- Technical Consumer Products, Inc. / Nicor Inc. et al. v. Lighting Science Group Corp.Some claims unpatentablePTAB · Oct 31, 2018 · IPR2017-01280 · APJ John A Hudalla · IPR · Final written decision
Claims 1–3, 5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 are unpatentable under § 103; claims 3 and 4 were not shown unpatentable over Zhang, Soderman, and Silescent.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(collectively, “Lead Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Lighting Science Group Corp. (“Patent Owner”), did not file a Preliminary Response to the Petition. We determined that the information presented in the Petition established that there was a reasonable likelihood that Lead Petitioner would prevail in challenging claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this proceeding on November 1, 2017, as to claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent. Paper 10 (“Dec. on Inst.”).” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“The parties’ definitions of the level of skill differ in minor respects, including the number of years of experience and whether or not a 5 Patent Owner has not put forth any evidence or argument related to secondary considerations of nonobviousness. background in chemical engineering should be included. At his deposition, Dr. Bretschneider testified that he included a degree in chemical engineering in his definition because that degree confers expertise in heat transfer. Ex. 1023, 37:14–22. We find this testimony persuasive. Regarding the difference in years of experience, both declarants agree that three years of experience is appropriate. For these reasons, we define the person of ordinary skill in the art as having a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, physics, or a related field and three years of experience in designing LED lighting products or fixtures. We are satisfied that this definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’844 patent and the prior art of record.” slip op. at 12
- Expert testimonyPatent owner expert creditedDecided for patent owner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner (Pet. Reply 8–9), however, that an ordinarily skilled artisan would not have read Chou as narrowly as Patent Owner contends. Not only does Chou state that its fixture “may be configured to be installed into a recessed can housing having other geometries,” but also “recessed housings . . . developed with different geometries.” Ex. 1012, 3:65–4:7 (emphasis added). In light of this express teaching in Chou, we do not agree that Chou’s teachings are confined to 5- and 6-inch can lights, or even can lights in general. Junction boxes represent another geometry that can serve as a recessed housing for an LED light fixture. See Ex. 1023, 30:17–31:7 (Dr. Bretschneider testifying that, by 2009, LED light fixtures attached to junction boxes were known with “certain parts” inside the box). In addition, the fact that certain figures of Chou might depict a junction box external to a can light does not mean that junction boxes are excluded from the universe of “recessed housings” contemplated in the quotation above. In addition, Patent Owner contends Petitioner has provided no reason or motivation to combine Wegner with Chou. PO Resp. 10–11. Patent Owner also contends an ordinarily skilled artisan would not have combined Wegner with Chou because Wegner pertains to a light with a tall reflector, which must be installed in a can light fixture (and not a junction box). Id. at 11–12 (citing Ex. 2001 ¶¶ 74–75, 133–137). Yet Petitioner only cites Wegner for its teaching of removing an Edison base from an LED light fixture to facilitate direct wiring, and not for anything to do with reflectors. Pet. 24 (citing Ex. 1002 ¶ 53; Ex. 1016, 11:3–32). As such, Patent Owner’s arguments regarding Wegner’s light reflectors amounts to a bodily incorporation argument, which is not the test for obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”). We are persuaded that, based on Wegner, an ordinarily skilled artisan would have known to remove the Edison base of Chou’s fixture regardless of the type of reflector and housing used in Wegner’s fixture. See Ex. 1002 ¶ 53. Regarding motivation, Petitioner posits a market-based rationale, namely, that an ordinarily skilled artisan would have been motivated to make a version of Chou’s luminaire to fit nominally sized junction boxes to serve the new construction market. Pet. 25 (citing Ex. 1002 ¶ 54). Dr. Coleman testifies that the Edison base would have been removed to make Chou’s luminaire work in a junction box. Ex. 1002 ¶ 53. We are persuaded that an ordinarily skilled artisan wanting to modify Chou for use in junction boxes would have known to make this modification.” slip op. at 19
Patent outcomesUS 8,967,844 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,967,844 - PTAB · Oct 17, 2018 · IPR2017-00467 · APJ Kamran Jivani · IPR · Rehearing
The Board denied rehearing, leaving institution denied because the Uchida and Bramhill combination did not show the claimed write restriction for claims 15, 18, 24, and 25.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The request for rehearing “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. § 42.71(d). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“In our Decision, we determined Petitioner failed to show a reasonable likelihood of success on its challenges combining Uchida and Bramhill because Petitioner failed to show teachings or suggestions sufficient to meet the following limitation of independent claim 15: “providing restricted-access to the storage device when the storage device does not store the device-specific security information by preventing the digital data from being written to the storage device during the write access.” Dec. 13–15. We similarly determined Petitioner failed to show teachings or suggestions sufficient to meet the commensurate limitation recited in independent claim 18: “configuring the storage drive to prevent write access to the storage device when the security information is not sensed.” Id. at 15.” slip op. at 3
NonePatents in suitUS 6,968,459 - Huawei Technologies Co., Ltd. v. Samsung Electronics Co., Ltd.Rehearing deniedPTAB · Oct 11, 2018 · IPR2017-01979 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Huawei’s rehearing request, finding no abuse of discretion in denying institution on grounds 4–6 because the Petition did not adequately explain how to harmonize the references’ conflicting teachings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The request for rehearing “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. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. We deny the Request for Rehearing for the reasons that follow. slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Id. Figure 1 of R1-071000 identifies the scope of its contribution as limited to transmission of control information together with data information. Id. Thus, R1-071000, on its face, is directed to the opposite scenario of R1- 072122, which is directed to transmitting control information without data. Id.; see also Dec. 14–15 citing (Ex. 1008, 1 (Title: “Data non-associated control signal transmission with UL data.”)). Even if we were to accept arguendo Petitioner’s first argument that R1-071000 invites skilled artisans to expand and apply the data mapping scheme of R1-072122, such an invitation does not remedy Petitioner’s failure to explain sufficiently how one with ordinary skill in the art would have modified the system of R1- 072122 to transmit control signals with data, contrary to the express teachings of that reference. See Reh’g Req. 4; Pet. 85–86. For instance, Petitioner does not address how one would reconcile the two references’ diametrically opposed teachings regarding placement of the ACK/NAK. As we stated: Finally, although the cited portions of R1-071000 teach placing data in the symbols directly adjacent to the symbol containing the reference signal, R1-071000 depicts placing the ACK/NAK in the symbols farthest from the symbol containing the reference signal––directly opposite to the cited teachings of R1-072122 describing placing the ACK/NAK in the symbols directly adjacent to the reference signal. Ex. 1008, Figs. 4, 5. Here too, Petitioner and Dr. Akl do not address how or why an ordinarily skilled artisan would have harmonized the disparate teachings of these two references. Dec. 15 (bold emphasis added; italics original). Absent sufficient evidence and explanation, Petitioner’s argument amounts to impermissible hindsight reconstruction of the challenged claims. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (cautioning against the use of hindsight).” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Rehearing. Reh’g Req. 4–6. A request for rehearing “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. § 42.71(d). Petitioner identifies a single page of its Petition as “the place where [that argument] was previously addressed.” Reh’g Req. 4–6 (citing Pet. 86). The cited page of the Petition, recites only a single sentence and string citation related to this argument: “Further, a number of 3GPP contributions, including both R1- 071000 and R1-072122, expressly disclose and teach that it is advantageous to limit the number of different transmission formats due to complexity of UE design.” Pet. 86 (citing Ex. 1008, 2, 5; Ex. 1006, 2; Ex. 1009, 5; Ex. 1003 ¶ 225). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d); see also, e.g., Captioncall, Inc. v. Ultratec, Inc., IPR2014-00780, Paper No. 40 (PTAB May 19, 2016) (discussing that a rehearing request is “not intended as a vehicle simply to disagree with [the] outcome or to provide new arguments”). Contrary to Petitioner’s assertions on rehearing, the cited portion of the Petition does not provide sufficient explanation for the following statements made in the Request for Rehearing: that “R1-072122 also expressly teaches that a single mapping scheme for control information is preferred”; that “R1-070998, another contemporaneous 3GPP contribution, provides a similar statement”; or that “skilled artisans would have been motivated to apply the same control mapping scheme regardless of the presence of data.” Compare Reh’g Req. 4–6 with Pet. 86. Indeed, the cited page of the Petition does not discuss R1-070777or R1-070998. See Pet. 86. Because Petitioner’s second argument was not presented in its Petition, we do not consider it on rehearing. 37 C.F.R. § 42.71(d). To the extent Petitioner contends its declarant Dr. Akl presented the extensive argument that Petitioner now puts forth in its Request for Rehearing, our rules particularly require identification of “the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. (emphasis added); see also 37 C.F.R. § 42.6(3) (prohibiting incorporation of arguments by reference).” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,761,130 - Unified Patents Inc. v. Intellectual Ventures II, LLCRehearing deniedPTAB · Sep 27, 2018 · IPR2016-01404 · APJ Kamran Jivani · IPR · Rehearing
The Board granted the motion to excuse late filing and denied rehearing, maintaining that claims 1, 2, 13, 14, 33, 34, 39, 46, and 48 were not shown unpatentable over Bensimon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision . . .” who “must specifically identify all matters the party believes [we] 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). Petitioner’s argument is predicated upon a mischaracterization of our factual findings. Petitioner asserts that we found Bensimon “taught all of the elements of the claim in ‘one possible mode of operation.’” Reh’g Req. 1 (citing Decision 17). We, however, made no such finding. The phrase that Petitioner attributes to us—namely, “one possible mode of operation”—does not appear anywhere in our Final Written Decision. Compare Reh’g Req. 1 (citing Decision 17) to Decision 17. Contrary to Petitioner’s assertions, we did not find “that Bensimon sometimes teaches all of the elements of the claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original). slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original).” slip op. at 6
§ 102 anticipationPatents in suitUS 6,968,459 - Eset, LLC / Eset Spol S.R.O. v. Finjan, Inc.Rehearing deniedPTAB · Aug 10, 2018 · IPR2017-01738 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving review instituted on all challenged claims and all grounds presented in the Petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Nevertheless, like Petitioner, the panel “is not aware of a single case where a partially-instituted IPR was de-instituted post-SAS, as requested by Patent Owner.” Opp. 5. The panel is sympathetic to the position in which institution of the Freund-based grounds places Patent Owner. If now faced with the Petition in the first instance, and understanding that we have only a “binary choice,” it may well be appropriate to deny the Petition in its entirety. But we have been instructed that the Office SAS Guidance is to be interpreted with the weight of Office policy as precluding termination of a partially instituted proceeding in response to SAS Institute. Given that constraint, we are not persuaded that we abused our discretion in our modification Order to include review of all challenged claims and all grounds presented in the Petition. See 37 C.F.R. § 42.71(c). Thus, notwithstanding the panel’s significant reservations, we continue to give effect to the Director’s policy guidance, and deny Patent Owner’s Rehearing Request.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“SAS procedure outlined herein and determines that the trial must be instituted on all grounds or none, Patent Owner requests that the proceedings be terminated pursuant to 35 U.S.C. § 325(d).” Req. Reh’g 10. In making this request, Patent Owner raises important issues regarding the interplay of SAS Institute and 35 U.S.C. § 325(d). The panel is sensitive to Patent Owner’s concern that Under the full-institution full-review paradigm laid out in the Board’s Modified Institution Order and envisioned by the Guidelines, Patent Owners will be forced to defend against the very types of harassing challenges that these sections of the America Invents Act [35 U.S.C. §§ 314(a) and 325(d)] were designed to prevent, namely to “prevent parties from mounting attacks on patents that raise issues that are substantially the same as issues that were already before the Office with respect to the patent.” Id. at 6 (quoting 157 Cong. Rec. S1360 at S1376 (Mar. 8, 2011) (remarks of Senator Kyl); citing H.R. Rep. No. 112-98, pt. 1, at 48 (2011) (warning the AIA’s procedures should not be used as tools for harassment)).5 Nevertheless, like Petitioner, the panel “is not aware of a single case where a partially-instituted IPR was de-instituted post-SAS, as requested by Patent Owner.” Opp. 5. The panel is sympathetic to the position in which institution of the Freund-based grounds places Patent Owner. If now faced with the Petition in the first instance, and understanding that we have only a “binary choice,” it may well be appropriate to deny the Petition in its entirety. But we have been instructed that the Office SAS Guidance is to be interpreted with the weight of Office policy as precluding termination of a partially instituted proceeding in response to SAS Institute. Given that constraint, we are not persuaded that we abused our discretion in our modification Order to include review of all challenged claims and all grounds presented in the Petition. See 37 C.F.R. § 42.71(c).” slip op. at 9
Discretionary denialPatents in suitUS 7,975,305 - Bose Corporation v. Freebit AsRehearing deniedPTAB · Jul 10, 2018 · IPR2017-00130 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its determination that claims 1–13 would have been obvious over the cited references.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’995 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’995 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
NonePatents in suitUS 8,976,995 - Bose Corporation v. Freebit AsRehearing deniedPTAB · Jul 10, 2018 · IPR2017-00129 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding it had not shown that the Board overlooked or misapprehended arguments or evidence concerning Aber’s groove and obviousness of claims 1–10.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’436 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
- Expert testimonyDecided for patent owner
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’436 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
NonePatents in suitUS 8,630,436 - Daimler AG / Daimler North America Corporation et al. v. Stragent, LLCAll claims unpatentablePTAB · Jun 13, 2018 · IPR2017-00458 · APJ Carl L Silverman · IPR · Final written decision
Claims 1–7 and 20 are unpatentable under § 103 over Miesterfeld, Stewart, and Wense; claims 1, 3–7, and 20 are also unpatentable over Posadas, Stewart, and Wense.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner proposes that the term, “sharing the information,” should be construed according to its plain and ordinary meaning, which Patent Owner argues is “completing delivery to a destination” as information is not “shared” until the information has completed delivery to a destination. PO Resp. 15–16. Patent Owner contends the claim language and the specification describe the actual delivery of information to the local bulletin board. Id. (citing Ex. 1001, 6:27–31, 12:33–35). Petitioner contends Patent Owner’s proposed meaning is unreasonably narrow and proposes, instead, that the term “should be construed as ‘making the information available to another process,’ consistent with its plain meaning.” Reply 7 (citing Ex. 1036 ¶ 29). Petitioner observes the challenged claims do not recite delivery into a second process, and 7 Petitioner refers to the ’843 patent; in context, it is clear the reference is intended to be to the ’705 patent. additionally notes claim 1 of the related ’843 patent merely requires “sharing the information” and it is not until dependent claim 16 of the ’843 patent that “sharing” further includes “providing the information.” Id. Petitioner contends the doctrine of claim differentiation further supports its proposed claim construction. Id. Petitioner contends this claim construction is consistent with the Specification in which information is shared by placing the information on a bulletin board. Id. at 8 (citing Ex. 1036 ¶ 32). We agree with Petitioner’s claim construction analysis and agree that the broadest reasonable interpretation of “sharing the information” is “making the information available to another process.”” slip op. at 10
- Skill levelSkill level patent owner adoptedDecided for patent owner
“ordinary skill in the art “would have at least an undergraduate degree in Computer Engineering, Computer Science, or equivalent degree, and at least two years relevant experience in industry.” Ex. 1004 ¶ 48. Patent Owner’s Declarant, Jeffrey A. Miller, Ph.D, asserts that a person of ordinary skill in the art would have at least the qualifications of or equivalent to either a master’s degree in electrical engineering, computer science, or computer engineering with course work or research in embedded networking technologies or an undergraduate degree in electrical engineering, computer science, or computer engineering with at least two years of relevant work experience in industry. Ex. 2004 ¶ 12. Based upon our review of the ’705 patent and the prior art of record, we find Dr. Miller’s statement of the level of ordinary skill in the art reasonable, and adopt it for this Final Written Decision.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We agree that Stewart’s memory management techniques are fundamental techniques applicable to shared memory environments and Petitioner’s reasoning is thus supported by sufficient rational underpinning. See KSR, 550 U.S. at 418. In particular, we credit Dr. Koopman’s testimony as being more persuasive than Dr. Miller’s testimony. See Ex. 1036 ¶¶ 59– 62; Ex. 1004 ¶¶ 97, 98; Ex. 2004 ¶¶ 30–39.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner contends there is no basis for combining Posadas and Stewart to arrive at the invention of claim 1. PO Resp. 27–30 (citing Ex. 2004 ¶¶ 30, 33). According to Patent Owner, Petitioner provides no explanation why a skilled artisan would have combined Posadas’s blackboard system with Stewart’s non-blackboard system. Id. (citing Ex. 2004 ¶¶ 34– 39). Petitioner contends a blackboard is simply a specific type of shared memory and the operations described by Stewart are fundamental features that could apply to any shared memory environment, e.g., determining whether memory is available before writing is a basic process that is not specific to any memory architecture. Reply 19 (citing Ex. 1037 ¶¶ 57–60). According to Petitioner, Stewart’s spin locks were well–known, simple tools to access shared memory and application to Posadas would have been straightforward. Id. at 20 (citing Ex. 1036 ¶¶ 57–59; Ex. 1004 ¶¶ 97–99). We agree that Stewart’s memory management techniques are fundamental techniques applicable to shared memory environments and Petitioner’s reasoning is thus supported by sufficient rational underpinning. See KSR, 550 U.S. at 418. In particular, we credit Dr. Koopman’s testimony as being more persuasive than Dr. Miller’s testimony. See Ex. 1036 ¶¶ 59– 62; Ex. 1004 ¶¶ 97, 98; Ex. 2004 ¶¶ 30–39.” slip op. at 29
Patent outcomesUS 8,209,705 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,209,705 - Daimler AG / Daimler North America Corporation et al. v. Stragent, LLCAll claims unpatentablePTAB · Jun 13, 2018 · IPR2017-00457 · APJ Carl L Silverman · IPR · Final written decision
Claims 1 and 47–51 are unpatentable as obvious over Posadas, Stewart, and Wense, and over Miesterfeld, Stewart, and Wense.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Petitioner proposes the broadest reasonable construction of “real- time” includes “[a]ny response time that may be measured in milli- or microseconds, and/or is less than one second.” Pet. 10. Petitioner contends the ’843 patent specification expressly defines this term. Id. (citing Ex. 1001, 3:35–38). In light of the cited portion of the specification, we construe “real-time” as including responses that occur in less than one second. The first part of the quotation provided in the specification (“may be measured in milli- or microseconds”) is not limiting because any response time, no matter how large or small, may be measured in milli- or microseconds.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner proposes that the term, “sharing the information,” as recited in claim 1 and similarly recited in claims 47–51, should be construed according to its plain and ordinary meaning, which Patent Owner argues is “completing delivery to a destination” as information is not “shared” until the information has completed delivery to a destination. PO Resp. 15–16. Patent Owner contends the specification describes the actual delivery of information to the local bulletin board. Id. (citing Ex. 1001, 6:27–31, 12:33– 35). Petitioner contends Patent Owner’s proposed meaning is unreasonably narrow and proposes, instead, that the term should be construed as “making the information available to another process,” consistent with its plain meaning. Reply 6–7. Petitioner observes the independent claims do not recite delivery to a second process, and, it is not until dependent claim 16 (not challenged in this IPR) in which “sharing” further includes “providing the information.” Id. at 7. Petitioner contends the doctrine of claim differentiation further supports its proposed claim construction. Id. Petitioner contends this claim construction is consistent with the Specification, in which information is described as shared by placing the information on a bulletin board. Id. We agree with Petitioner’s claim construction analysis and agree that the broadest reasonable interpretation of “sharing the information” is “making the information available to another process.”” slip op. at 10
- Skill levelSkill level patent owner adoptedDecided for patent owner
“C. Level of Skill in the Art Petitioner’s Declarant, Philip Koopman, Ph.D., asserts that a person of ordinary skill in the art “would have at least an undergraduate degree in Computer Engineering, Computer Science, or equivalent degree, and at least two years relevant experience in industry.” Ex. 1005 ¶ 48. Patent Owner’s Declarant, Jeffrey A. Miller, Ph.D, asserts that a person of ordinary skill in the art would have at least the qualifications of or equivalent to either a master’s degree in electrical engineering, computer science, or computer engineering with course work or research in embedded networking technologies or an undergraduate degree in electrical engineering, computer science, or computer engineering with at least two years of relevant work experience in industry. Ex. 2004 ¶ 12. Based upon our review of the ’843 patent and the prior art of record, we find Dr. Miller’s statement of the level of ordinary skill in the art reasonable, and adopt it for this Final Written Decision.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We agree that Stewart’s memory management techniques are fundamental techniques applicable to shared memory environments and Petitioner’s reasoning is thus supported by sufficient rational underpinning. See KSR, 550 U.S. at 418. In particular, we credit Dr. Koopman’s testimony as being more persuasive than Dr. Miller’s testimony on this point. See Ex. 1037 ¶¶ 59–62; Ex. 1005 ¶¶ 97, 98; Ex. 2004 ¶¶ 30–39.” slip op. at 27
Patent outcomesUS 8,566,843 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,566,843 - BMW Of North America, LLC v. Stragent, LLCAll claims unpatentablePTAB · Jun 13, 2018 · IPR2017-00677 · APJ Patrick M Boucher · IPR · Final written decision
Claims 51–59 are unpatentable: claims 51–59 over Staiger and Millsap, and claims 51 and 54–57 over each OSEK-based obviousness ground.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to exclude, deniedDenied
“We have reviewed the relevant deposition testimony, in which Dr. Miller was asked to identify the standard he used when construing claim terms in his Declaration. Ex. 1025, 27:1–34:14. We agree with Petitioner that Dr. Miller did not provide responses sufficient to conclude that he was aware of and/or applied the correct claim-construction standard. See id. at 27:5–6 (“I used what is generally accepted in the field.”), 27:9–11 (“So to – for construing the claim terms is providing a definition of what the term is. So I provided a general definition for the terms.”), 30:3–6 (“Well, that’s the standard that I used for construing the claim terms in this Declaration. I don’t know if that’s the legal qualification for construing claim terms.”), 32:18–23 (“broadest reasonable interpretation” would mean “when you’re defining a term that you would define it in a way that is, first of all, reasonable, that it makes sense and that it’s broad, meaning general and that it’s interpreting the phrase or the term”). Nevertheless, we are not persuaded that the appropriate remedy is exclusion of Dr. Miller’s testimony. As Patent Owner asserts, “[t]he role of the expert witness under the Federal Rules of Evidence is to ‘help the trier of fact to understand the evidence or to determine a fact in issue.’” Paper 24, 2–3 (quoting Fed. R. Evid. 702) (emphasis by Patent Owner). As Patent Owner further asserts, Petitioner does not “impugn[]” Dr. Miller’s credibility as an expert in the subject matter at issue. Id. at 3–4. We agree with Patent Owner that “Petitioner’s attack on the sufficiency of the evidence is improper in a motion to exclude.” Id. at 4 (citing Microsoft Corp. v. Surfcast, Inc., Case IPR2013-00292 at 52–53 (Paper 93) (PTAB Oct. 14, 2014)). We accordingly deny Petitioner’s Motion to Exclude.” slip op. at 13
- Expert testimonyPatent owner expert discountedOther
“Petitioner alternatively argues in its Reply that “Because Dr. Miller did not apply the correct claim construction standard, his opinions on claim construction (Ex. 2001, §§16-21) should be afforded no weight.” Reply 2. Although we agree that the weight to be accorded to Dr. Miller’s testimony on claim construction is impacted by the uncertainty of the analytical procedure he followed, we are not persuaded that his testimony should be discounted wholesale. Dr. Miller provides relevant opinions on a number of issues, particularly including how a person of ordinary skill in the art would understand certain terms in light of the Specification, that are helpful to us as the trier of fact. “There is no more certain test for determining when experts may be used than the common sense inquiry whether the untrained layman would be qualified to determine intelligently and to the best possible degree the particular issue without enlightenment from those having a specialized understanding of the subject involved in the dispute.” Ladd, Expert Testimony, 5 Vand. L. Rev. 414, 418 (1952).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“shared “in real time utilizing a second network protocol . . . ,” and dependent claim 59 recites that information is processed “to create, in real-time, messages in at least two other message formats . . . .” Petitioner argues that the Specification of the ’843 patent expressly defines “real-time”: “In the context of the present description, real-time may include any response time that may be measured in milli- or microseconds, and/or is less than 1 second.” Ex. 1001, col. 3, ll. 35–38. Accordingly, Petitioner proposes that “‘real-time’ should be construed as responses that occur in less than one second.” Pet. 13. Patent Owner contends that the definition from the Specification should be adopted. PO Resp. 15. We construe “real-time” as Petitioner proposes, i.e., as including responses that occur in less than one second. The first part of the quote cited above provided in the Specification (“may be measured in milli- or microseconds”) is not limiting because any response time, no matter how large or small, may be measured in milli- or microseconds.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“been reached in association with the storage request.” Petitioner proposes that “threshold” be construed consistent with a dictionary definition it provides, as a “value above which something is true or will take place and below which it is not or will not.” Pet. 13–14 (citing Ex. 1016, 5). Observing that the Specification of the ’843 patent uses “threshold” in the context of an elapsed time, Petitioner further proposes that this construction “include the maximum value (i.e., time-out) of a timer.” Id. (citing Ex. 1001, col. 8, ll. 21–25, col. 8, ll. 47–51). We agree, and accordingly construe “threshold” as Petitioner proposes.3 3. “heterogeneous networks” Dependent claim 55 recites that the “apparatus is operable such that the first network and the second network are heterogeneous networks.” The Specification of the ’843 patent defines “heterogeneous networks”: “In the context of the present description, heterogeneous networks may refer to any different communication networks with at least one aspect that is different.” Ex. 1001, col. 7, ll. 26–29. In light of this explicit definition, for purposes of this Decision, we construe “heterogeneous networks” as Petitioner proposes, i.e., as “networks having at least one aspect that is different.” Pet. 14 (citing 3 Patent Owner advocates for the same construction advanced by Petitioner, but omits inclusion of the maximum value of a timer. PO Resp. 15. Although Patent Owner asserts that the construction is otherwise “the definition provided by the ‘843 Patent,” it does not cite to the ’843 patent to support its assertion, and we are unable to identify such a definition in the patent. Nevertheless, we agree with Petitioner that any distinction between the constructions is not material to any grounds. See Reply 6.” slip op. at 16
Patent outcomesUS 8,566,843 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,566,843
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.