- Unified Patents, LLC v. VL Collective IP LLCSome claims unpatentablePTAB · Dec 18, 2023 · IPR2022-01086 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable over Sonohara; claims 20 and 21 were not shown unpatentable because Sonohara’s assignment rule is based on timestamps.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s expert, Dr. Goodrich, proposes what Patent Owner characterizes as “a somewhat different level,” namely “an individual with at least a bachelor’s degree in Computer Science or related area and two years of experience developing software tools and/or computer systems for use in the area of audio or video creation, encoding, and/or distribution.” PO Resp. 13; Ex. 2007 ¶ 50. Although we agree that the respective articulations are “somewhat different,” they are generally similar, and our Decision does not depend on nuanced distinctions regarding the level of ordinary skill. Indeed, Dr. Goodrich describes his proposed articulation as “approximate,” such that “more work experience could compensate for less education or more education could compensate for less work experience.” Ex. 2007 ¶ 50. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Freedman’s testimony, we adopt it for this Decision. 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 nevertheless note that we would reach the same ultimate conclusion that claims 1, 3, 5, 9, 12, 13, and 15 (but not claims 20 and 21) have been shown to be unpatentable by a preponderance of the evidence were we to adopt Patent Owner’s proposal. See PO Resp. 13 (“this Response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill”).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“We need not resolve this dispute because we reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable, but not that claims 20 and 21 are unpatentable, even if we apply Patent Owner’s proposed construction that the preambles are limiting and the first and second data files must be different. See Reply 15 (Petitioner asserting that “there is no need to construe the preambles as the prior art meets them even if construed”); 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))). For purposes of this Decision, we accordingly treat the preambles of independent claims 1 and 9 as limiting, and with the recited “first data file” and “second data file” as distinct data files.4” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“We agree with Patent Owner’s contention that the emphasized sentence defines the term “content-related.” See PO Resp. 15–16 (Patent Owner arguing that “[t]here are thus three strong indications of lexicography: (1) ‘content-related’ is set off by quotation marks; (2) the patentee used the word ‘is’ to describe the term ‘content-related’; and (3) the patentee states what ‘content-related’ is ‘understood to mean.’” Nor does Petitioner disagree that the sentence is definitional. See Tr. 8:15–16 (referring to the “term content-related as it’s defined in the specification”). Indeed, in the Starz litigation, the district court also treated the sentence as definitional, a fact that we find significant as a matter of comity. See Ex. 1018, 111:24–112:1 (district court judge stating at Markman hearing, “I’m going to adopt . . . the express definition provided in the specification”). But like the district court, we discern insufficient reason to adopt the additional gloss that Patent Owner seeks to apply to the definition of “content-related.” That is, Patent Owner proposes that we additionally construe the phrase “syntactical meaning” within the definitional statement to arrive at Patent Owner’s proposed construction. PO Resp. 16–20. According to Patent Owner, “[t]he specification makes clear, through its use of consistent and repeated examples, that ‘syntactical meaning’ requires a specific relationship between the data segments within a data file: succeeding data segments within a data file must be ordered so as to present the content in its intended sequence when rendered.” Id. at 17 (citing VirnetX Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1317–19 (Fed. Cir. 2014); Alloc, Inc. v. ITC, 342 F.3d 1361, 1368–71 (Fed. Cir. 2003)). Patent Owner adds that the claims, the context provided by the problems solved by the ’794 patent, and the cross-examination testimony of Petitioner’s expert, Dr. Freedman, all support this additional aspect of Patent Owner’s proposed construction. Id. at 18–20. Relying on additional direct testimony by Dr. Freedman, Petitioner counters this position as “improperly import[ing] limitations from the specification that are not required by the claims” and “render[ing] other portions of claim 1 superfluous.” Reply 3 (citing Ex. 1016 ¶ 22); see Tr. 10:18–20 (Petitioner explaining at oral hearing that “the syntax information is simply just identification information which is used to find out what the order of the files is. But the identification information does not by itself indicate the order. It’s just an identifier.”). We agree with Petitioner that it would be imprudent to adopt Patent Owner’s additional gloss because, “[w]hile claims must be construed in light of the specification, . . . limitations from the specification are not to be read into the claims, . . . for ‘[i]t is the claims that measure the invention.’” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir. 2004) (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (other citations omitted). It is apparent that the Applicant for the ’794 patent understood how to define terminology recited in the claims, but chose to limit its definition of “content-related” in terms of the broader phrase “syntactical meaning” rather than through narrower specific reference to presentation order. In addition, claims 1 and 9 already specify “sequentially outputting the first and second data segments according to their chronological sequence,” which supports Petitioner’s observation that requiring an additional sequential order to “content-related . . . data segments” renders other portions of claim 1 superfluous. See Reply 3. We accordingly adopt the definitional construction provided by the” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed Cir. 2003) (citing Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)) (emphasis added). As such, a statement during prosecution qualifies as a disavowal of claim scope only if it is “so clear as to show reasonable clarity and deliberateness” and “so unmistakable as to be unambiguous evidence of disclaimer.” Id. at 1325 (citations omitted). “Consequently, for prosecution disclaimer to attach, [Federal Circuit] precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). And “[s]tatements by the patent owner are not considered in a vacuum; rather, the skilled artisan would look at the record as a whole in assessing claim scope.” Galderma Lab’s v. Amneal Pharma, 806 F. App’x 1007, 1010 (Fed. Cir. 2022) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 867 (Fed. Cir. 1993) (“The prosecution history must be examined as a whole in determining whether estoppel applies.”)). We have reviewed the prosecution history, which we summarize supra § I.A.3., and we have particularly reviewed those portions highlighted by Patent Owner. See PO Resp. 32–40. We reach the same conclusion as the district court in the Starz litigation that the standard for attachment of prosecution disclaimer is not met. See Ex. 1018, 109:15–22 (district court stating at Markman hearing, “I’ve also carefully reviewed the portions of the prosecution history relied on by VideoLabs, including the patentee’s arguments regarding the Shin and Rosenau references, and I’m up [sic: not6] persuaded there was a clear and unmistakable disclaimer of all assignment rules that perform assignments by using exact timing information”). slip op. at 20
Patent outcomesUS 8,605,794 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,605,794 - Google LLC v. Personalized Media Communications, LLCSome claims unpatentablePTAB · Sep 27, 2021 · IPR2020-00725 · APJ Georgianna W Braden · IPR · Final written decision
Claim 4 is unpatentable as obvious over Torpey and Cox ’645; claims 5–10 were not shown unpatentable over Cox ’645 and Cox ’404.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“transmission station’ is defined in” the ’560 patent. Ex. 1013, 29; see Ex. 2003, 3, 6. We agree that the ’560 patent defines the term “intermediate transmission station.” See Ex. 1001, 21:67–22:1. In particular, the patent states: “stations that receive and retransmit broadcast transmissions are called ‘intermediate transmission stations.’” Ex. 1001, 21:67–22:1; see Ex. 1013, 29; Ex. 2003, 3, 6. The ’560 patent further describes the “intermediate transmission station” as retransmitting programming both “over-the-air (hereinafter, ‘broadcast’) or over hard-wire (hereinafter, ‘cablecast’).” Ex. 1001, 7:16–22; see also 44:28–31 (“transmitting said transmissions via conventional broadcast or cablecast means”); 169:45–54. Consistent with the ’560 patent’s definition and both district courts, we construe “intermediate transmission station” to mean “station that can receive and retransmit broadcast transmissions.” See Ex. 1001, 21:48–50; Ex. 1013, 28–31, 88; Ex. 2003, 5–15. This definition does not exclude a station that can receive and retransmit hard-wire or cablecast transmission. See Ex. 1001, 7:16–22; see also id. at 44:28–31 (“transmitting said transmissions via conventional broadcast or cablecast means”), 169:45–54.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Other Terms Because the express construction of other claim terms are not needed to resolve any dispute in this proceeding at this time, we do not construe any of the other claim limitations. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1005, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person having ordinary skill in the art at the time of the alleged invention would have had “at least a bachelor’s degree (or equivalent) in digital electronics, electrical engineering, computer engineering or a related technical degree, and two to five years of post-degree experience in a similar field.” PO Resp. 5. Dr. Weaver’s testimony supports Patent Owner’s position. See Ex. 2001 ¶ 35. Based on our review of the ’560 patent, the types of problems and solutions described in the ’560 patent and cited prior art, and the testimony of both Mr. Lipoff (see Ex. 1003 ¶ 33) and Dr. Weaver (see Ex. 2001 ¶ 35), we find that a person of ordinary skill in the art at the time of the claimed invention would have had at least a bachelor’s degree in electrical engineering or computer engineering (or equivalent), and at least two years of work experience in the field of television broadcasting systems, computer systems or television electronics, and/or multimedia or real-time video systems. We agree with Petitioner’s contention that “[w]ith more education, for example, postgraduate degrees and/or study, less experience is needed to attain an ordinary level of skill in the art. Similarly, more experience can substitute for formal education.” We note that our analysis would be the same under either party’s proposed level of skill in the art. C.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Cox ’404’s column address code constitutes a record or that it is stored. See, e.g., Tr. 30:25–31:14. Additionally, we agree with Patent Owner that Petitioner fails to demonstrate that the column address code is altered “to indicate at least one of reception and storage of said selected a portion of units of programming,” as required by the challenged claim. Contrary to Petitioner’s argument that Cox ’404 discloses that “generated column address code which is incremented in response to each character Byte of the acquired data row” (Pet. 62–64; Tr. 17:24–20:13), Cox ’404 explicitly states the following: Each character Byte of a data row acquired by data acquisition circuit 44 is coupled to page memory 46 by a data line 56 and written into a corresponding memory location thereof in accordance with the address signals developed on an address bus 58, the address signals being formed by the row address code transmitted with the data row and an internally generated column address code which is incremented in response to each character Byte of the acquired data row. In other words, the row address code transmitted with each data row will cause the character Bytes of that row to be stored in the corresponding memory address row of page memory 46 while a clock internal of data acquisition circuit 44 will increment the column address for each character Byte of the row. Ex. 1007, 6:9–23 (emphasis added). We understand Cox ’404 to disclose that its incrementing step occurs in data acquisition circuit 44 of Figure 3, while the first character is being stored in page memory 46. Id. at 6:13–16, Fig. 3. But we do not find where incrementing is an indication of storage or that the purported record is maintained to indicate reception of a unit of programming. Based on the entire disclosure of Cox ’404, the incrementing may happen before, after, or at exactly the same time as the storage of the first character. Cox ’404 does not disclose any feedback mechanism for page memory 46 to indicate storage to data acquisition circuit 44, and therefore, the incrementing does not appear to be an indication of storage. See id. at 6:19–23, Fig. 3. Accordingly, based on the entirety of the trial record before us, we find Petitioner has failed to demonstrate by a preponderance of the evidence that the combination of Cox ’645 and Cox ’404 teaches more than one operating record or that the alleged operating records are altered to indicate reception and storage of a selected unit of programming as recited by the challenged claim.” slip op. at 54
Patent outcomesUS 9,674,560 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,674,560 - Google LLC v. Personalized Media Communications, LLCSome claims unpatentablePTAB · Sep 27, 2021 · IPR2020-00721 · APJ Steven M Amundson · IPR · Final written decision
Claims 7, 8, and 10 are unpatentable under § 103(a) over each asserted combination; claim 9 was not shown unpatentable because Lovett and Cox do not teach its switch connections.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner’s description of an ordinarily skilled artisan requires slightly less experience (“two to five years”) than Petitioner’s description (“at least three years”). See Pet. 12; Resp. 4. We adopt Patent Owner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’920 patent as well as the asserted prior art. Moreover, if the prior art renders the claimed subject matter obvious to a person with less experience and less knowledge, then the prior art renders the claimed subject matter obvious to a person with more experience and more knowledge. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). We note that our analysis would not change if we adopted Petitioner’s description of an ordinarily skilled artisan. Consistent with this, Dr. Weaver testifies that “the analysis would be the same” under either Petitioner’s description of an ordinarily skilled artisan or Patent Owner’s description. Ex. 2001 ¶ 37; see id. ¶¶ 34, 36.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“term ‘intermediate transmission station’ is defined in” the ’920 patent. Ex. 1013, 29; see Ex. 2003, 3, 6. We agree that the ’920 patent defines the term “intermediate transmission station.” See Ex. 1001, 21:48–50. In particular, the patent states: “stations that receive and retransmit broadcast transmissions are called ‘intermediate transmission stations.’” Ex. 1001, 21:48–50; see Ex. 1013, 29; Ex. 2003, 3, 6. Consistent with the ’920 patent’s definition and both district courts, we construe “intermediate transmission station” to mean “station that can receive and retransmit broadcast transmissions.” See Ex. 1001, 21:48–50; Ex. 1013, 28–31, 88; Ex. 2003, 5–15.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the claim language and the ’920 patent’s specification, we agree with Patent Owner that “operatively connected [to]” means “connected to enable data communication operations with.” See Ex. 1001, 9:1–5, 167:61–168:36, 169:26–43, 169:61–170:36, 171:32–172:55, 173:57–62, 183:24–39, 289:1–14, Figs. 6A–6B; Paper 28, 1–3. We also agree with Patent Owner that Petitioner’s proposed constructions focus on switch operation, i.e., “permits the switch to selectively,” instead of external connections to the switch. See Paper 27, 1; Paper 30, 1.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We agree with Petitioner that an ordinarily skilled artisan would have had sound reasons, i.e., the reasons articulated by Dr. Neuhauser, to combine the teachings of Lovett and Cox as Petitioner proposes. See Ex. 1003 ¶¶ 65–67, 78, 86–87. For example, a “person of skill would have been motivated” to use Cox’s “known method” for distributing teletext content with “the teletext content distributed by Lovett” to achieve the advantages of Cox’s teletext communication system. Id. ¶ 67. We also agree with Petitioner that an ordinarily skilled artisan would have had a reasonable expectation of success. Id. ¶ 66. (j)” slip op. at 56
Patent outcomesUS 7,865,920 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,865,920 - Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentablePTAB · Dec 7, 2016 · PGR2015-00013 · APJ Kevin F Turner · PGR · Final written decision
Claims 1–4, 7–19 were held unpatentable as obvious; claims 5, 6, and 20 were not shown unpatentable over Reinhold, Walters, and Dudovich.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10; Dec. 8. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between the American Securities and Petitioner were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9.” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s motion to exclude Exhibits 1013, 1014 and 1015 is denied. As Patent Owner points out, 37 C.F.R. § 42.6(a)(3) indicates that “[a]rguments must not be incorporated by reference from one document into another document.” We are not persuaded, however, that Petitioner is attempting to incorporate by reference; Exhibits 1013, 1014, and 1015 are cited by Petitioner’s declarant, not incorporated by reference. If Petitioner’s declarant or the cited exhibits contained arguments not made in a paper, we would likely ignore such arguments. In this instance, Petitioner is making of record the documents cited, which is generally laudatory, so that a reader can determine for herself that cited facts are supported. We are not persuaded that the cited exhibits are “irrelevant.” Additionally, we find no support for Patent Owner’s contention that exhibits must be cited by “papers,” and not other exhibits. Many exhibits, such as declarations, prior art references, and deposition transcripts, cite to other exhibits in normal trial practice. Accordingly, Patent Owner’s Motion to Exclude Exhibits 1013, 1014, and 1015 is denied.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s declarant, Mr. Frank Koperda, testifies that one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least 2–5 years of academic or industry experience in the telecommunications industry. Ex. 1002 ¶ 19; see Pet. 5 (asserting level of ordinary skill in the art). Patent Owner’s declarant, Mr. Stuart J. Lipoff, largely adopts Mr. Koperda’s level of ordinary skill in the art, adding that such artisans should have experience “in the generation of billing statements or cost accounting reports.” Ex. 2012 ¶ 33. We are not persuaded that such billing or accounting experience is necessary “to fully understand the ’280 patent disclosure.” Id. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1003, 1007, 1006, 1008), we also adopt the level of ordinary skill in the art employed by Petitioner’s declarant, where Patent Owner’s declarant acknowledges that his analysis would be the same under Mr. Koperda’s level of ordinary skill in the art. Ex. 2012 ¶ 34.” slip op. at 23
Patent outcomesUS 8,855,280 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,855,280 - Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentablePTAB · Dec 2, 2015 · IPR2014-00824 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1, 3, 4, 6, 7, 10, 19, and 20 are unpatentable over Spadaro and Hodge; claim 13 is unpatentable over Spadaro, Hodge, and Cree. Claims 2, 5, 8, 9, 11, 12, and 14–18 were …
RulingsFinal written decision- BurdenDecided for patent owner
“the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See id. (explaining petitioner “had the burden of 11 Dynamic Drinkware issued after the time of the trial hearing and post-hearing briefing. 11 persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 19–35.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“production under § 103(c)(1), Petitioner contends it carried its burden of production to show that the ’167 patent (grandparent) sufficiently would have conveyed to one of ordinary skill in the art that the Patent Owner had possession of the claimed subject matter and, therefore, the ’260 patent is entitled to the benefit of the filing date of the ’167 patent. Reply 7. As Petitioner recognizes (Reply 6), a claim in an application is entitled, under 35 U.S.C. § 120, to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims in the later application, as required by 35 U.S.C. § 112. 35 U.S.C. § 120; In re Chu, 66 F.3d 292 (Fed. Cir. 1995). Petitioner’s argument consists of a single paragraph identifying claim numbers and locations where the ’167 patent purportedly describes the subject matter of most, but not all, of the claims at issue and a citation to a single paragraph in its declarant’s supplemental declaration supporting Petitioner’s Reply. Reply 7 (listing claims 2, 8, 9, 11, and 14–18, but not listing claims 5 and 12; citing Ex. 1020 ¶ 16).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The ’260 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to 26 receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8. Therefore, in light of the plain language of the claim, the Specification of the ’260 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 26
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. We consider the level of ordinary skill in the art to be 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 at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The prior art references, like the ’260 patent, relate to telephone communication systems. See Ex. 1001, 1:60–62 (indicating the technical field relates to inmate management and call processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field of the invention relates to telephone communication systems). In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony15 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry 15 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2112 (6th ed. 2003) (defining telephony as “[t]he transmission of speech to a distant point by means of electric signals”) (Ex. 3001). 30 experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of” slip op. at 30
Patent outcomesUS 8,340,260 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,340,260
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.