prior art and/or arguments that Patent Owner contends are the same or substantially the same. As such, Patent Owner cannot show that the Office “erred in a manner material to the patentability of challenged claims.” For this reason, and based on the present record, we decline to exercise our discretion to deny institution of an inter partes review under § 325(d).” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,531,289
• Uber Technologies Inc. v. LBT IP II LLCInstitution denied
  PTAB · Dec 7, 2022 · IPR2022-00927 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claim 1 was obvious over either asserted combination.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). Applying that standard, and upon consideration of the arguments and evidence presented by the parties, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claim. Accordingly, we deny institution of an inter partes review of the ’355 patent.” slip op. at 2

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

    “Patent Owner that Petitioner has not shown that the combination of Altman and Bliss teaches or suggests claim element 1[B](ii), and accordingly, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 is unpatentable over the proffered combination. Claim element 1[B](ii), in relevant part, recites “providing a graphical mapping module comprising menu options . . . comprising one or more tile mapping controls as part of a wizard menu enabling [a] user to reposition graphical mapping tiles . . . from multiple mapping service providers.” Ex. 1001, 24:21–27. We agree with Patent Owner that the prior art cited by Petitioner (including not only Altman and Bliss—and by incorporation, Rasmussen—that are express members of the asserted ground, but also the tertiary Nachman and Diem references not identified by Petitioner as being part of the asserted combination) does not teach or suggest “reposition[ing] graphical mapping tiles . . . from multiple mapping service providers.” Prelim. Resp. 27–30. This deficiency is fatal to the asserted ground. improperly conflate Altman’s and Bliss’s disclosure of multiple potential storage locations for map data with the multiple providers recited in claim 1, and similarly conflate Rasmussen’s, Nachman’s, and Diem’s disclosure of the mere existence of multiple providers with enabling a user to reposition graphical mapping tiles from multiple mapping service providers, as recited in claim 1. Id. As Patent Owner points out, for example (see Prelim. Resp. 29), one of the two paragraphs of Rasmussen cited by Petitioner, taken from the “Background” section of the application, merely states, in relevant part, that Microsoft’s “TerraServer USA site” was, at the time of Rasmussen’s disclosure, using “a tiling approach for displaying satellite images” (Ex. 1016 ¶ 12), while the second cited paragraph, in an entirely separate section of the reference, describing an embodiment of Rasmussen’s own alleged invention with no indication of any connection to the Microsoft TerraServer USA site mentioned in the Background, discloses the use of “commercially available NavTech data that has been compiled by Telcontar . . . into RMF (Rich Map Format) files” that can in a subsequent step be used to make map tiles (id. ¶ 73). Petitioner cites and we find no disclosure in Rasmussen of any additional provider’s data being used along with the cited NavTech data to make map tiles, let alone “reposition[ing] graphical mapping tiles . . . from multiple mapping service providers,” as recited in claim 1. Notwithstanding Petitioner’s and Mr. Andrews’s conclusory characterizations of “using ‘multiple mapping service providers’” as a “simple implementation detail” that “would have been obvious since such third party service providers were well-known and provided the exact features that Altman seeks to include in its maps” (Pet. 33–34; Ex. 1002 would have taught or suggested the claimed method in which a user is enabled to reposition map tiles from multiple service providers, absent hindsight knowledge provided by the ’355 patent itself. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the [] patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”); Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.”).” slip op. at 31

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We also agree with Patent Owner that the portion of Mr. Andrews’s declaration regarding element 1[B](ii) is entitled to little weight, given that they merely repeat nearly verbatim the corresponding section of the Petition and are no less conclusory. See Prelim. Resp. 30–31; 37 C.F.R. § 42.65(a); 4 Busch, US 2008/0248815 A1, published Oct. 9, 2008 (Ex. 2005). non-trivial difference we find between Mr. Andrews’s declaration and the Petition is that, in paragraph 125 of the declaration, Mr. Andrews offers testimony that “different map providers have different geographic areas of emphasis, so as the user moved from place to place the system may obtain maps tile data from providers who specialize in maps for that geographic area, and this would necessitate obtaining map data from different providers for different geographic areas.” Ex. 1002 ¶ 125. The only support Mr. Andrews provides for that testimony, however, is a citation to the same disclosure in Nachman as cited in the Petition and discussed above that fails to teach or suggest mapping tiles from multiple mapping service providers. See id. (citing Ex. 1041 ¶ 76).” slip op. at 34

  • Skill levelSkill level petitioner adoptedOther

    “Pet. 8 (citing Ex. 1002 ¶ 28). Patent Owner “does not agree that two years of research, design, development, and/or testing experience specific to GPS or related location tracking techniques is a necessary requirement” to be a person of ordinary skill in the art, but contends, nonetheless, that “that distinction is not meaningful or determinative with respect to the issues raised in the Petition, and thus [is] not addressed.” Prelim. Resp. 8 (citing Ex. 2001 ¶ 38). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art without the phrase “at least,” which we find introduces ambiguity. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’355 patent and the asserted prior art.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,224,355
• Uber Technologies, Inc. v. LBT IP II LLCInstitution denied
  PTAB · Dec 7, 2022 · IPR2022-00879 · APJ Stephen E Belisle · IPR · Institution

  Institution was denied for claims 8–21 because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted references.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related positioning techniques, or the equivalent, with additional education substituting for experience and vice versa.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “explains this calculation in any further detail, or explains anything about this calculation as it relates to what standard GPS receivers do when calculating position.” Pet. 8 (citing Ex. 1002 ¶¶ 77–79). But Petitioner’s complaints here implicate whether the ’724 patent provides sufficient written description or enablement of the invention defined by claim 13, i.e., issues that are beyond the scope of this inter partes review. Petitioner then concludes, based only on the foregoing: “Therefore, the sole basis for patentability is obvious in view of well-known techniques using standard GPS receivers.” Pet. 8. Petitioner’s declarant makes these same (conclusory) statements verbatim, without more, and with no further explanation or additional citations to evidence. See Ex. 1002 ¶¶ 77–79; Prelim. Resp. 22. We give such conclusory, unsupported assertions by Petitioner’s expert little or no weight. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (noting that a fact finder is not required to “credit the unsupported assertions of an expert witness”); 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.”). Thus, as discussed above, we find Petitioner’s arguments unpersuasive.” slip op. at 19

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,728,724
• Forescout Technologies, Inc. v. Fortinet, Inc.All claims unpatentable
  PTAB · Nov 15, 2022 · IPR2021-00914 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–13, 15–18, and 20 are unpatentable as obvious over Patrick alone, Patrick and Roese, or Patrick and Gilde.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner contends “a person of ordinary skill in the art . . . at the time of the ’314 patent’s effective filing date would typically be a person with a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity, or a person with a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Pet. 4 (citing Cole Decl. ¶¶ 26–28). For our Institution Decision, we adopted this definition. Institution Dec. 7. Patent Owner states that it “does not object” to Petitoner’s definition of the person of ordinary skill. PO Resp. 22. Petitioner’s definition is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). We therefore continue to apply Petitioner’s formulation for this decision.” slip op. at 7

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

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Notwithstanding the parties’ initial position that claim construction is not required, for our Institution Decision we followed the guidance provided by the ’314 patent specification on the meaning of certain terms appearing in the patent. Institution Dec. 8–9. Thus, we construed the following terms: 1. Administrator/Network Administrator – “Administrators delegate workload to Sponsors, view reports and audit trails.” Ex. 1001, 2:2–4. “A Network Administrator has the responsibility of delegating the network management workload.” Id. at 2:11–12. 2. Sponsors – “Sponsors administer control over endpoints requiring network resources.” Id. at 2:4–5. 3. Profiles – “Profiles define the scope and limitations of a Sponsor's” slip op. at 8

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

    “We disagree with Patent Owner’s argument and find that Petitioner demonstrates a motivation to combine the teachings of Patrick and Roese. Petitioner provides detailed testimony by Dr. Cole supporting the conclusion that a person of ordinary skill would have been motivated to combine Patrick and Roese. Pet. Reply 20–22 (citing Cole Decl. ¶¶ 216–224). Dr. Cole testifies that “Patrick teaches that its system provides ‘flexible policies’ and ‘allow[s] for simple integration with third-party security products.’” Id. ¶ 216 (quoting Ex. 1003 ¶ 41) (alteration in original). He testifies that “Roese describes an exemplary network security system” that is “able to enforce certain restrictions, on an initial and continual basis, based on locations of devices.” Id. ¶ 217 (citing Ex. 1004 ¶ 33) (internal quotation marks omitted). He concludes that “Roese is . . . an example of a ‘suitable entity which can be interacted with programmatically’ as identified in Patrick.” Id. ¶ 218 (citing Ex. 1003 ¶ 41) (internal quotation marks omitted). We agree with Dr. Cole that “Patrick provides a specific motivation to combine, by emphasizing its use of ‘flexible policies’ and explaining its invention ‘allow[s] for simple integration with third-party security products.’” Id. ¶ 222 (quoting Ex. 1003 ¶ 41). Dr. Cole testifies that a person of ordinary skill “would recognize that Roese’s system is one such third party security product, as suggested by Patrick, and also provides additional benefits relating to managing devices, as described in Roese.” Id. ¶ 223. Dr. Cole’s testimony also persuades us of the existence of a reasonable expectation of success in making the combination. Id. ¶ 218 (“A [person of ordinary skill] would therefore understand, consistent with Patrick’s express suggestion, that Patrick’s policy definitions and delegations of authority could be used together with Roese’s network security system to allow for policies specifically focused on managing devices.”). Patent Owner contends that “Petitioner . . . fails to demonstrate with respect to each of the disparate features of Roese relied upon, what the predictable results would be and how it would ‘provide a means to delegate and enforce policies relating to devices’ as alleged by Petitioner.” PO Resp. 42. We do not agree that Petitioner’s showing of motivation to combine, summarized supra, is insufficient. KSR instructs us that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR Int’l Co., 550 U.S. at 421, see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find, for the reasons given, that Petitioner’s showing meets this standard and is sufficient. Petitioner, therefore, has demonstrated a motivation to combine Patrick with Roese with a reasonable expectation of success.” slip op. at 28

  • BurdenDecided for petitioner

    “We disagree with Patent Owner’s argument that the Petition is insufficiently particular as to this or any other limitation. See PO Resp. 34– 35. For example, as discussed supra, Dr. Cole’s testimony supports Petitioner’s position that Patrick discloses transferring responsibility with specific references to Patrick. Cole Decl. ¶¶ 110–116. Dr. Cole explains how Patrick teaches delegating authorization from one subject to another. Id. ¶ 111. He relies on Figure 11 of Patrick to further illustrate his opinion. Id. ¶ 112. We do not agree that this testimony is insufficiently specific to show how Patrick meets this limitation or that Petitioner has failed to carry its burden. Moreover, other examples from Dr. Cole’s testimony are presented in the Petition at pages 20–21. There is no improper incorporation by reference to Dr. Cole’s testimony, as suggested by Patent Owner. PO Resp. 35. We therefore do not agree with Patent Owner (see id.) that “the Board should reject all grounds” due to lack of specificity in Petitioner’s case.” slip op. at 23

  Patent outcomesUS 8,458,314 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,458,314
• Alarm.Com, Inc. v. Vivint, Inc.Institution denied
  PTAB · Nov 1, 2022 · IPR2022-00728 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all challenged claims under § 325(d), finding substantially the same art had been presented during prosecution and no material Office error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8.” slip op. at 17

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied

    “After considering the Petition and associated evidence, we exercise” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record at this stage, we find that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). See also 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”). Accordingly, for purposes of this decision and to the extent necessary, we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12

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

    “Petitioner does not propose constructions for any claim terms. See Pet. 6 (citing 37 C.F.R. § 42.100(b)). On this record, we determine that no terms or phrases in the claims require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  Claim constructionDiscretionary denial
  Patents in suitUS 9,349,262
• Ringcentral, Inc. v. Estech Systems IP, LLCAll claims unpatentable
  PTAB · Oct 4, 2022 · IPR2021-00573 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–4, 6–15, and 17–31 are unpatentable as obvious over Itoh alone, Itoh with Turnbull, Itoh with Ladd, or Itoh with Turnbull and Ladd.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “6 Turnbull et al., US 5,590,189, issued Dec. 31, 1996 (Ex. 1005). 7 Ladd et al., US 5,117,451, issued May 26, 1992 (Ex. 1006). 8 Citing the testimony of Dr. Houh, Petitioner proposes that a person of ordinary skill in the art with respect to the technology described in the ’349 patent in the 1997 timeframe “would have a working understanding of telephone devices, switched telephone networks, PBX telephone systems, and voicemail systems” and “would have had at least a four-year degree in electrical engineering, telecommunication engineering, or a related field and two years of relevant experience in developing or implementing switched telephone systems and/or PBX systems.” Pet. 14 (citing Ex. 1003 ¶¶ 16–” slip op. at 6

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

    “for the user to access the calling list,” as recited in claim 31, and the term “indexing,” as recited in claim 20. Pet. 14–17. Petitioner contends that the first phrase is a means-plus-function limitation subject to construction under 35 U.S.C. § 112 ¶ 6, where the function is “for the user to access the calling list,” and for which the only corresponding structure in the ’349 patent is a “key.” Pet. 15–16 (citing Ex. 1001, 9:49–51 (referring to a “calling list key”), Fig. 2A; Ex. 1003 ¶¶ 56–57). With regard to the term “indexing,” Petitioner contends that, whereas claim 20 recites “‘circuitry for indexing . . . caller ID information in [a] calling list,’ . . . the ’349 patent does not specify how the caller ID is indexed.” Id. at 16. According to Petitioner, “[t]he only disclosure in the ’349 patent that may relate to indexing is an example that the numbers can be stored in an alphabetic order of the calling party’s identity.” Id. (citing Ex. 1001, 9:40–42). Nonetheless, Petitioner contends, the term “indexing” has a well-understood meaning in the art, specifically, “to create and use a list that contains reference information (e.g., a number) pointing to each entry in the list.” Id. at 16–17 (citing Ex. 1003 ¶¶ 57–58).” slip op. at 8

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

    “for the user to access the calling list,” as recited in claim 31, and the term “indexing,” as recited in claim 20. Pet. 14–17. Petitioner contends that the first phrase is a means-plus-function limitation subject to construction under 35 U.S.C. § 112 ¶ 6, where the function is “for the user to access the calling list,” and for which the only corresponding structure in the ’349 patent is a “key.” Pet. 15–16 (citing Ex. 1001, 9:49–51 (referring to a “calling list key”), Fig. 2A; Ex. 1003 ¶¶ 56–57). With regard to the term “indexing,” Petitioner contends that, whereas claim 20 recites “‘circuitry for indexing . . . caller ID information in [a] calling list,’ . . . the ’349 patent does not specify how the caller ID is indexed.” Id. at 16. According to Petitioner, “[t]he only disclosure in the ’349 patent that may relate to indexing is an example that the numbers can be stored in an alphabetic order of the calling party’s identity.” Id. (citing Ex. 1001, 9:40–42). Nonetheless, Petitioner contends, the term “indexing” has a well-understood meaning in the art, specifically, “to create and use a list that contains reference information (e.g., a number) pointing to each entry in the list.” Id. at 16–17 (citing Ex. 1003 ¶¶ 57–58).” slip op. at 8

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

    “As stated above, we construe claim terms only to the extent necessary to resolve the issues in dispute (see supra § III.B.1 (citing Nidec Motor, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803)), and we agree with Petitioner that these additional terms do not require construction to resolve the issues before us.” slip op. at 10

  Patent outcomesUS 6,067,349 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,067,349
• Ringcentral, Inc. v. Estech Systems IP, LLCAll claims unpatentable
  PTAB · Oct 3, 2022 · IPR2021-00574 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–12 and 17–19 are unpatentable as obvious over Chang and Byrne, or Chang, Byrne, and Imielinski for claim 6.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We credit Petitioner’s definition as it is consistent with the prior art and patent specification before us and is supported by credible expert testimony, but without the qualifier “at least.”4 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). We therefore adopt Petitioner’s proposal. 4 Including “at least” suggests a broader level of ordinary skill than that expressly stated by Petitioner. This change, however, does not affect the outcome of our analysis.” slip op. at 7

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

    “Patent Owner did not provide a construction of these terms, and stated that it “accepts Petitioner’s proposed claim constructions.” Prelim. Resp. 11. We, therefore, adopted Petitioner’s construction of IP telephone for our Institution Decision, finding that it is consistent with the patent specification and other evidence of record. Institution Dec. 17. Patent Owner’s Response states that “for the purposes of this IPR, Patent Owner accepts Petitioner’s proposed claim constructions.” PO Resp. 5. For the reasons given in our Institution Decision, we maintain our construction of IP Telephony as “any apparatus, device, system, or computer that can communicate multimedia traffic using IP telephony technology.”” slip op. at 9

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

    “2. workstation Although neither party asked us to construe “workstation,” in view of Patent Owner’s arguments, for the purposes of our Institution Decision, we adopted the definition from the ’298 patent: “Herein, the term ‘workstation’ can refer to any network device that can either receive data from a network, transmit data to a network, or both.” Institution Dec. 17–18 (citing Ex. 1001, 2:60–62). We noted that the term “workstation” is discussed further in the ’298 patent specification in relation to IP telephones: “[A]n IP telephone is not 5 Unless otherwise specified, citations to exhibits refer to the page numbers assigned by the parties, and not the original page numbers. limited to the configurations described herein. For example, all of the functionality of the present invention can be implemented in a workstation.” Id. at 18 (citing Ex. 1001, 3:15–17). For the purposes of our Institution Decision, we adopted this statement from the ’298 patent describing the relationship between IP telephones and workstations. Id. For the reasons given in our Institution Decision, we maintain this construction of “workstation,” including the statement that the functionality of an IP telephone can be implemented with a workstation.” slip op. at 9

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

    “We find Dr. Houh’s testimony consistent with the prior art cited and credible and Patent Owner’s arguments to the contrary unavailing, as they are predicated on a misunderstanding of Chang’s teachings. For example, as Petitioner points out, Patent Owner’s “reduced bandwidth” argument glosses over the fact that Chang already teaches a directory that is physically stored in a distributed fashion and requires exchanging messages. Pet. Reply 11. We, therefore, find that Petitioner demonstrates that Chang and Byrne meet the limitations of claim elements 1[g] and 1[h], and that Petitioner has demonstrated that a person of ordinary skill would have combined the teachings of those references as described by Petitioner.” slip op. at 29

  Patent outcomesUS 8,391,298 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,391,298
• ADT LLC v. Vivint, Inc.Institution denied
  PTAB · Aug 22, 2022 · IPR2022-00612 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all challenged claims under § 325(d), finding substantially the same art had been considered and no material examiner error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Because (1) Saylor ’265 was made of record by the examiner and contains essentially the same disclosure as Saylor, (2) we find that the disclosures of Gregory relied upon by Petitioner are duplicative of Kellen and Thomson evaluated and distinguished during examination, and (3) Petitioner extensively relies on Saylor and Gregory in each of the asserted grounds of unpatentability, we determine that the Petition presents the same or substantially the same prior art that was previously presented to” slip op. at 22

  • Skill levelSkill level petitioner adoptedOther

    “the time of the alleged invention would have had at least a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience), and at least two years of professional experience in remote monitoring and control systems, Internet of Things (‘IoT’), home security systems, building automation systems, machine-to-machine (‘M2M’) communications, or other similarly relevant industry experience.” Pet. 6 (citing Ex. 1009 ¶ 25). Patent Owner does not provide its own assessment regarding the level of skill in the art, or otherwise dispute Petitioner’s assertion. See Prelim. Resp. Based on our review of the record at this stage, we find that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). See also 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”). we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11

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

    “Neither party proposes specific claim constructions for any terms. Pet. 5; see Prelim. Resp. On this record, we determine that no terms or phrases in the claims require express construction. 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 12

  Claim constructionDiscretionary denial
  Patents in suitUS 9,349,262
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsAll claims unpatentable
  PTAB · Aug 15, 2022 · IPR2021-00741 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–5 are unpatentable: claims 1, 2, 4, and 5 are anticipated by Yoon, and claim 3 is obvious over Yoon and Naka; substitute claims 6, 7, 9, and 10 are allowed, but claim 8 …

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner

    “We decline to adopt Patent Owner’s construction adding “spanning multiple modulation symbols” to the claim limitation “ones of the plurality of coded bits” because it is improper to read an extraneous limitation into the claim from the specification. See E.I. du Pont de Nemours, 849 F.2d at 1433. An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” Id. Patent Owner acknowledges that “the ’326 Patent discloses multiple variations of implementing a circular shift,” including inter-symbol circular shifts and intra-symbol circular shifts. See PO Sur-reply 6. Thus, we are not persuaded “spanning multiple modulation symbols” is necessary based on Patent Owner’s arguments and Dr. Vojcic’s testimony that the claimed circular shift is limited to the inter-symbol circular shift and excludes an intra-symbol shift. Patent Owner’s arguments rest on Dr. Vojcic’s unsupported testimony regarding “key aspects,” certain advantages of reordering significant and non-significant bits between consecutive transmissions, and “[a] key characteristic.” See, e.g., Ex. 2001 ¶¶ 48, 62. Dr. Vojcic cites column 7, lines 31 through 52 and reproduces Figures 4A and 4B of the ’326 Patent to support his testimony. See Ex. 2001 ¶¶ 48, 62. These cited disclosures of the ’326 Patent are silent regarding forward error correction decoding, coding diversity, and channel attenuation, and further are silent regarding any relationship to inter-symbol circular shifts alone compared to intra-symbol circular shifts or a combination of intra-symbol circular shifts and inter-symbol circular shifts. Accordingly, Patent Owner does not present a sufficient underlying factual basis to support Dr. Vojcic’s testimony that: (1) a person of ordinary skill in the art “would [] understand that reordering of significant and non-significant bits between consecutive transmissions would provide channel coding, i.e., forward error correction coding, diversity in that bits/symbols that experienced bad channel conditions in one transmission due to reordering in consecutive transmission, may experience good channel conditions in the subsequent transmission/retransmission,” (Ex. 2001 ¶ 48); and (2) “[a] key characteristic of this invention is the ability to take advantage of varying channel attenuation by different modulation symbols,” (Ex. 2001 ¶ 62). We give little weight to Dr. Vojcic’s aforementioned testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also do not credit Patent Owner’s unsupported attorney arguments that: (1) advantages of the ’326 Patent cannot be realized by intra-symbol shifts (see PO Resp. 19 (citing Ex. 2001 ¶ 62), 21 (citing Ex. 2001 ¶ 62), 23 (citing Ex. 2001 ¶ 62); PO Sur-reply 2 (citing Ex. 2001 ¶ 62)); (2) the claimed circular shift of one of the plurality of coded bits cannot be realized within only a single symbol (see PO Resp. 19, 21; PO Sur-reply 2); (3) “the implicit but necessary requirement that the plurality of coded bits span multiple modulation symbols is clearly obvious to a [person of ordinary skill in the art] in all aspects of the invention” (PO Sur-reply 4 (citing Ex. 2001 ¶ 62)); and (4) “a person of skill in the art would understand that the invention cannot be implemented within a single symbol, i.e., the plurality of coded bits necessarily spans multiple symbols” (PO Sur-reply 7 (citing Ex. 2001 ¶ 62)). Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence).” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts: As of 2008, a person of ordinary skill in the art (“POSA”) in the field of the ’326 patent would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent. Pet. 26 (citing Ex. 1002 ¶¶ 55–57). Patent Owner offers a slightly different description, as follows: At the relevant time, a person of ordinary skill in the art in the technical field of the ’326 patent would have had at least a master’s degree in Computer Engineering or Electrical Engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including error correction control and modulation. PO Resp. 14 (citing Ex. 2001 ¶ 17). We adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’326 Patent Specification and the asserted prior art, but our conclusions would be the same under Petitioner’s definition.” slip op. at 19

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

    “We do not agree with Patent Owner’s arguments because the arguments are not commensurate in scope with the claim limitations. Contrary to Patent Owner’s arguments, claims 1 and 4 do not recite or require performing a circular shift for each and every retransmission, as suggested by Patent Owner. Claims 1 and 4 recite “performing a circular shift,” which may mean performing one or more circular shifts. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). (“[A]n indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”). Thus, to meet the limitations of the claim, Yoon need only disclose performing one circular shift, with a variable length related to a modulation order and a number of transmissions. We also do not agree with Patent Owner’s arguments that Yoon does not disclose performing a circular shift on the basis that Yoon discloses a predetermined rearrangement pattern. Claims 1 and 4 do not preclude the use of a “predetermined arrangement pattern” for “performing a circular shift.” Patent Owner’s arguments also overlook Yoon’s explicit disclosures, relied on by Petitioner (see Pet. 30–45) of performing a “2-bit right rotation” for a first retransmission, and a “4-bit right rotation” for a second retransmission for the 64QAM scheme (modulation order 6) of Figure 10, and performing a “1-bit right rotation” for a first retransmission, and a “2-bit right rotation” for a second retransmission 8PSK scheme (modulation order 3) of Figure 11. See Ex. 1010 ¶¶ 104–105, 111–113, Figs. 10–11. Notwithstanding Petitioner’s assertions addressing Yoon’s disclosures of a 1-bit-circular shift within each of the H and L parts of a modulation symbol and compound circular shifts, Yoon’s aforementioned explicit disclosures pertaining to Figures 10 and 11 disclose “performing a circular shift, with variable length related to a modulation order and a number of transmissions, on ones of the plurality of coded bits,” in accordance with the full scope of the claim limitations.” slip op. at 37

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

    “Petitioner asserts that it would have been obvious to one of ordinary skill in the art to incorporate Naka’s techniques of generating a reordered index sequence of coded bits and allocating coded bits based on the reordered index sequence because a person of ordinary skill in the art would have understood that it was one of a finite number of ways that Yoon’s interleaver could have generated a reordered sequence of coded bits, such as directly or by using an index sequence. See Pet. 66 (citing Ex. 1010 ¶¶ 60–61; Ex. 1002 ¶ 177); id. at 68 (quoting KSR, 550 U.S. at 421; citing Ex. 1002 ¶ 175). According to Petitioner, “[u]sing a standard data structure such as [an] array . . . or lookup table to implement the reordered index sequence would have been ‘within a [person of ordinary skill in the art]’s technical grasp,’ and a [person of ordinary skill in the art] would thus have had a good reason to pursue this option.” Id. at 66–67 (citing Ex. 1015 ¶¶ 8, 10, 16, 18; Ex. 1002 ¶ 177; KSR, 550 U.S. at 421). Petitioner further contends that a person of ordinary skill in the art would have had a reasonable expectation of success in making the combination because Naka’s interleaver functioned like Yoon’s interleaver and bit rearranger. See id. at 68–69 (citing Ex. 1010 ¶¶ 60–61; Ex. 1015 ¶¶ 17–26, 55–58, Fig. 2; Ex. 1002 ¶¶ 180–181). Patent Owner does not challenge Petitioner’s assertions addressing the combined teachings of Yoon and Naka. See PO Resp. 44; PO Sur-reply 17. Based on Petitioner’s citations to Yoon, Naka, and Dr. Roy’s supporting testimony (Ex. 1002), we are persuaded Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to incorporate Naka’s techniques with Yoon’s method. See Pet. 66–67 (citing Ex. 1015 ¶¶ 8, 10, 16, 18; Ex. 1002 ¶ 177; KSR, 550 U.S. at 421).” slip op. at 43

  Patent outcomesUS 8,565,326 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,565,326
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsAll claims unpatentable
  PTAB · Aug 15, 2022 · IPR2021-00582 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–5 are unpatentable: claims 1, 2, 4, and 5 as anticipated by Yoon, and claim 3 as obvious over Yoon and Naka; amendment is granted for claims 6, 7, 9, and 10 and denied …

  RulingsFinal written decision

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

    “We decline to adopt Patent Owner’s construction adding “spanning multiple modulation symbols” to the claim limitation “ones of the plurality of coded bits” because it is improper to read an extraneous limitation into the claim from the specification. See E.I. du Pont de Nemours, 849 F.2d at 1433. An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” Id. Patent Owner acknowledges that “the ’326 Patent discloses multiple variations of implementing a circular shift,” including inter-symbol circular shifts and intra-symbol circular shifts. See PO Sur-reply 6. Thus, we are not persuaded “spanning multiple modulation symbols” is necessary based on Patent Owner’s arguments and Dr. Vojcic’s testimony that the claimed circular shift is limited to the inter-symbol circular shift and excludes an intra-symbol shift. Patent Owner’s arguments rest on Dr. Vojcic’s unsupported testimony regarding “key aspects,” certain advantages of reordering significant and non-significant bits between consecutive transmissions, and “[a] key characteristic.” See, e.g., Ex. 2001 ¶¶ 48, 62. Dr. Vojcic cites column 7, lines 31 through 52 and reproduces Figures 4A and 4B of the ’326 Patent to support his testimony. See Ex. 2001 ¶¶ 48, 62. These cited disclosures of the ’326 Patent are silent regarding forward error correction decoding, coding diversity, and channel attenuation, and further are silent regarding any relationship to inter-symbol circular shifts alone compared to intra-symbol circular shifts or a combination of intra-symbol circular shifts and inter-symbol circular shifts. Accordingly, Patent Owner does not present a sufficient underlying factual basis to support Dr. Vojcic’s testimony that: (1) a person of ordinary skill in the art “would [] understand that reordering of significant and non-significant bits between consecutive transmissions would provide channel coding, i.e., forward error correction coding, diversity in that bits/symbols that experienced bad channel conditions in one transmission due to reordering in consecutive transmission, may experience good channel conditions in the subsequent transmission/retransmission,” (Ex. 2001 ¶ 48); and (2) “[a] key characteristic of this invention is the ability to take advantage of varying channel attenuation by different modulation symbols,” (Ex. 2001 ¶ 62). We give little weight to Dr. Vojcic’s aforementioned testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also do not credit Patent Owner’s unsupported attorney arguments that: (1) advantages of the ’326 Patent cannot be realized by intra-symbol shifts (see PO Resp. 19 (citing Ex. 2001 ¶ 62), 21 (citing Ex. 2001 ¶ 62), 23 (citing Ex. 2001 ¶ 62); PO Sur-reply 2 (citing Ex. 2001 ¶ 62)); (2) the claimed circular shift of one of the plurality of coded bits cannot be realized within only a single symbol (see PO Resp. 19, 21; PO Sur-reply 2); (3) “the implicit but necessary requirement that the plurality of coded bits span multiple modulation symbols is clearly obvious to a [person of ordinary skill in the art] in all aspects of the invention” (PO Sur-reply 4 (citing Ex. 2001 ¶ 62)); and (4) “a person of skill in the art would understand that the invention cannot be implemented within a single symbol, i.e., the plurality of coded bits necessarily spans multiple symbols” (PO Sur-reply 7 (citing Ex. 2001 ¶ 62)). Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence).” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts: As of 2008, a person of ordinary skill in the art (“POSA”) in the field of the ’326 patent would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent. Pet. 26 (citing Ex. 1002 ¶¶ 55–57). Patent Owner offers a slightly different description, as follows: At the relevant time, a person of ordinary skill in the art in the technical field of the ’326 patent would have had at least a master’s degree in Computer Engineering or Electrical Engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including error correction control and modulation. PO Resp. 14 (citing Ex. 2001 ¶ 17). We adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’326 Patent Specification and the asserted prior art, but our conclusions would be the same under Petitioner’s definition.” slip op. at 19

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “at 1433. An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” Id. Patent Owner acknowledges that “the ’326 Patent discloses multiple variations of implementing a circular shift,” including inter-symbol circular shifts and intra-symbol circular shifts. See PO Sur-reply 6. Thus, we are not persuaded “spanning multiple modulation symbols” is necessary based on Patent Owner’s arguments and Dr. Vojcic’s testimony that the claimed circular shift is limited to the inter-symbol circular shift and excludes an intra-symbol shift. Patent Owner’s arguments rest on Dr. Vojcic’s unsupported testimony regarding “key aspects,” certain advantages of reordering significant and non-significant bits between consecutive transmissions, and “[a] key characteristic.” See, e.g., Ex. 2001 ¶¶ 48, 62. Dr. Vojcic cites column 7, lines 31 through 52 and reproduces Figures 4A and 4B of the ’326 Patent to support his testimony. See Ex. 2001 ¶¶ 48, 62. These cited disclosures of the ’326 Patent are silent regarding forward error correction decoding, coding diversity, and channel attenuation, and further are silent regarding any relationship to inter-symbol circular shifts alone compared to intra-symbol circular shifts or a combination of intra-symbol circular shifts and inter-symbol circular shifts. Accordingly, Patent Owner does not present a sufficient underlying factual basis to support Dr. Vojcic’s testimony that: (1) a person of ordinary skill in the art “would [] understand that reordering of significant and non-significant bits between consecutive transmissions would provide channel coding, i.e., forward error correction coding, diversity in that bits/symbols that experienced bad channel conditions in one transmission due to reordering in consecutive transmission, may experience good channel conditions in the subsequent transmission/retransmission,” (Ex. 2001 ¶ 48); and (2) “[a] key characteristic of this invention is the ability to take advantage of varying channel attenuation by different modulation symbols,” (Ex. 2001 ¶ 62). We give little weight to Dr. Vojcic’s aforementioned testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also do not credit Patent Owner’s unsupported attorney arguments that: (1) advantages of the ’326 Patent cannot be realized by intra-symbol shifts (see PO Resp. 19 (citing Ex. 2001 ¶ 62), 21 (citing Ex. 2001 ¶ 62), 23 (citing Ex. 2001 ¶ 62); PO Sur-reply 2 (citing Ex. 2001 ¶ 62)); (2) the claimed circular shift of one of the plurality of coded bits cannot be realized within only a single symbol (see PO Resp. 19, 21; PO Sur-reply 2); (3) “the implicit but necessary requirement that the plurality of coded bits span multiple modulation symbols is clearly obvious to a [person of ordinary skill in the art] in all aspects of the invention” (PO Sur-reply 4 (citing Ex. 2001 ¶ 62)); and (4) “a person of skill in the art would understand that the invention cannot be implemented within a single symbol, i.e., the plurality of coded bits necessarily spans multiple symbols” (PO Sur-reply 7 (citing Ex. 2001 ¶ 62)). Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence).” slip op. at 15

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

    “We do not agree with Patent Owner’s arguments because the arguments are not commensurate in scope with the claim limitations. Contrary to Patent Owner’s arguments, claims 1 and 4 do not recite or require performing a circular shift for each and every retransmission, as suggested by Patent Owner. Claims 1 and 4 recite “performing a circular shift,” which may mean performing one or more circular shifts. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). (“[A]n indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”). Thus, to meet the limitations of the claim, Yoon need only disclose performing one circular shift, with a variable length related to a modulation order and a number of transmissions. We also do not agree with Patent Owner’s arguments that Yoon does not disclose performing a circular shift on the basis that Yoon discloses a predetermined rearrangement pattern. Claims 1 and 4 do not preclude the use of a “predetermined arrangement pattern” for “performing a circular shift.” Patent Owner’s arguments also overlook Yoon’s explicit disclosures, relied on by Petitioner (see Pet. 30–45) of performing a “2-bit right rotation” for a first retransmission, and a “4-bit right rotation” for a second retransmission for the 64QAM scheme (modulation order 6) of Figure 10, and performing a “1-bit right rotation” for a first retransmission, and a “2-bit right rotation” for a second retransmission 8PSK scheme (modulation order 3) of Figure 11. See Ex. 1010 ¶¶ 104–105, 111–113, Figs. 10–11. Notwithstanding Petitioner’s assertions addressing Yoon’s disclosures of a 1-bit-circular shift within each of the H and L parts of a modulation symbol and compound circular shifts, Yoon’s aforementioned explicit disclosures pertaining to Figures 10 and 11 disclose “performing a circular shift, with variable length related to a modulation order and a number of transmissions, on ones of the plurality of coded bits,” in accordance with the full scope of the claim limitations. In addition, Patent Owner’s following arguments are misplaced: (1) Petitioner uses hindsight reconstruction of Yoon’s disclosures that do not sufficiently disclose the invention of the ’326 Patent to a person of ordinary skill in the art (see PO Resp. 39–40; PO Sur-reply 12–15), and (2) the claimed subject matter would not have been obvious (PO Sur-reply 12, 15). Obviousness and hindsight are not the relevant inquiries to the patentability challenge based on anticipation by Yoon. “[A] claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., 616 F.3d at 1274 Based on the entire record, we determine Petitioner shows by a preponderance of the evidence that Yoon discloses “performing a circular shift, with variable length related to a modulation order and a number of transmissions, on ones of the plurality of coded bits.” See Pet. 36–45.” slip op. at 37

  Patent outcomesUS 8,565,326 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,565,326

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.