- Microsoft Corporation And Microsoft Mobile, Inc. v. Global Touch Solutions, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01928 · APJ Justin Busch · IPR · Final written decision
Claims 1, 3, and 20 are unpatentable as obvious over Jahagirdar and Schultz because their combination would have been a predictable substitution of familiar touch sensors for keys.
RulingsFinal written decision- BurdenUnpatentable
“III. CONCLUSION Based on the evidence and arguments, Petitioner has demonstrated, by a preponderance of the evidence, that claims 1, 3, and 20 of the ’494 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Jahagirdar and Schultz. IV. ORDER Accordingly, it is: ORDERED that claims 1, 3, and 20 of the ’494 patent have been shown to be unpatentable; and” slip op. at 19
- Skill levelOther
“touch sensors were not limited by size or arrangement, and a person of ordinary skill could have taken the Schultz sensors and put them into touch sensors the size of the buttons on Jahagirdar. Ex. 1017, 138:17–21, 140:2– 13. Additionally, as Dr. Morley acknowledges, the claims of the ’494 patent contain no limitations as to the physical form, internal architecture, or arrangement of the touch sensors. Id. at 172:12–173:10. Patent Owner presents no argument that the proposed combination would have been beyond the capabilities or knowledge of a person having ordinary skill in the art. As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results.”). Patent Owner does not point us to objective evidence of nonobviousness to overcome the textbook case of obviousness here.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Notwithstanding Patent Owner’s position that the proposed combination would increase accidental actuations when grabbing or holding Jahagirdar’s mobile station, Petitioner points to Dr. Morley’s testimony that touch sensors would alleviate accidental actuation by inanimate objects (e.g., “clothes, objects in a bag, [and] surfaces of furniture”). Pet. Reply 2 (citing Ex. 1017, 157:20–158:23; Ex. 2006 ¶ 63). Accordingly, Petitioner argues a person having ordinary skill in the art looking to reduce inadvertent actuation by inanimate objects would be motivated to incorporate Schultz’s touch sensor. Id. at 2–3 (citing Ex. 1023 ¶¶ 4–5). Moreover, Petitioner’s unrebutted evidence in the record demonstrates Schultz’s touch sensor could have been integrated into Jahagirdar’s keys 144 in multiple ways, depending upon what might have been convenient or desirable. Id. at 3–4 (citing Ex. 1015 ¶ 75); Ex. 1023 ¶ 5. For example, a person of ordinary skill would have been readily able to relocate those touch sensors to different locations, or “one of skill could have easily programmed Jahagirdar’s controller such that touch sensor inputs were only recognized at appropriate times for example, depending on whether the mobile station 102 was opened or closed.” Ex. 1015 ¶ 75. In such a way, inadvertent actuation of the touch sensors would be minimized or eliminated.” slip op. at 13
Patent outcomesUS 7,265,494 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,265,494 - Toshiba America Information Systems, Inc. / Apple Inc. v. Global Touch Solutions, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01616 · APJ Justin Busch · IPR · Final written decision
Claims 1–3, 19, and 20 are unpatentable as obvious over Layman and Beard, with Rathmann additionally for claim 19 and APA additionally for claim 20.
RulingsFinal written decision- BurdenDecided for petitioner
“We have reviewed the Petition, Patent Owner Response, and Petitioner’s Reply, as well as the relevant evidence discussed therein. For the reasons that follow, we determine Petitioner has shown, by a preponderance of the evidence, that the challenged claims would have been obvious in view of the asserted combined teachings of the asserted references.” slip op. at 5
- Skill levelOther
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Petitioner’s arguments, as supported by testimony from Mr. Beard, that the combination of Layman and Beard teaches or suggests the uncontested limitations recited in claim 1 as well as the additional limitations recited in dependent claims 2 and 3, and we adopt those assertions as our findings. See Pet. 35–43, 50–51. For example, Petitioner points to Layman’s power management system 28 (electronic unit) connected to an infusion pump system (product), including pump circuits 34 (load), and to power sources (both an AC power source and a battery) through an electrical circuit as meeting the preamble of claim 1. Id. at 35– 37. Petitioner argues Layman’s disclosure of processor 42 providing a control signal to turn power to pump circuits 34 on or off in response to a signal received from switch 38 meets the recited microchip that controls “the flow of power from the power source to activate the load.” Id. at 38. Petitioner contends Layman’s switch 38 is not a serial element in the power circuit because switch 38 merely sends a signal to processor 42, which controls whether the pump is powered on, and that switch 38, therefore, teaches the recited switch. Id. at 38–39. Petitioner relies on Beard for teaching a touch sensor used to activate the battery capacity display. Id. at 39–40. We find the disclosures in Rathmann and APA relied upon by Petitioner teach or suggest the additional limitations recited in claims 19 and 20, respectively, id. at 52–55, and that a person having ordinary skill in the art would have had reason to combine Rathmann’s asserted teachings as proposed, id. at 30–34. We discuss the disputed limitations of independent claim 1 and the rationale for combining the asserted teachings from Layman and Beard in more detail below.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“All of Patent Owner’s challenges to Petitioner’s rationale assume the proposed combination replaces Layman’s battery with the battery disclosed in Beard. See, e.g., PO Resp. 8 (“While the Petition suggests replacing Layman’s battery with that of Beard would be desirable . . . .”) Petitioner does not suggest such a replacement. Rather, Petitioner asserts “[a] POSITA would have been especially motivated to combine Layman with Beard’s power-saving touch switch activated display in light of Layman’s stated desire for features that extend battery life and increase the time between battery replacements.” Pet. 28 (emphasis added). Petitioner reiterated its position, asserting that Patent Owner’s arguments do “not address Petitioner’s motivation arguments,” which are no “more than an obvious substitution of elements that were well known in the prior art.” Pet. Reply 2. Petitioner merely proposes incorporating Beard’s teaching of a touch switch activated display into Layman’s system. Pet. Reply 7 (arguing “the Petition analyzed whether one of ordinary skill would have found it obvious to incorporate a touch-sensor activated display such as in Beard into Layman’s system”). As discussed above, Petitioner has presented reasons with rational underpinning as to why a person having ordinary skill in the art would look to integrate Beard’s touch sensor activated display with Layman. We find Petitioner’s arguments persuasive, and we adopt those reasons as the rationale for combining the cited teachings of Beard with the cited teachings of Layman.” slip op. at 12
Patent outcomesUS 7,265,494 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,265,494 - Cisco Systems, Inc. v. Aip Acquisition LLCAll claims unpatentablePTAB · May 18, 2016 · IPR2015-00307 · APJ Justin Busch · IPR · Final written decision
Claims 1–29, except claims 10 and 25, are unpatentable under § 103 over Weinstein and RFC1190, with Gurrie or ISI added for the dependent claims.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“recited term, Petitioner is correct that disclaimer requires a clear disavowal of that allegedly ceded scope. Purdue Pharma L.P. v. Endo Pharm. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006) (“a patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution”); cf. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir. 2008) (“Prosecution disclaimer does not apply to an ambiguous disavowal.”). At oral argument, Patent Owner acknowledged that “if you just had the deletion of the article ‘an,’ it may – may or may not leave some confusion,” but asserted the arguments submitted with the amendments “made clear . . . that either the lower case I, lower case P or the upper case I, lower case p internet protocol/Internet protocol” refer to the “Internet Protocol,” which is a part of “TCP/IP.” Tr. 32:1–18. Patent Owner further conceded that the patent applicant did not explicitly articulate that the claim terms “internet protocol” and “Internet protocol” referred to the specific protocol that was the industry standard “Internet Protocol.” Id. at 35:14–17. In response to questions about patent applicant’s statements accompanying the subject amendments that the claims comprise or include TCP/IP, which indicate a broader scope not limited to only TCP/IP, Patent Owner argues that an ordinarily skilled artisan would have looked at the specification and seen that the only protocol the specification mentions is TCP/IP. Id. at 32:22–33:6. Based on the facts and argument presented, there is not sufficient evidence to find a clear and unmistakable disavowal of claim scope. The only amendment to the claims pointed to by Patent Owner is the removal of the article “an,” which originally preceded each of the disputed phrases. Notably, the patent applicant did not elect to amend the claims to recite “the Internet Protocol.” With respect to the patent applicant’s argument in its responses to office actions, we agree with Petitioner that the phrasing appears to merely restate the language recited in the claims. We find nothing presented by Patent Owner clearly indicates the patent applicant intended to disavow any scope covered by the plain and ordinary meaning of the recited terms. Patent Owner has not pointed to any discussion by the patent applicant that “internet protocol” or “Internet protocol” was intended to be limited to one particular protocol (specifically the “Internet Protocol” that is part of TCP/IP). Accordingly, we find Patent Owner failed to demonstrate that the patent applicant disavowed any scope within the” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The extrinsic evidence of record indicates that the Internet is one example of internetworking and Internet Protocol is one specific “internet protocol.” Ex. 2009, 10; Ex. 1001, 7:34–39. Accordingly, we construe internet protocol to be “a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices on different networks.” Neither side has pointed to persuasive evidence that the patent applicant’s use of different capitalization in different claims was merely oversight or error. Therefore, because there is a meaningful and logical way to distinguish the constructions of “internet protocol” and “Internet protocol” based on the selected capitalization of each phrase, we construe “internet protocol” and “Internet protocol” differently from each other. We have already discussed our construction of “internet protocol.” Accordingly, we construe “Internet protocol” to be “a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices over the Internet.” Our constructions of both “Internet protocol” and “internet protocol” include the Internet Protocol that is part of TCP/IP and, thus, are consistent with the specification of the ’247 patent. Moreover, those constructions are the ordinary and customary meaning that a person having ordinary skill in the art would have attributed to the disputed claim terms, in part because that person would have understood that “internet protocol,” “Internet protocol,” and “the Internet Protocol” are distinct phrases of increasingly narrow scope.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“preliminary construction provided in the Decision to Institute. Tr. 36:13–17. Our construction now is the same as our preliminary construction. Accordingly, after reviewing Petitioner’s arguments and in consideration of Patent Owner’s acknowledgment that ST-II is an internet protocol, as we have construed it, we find ST-II meets both the recited “internet protocol” and “Internet protocol.” We further find that “internet protocol” and “Internet protocol,” as we have construed them, also read on Weinstein’s ST protocol. Moreover, even under Patent Owner’s proposed construction, we find Petitioner has demonstrated that the combination of Weinstein and RFC1190 teaches using the Internet Protocol of TCP/IP at least because discloses encapsulating ST-II in IP packets. Petitioner argues Weinstein discloses converting a signal from any one of a digital telephone network, an analog telephone network, and a cellular network to ST format, which is then transmitted over ARPANET and a wide-band satellite network. Id. at 22–29. Petitioner asserts that a person of ordinary skill in the art would have understood ARPANET and the wide-band satellite network to constitute a portion of the Internet. Id. at 16, 17 (citing Ex. 1008, 14–16; Ex. 1019, 57). Thus, Petitioner asserts Weinstein teaches “sending the converted transmission through . . . the Internet,” as recited in claim 1 and “a telecommunication node configured for . . . transmitting the converted transmission through the Internet,” as recited in claim 16. Id. at 16, 17, 42. Patent Owner asserts RFC1190’s disclosure of encapsulating ST-II in IP packets does not meet the recited conversion of voice packets into internet protocol or Internet protocol. PO Resp. 30–31. Notably, however, Petitioner does not argue the encapsulation alone meets the recited conversion. Rather, Petitioner argues conversion from various telecommunications transmissions into a packetized format and optional encapsulation in IP packets meets the recited conversion. Pet. 26–29; Pet. Reply 9–11. We agree with Petitioner that, under our construction of “internet protocol” and “Internet protocol,” the conversion from the various voice protocols to ST meets the recited conversion. Moreover, even under Patent Owner’s proposed constructions of “internet protocol” and “Internet protocol,” the steps in Petitioner’s proposed Weinstein-RFC1190 combination of converting the voice protocols to ST-II and encapsulating those packets into IP packets meets the recited conversion because the proposed combination converts voice transmissions from various telecommunication protocols to Internet Protocol (of TCP/IP) packets, using the two-step process of generating ST packets and encapsulating those packets in IP packets. Ex. 1010, 4; Ex. 1011, 7, 64.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“would have lacked motivation to combine ST-II with the Internet Protocol, that argument fails at least because the use of ST-II over IP is described within a single reference, RFC1190. Thus, no combination of references is required to provide the teaching of using ST-II over IP, and, accordingly, any argument against combining ST-II with the Internet Protocol is unfounded. Moreover, Petitioner’s various references describing implementations of using ST-II over the Internet to transmit voice provide evidence in favor of a finding that it would have been obvious to transmit voice over the Internet using ST protocol. That leaves, at most, an argument by Patent Owner that an ordinarily skilled artisan would not have combined Weinstein’s asserted teachings (i.e., converting a voice transmission from a telecommunication protocol to ST, transmitting the ST packets over a data network, and converting the voice transmission back to a telecommunication protocol) with RFC1190’s asserted teaching (using the ST-II protocol, either alone or encapsulated in IP packets, to transmit packets across a data network). As discussed above, Petitioner has submitted evidence that internet engineers near the time of invention of the ’247 patent were implementing and considering implementing ST-II in various systems for voice communication across the Internet. Ex. 1023, 1–4; Ex. 1031, 20–21; Ex. 1032, 20–21. Moreover, RFC1190 clearly indicates that ST-II is a revised version of ST, notwithstanding ST-II’s lack of backward compatibility with the original ST protocol. Ex. 1011, 1; see Pet. 17. Petitioner also argues an ordinarily skilled artisan would have been motivated to upgrade Weinstein’s ST with RFC1190’s ST-II because RFC1190 identifies various improvements and benefits of ST-II over ST. Pet. 18–19 (citing Ex. 1011, 1, 8). Petitioner asserts combining RFC1190 with Weinstein is merely the application of a known technique to a known system yielding predictable results. Id. at 19. We are persuaded by Petitioner’s arguments that an ordinarily skilled artisan would have considered upgrading ST to ST-II, the version available at the time of invention of the ’247 patent. The fact that ARPANET no longer existed at the time of invention of the ’247 patent does not render all of Weinstein’s teachings unavailable to the hypothetical person of ordinary skill in the art. One would not have needed to “resurrect” the defunct ARPANET to take advantage of Weinstein’s teachings regarding combining voice networks with data networks. Rather, one would have gleaned the knowledge necessary to create a system using a data network to transport voice communication as a bridge between conventional telephony networks. We also agree with Petitioner that the submitted evidence regarding other systems adopting ST-II supports a conclusion that a person having ordinary skill would have been capable of making any hardware changes required to implement ST-II.” slip op. at 28
Patent outcomesUS 7,269,247 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,269,247 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Mar 17, 2016 · IPR2014-01412 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1, 2, 4–7, 10–16, 18–21, 24–28, and 32 are unpatentable, principally because the cited references anticipate or render them obvious.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On July 10, 2015, we joined IPR2015-01077 to this proceeding and instituted trial on the following grounds: Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a) over the ’450 patent; Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a) over the combination of the ’450 patent and the ’219 patent; and Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a) over the combination of the ’450 patent and Bungum.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“have its plain and ordinary meaning as “a communications path in a communications network.” Dec. to Inst. 8. Patent Owner contends that we should not construe this term at all because its plain and ordinary meaning is clear. PO Resp. 6–7. Patent Owner disputes the authority of the IEEE reference we used to establish the plain and ordinary meaning, arguing that Exhibit 1017 is not a standard, but a functional requirements document generated to assist a working group and is subject to change. Id. at 7–8. However, Patent Owner does not propose a “plain and ordinary meaning.” Id. Nor does Patent Owner argue that the scope of the term would be different if we rely on other evidence of the plain and ordinary meaning. Id. Although our Decision to Institute notes that the construction of “transmission path” is not particularly material to the decision, Dec. to Inst. 7–8, it is helpful to establish a baseline definition of the meaning as understood by those of ordinary skill in the art. Patent Owner’s assertion that the definition we applied was used by an IEEE working group supports our determination that our construction in the Decision to Institute applies the plain and ordinary meaning to those of ordinary skill in the art. Accordingly, we adopt the construction of “transmission path” as “a communication path in a communications network.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Time-Slot In this proceeding, neither party proposed a construction for the term “time- slot,” and we did not construe it in our Decision to Institute. However, in related case IPR2015-01471, which concerns a continuation-in-part of the ’557 Patent, it became clear that a construction of the term “slot” was in dispute, and it was discussed extensively at the consolidated oral hearing. In this proceeding, Patent Owner argues that the ’450 Patent does not disclose transmitting payload data on time slots allocated by the network control terminal (NCT), because the NCT in the ’450 Patent assigns only one slot, so that a small aperture terminal (SAT) transmits data beginning on a single slot. PO Resp. 15–19. In IPR2014-01471, we construed “slot” to mean “a duration of time.” Ericsson Inc. and Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLC, Case 2014- 01471, slip op. at 7 (PTAB, March 17, 2015) (Paper 33, Final Written Decision). We address the implications of this issue in our analysis of Representative Claim A and the ’450 patent.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As discussed above, there is evidence that MPEG2 could have been used to transmit video via satellite. As previously discussed, Petitioner has cited credible evidence that satellites transport MPEG2 packets. Reply 14. The claims are drawn to a three channel arrangement in which one channel is used to transmit data from the central controller to the station and two channels are used to transmit data from the station to the central controller. As discussed above, that arrangement is disclosed in the ’450 patent. The further limitation in claims 11 and 25 that the first path is a broadcast channel carrying MPEG2 data is a restriction to a field where Petitioner has demonstrated it was known to use such a format. Thus, Petitioner has produced persuasive evidence that combining the use of known MPEG2 transport packets with a managed access satellite communication system, such as that disclosed in the ’450 patent, would have been obvious to one of ordinary skill. Therefore, we conclude that Patent Owner has demonstrated by a preponderance of the evidence that claims 11 and 25 are unpatentable as obvious under 35 U.S.C. § 103(a) over the ’450 patent.” slip op. at 36
Patent outcomesUS 5,963,557 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,963,557 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLC And Intellectual Ventures II LLCAll claims unpatentablePTAB · Mar 17, 2016 · IPR2015-01077 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1, 2, 4–7, 10–16, 18–21, 24–28, and 32 are unpatentable, principally as anticipated or obvious over the ’450 Patent and related combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Transmission Path In our Decision to Institute, we construed the term “transmission path” to have its plain and ordinary meaning as “a communications path in a communications network.” Dec. to Inst. 8. Patent Owner contends that we should not construe this term at all because its plain and ordinary meaning is clear. PO Resp. 6–7. Patent Owner disputes the authority of the IEEE reference we used to establish the plain and ordinary meaning, arguing that Exhibit 1017 is not a standard, but a functional requirements document generated to assist a working group and is subject to change. Id. at 7–8. However, Patent Owner does not propose a “plain and ordinary meaning.” Id. Nor does Patent Owner argue that the scope of the term would be different if we rely on other evidence of the plain and ordinary meaning. Id. Although our Decision to Institute notes that the construction of “transmission path” is not particularly material to the decision, Dec. to Inst. 7–8, it is helpful to establish a baseline definition of the meaning as understood by those of ordinary skill in the art. Patent Owner’s assertion that the definition we applied was used by an IEEE working group supports our determination that our construction in the Decision to Institute applies the plain and ordinary meaning to those of ordinary skill in the art. Accordingly, we adopt the construction of “transmission path” as “a communication path in a communications network.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Time-Slot In this proceeding, neither party proposed a construction for the term “time- slot,” and we did not construe it in our Decision to Institute. However, in related case IPR2015-01471, which concerns a continuation-in-part of the ’557 Patent, it became clear that a construction of the term “slot” was in dispute, and it was discussed extensively at the consolidated oral hearing. In this proceeding, Patent Owner argues that the ’450 Patent does not disclose transmitting payload data on time slots allocated by the network control terminal (NCT), because the NCT in the ’450 Patent assigns only one slot, so that a small aperture terminal (SAT) transmits data beginning on a single slot. PO Resp. 15–19. In IPR2014-01471, we construed “slot” to mean “a duration of time.” Ericsson Inc. and Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLC, Case 2014- 01471, slip op. at 7 (PTAB, March 17, 2015) (Paper 33, Final Written Decision). We address the implications of this issue in our analysis of Representative Claim A and the ’450 patent.” slip op. at 8
- BurdenUnpatentable
“Claim element A.5 concerns actions taken by the station. As noted above, the elements of Representative Claim A, including element A.5, are common to independent claims 1 and 15. Patent Owner’s argument does not consider other language in claim 1 that provides context for limitation A.5 concerning the central controller that provides the grant to which the station responds. Apparatus claim 1 recites that, upon receiving a reservation request, the central controller responds by “transmitting on said first path a payload data transmission grant to said station for transmitting payload data on said third path on said time-slots allocated by said centralized controller.” Almost identical language appears in method claim 15. Claims 1 and 15 do not limit the form of the grant, nor do claims 1 and 15 limit the time-slots allocated by the central controller. For example, there is no requirement in the claims that the grant authorize a specific number of time-slots or that the time slots be of any particular duration. Claims 1 and 15 recite that, in response to receiving a request on the second path, the centralized controller transmits on the first path a “grant” authorizing payload data transmission on the third path at allocated time-slots. Claims 1 and 15 do not limit the allocated time slots to any particular frame or time. Nor do claims 1 and 15 preclude allocating sufficient time slots for the terminal to transmit its entire message. Given the language of the claims, we conclude that Petitioner has shown by a preponderance of the evidence that the ’450 patent discloses the recited features in element A.5, which appears in the challenged claims illustrated by Representative Claim A (independent claims 1, 4, 5, 7, and 10–14, as well as corresponding dependent claims 2–4) and Representative Claim B (independent claims 15, 21, and 25–27, as well as corresponding dependent claims 16–19).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“The Specification of the ’557 Patent describes a cable system implementation and specifically states: (1) that “the implementation of the invention in a cable network was merely illustrative” (Ex. 1001, col. 19, ll. 39–40); (2) that another example is an implementation in a wireless system in which the central controller is a base station and that the communication units are cordless or cellular telephones (id. at col. 19, ll. 41–42); and (3) that when employed in a satellite system the central controller is a satellite and the subscriber stations are earth stations (id. at col. 19, ll. 50–54). As previously discussed, the ’450 patent discloses in Figure 1 NCT 12, which communicates with portable terminals 14 through satellite 11, using two upstream channels and one downstream channel. Ex. 1005, Abstract, Fig.1. Thus, the ’450 patent discloses the NCT in the context of a satellite network. Claims 7 and 21 recite only that the centralized controller is a base station, that the network is a wireless network, that the transmission medium is air, and that the station is a mobile or stationary communication unit. Claims 7 and 21 do not limit a wireless network to a non-satellite network, or, in the case of a satellite network, limit the base station to any particular node. Thus, we conclude that Petitioner has shown by a preponderance of the evidence that the ’450 patent anticipates the base station limitation of claims 7 and 21. Petitioner further notes that the question is not whether cellular base stations and satellites have differences, but whether media access controller and contention resolution access principles used in satellite and cellular applications are translatable to each other. Reply 12. To the extent that the base station is considered to be limited to a cellular wireless network as argued by Patent Owner, we note (1) that the Specification of the ’557 patent extends the concept of using two upstream channels and one downstream channel to a wireless network (Ex. 1001, col. 19, ll. 50–57) and (2) that the ’450 patent discloses the two upstream, one downstream channel approach in the context of a satellite network, in which the transmission medium is air and the central controller is the satellite (Ex. 1005, 4:50–57). Thus, we conclude that Petitioner has shown by a preponderance of the evidence, that this limitation, which recites that the central controller is a mobile or stationary base station in a wireless network in which the transmission medium is air, is obvious under 35 U.S.C. § 103(a) over the ’450 patent.” slip op. at 21
Patent outcomesUS 5,963,557 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,963,557 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Mar 17, 2016 · IPR2014-01471 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–27 are unpatentable: claims 1, 4–6, 9–12, 18, 21–24, and 27 as anticipated; all remaining claims as obvious over the listed combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“of fixed or variable size.” Pet. 8. Patent Owner initially responded that Petitioner’s proposed construction is not supported by the specification and that the term “slot” did not require construction. Prelim. Resp. 9. In our Decision to Institute, we construed “slot” to mean “a duration of time.” Dec. to Inst. 7. In the Patent Owner Response, Patent Owner argues that “slot” should be construed to mean “a predetermined division of the time domain for a channel.” PO Resp. 9– 10. Patent Owner notes that the ’153 Patent discloses that “[e]ach channel illustratively is divided into slots or mini-slots.” Id. at 9 (citing Ex. 1001, col. 8, ll. 60–61). However, the mere division of a channel into slots, does not define a slot. Patent Owner argues that “slot” should be further limited to a predetermined division because in the context of the ’153 Patent, the central controller responds to a reservation request by “assigning specific slots to each station.” Id. at 9–10 (citing Ex. 1001, col. 9, ll. 11–13). However, the assignment of specific slots to each station neither defines a slot nor limits a slot to some predetermined division of the time domain. Indeed, the ’153 Patent states that “the upstream payload channel UPC carries a stream of only payload packets in slots (which may be fixed or variable in size).” Ex. 1001, col. 12, ll. 9–12. Although it is unclear whether the literal text is intended to mean that either the payload packets or the slots vary in size, the text does not restrict the slots to any particular size or preclude adapting the size of the slots to the size of the payload packets.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “A reference anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.’” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (emphasis omitted) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“slots (e.g., 3 or 4) is available ran[d]om access.” Id. (citing Stark Decl. ¶ 194; Ex. 1007, col. 1, ll. 42–48). Petitioner contends that a person of ordinary skill would have been motivated to use such a message to reduce collisions by more precisely identifying the available slots on the reservation channel for requesting slots on the (return) payload channel. Id. The ’398 patent discloses that a known technique for reducing the probability of collisions is dynamic frame based slotted aloha random access and that in this arrangement, an access command is transmitted by a central unit on the downlink indicating that the common control channel on the uplink in the next N slots (e.g., 3 or 4 random slots) is available for access . . . [T]his arrangement has the result that access requests are spread over N frames and are therefore less likely to collide.” slip op. at 28
- Expert testimonyPetitioner expert creditedDecided for petitioner
“disclose sufficiently selecting different modulation schemes for the upstream control and payload channels to optimize the robustness of the control channel without degrading the robustness of the payload channel, as recited in claim 13, this feature is taught in the ’219 patent. Pet. 44. Petitioner notes, and we agree, that the ’219 patent discloses using quadrature amplitude modulation for the telephony data and binary phase shift keying (BPSK) modulation techniques for the synchronization channel and for IOC control data to provide robustness in the system. Id. at 45. Petitioner cites the Declaration of Dr. Stark to support its contention that one of ordinary skill would have combined these teachings of the ’450 and ’219 patents. We are persuaded by this testimony. Claim 14 recites that the upstream control channel on which the bitstream containing the reservation request is transmitted in step (a) of claim 1 is one of a plurality of upstream control channels. As Petitioner notes, and we agree, the ’219 patent discloses that a plurality of control channels are interspersed among the telephony channels of the second frequency bandwidth. Pet. 45–46 (citing Ex. 1008, col. 5, ll. 49–51; col. 4, ll. 59–66). Petitioner cites testimony of Dr. Stark to support persuasively its contention that the disclosure of at least 3 separate data channels in the ’450 patent would suggest to a person of ordinary skill that two or more control channels could be used in the upstream channel. Id. at 46 (citing Stark Decl. ¶ 201). The three data channels discussed in the ’450 patent are a forward channel outbound from the NCT, a reservation channel inbound from the PT, and a return channel inbound from the PT. Ex. 1005, col. 4, ll. 50–57. We are persuaded by Petitioner’s argument and evidence presented.” slip op. at 31
Patent outcomesUS 6,370,153 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,370,153 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Jan 29, 2016 · IPR2014-01195 · APJ Justin Busch · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over Li, Yamaura, Zhuang, and UTRA, and over Li, Yamaura, Mody, Nobilet, Popovic, and UTRA.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“addition to the portion of the ’431 patent referred to by the parties, we find informative the entirety of the section, including the heading – “Radio Operation Via Core-Band,” in which the cited disclosures are included. Ex. 1001, 4:63–5:62. The section starts by stating that “specific signaling and control methods are required” in order for “user terminals to operate in a variable bandwidth (VB) environment.” Id. at 4:64–66 (emphasis added). Although this description mentions both “signaling” and “control methods,” it does not distinguish between control signals and operations signals. As Patent Owner points to one embodiment disclosing that the core-band includes various channels (i.e., “essential control channels, a set of data channels and their related dedicated control channels”) “to maintain basic radio operation.” Id. at 5:8–13. That embodiment further describes basic radio operation as a state that a mobile station may be in when entering a network before transitioning to normal operation, which uses the full bandwidth including “sidebands for additional data and radio control channels.” Id. at 5:13–17, Abs. (stating also that mobile stations use the “core-band to initiate communication and obtain essential information” before switching to full bandwidth “for the remainder of the communication”).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“An important factor that we considered is that the plain language of “substantially not wider” does not seem to support an application of “substantially” as a term of magnitude because such a construction would essentially read out a portion of “not wider.” Reading “substantially” as a term of magnitude would essentially require substituting “significantly” for “substantially.” Patent Owner’s proposed construction, however, not only substitutes significantly for substantially, but changes “not wider” to “narrower than.” The plain and ordinary meaning of “not wider” is less than or equal to. Thus, simply treating “substantially” as a term of magnitude would result in a construction of “significantly less than or equal to.” As a result, Patent Owner’s proposed construction is not a reasonable interpretation in that it makes little sense to recite being “significantly” equal to. Patent Owner agrees that “[n]ot wider does mean less than or equal to,” but argues that the recitation of “substantially not wider” “tak[es] out equal to.” Tr. 57:23–58:10. Thus, Patent Owner’s proposed construction reads out the “equal to” portion of “not wider,” which is inconsistent with the ordinary meaning of “not wider.” Patent Owner does not provide a persuasive rationale for disregarding the term’s ordinary meaning. If we apply substantially to the phrase “not wider” as a term of approximation, however, we are led to a construction that one item (the core-band) is not wider, within some range of tolerance, than another item (the smallest operating channel bandwidth). Such an interpretation is consistent with the term’s ordinary meaning and the context of the specification. Finally, the drafter of the ’431 patent chose to use the phrase “not wider” in claim 1 rather than “narrower” or “less than,” which was used on at least one occasion on the specification. Accordingly, on balance, we find no explicit construction is necessary but determine that “substantially” modifies “not wider” as a term of approximation rather than a term of magnitude.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We have reviewed the parties’ arguments as well as the testimony of Dr. Haas (Ex. 1012 ¶¶ 34–51) and Dr. Zeger (Declaration of Kenneth Zeger, Ph.D., Ex. 2001 ¶¶ 67–85, 132–142), and we find that Petitioner has demonstrated that a person having ordinary skill in the art would have combined the teachings of Li and Yamaura in the manner proposed by Petitioner. We agree with Petitioner that Li and Yamaura focus on complementary aspects of wireless communication systems. Yamaura teaches one way to provide control and synchronization signaling using OFDM. Li teaches that “there are typically other channels [not described in detail in Li], pre-allocated for the exchange of control information and other purposes,” which would have led an ordinarily skilled artisan to look to specific implementations of control and synchronization signaling, including the implementation taught by Yamaura. See Ex. 1002, 5:1–17. We acknowledge that Li does teach certain control signaling on both uplink and downlink channels. Nevertheless, we find Petitioner’s assertion, supported by Dr. Haas’s testimony, that an ordinarily skilled artisan would have looked elsewhere for control and synchronization channels prior to establishing communication with a mobile station, is supported by Li’s explicit statement that there are typically other channels pre-allocated for that purpose.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“a narrowband frequency centered within its operating channel bandwidth, which Petitioner maps to the recited core-band. Petitioner further argues that, in order to maintain the benefit of Yamaura’s centered control channel when incorporating Li’s teaching of multiple communication schemes, an ordinarily skilled artisan would have added clusters so that Yamaura’s narrowband control signals would remain centered. Reply 12–14 (citing Ex. 1034 ¶¶ 24, 25). Petitioner relies on Yamaura for teaching transmission of control signals centered within the frequency band it is using, and relies on Li for teaching a variable bandwidth system, in which a mobile station can have its bandwidth increased or decreased, as needed. As discussed above, we find no flaw with Petitioner’s proposed combination of Yamaura and Li. We also find persuasive Petitioner’s assertion, supported by testimony from Dr. Haas (Ex. 1034 ¶¶ 24–25), that it would have been desired by and within the abilities of a person having ordinary skill in the art to combine Li and Yamaura in a way that Yamaura’s subcarriers that are carrying control signaling stay substantially centered. Accordingly, we find Petitioner has demonstrated, by a preponderance of the evidence, that the combination of Li and Yamaura teaches a core-band “substantially centered at an operating frequency of the different communication schemes,” as recited in claim 1. Patent Owner asserts that Petitioner has not demonstrated that the combined references teach a core-band that is “substantially not wider than a smallest possible operating channel bandwidth of the system,” because Petitioner points to a core-band that has the same bandwidth as the smallest possible operating channel bandwidth of Petitioner’s proposed system. PO Resp. 30–32. Patent Owner’s assertion depends on a construction of “substantially not wider” that we declined to adopt. See id. As discussed above, we construe substantially to modify “not wider” as a term of approximation. Accordingly, we find Petitioner’s proposed combination, which results in a system having a core-band equal to its smallest operating channel bandwidth, meets the recited language.” slip op. at 21
Patent outcomesUS 7,787,431 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,787,431 - Dynamic Drinkware, LLC v. National Graphics, Inc.All claims unpatentablePTAB · Jan 27, 2016 · IPR2014-01162 · APJ Michael P Tierney · IPR · Final written decision
Claims 1–46 are unpatentable: claims 1, 2, 23, 24, and 27–29 as anticipated by Quadracci ’995; the remaining claims as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“in the lenticular art “is one who has several years of work experience in the lenticular industry.” Ex. 1013 ¶ 11. Patent Owner’s declarant, Dr. Garcia, testifies that a person of ordinary skill in the art would have five or more years of experience in the lenticular lens industry or have an understanding of optical engineering including first and higher order geometric and physical optics principles. Ex. 2001 ¶ 13. The parties’ definitions of one of ordinary skill in the art are substantially the same and neither party states how any difference in the parties’ articulated levels of skill impacts the proceeding. For purpose of this decision, we hold that the level of ordinary skill in the art is reflected by the prior art of record, such that one of skill in the art would have had years of experience in the lenticular lens industry or had an understanding of optical engineering, including higher order geometric and physical optics principles. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Patent Owner does not dispute the proposed constructions, except to state that, consistent with Petitioner’s definition of focal length, one of ordinary skill in the art would have understood that focal length in the ’467 refers to the “effective focal length” of the lens. PO Resp. 3–4. We adopt Petitioner’s proposed claim constructions as they are consistent with the Patent Owner’s use of the terms in the ’467 patent Specification. For example, the term gauge thickness is defined in the ’467 patent with reference to g2 of Fig. 1A and states that the thickness is measured from the outermost edge of the curved surface of the lens to the flat back surface of the lens. Ex. 1001, 2:27–33.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“describe . . . each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)).” slip op. at 8
- Expert testimonyPetitioner expert discountedPetitioner expert creditedDecided for patent owner
“Based on the evidence of record, we credit the ray tracing testimony of Mr. Raymond and are persuaded that the lenticular lens disclosure of Quadracci ’995 is enabling. Specifically, Dr. Garcia acknowledges that focal length formulas other than those recited in the ’467 patent were known in the art and Mr. Raymond demonstrates that, consistent with the teachings of Quadracci ’995, one of ordinary skill in the art could make the described lenses. c. Mr. Raymond’s Gauge Thickness and Focal Length Calculations Patent Owner states that Mr. Raymond’s thickness calculation in his first declaration is either wrong, or it uses an unacceptable index of refraction. Mr. Raymond, in his first declaration, testifies that using the general lens formulas described in the ’467 patent, he arrived at a gauge thickness of 3.4 mils. Ex. 1013 ¶¶ 26–28. Mr. Raymond, however, does not disclose the index of refraction that he used to determine the gauge thickness. Expert testimony that does not disclose the underlying data on which the opinion is based is entitled to little or no weight. 37 C.F.R. 42.65(a). As Mr. Raymond failed to disclose the index of refraction used in his calculations and provide support for his selected refraction index, we do not credit Mr. Raymond’s gauge thickness calculation in his first declaration with respect to Quadracci ’995. As discussed below, however, Mr.” slip op. at 14
Patent outcomesUS 6,424,467 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,424,467 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Jan 21, 2016 · IPR2014-01185 · APJ Peter P Chen · IPR · Final written decision
Claims 1–10 and 17 are unpatentable: claims 1–3 and 5 as obvious over Schmidl and Arslan; claims 4 and 6–10 over those references and Kim; claim 17 over those references and Heiskala.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Our interpretation of the disputed term begins with the language of the claim. See Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292, 1299 (Fed. Cir. 2015). Claim 1 recites that pilot symbols are inserted “into data blocks.” We construe claim 1’s plain language using the plural form of “data blocks” to mean that pilot symbols may be inserted not only within a single data block, as Patent Owner contends, but also between one data block and another data block, as Petitioner contends. Claims should also be read in light of the specification and teachings in the underlying patent. Cuozzo, 793 F.3d at 1280; Microsoft, 789 F.3d at 11 1298. Here, the specification also uses the plural form of data blocks in explaining that “[t]ypically, pilot symbols may be inserted at any point in the data blocks.” Ex. 1001, 16:55–56, 7:28–29. There is no language in the specification disclaiming the insertion of pilot symbols between data blocks. We are persuaded that based on the claim’s usage of the plural “data blocks,” which is supported by the description in the specification, the broadest reasonable construction is “pilot/training symbol inserter configured to insert pilot symbols within, or between, one or more data blocks,” and accordingly, does not exclude the insertion of pilot symbols between two data blocks that are in a group of data blocks.” slip op. at 11
- Skill levelSkill level board ownOther
“We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the 13 cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“that “both Schmidl and Arslan are directed at improving synchronization between a wireless transmitter and a wireless receiver, and disclose frame structures including information for the same.” Pet. 16. In particular, Schmidl discloses an encoder that inserts training symbols in the frequency domain, to form training symbols in the time domain. Pet. Reply 13, 17 (citing Ex. 1036 ¶ 21); see Ex. 1002, 2:7–17. Arslan discloses a frame structure in the time domain containing pilot symbols interspersed among data symbols. Pet. Reply 16–17 (citing Ex. 1036 ¶¶ 20, 22). Petitioner further states: [I]t would have been obvious to use pilot symbols as separate time domain symbols for tracking time variations to calibrate or synchronize the receiver to the transmitter by using time-domain pilot symbols in Schmidl’s system. . . [citing to Supplemental Declaration of Dr. Zygmunt Haas ¶ 22.] As discussed above, Schmidl discloses inserting symbols in the frequency domain for an OFDM system, for calibration and synchronization. See id. It would have been obvious to create those time-domain pilot symbols in the same manner as the time-domain training symbols are created in Schmidl’s encoder – that is, by inserting blocks of known pilot symbols in the frequency domain that would result in time-domain pilot symbols. See id. It would be obvious to a POSA that the same circuitry in Schmidl’s encoder 14 used to insert training symbols would be used to insert pilot symbols, resulting in the claimed “pilot/training symbol inserter configured to insert pilot symbols into data blocks.” See id. Pet. Reply 17–18; see Pet. 16, 29–30.” slip op. at 22
Patent outcomesUS 7,269,127 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,269,127 - Compass Bank / Commerce Bancshares, Inc. et al. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Nov 5, 2015 · IPR2014-00724 · APJ Justin Busch · IPR · Final written decision
Claims 18–31 are unpatentable: claims 18–21 and 23–31 as anticipated by Kapidzic; claims 18–22 as obvious over PKI Report and RFC 1424; and claims 23–30 as anticipated by PKI Report.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We find that “process,” or more specifically, “computer process,” as recited in each of the challenged claims, should be given its plain and ordinary meaning. To the extent that there might have been ambiguity as to the plain and ordinary meaning, the references in the ’574 patent to computer processes support the idea that a skilled artisan would have understood what was meant by the recitation of the term. In particular, the ’574 patent discloses that “[e]ach user or certification authority of the infrastructure has access to a computer process which comprises appropriate certification software and storage areas for storing data structures.” Ex. 1002, 5:55–57. The ’574 patent explains that the invention is directed to a certification system, which: includes computer processes implementing certification servers, certification clients and certification protocols, in which one or more first computer processes are associated with at least one initial (root) registration authority, one or more second computer processes are associated with policy certification authorities, one or more third computer processes are associated with certification authorities, and one or more end-user computer processes or application computer processes are associated with respective end-users or user applications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Because we use the broadest reasonable interpretation for construing claims, we decline to limit the construction of common certificate repository to require storage of public key certificates for all CAs, or even all CAs within a hierarchy or infrastructure. Other than declining to adopt Patent Owner’s proposed narrowing of the plain and ordinary meaning of a common certificate repository, we do not find it necessary to provide an explicit construction of the term.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent.” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). Looking to Dr. Kapidzic’s doctoral thesis, the “Publications Overview” section of Dr. Kapidzic’s thesis indicates that she “was the main designer of the overall CMS system, as well as of the CMS Client [and t]he functionality of CMS servers (CAs) was designed by the author in co-operation with Alan Davidson.” Ex. 2011, 3–4. That section further indicates that Kapidzic, referred to in the thesis as “KAP2,” was “published as the result of the author’s work,” “presents the overall design of CMS (done by the author), as well as its functions and protocols (done by the author in co-operation with Alan Davidson),” and “represents the bases for Chapter 3 of this thesis.” Id. at 4 (emphases added). Although we agree that authorship of articles is not necessarily determinative of whose ideas are present in a paper, we do not find Patent Owner has sufficiently corroborated Dr. Muftic’s testimony to establish that the entirety of Kapidzic can be attributed solely to Dr. Muftic. Our reviewing court has stated that “sufficient circumstantial evidence of an independent nature can satisfy the corroboration requirement.” Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998) (emphasis added). We find Patent Owner has not submitted sufficient independent circumstantial evidence corroborating Dr. Muftic’s testimony that the entirety of the ideas in Kapidzic originated with Dr. Muftic. Other than Dr. Muftic’s own testimony, there is no evidence on record regarding which aspects of either of the two co-authored articles were his. See Reply 3. Even looking to Dr. Muftic’s testimony, Patent Owner has not established sufficiently which aspects of Kapidzic it alleges originated with Dr. Muftic. See Ex. 2010 ¶¶ 13, 17, 24–26, 33. In fact, Dr. Kapidzic’s doctoral thesis, as discussed above, directly contradicts Dr. Muftic’s testimony, and states that the ideas in Kapidzic were those of only Dr. Kapidzic and Mr. Davidson. Ex. 2011, 3. Dr. Kapidzic’s thesis was submitted approximately two years after Kapidzic was published, whereas Dr. Muftic’s testimony is nearly two decades later. Id. at page B. Moreover, Dr. Muftic was Dr. Kapidzic’s advisor and, presumably, had an opportunity to review the thesis. Weighing the submitted evidence, we find Patent Owner has not established that Kapidzic is entirely the work of Dr. Muftic. Therefore, Patent Owner has not established that Kapidzic should be disqualified as prior art.” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Nevertheless, we evaluate Petitioner’s arguments as applied to the properly construed claims to ascertain whether Kapidzic discloses performing the recited step as claimed. The steps that claim 18 recites as being performed “at a computer process” are “generating a data structure,” “sending the signed data structure,” “verifying the authenticity of said [certificate signature] request,” and “certifying and returning the data structure.” In the context of Kapidzic, it is clear that generating a data structure, which includes generating RSA keys and which is subsequently sent via email, sending the signed data structure, which is done via email, and returning the data structure, which is also done via email, are all steps that involve computer processes. See Ex. 1004, 12–13. Thus, our focus is on whether Kapidzic discloses verifying the authenticity and certifying the data structure “at a computer process.” With respect to the certifying step, Kapidzic explains that “[i]f all the checks verify successfully, the parent CA signs the certificate and . . . creates a Certificate Signature Reply that contains the signed certificate.” Ex. 1004, 13. This description indicates that the certification done by the parent CA includes “signing” the electronic data structure and, thus, involves a computer process. The verifying the authenticity step also requires a computer process. For example, even if verifying an identity is required and such verification is done manually, the issuing CA at least needs to be able to read the data structure it received by email as part of the process of verifying an identity. Thus, we find that Kapidzic discloses “at said computer process . . . verifying the authenticity of said request.” Moreover, Kapidzic discloses in Section 8 that the integration of signing and storage/retrieval protocols “opens the opportunity for the CMS to fully automate the process of certificate retrieval and verification, independently of any other system,” and that “CMS UAs provide APIs [7], which enable different security enhanced applications to be easily interfaced with the CMS, supplying them with verified certificates.” Ex. 1004, 16 (emphasis added). That disclosure appears to indicate that Kapidzic contemplates an entirely automated certificate management system, such that every process disclosed by Kapidzic, not just the processes relied upon by Petitioner for disclosing the subject matter recited in the challenged claims, could be done at a computer process.” slip op. at 25
Patent outcomesUS 5,745,574 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 5,745,574
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.