- PTAB · Apr 28, 2017 · IPR2015-01664 · APJ Justin Busch · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving intact its final written decision that claims 8–12 and 18–22 were not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. For the reasons that follow, Petitioner’s Request is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Petitioner provided no details in its Reply regarding how “within the limits of” adds additional confusion, or why a construction including such language would be inappropriate. The Patent Owner Response demonstrated Patent Owner’s clear disagreement with Petitioner’s position that the proposed prior art combination teaches transmitting the entirety of a broadcast channel in an OFDMA core-band. Nevertheless, in its Reply, Petitioner provided neither an explanation of its understanding of the alleged plain meaning of the disputed limitation nor an explicit statement that transmitting only a portion of a broadcast channel in an OFDMA core-band would be sufficient to meet the disputed limitation. Accordingly, we did not misapprehend or overlook Petitioner’s generic argument for adopting an unspecified “plain meaning” of the disputed limitation. We evaluated all arguments and evidence submitted by both parties, and we determined that the proper construction of the disputed limitation precluded transmitting any portion of the recited broadcast channel outside the OFDMA core-band.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“As discussed in the Decision and above, we provided a preliminary construction of the plain meaning of the disputed term in our Institution Decision, Inst. Dec. 11, and Patent Owner contested that preliminary construction in its Patent Owner Response, see PO Resp. 14–16. Nevertheless, as explained above, Petitioner merely provided unsupported assertions that the plain and ordinary meaning of the disputed limitation should apply and argued Patent Owner’s proposed construction generated more confusion than clarity. See Pet. Reply 2, 3–5. Petitioner did not identify evidence to demonstrate the preliminary construction was correct. We are unable to find—and Petitioner does not cite—any portion of the Petition or Reply identifying the full bandwidth preamble to which Petitioner now refers, much less discussing its relevance to any issue. The panel questioned the parties extensively at the hearing regarding what it means to “transmit a broadcast channel in an” OFDMA core-band. See Tr. 10:4–21:4, 24:16–25:4. Petitioner never pointed to the now-cited disclosure in the specification, let alone argued that such a disclosure was relevant to the proper construction of the disputed limitation. Moreover, the technology is complex, and the record during trial lacks briefing from the parties or testimony from either party’s expert declarant on the portion of the specification now raised by Petitioner. We decline to consider Petitioner’s untimely argument presented for the first time in its Request for Rehearing.” slip op. at 6
Claim constructionPatents in suitUS 7,787,431 - NVIDIA Corporation v. Samsung Electronics Company, Ltd.Rehearing deniedPTAB · Mar 1, 2016 · IPR2015-01318 · APJ Jameson Lee · IPR · Rehearing
The Board denied NVIDIA’s rehearing request and left in place the denial of institution for claims 1–15 because the Petition did not explain Yamakawa’s differing embodiments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
NonePatents in suitUS 8,252,675 - Under Armour, Inc. v. Adidas AGRehearing deniedPTAB · Feb 29, 2016 · IPR2015-01532 · APJ Justin Busch · IPR · Rehearing
The Board denied Under Armour’s rehearing request, leaving in place the denial of institution on claim 17 for anticipation by Bouve and, alternatively, Kim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner argues it just needs to show “that Kim discloses storing data that falls within the scope of the plain words ‘a length of the route.’” We agree with Petitioner that the plain meaning of “a length of the route” is the appropriate construction because, on this record, we find no reason to give the phrase a special meaning. The Petition, however, did not present persuasive argument that the plain meaning of “a length of the route” encompasses Kim’s total altitude distance.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“users needed to manually estimate route distances between points of interest. Pet. 17–18 (quoting Ex. 1004, 1:28–35). The Petition asserted “Bouve improved upon the prior art system by maintaining route length information in a database.” Id. at 18 (emphasis added). In support of that assertion, the Petition pointed to Bouve’s disclosure that “The processors . . . compute the mileage indication, along the retrieved travel route(s), for each individual item of travel information which is retrieved from the data bases,” and concluded that Bouve computes mileage information along a route and route length between points of interest using route length information stored in a database. Id. (quoting Ex. 1004, 8:18–22 (underlining added). The Petition, however, failed to identify any disclosure in Bouve that “route length information” is maintained in a database. The Petition also argued Bouve discloses recommending a route “based on that stored length of a route” because Bouve allows a user to select the shortest route between two points. Id. at 19.” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 8,652,009 - Commerce Bancshares, Inc. / Compass Bank et al. v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Oct 21, 2015 · IPR2014-00801 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 26, 28, and 30–32 are unpatentable as anticipated by Aucsmith; claim 33 was not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“National Bank of Omaha, filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–33 of U.S. Patent No. 6,715,084 B2 (Ex. 1001, “the ’084 patent”). On December 1, 2014, we instituted a review (Paper 7, “Decision to Institute” or “Dec.”) based upon Petitioner’s assertion that claims 26, 28, and 30–33 are unpatentable, under 35 U.S.C. § 102(b), as anticipated by Aucsmith.1 Dec. 18. Petitioner provides a Declaration from Dr. George Kesidis (Ex. 1003), and Patent Owner provides a Declaration from Dr. David Goldschlag (Ex. 2011). This is a Final Written Decision under 35 U.S.C. § 318(a). Based on the record presented, we are persuaded that Petitioner has shown by a preponderance of the evidence that claims 26, 28, and 30–32 are unpatentable. We are not persuaded that Petitioner has shown by a preponderance of the evidence that claim 33 is unpatentable.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“1. “anomaly” In the Decision to Institute, we construed the term “anomaly” as “a departure from the usual or expected; an abnormality or irregularity.” Dec. 7–8. Specifically, we agreed with Patent Owner’s assertion that this is the plain meaning of the term and is consistent with the specification of the ’084 patent. Id. at 7. For example, the ’084 patent states that “[a]nomaly detection systems look for statistically anomalous behavior . . . [s]tatistical scenarios can be implemented for user, dataset, and program usage to detect ‘exceptional’ use of the system.” Id. at 8 (citing Ex. 1001, 3:54–57). Neither party contests this construction. We discern no reason to deviate from this construction of “anomaly.”” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“evidence that Aucsmith discloses the detecting limitation as required. First, we are persuaded that the indirect detecting method of Aucsmith satisfies the detecting limitation. Aucsmith discloses that “server 104 can also use the possible security problems reported by all of the agents 106(1)–106(N) to help detect intrusion patterns, new intrusion techniques, and other security problems.” Ex. 1004 ¶ 13. As discussed, although we agree that server 104, using this method, is analyzing reports of “possible security problems” created by distributed agents, we are persuaded that this is within the scope of the claim because the reports include data entering the network. For example, Aucsmith discloses that “server 104 receives notice of the anomaly and can examine the anomaly,” and “[i]n individually examining the anomaly [reported by agent 106], the server 104, may, for example, search for particular information in the anomaly such as a network address previously noted as a security problem . . . .” Ex. 1004 ¶¶ 43, 45; see also id. ¶ 44 (“[S]erver 104 may examine the anomaly in conjunction with other information accessible by the server 104, e.g., information included in the collection of security data 118, information sent to the server 104 from other sources, information accessible to the server 104 through the network 108 and/or the corporate server 116, and other similar types of information.”). We are persuaded that Aucsmith discloses server 104 analyzing data entering the network, although this data may also have been analyzed previously by the distributed agents.” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner that Petitioner does not provide sufficient evidence that Aucsmith discloses “adjusting anomaly detection sensitivity and alarm thresholds” sufficient to show anticipation. Dr. Kesidis’s testimony just repeats the language from Aucsmith quoted above and concludes that “Aucsmith discloses each and every limitation of claim 33.” Ex. 1003 ¶¶ 178–81. Dr. Kesidis, however, does not explain why a person of ordinary skill would understand “modifying security procedures” to disclose “adjusts anomaly detection sensitivity and alarm thresholds.” Id. Dr. Goldschlag, on the other hand, states that “[o]ne of ordinary skill in the art would not have understood this term to disclose adjusting either anomaly detection sensitivity or alarm thresholds.” Ex. 2011 ¶ 62 (emphasis added). Thus, we are not persuaded that Petitioner has shown by a preponderance of the evidence that claim 33 is anticipated by Aucsmith.” slip op. at 22
Patent outcomesUS 6,715,084 mixedClaim construction§ 102 anticipationPatents in suitUS 6,715,084 - International Business Machines Corporation v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Oct 19, 2015 · IPR2014-00660 · APJ Justin Busch · IPR · Final written decision
Claims 18–31 are unpatentable: anticipated by Kapidzic, variously anticipated or obvious over PKI Report, and variously anticipated or obvious over RFC 1422 and RFC 1424.
RulingsFinal written decision- Expert testimonyPatent owner expert discountedDecided for petitioner
“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. Patent Owner asserts that the Federal Circuit’s decision in Cooper stands for the proposition that every point of Dr. Muftic’s testimony does not need to be corroborated. Tr. 37:7–12. Cooper specifically states, however, that “sufficient circumstantial evidence of an independent nature can satisfy the corroboration requirement.” Cooper, 154 F.3d at 1330 (emphasis added). We agree with Patent Owner that it has sufficiently established that Dr. Kapidzic and Mr. Davidson were students advised by Dr. Muftic at the time Kapidzic was written. We also agree that Patent Owner has sufficient circumstantial evidence to corroborate that Dr. Muftic was at least working in the same field at around the same time. The circumstantial evidence also appears to corroborate that Dr. Muftic may have contributed to Kapidzic, at least in an advisory role. What we find lacking, however, is 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 6. 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. 2005 ¶¶ 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. 2006, 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
- ExcludeMotion to exclude, deniedDenied
“We are capable of discerning whether Petitioner’s arguments in its Reply, and the evidence submitted in support thereof, were necessitated by Patent Owner’s arguments, or whether such arguments constitute new evidence. We are further able to determine whether Petitioner’s reference to additional documents improperly changes the scope of its anticipation or obviousness arguments, and are capable of giving Petitioner’s arguments and evidence appropriate weight. Therefore, there is no danger of unfair prejudice or confusing the issues. Moreover, in this case, we agree with Petitioner that its submitted declaration and supporting evidence merely respond to Patent Owner’s arguments regarding how a skilled artisan would have understood certain disclosures in the references submitted in support of the unpatentability arguments in the Petition. We have not considered the content of these exhibits or declaration testimony to the extent that evidence may go beyond merely providing context regarding how a skilled artisan would have understood references in the previously-submitted evidence to terms relating to X.509 standards. Accordingly, Patent Owner’s Motion to Exclude is denied.” slip op. at 54
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“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. Patent Owner asserts that the Federal Circuit’s decision in Cooper stands for the proposition that every point of Dr. Muftic’s testimony does not need to be corroborated. Tr. 37:7–12. Cooper specifically states, however, that “sufficient circumstantial evidence of an independent nature can satisfy the corroboration requirement.” Cooper, 154 F.3d at 1330 (emphasis added). We agree with Patent Owner that it has sufficiently established that Dr. Kapidzic and Mr. Davidson were students advised by Dr. Muftic at the time Kapidzic was written. We also agree that Patent Owner has sufficient circumstantial evidence to corroborate that Dr. Muftic was at least working in the same field at around the same time. The circumstantial evidence also appears to corroborate that Dr. Muftic may have contributed to Kapidzic, at least in an advisory role. What we find lacking, however, is 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 6. 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. 2005 ¶¶ 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. 2006, 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)UnpatentableUnpatentable
“construction argument that all manual intervention is excluded by the claim. 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. 1007, 7–8. 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. 1007, 8. 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.” We also find persuasive Petitioner’s argument that, at least some of the time, manual intervention would not be required. We find this argument particularly persuasive in light of Kapidzic’s disclosure 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, independent 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. 1007, 11 (emphasis added). In fact, that disclosure in Kapidzic 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 24
Patent outcomesUS 5,745,574 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 5,745,574 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Rembrandt Wireless Technologies, LPAll claims unpatentablePTAB · Sep 24, 2015 · IPR2014-00893 · APJ Howard B Blankenship · IPR · Final written decision
Claims 22, 23, and 25 are unpatentable as obvious over admitted prior art and Boer because the combination renders the claimed communication system obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“‘[t]he process by which some characteristic of a carrier is varied in accordance with a modulating wave.’” Pet. 14 (referring to Ex. 1423 ¶ 91 (Declaration of Dr. David Goodman); Ex. 1420, 3 (technical dictionary)). Patent Owner submits that “modulation method” is generally recognized in the pertinent art to mean “a technique for varying one or more characteristics of a carrier wave in a predetermined manner to convey information.” PO Resp. 10. Patent Owner submits further, and we agree, that there appears to be no significant difference between these two proffered constructions of “modulation.” Id. at 11–12. slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundTeaching away not foundDecided for petitioner
“We have considered Patent Owner’s arguments and evidence but find that the clear teachings in Upender are not diminished or rebutted. Upender investigates tradeoffs in different communication protocols. The article concludes that CSMA/CA (carrier sense multiple access with collision avoidance), or RCSMA (reservation CSMA), is a good choice for some embedded systems. Ex. 1422, 10–11. The article also indicates that polling may not provide sufficient flexibility for “advanced systems,” classifying polling as “simple,” but noting that the discussion of the different protocol strengths and weaknesses “should allow you to select the best protocol to match your needs.” Id. In fact, Dr. Koopman admits that there are some systems for which master/slave is a better match for the design requirements. Pet. Reply 10; Ex. 1424, 40:2–20. That Upender may identify some advantages of CSMA/CA over a master/slave protocol is not a “teaching away” from the master/slave protocol. Upender teaches that master/slave protocols were widely used and a good choice for simple systems. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[A] person seeking to improve the art of flexible circuit boards, on learning from [a reference] that epoxy was inferior to polyester-imide resins, might well be led to search beyond epoxy for improved products. However, [the reference] also teaches that epoxy is usable and has been used for Gurley’s purpose.”). Patent Owner’s position appears to be that the prior art teaches that one and only one communication protocol should ever be used, which is directly contrary to the clear teachings of Upender. In view of Upender, one of ordinary skill in the art would have found it obvious to use a different prior art communication protocol (e.g., a simpler protocol) when using multiple data rates as described by Boer.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“PPM/DQPSK modulation corresponds to the claimed “second” modulation method because each of DQPSK modulation and PPM/DQPSK modulation is of a different type — i.e., not compatible with — DBPSK modulation. Pet. 25– 26; Ex. 1423 ¶¶ 153–162. On the record before us, we agree that DQPSK and PPM/DQPSK modulation methods are incompatible with DBPSK modulation. See, e.g., Ex. 1423 ¶¶ 155–162. Patent Owner responds, however, that neither of DQPSK and PPM/DQPSK can be considered a modulation method of a type different from DBPSK. PO Resp. 46–54. Patent Owner argues that DBPSK and DQPSK are not different “types” of modulation methods because the methods are within the same “family,” because both vary the same fundamental characteristic of a carrier wave — its phase. Id. at 49–50. We do not find Patent Owner’s argument to be persuasive because we are not convinced that the broadest reasonable interpretation of “types” of modulation is so limited. See Claim Interpretation, § II.A.2, supra. Patent Owner alleges also that Boer does not describe DBPSK and DQPSK as “incompatible” modulation methods because mobile stations are disclosed as capable of transmitting and receiving using DBPSK and also using DQPSK. PO Resp. 48–49. However, whether one “type” of modulation is incompatible with another “type” concerns the method of modulation, not necessarily the modem for carrying out that method. That is, a modem might be designed (as in Boer) to transmit and receive using, separately, two incompatible modulation methods, but that does not mean the two modulation methods are compatible with each other.” slip op. at 19
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Moreover, Dr. Jones’ Declaration is unclear in what is meant by PPM being not a carrier wave modulation technique “as utilized in Boer” or “within the context of Boer.” Ex. 2814 ¶ 58. Dr. Jones submits that he holds numerous patents in types of modulation that include pulse-amplitude modulation (PAM). Id. ¶ 7. Patent Owner provides, as an exhibit, a technical treatise on communication systems engineering5 that addresses 5 John G. Proakis and Masoud Salehi, Communication Systems Engineering, Prentice Hall, Digital Transmission Though and AWGN Channel, Chap. 7, 438–44 (1994). PAM and PPM as two types of “Pulse Modulation Signals.” Ex. 2805, 438– 44 (original page numbering). In PAM, “the information is conveyed by the amplitude of the pulse.” Id. at 438. In PPM (consistent with Dr. Goodman’s testimony (Ex. 1423 ¶ 158)), “the information is conveyed by the time interval in which the pulse is transmitted.” Ex. 2805, 439. With respect to whether PPM can be considered a modulation method, we credit the testimony of Petitioner’s witness, Dr. Goodman, over that of Patent Owner’s, Dr. Jones, for the additional reason that the term “modulation” is part of the descriptive name for PPM – pulse position modulation. Patent Owner has not explained sufficiently why pulse position modulation cannot be considered a modulation method. Although DBPSK and PPM/DQPSK may both vary the “phase” characteristic of the carrier wave, we are persuaded that with PPM the timing (start and stop time) of the transmission is another characteristic of the carrier wave that is varied. Pet. 26; PO Resp. 50–53 (both parties referencing testimony of Dr. Goodman); § II.A.1 supra. We disagree with Patent Owner’s characterization of Dr. Goodman’s deposition testimony as Dr. Goodman admitting “that selection of time slots does not alter the underlying carrier wave.” PO Resp. 52. Dr. Goodman stated that “the selection of the timing wouldn’t alter the amplitude, the phase or the frequency of that underlying sine wave.” Id. (quoting Ex. 2811, 31:20–23) (emphasis added). Further, Patent Owner has not submitted sufficient evidence to show that “Dr. Goodman also agreed the PPM encoding is independent of the underlying modulated wave transmitted in the particular time slots.” PO Resp. 53.” slip op. at 20
Patent outcomesUS 8,457,228 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,457,228 - Unified Patents, Inc. / SAP America Inc. v. Clouding IP, LLCAll claims unpatentablePTAB · Mar 19, 2015 · IPR2013-00586 · APJ Justin Busch · IPR · Final written decision
Claims 1, 5–10, 12, 16–21, 23, 24, 30, 31, 37, and 42 are unpatentable; the contingent motion to amend is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Although the parties argue other terms, for purposes of this decision, we find it necessary to construe explicitly only “update,” “writing a command . . . to copy,” and “determining whether the second computer has a latest version of a file, wherein said determining is performed by the first computer without interaction with the second computer.” We provide the bases for the construction of each of the explicitly construed terms below.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “update” Petitioners propose construing “update” as “information for updating a file or an up-to-date version of a file.” Pet. 15 (citing Ex. 1010, 10). Patent Owner does not propose a construction for “update” in its Patent Owner Response. The claim term “update” has the following dictionary definition: “current information for updating something” or “an up-to-date version, account, or report.”7 We do not find an explicit definition in the Specification of the ’799 Patent for an update, nor do we find anything in the Specification inconsistent with a construction encompassing an up-to-date version of a file. Therefore, in the context of file synchronization, we construe the claim term “update” broadly, but reasonably, as information for updating a file or an up-to-date version of a file. 7 MERRIAM-WEBSTER DICTIONARY, http://www.merriam-webster.com/dictionary/update (last visited Feb. 11, 2014) (emphasis added).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Nevertheless, as discussed above, the scheme used does not inform us whether the command inserted into the update, or incremental backup file, causes the second computer to duplicate data or information from the old version of the file into the second computer’s copy of the current version of the file, as required by the “writing a command . . . to copy” limitation. In order to determine that, we need to look at what the second computer does with the incremental backup file and, in particular, whether the second computer copies data segments from an old version of the file to a copy of the current version of the file. Patent Owner acknowledges that “the semantics are important” with respect to whether a new file is generated for the copy of the current version of the file at the second computer or whether the old version of the file is merely replaced with the new version. Hr’g Tr. 27:10–16. We look to the relevant portions of Williams cited by both parties to understand what Williams’s second computer does with the incremental backup file. Williams “processes the incremental backup information, copying subblocks that were transmitted raw and looking up the references either in Y or in the part of X already reconstructed.” Ex. 1006, 20:2–5. Contrary to Patent Owner’s argument that the new version merely replaces the old version, that description in Williams provides some evidence that Y and X are separately co-existing files at the second computer. Moreover, as addressed in the discussion of Williams above, copies of previous versions may be retained, such that computer E2 may maintain both its copies of old versions of the file, e.g., Y1–Yn, and its copy of the current version of the file, X. Ex. 1006, 21:62–67. The evidence therefore supports the finding that Williams’s second computer, E2, does duplicate data or information as a result of the commands Williams’s first computer, E1, inserted into the incremental backup file, D, meeting the recited “writing a command . . . to copy.”” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“update as an executable attachment in an e-mail. Petitioners allege that the additional limitation in claims 5 and 16 is taught by Miller, which “discloses a system, method, and file structure for transmitting a difference file from a first computer to a second computer, as an executable file, which allows the second computer to create a copy of the most up-to-date version of a monitored file using the second computer[’]s copy of an old version of the monitored file and the executable difference file.” Pet. 42–43 (emphasis added) (citing Ex. 1004, 2:38–46, 5:9–16, 5:35–39, and 15:41–43). Petitioners argue combining Williams and Miller is the mere substitution of one known method for another with predictable results, and that such a combination would have been obvious because Williams does not restrict the method of communication, and using an e-mail would have been a known method of communication. Pet. 41–42. We have reviewed the Petition, the Patent Owner Response, and Petitioners’ Reply, as well as the relevant evidence discussed in those papers. We are persuaded, by a preponderance of the evidence, that claims 5–10 and 16–21 are obvious in view of the combination of Williams and Miller under 35 U.S.C. § 103.” slip op. at 27
Patent outcomesUS 6,738,799 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,738,799 - PTAB · Dec 23, 2014 · IPR2014-00673 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied rehearing of the decision declining institution on claims 23–27, 29, 30, 32, 33, and 36–40 because the Petition did not adequately explain its prior-art arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW In its request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- BurdenInstitution denied merits
“declaration in the claim charts at pages 19, 21, 25, 27, 28, and 30 of the Petition. Pet. 19, 21, 25, 27, 28, and 30. The citations to the specific paragraphs of the Declaration appear in the claim chart, and take the form of “(See Ex. 1001, ¶¶ 105-107),” “(See Ex. 1001, ¶¶ 114–117),” “(See Ex. 1001, ¶¶ 143–146),” “(See . . . Ex. 1001, ¶¶ 154–157),” “(See Ex. 1001, ¶¶ 165–169),” “(See Ex. 1001, ¶¶ 178–180),” and “(See . . . Ex. 1001, ¶¶ 196–199).” Id. The Petition does not include a detailed explanation of the significance of Mr. Rosenblatt’s Declaration, as required by 37 C.F.R. § 42.22(a)(2). See id. Nor does Mr. Rosenblatt’s testimony explain how the relied upon language in Digibox discloses the limiting access to unprotected data limitation. Based on Petitioner’s arguments in its Request for Rehearing, Petitioner alleges that we overlooked the evidence in Mr. Rosenblatt’s declaration because we did not incorporate the arguments and explanations from the cited paragraphs of Mr. Rosenblatt’s declaration into the Petition. Contrary to Petitioner’s arguments, however, our rules state that arguments must not be incorporated by reference from one document into another document. 37 C.F.R. § 42.6(a)(3). Because the Petition did not include a detailed explanation of the significance of paragraphs 105–107, 114–117, 143–146, 154–157, 165–169, 178–180, and 196–199 of Mr. Rosenblatt’s declaration, and because arguments must not be incorporated by reference from Mr. Rosenblatt’s declaration into the Petition, we did not abuse our discretion in denying institution of inter partes review of claims 24, 25, 30, 32, 33, 36, and 38 as anticipated by Digibox.” slip op. at 4
NonePatents in suitUS 6,314,409 - PTAB · Dec 23, 2014 · IPR2014-00672 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied IBM’s rehearing request, leaving institution denied for claims 1–11 and 13–21 because the petition did not adequately explain how Digibox disclosed the disputed limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“21, the Petition does not explain how Digibox’s disclosure of access rules that can designate who may unlock a DigiBox, together with Digibox’s disclosure of encrypted (i.e., protected) digital information contained in the Digibox, discloses limited or controlled access to an unprotected (i.e., unencrypted) form of the protected portions of the data, as required by claims 1 and 21. In effect, Petitioner’s arguments in the Request for Rehearing allege that we misapprehended the evidence in the Petition because we did not fit together Petitioner’s dispersed puzzle pieces of quotations and disclosures from Digibox. Contrary to Petitioner’s arguments, however, our rules state that each petition must include a detailed explanation of the significance of the evidence, and must specify where each element of the claim is found in the prior art relied upon. 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4). The Petition does not include a detailed explanation of the significance of Digibox’s disclosure of access rules that can designate who can unlock the Digibox, and does not specify where the disputed limitations of claims 1 and 21 are found in Digibox. But, as we discussed above, even if Digibox did include sufficient disclosure, we do not see how the newly cited portions of Digibox meet the disputed limitations of claims 1 and 21. Thus, we did not abuse our discretion in denying institution of inter partes review of the claims based on Digibox.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Contrary to Petitioner’s apparent invitation, the members of the Board deciding an institution matter do not, under 35 U.S.C. § 6(c), select themselves, and, similarly are not granted authority to select other Board members to decide the matter, upon request of a party or otherwise. See Apple Inc. v. Rensselaer Polytechnic Instit., Case IPR2014-00319, slip. op. 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). As indicated in the Standard Operating Procedure, the Chief Judge, on behalf of the Director, may act to expand a panel on a “suggestion” from a judge or panel. BPAI SOP 1 at 1. The Standard Operating Procedure creates “internal norms for the administration of the Board” but “does not create any legally enforceable rights.” Id. Accordingly, we cannot grant Petitioner’s request for rehearing by an expanded panel. We further note that our application of 37 C.F.R. §§ 42.6(a)(3), 42.22(a)(2) and 42.104(b)(4) in the case before us is bound to the specific facts of this case, and is consistent with the application of these rules in the expanded panel decision in Cisco Systems, Inc. v. C-Cation Technologies, LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12). II. DECISION ON REHEARING Petitioner’s request for rehearing is denied and request for panel expansion is dismissed.” slip op. at 6
NonePatents in suitUS 6,314,409 - PTAB · Nov 19, 2014 · IPR2014-00308 · APJ Kristina M Kalan · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before a final decision on the merits.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner filed a Petition on December 27, 2013, and Patent Owner filed a Preliminary Response to the petition on April 14, 2014. The Board instituted inter partes review on July 10, 2014. Patent Owner filed a Patent Owner Response on September 10, 2014, but Petitioner has not yet filed a Reply. This proceeding has not resulted in a final decision on the merits.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the facts of the case, it is appropriate to terminate the proceeding as to both Petitioner and Patent Owner. Therefore, the joint motion to terminate and the joint motion to file the release agreement as business confidential information are granted. Accordingly, it is ORDERED that the joint motion to file the release agreement as business confidential information, to be kept separate from the patent file, is granted; FURTHER ORDERED that the joint motion to terminate the proceeding is granted; FURTHER ORDERED that the proceeding is terminated.” slip op. at 3
NonePatents in suitUS 5,825,891
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.