• Arris International PLC / Arris Global Ltd. et al. v. Sony CorporationAll claims unpatentable
  PTAB · Sep 25, 2017 · IPR2016-00835 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1–4 are unpatentable as obvious over Wasilewski, Rosenberger, and Ishikawa, and independently over Wasilewski and Ejima.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed patent owner constructionDecided for patent owner

    “The parties appear to agree, at least for purposes of this proceeding, on the broadest reasonable construction of the control means limitation. First, there is no dispute that the “control means” limitation is subject to means-plus-function treatment pursuant to 35 U.S.C. § 112 ¶ 6.6 Pet. 18–19; PO Resp. 1. Second, there is no dispute that the function of this term is coextensive with the language of the claim—“controlling the transmission signal receiving means to receive the transmission signal of a channel indicated by the channel number being displayed when the command received by the command receiving means is broken.” Pet. 18; PO Resp. 16. Third, in post-institution briefing, the parties appear to agree that, for purposes of this proceeding, the corresponding structure disclosed in the ’643 patent is “a CPU implementing the algorithmic structure described in the specification at least at 7:58-8:10; and 9:15-30, and equivalents thereof.” See, e.g., Reply 3; Sur-Reply 2; Tr. 4:10–19, 23:3–16.” slip op. at 7

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

    “claim 1, wherein the channel number display control means switches the channels in the order of magnitude of the channel numbers.” Ex. 1001, 10:31–33 (emphasis added). In the interest of clarity, we address the broadest reasonable construction of this term, which was briefly discussed at the oral hearing. In the context of the claim language, we are persuaded that the broadest reasonable construction of “order of magnitude of the channel numbers” includes the “sequential order” of the channel number. See Tr. 9:1–15 (Petitioner’s counsel agreeing with this construction), 24:7–12 (Patent Owner’s counsel declining to give an opinion on the issue). The specification does not explicitly define the term, but is consistent with a construction that includes an arrangement of items by relative size. See, e.g., Ex. 1001, 1:61–63 (“The channel number display control means may switch the channels in the magnitude order of the channel numbers.”); 8:54–57 (“[T]he service_ids are stored in the order of the magnitude thereof, and incrementing the pointer by one and acquiring the service_id in the area indicated by the pointer can acquire a second larger service_id.” (emphasis added)). Accordingly, we adopt a broadest reasonable construction of “order of magnitude of the channel numbers” that includes the “sequential order” of the channel number.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “set forth by Dr. Samuel H. Russ. Pet. 8. Dr. Russ states that such a person would have had “at least a bachelor’s degree in digital electronics, electrical engineering, computer engineering, computer science, or a related technical degree with several years (e.g., 2–5 years) of post-degree experience in a similar field” or, alternatively, “an advanced degree, such as a Master’s Degree, in digital electronics, electrical engineering, computer engineering, computer science, or a related technical degree.” Ex. 1003 ¶ 36. Patent Owner does not address this issue. See PO Resp.; Sur-Reply. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art raised in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art itself may reflect an appropriate level of ordinary skill in the art). Accordingly, we adopt Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “been motivated to combine the teachings of Wasilewski, Rosenberger, and Ishikawa. See Pet. 34–36. Specifically, at the time of the invention, a person of ordinary skill would have recognized that the time required to change and tune channels in a digital system was noticeably longer than that for analog channels. Ex. 1001, 1:28–36; Ex. 1007, 3; Ex. 1015, 2:59–65, 3:48–56; Ex. 1017, 1:16–20. Such artisan would have been motivated to simplify and quicken this process, especially given the proliferation of channels and services throughout the industry. Ex. 1003 ¶ 202. Because a skilled artisan would have known about both analog and digital systems, it would have been obvious to look to Rosenberger’s analog solution to this problem and apply the same technique to the digital receiver of Wasilewski. Id. ¶¶ 203–204. We credit Dr. Russ’s unrebutted testimony that such combination would be “very simple from a technical standpoint,” requiring “essentially . . . a change in software to prevent the system from tuning a new channel while a channel-change button is being held down.” Id. ¶¶ 205–207. A preponderance of the evidence, therefore, shows that this combination is nothing more than “the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).” slip op. at 31

  Patent outcomesUS 6,084,643 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,084,643
• NXP USA, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00684 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 13–15, 18–20, 23–25, 36, 37, 40, 42, 43, and 46 are unpatentable under § 103 over Ritter combined with either version of the RFID Handbook.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 2–5). Under the broadest reasonable construction standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony 12 Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The case for not reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 2–5). Under the broadest reasonable construction standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony 12 Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The case for not reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “three to five years of industrial or academic experience in working with wireless communication technology, including radio frequency identification (RFID) devices and systems. Pet. 12–13 (citing Ex. 1303 ¶¶ 28-30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 24). We see no compelling reason to apply a different level of skill than that accepted by both parties, and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 16

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “unsupported. For example, NFCT identifies Dr. Mihran’s testimony that Ritter’s device “simulates a CIC transponder” as conclusory. Id. at 21–22 (citing Ex. 1303 ¶¶ 44, 46). To the contrary, Dr. Mihran provides sufficient explanation for his opinion and identifies enough supporting evidence. Dr. Mihran explains that Ritter describes an operating mode where a mobile 27 device is “inductively fed” by another mobile device, which indicates that the second device “generates the magnetic field that powers” the first device. Ex. 1303 ¶¶ 46–47 (citing Ex. 1304A, 11, 13). He further explains that Ritter discloses this operating mode may be used to “exchange data inductively” between the devices, indicating that the second device generating the magnetic field is operating as a “reader” that powers the first device, which operates as a “transponder.” Id. ¶ 47 (citing Ex. 1304A, 13). Further, Dr. Mihran identifies specific disclosures in Ritter, as well as similar disclosures in the RFID Handbook, regarding both “passive” and “active” load modulation. See id. ¶¶ 47, 50–54, 74. In Dr. Mihran’s expert7 opinion, a person of ordinary skill in the art consequently would have understood Ritter to teach that the mobile device acts as a transponder and transmits data via load modulation, i.e., by disturbing the magnetic field generated by the device acting as a reader. See id. Upon review, we disagree with NFCT that Dr. Mihran’s testimony is “conclusory, unsupported, and inconsistent with the cited references.” See PO Resp. 20– 21. To the contrary, we find Dr. Mihran’s expert testimony to be credible and persuasive.” slip op. at 27

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. Inside Secure And NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00683 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–3, 6–8, 10, 11, 28–31, 34, and 35 are unpatentable under § 103 over Ritter and the RFID Handbook, with Bashan added for claims 10, 28–31, 34, and 35.

  RulingsFinal written decision

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

    “conclude that the broadest reasonable construction of “contactless integrated circuit reader” is simply “device configured to read data from a contactless integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 1–5). Under the broadest reasonable construction standard, claim terms generally are 12 given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The case for not 13 reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including radio frequency identification (RFID) devices and systems. Pet. 13 (citing Ex. 1203 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 24). 16 We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 16

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “unsupported. For example, NFCT identifies Dr. Mihran’s testimony that Ritter’s device “simulates a CIC transponder” as conclusory. Id. at 21–22 (citing Ex. 1203 ¶¶ 44, 46). To the contrary, Dr. Mihran provides sufficient explanation for his opinion and identifies enough supporting evidence. Dr. Mihran explains that Ritter describes an operating mode where a mobile 28 device is “inductively fed” by another mobile device, which indicates that the second device “generates the magnetic field that powers” the first device. Ex. 1203 ¶¶ 46–47 (citing Ex. 1204A, 11, 13). He further explains that Ritter discloses this operating mode may be used to “exchange data inductively” between the devices, indicating that the second device generating the magnetic field is operating as a “reader” that powers the first device, which operates as a “transponder.” Id. ¶ 47 (citing Ex. 1204A, 13). Further, Dr. Mihran identifies specific disclosures in Ritter, as well as similar disclosures in the RFID Handbook, regarding both “passive” and “active” load modulation. See id. ¶¶ 47, 50–54, 76. In Dr. Mihran’s expert7 opinion, a person of ordinary skill in the art consequently would have understood Ritter to teach that the mobile device acts as a transponder and transmits data via load modulation, i.e., by disturbing the magnetic field generated by the device acting as a reader. See id. Upon review, we disagree with NFCT that Dr. Mihran’s testimony is “conclusory, unsupported, and inconsistent with the cited references.” See PO Resp. 20– 21. To the contrary, we find Dr. Mihran’s expert testimony to be credible and persuasive.” slip op. at 28

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

    “NXP also articulates sufficient reasoning with a rational underpinning why a person of ordinary skill would have been led to combine the relevant teachings of these references. Pet. 22; see KSR, 550 U.S. at 418. Supported by the testimony of Dr. Mihran, NXP contends a person of ordinary skill would have understood Ritter to teach an RFID system for communication via inductive coupling and that the RFID Handbook is “a compendium 27 describing the fundamentals and applications” of such systems. Pet. 22 (citing Ex. 1203 ¶¶ 44–49, 101) (internal quotation marks omitted). NXP asserts that the RFID Handbook describes the advantages of the elements of inductively coupled RFID systems and that those advantages would have motivated a person of ordinary skill to combine its teachings with the Ritter system. Id. Further, the evidence of record supports a finding that a person of ordinary skill would have found implementing such a combination to be “routine” and “straightforward,” recognizing that it would have yielded expected, predictable results. See id. (citing Ex. 1203 ¶ 101).” slip op. at 27

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. Inside Secure And NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00682 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 13–15, 18–20, 23–25, 36, 37, 40, 42, 43, and 46 are unpatentable as obvious over Gunnarsson combined with either RH-E or RH-G.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “In light of the fully developed record before us, including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 30–33) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1116 ¶¶ 7–21) cited by NXP, we continue to agree with NFCT that the broadest reasonable construction of “antenna circuit” requires a coil. Nonetheless, for the reasons discussed above, we remain unpersuaded that it would be necessary or proper additionally to include “for radiating and/or receiving a magnetic field” in the construction of “antenna circuit.” Thus, we determine that the broadest reasonable construction of 12 “an antenna circuit,” as recited in the challenged claims, is “a circuit, including a coil.”” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including RFID devices and systems. Pet. 13–14 (citing Ex. 1103 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 4–5 (citing Ex. 2004 ¶ 26). 22 We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 22

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Regardless whether Gunnarsson describes a single method of performing backscatter or two separate methods, we are persuaded by NXP’s argument, supported by Dr. Mihran’s testimony, that Gunnarsson’s disclosure of “varying the impedance . . . in accordance with a pattern that corresponds to [a] transmitted data stream . . . by switching on and off [a] modulation circuit[] . . . intended to modulate the carrier wave for writing data into the transponder” teaches data-carrying or data representative pulses of an alternating signal, as recited in claims 14 and 24, or an excitation signal, as recited in claims 37 and 43. We credit, in particular, Dr. Mihran’s testimony, cited in the Petition, that a person of ordinary skill in the art would have understood Gunnarsson’s teaching of switching on and off its modulator to mean that it alternately applies and does not apply a carrier signal to the antenna—i.e., produces pulses or bursts of the excitation signal—and that a person of ordinary skill would have understood that this method applies data representative pulses of the excitation signal to the antenna circuit in the same way as the “pseudo active load modulation” method of the ’770 patent. Ex. 1103 ¶ 117 (cited at Pet. 34–35). Further, as explained in the above discussion of claim 1, we are persuaded that the 59 combination of Gunnarsson and the RFID Handbook would have rendered obvious implementing Gunnarsson’s reader using inductive coupling. We additionally credit Dr. Mihran’s testimony that it would have been routine for a person of ordinary skill in the art, in such an implementation, to use the RFID Handbook’s teaching of using a “subcarrier” to carry encoded data in implementing this method, as well as that “it would have been clear to a person of ordinary skill in the art that such a combination would work and provide the expected functionality.” Ex. 1103 ¶ 120 (cited at Pet. 35).” slip op. at 59

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “NFCT’s argument and Dr. Apsel’s opinion that Gunnarsson is not from the same field of endeavor both rest on an overly narrow definition of the field of the invention as “inductive coupling” systems. PO Resp. 59; Ex. 2004 ¶¶ 110–115. Although the specification and independent claims 13, 23, 36, and 42 of the ’770 patent recite inductive coupling, we remain persuaded by NXP’s evidence that the microwave-based communication system described by Gunnarsson is within the same field of endeavor as the inductive coupling system of the ’770 patent, namely, “contactless ID” or “RFID” systems. We also remain persuaded by that evidence that a person of ordinary skill in the RFID art would have regarded the selection of one technology over the other merely as being guided by the principles set forth in the cited prior art, such as based on a system’s desired communication range. See, e.g., Ex. 1106, 11–13, 21–22 (providing an overview of RFID systems, and explaining that systems with write and read ranges of up to 1 m “are based upon an inductive (magnetic) coupling between reader and transponder,” whereas systems “for ranges typically between 1 m and 10 m . . . operate using electromagnetic waves in the microwave range”); Ex. 1108A, 8, 11–14, 21 (same). As we previously explained (Dec. on Inst. 33), Bigio does not limit the field of endeavor to only what is recited in the claims. In that case, in spite of the claims at issue being explicitly limited to a “hair brush,” the court held that the Board had correctly concluded that “Flemming’s toothbrush was in Bigio’s field of endeavor because ‘the structural similarities between toothbrushes and small brushes for hair would have led 43 one of ordinary skill in the art working in the specific field of hairbrushes to consider all similar brushes including toothbrushes.’” Bigio, 381 F.2d at 1323, 1326; see also Wyers v. Master Lock, 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly . . . .”). Similarly, we conclude that the similarities between inductive coupling and microwave-based RFID systems would have led one of ordinary skill in the art working with inductive coupling systems to consider microwave-based prior-art systems as being in the same field of endeavor. Although NFCT has pointed out differences between those systems, we are persuaded that the identified distinctions are such that one of ordinary skill working with one system still would have considered the other system. Having determined that Gunnarsson is analogous art under the first” slip op. at 43

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00681 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–3, 6–8, 10, 11, 28–31, 34, and 35 are unpatentable under § 103 over Gunnarsson and the RFID Handbook, with Bashan added for claims 10, 28–31, 34, and 35.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “previously presented by NFCT in its Preliminary Response filed in this case (Paper 10, 7–9), we explained that we agreed with NFCT and the District Court that, in view of the inventors’ statements during prosecution, the inventors disclaimed devices having antenna circuits that do not include a coil, but that that point did not appear to be in dispute on the record before us, and we determined that there was no need to construe further the term “antenna circuit” at that stage of the proceeding. Dec. on Inst. 13 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”)). We further explained that, because challenged independent claims 1 and 28 already explicitly recite “an antenna circuit to generate a magnetic field” and “an antenna circuit that generates a magnetic field,” respectively (Ex. 1001, 12:29, 15:22), NFCT’s proposed inclusion of 12 “for radiating . . . a magnetic field” would not add meaningfully to the broadest reasonable interpretation of the term “antenna circuit.” Dec. on Inst. 13. Finally, we explained that although the specification of the ’770 patent describes an embodiment in which a magnetic field sent by a CIC reader appears by induction in the antenna circuit of another CIC reader (see, e.g., Ex. 1001, 9:10–13), we were not persuaded on the record then before us that the broadest reasonable interpretation of the term “antenna circuit” requires the language “for . . . receiving a magnetic field.” Dec. on Inst. 13– 14. In light of the fully developed record before us, including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 30–33) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1016 ¶¶ 7–21) cited by NXP, we continue to agree with NFCT that the broadest reasonable construction of “antenna circuit” requires a coil. Nonetheless, for the reasons discussed above, we remain unpersuaded that it would be necessary or proper additionally to include “for radiating and/or receiving a magnetic field” in the construction of “antenna circuit.” Thus, we determine that the broadest reasonable construction of “an antenna circuit,” as recited in the challenged claims, is “a circuit, including a coil.”” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “In light of the fully developed record now before us, particularly including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 34–47) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1016 ¶¶ 22–35) cited by NXP, as well as further consideration of the claim differentiation arguments presented in connection with claims 29 and 30, we are persuaded that “load modulation signal” is a term of art in the context of RFID systems, specifically referring to a signal that transmits data by disturbing the magnetic field of another device in an inductive coupling system, and that NFCT’s proposed construction, accordingly, is the broadest reasonable construction of that term. We also agree with NFCT that this construction does not conflict with the presumption that a limitation added by a dependent claim is not found in its base claim. See Liebel-Flarsheim, 358 F.3d at 910. Claim 29 depends from claim 28 and adds the limitation “wherein the reader is configured to apply a load modulation signal with two states to the antenna circuit when the reader operates in the second operating mode and when data is to be transmitted to the other reader.” Ex. 1001, 15:36–40. The consequence of applying NFCT’s construction to that claim, thus, is that the reader must be configured to apply a signal that transmits data by disturbing the magnetic field of another, unspecified device. Claim 30, however, additionally requires the reader to be configured to apply to the antenna circuit not merely such a “signal that transmits data by disturbing the magnetic field of 20 another,” but more specifically a signal “comprising pulses of an alternating signal, the duration of each pulse being longer than the period of the alternating signal” and that is “configured to disturb the magnetic field generated by the second reader and being configured to be detected by the second reader as if [it] were a load modulation signal applied to an antenna load modulation switch of a contactless integrated circuit.” Id. at 15:41–50. Because NFCT’s proposed construction does not simply read narrowing limitations from claim 30 into claim 29, we disagree with NXP’s contention that the claims of the ’770 patent do not support NFCT’s construction. Pet. Reply 3. Thus, we determine that the broadest reasonable construction of “load modulation signal,” as recited in challenged claims 1–3, 6, 8, and 29–31, is a “signal that transmits data by disturbing the magnetic field of another device.”” slip op. at 20

  • PTAB / AIA Trials › Real party in interest / privityOther

    “Semiconductors Netherlands B.V. as real parties in interest with itself for this proceeding. Paper 20, 1. NFCT identifies France Brevets, S.A.S., as a real party in interest with itself for this proceeding. Paper 8, 2; see supra note 2. evidence to support these assertions, namely documents that purport to be license agreements between NFCT and Inside Secure. See Ex. 2001; Ex. 2002. In light of NFCT’s representations, we have treated NFCT as Patent Owner throughout this proceeding and continue to do so for purposes of this Decision, as reflected by the caption.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including RFID devices and systems. Pet. 14 (citing Ex. 1003 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 26). We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 23

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. Inside Secure And NFC Technology, LLCNo claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00692 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3, 7, 11, 12, 14, 18, and 22 not shown unpatentable over either § 103 combination because Petitioner failed to establish key routing-table and header-field limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contends that a person of ordinary skill in the art at the time of the claimed invention would have “a minimum of a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field, and approximately two years of professional experience with data communications and routing, including in the context of wireless communications as applied to RFID systems, or other relevant industry experience.” Pet. 13 (citing Ex. 1003 ¶ 30). Patent Owner does not dispute” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “Although the Federal Circuit has endorsed application of the broadest reasonable interpretation in construing claims during postgrant proceedings before the Board, it has cautioned that such endorsement “is not to say, however, that the Board may construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). “Rather, ‘claims should always be read in light of the specification and teachings in the underlying patent.’” Id. (quoting Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)). In addition, “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Id. (citing Tempo Lighting Inc. v. Tivoli LLC, 742 F.3d 973, 978 (Fed. Cir. 2014)). The Federal Circuit has emphasized that, even under the broadest reasonable interpretation, “the Board’s construction ‘cannot be divorced from the specification and record evidence,’” id. (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)), and “‘must be consistent with the one that those skilled in the art would reach,’” Id. (quoting In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). With these principles in mind, we determine that Patent Owner’s proposed construction conforms with the broadest reasonable interpretation of “header field,” which excludes the “routing parameters” that are saved in the “routing table.” At the oral hearing, Patent Owner conceded that “if you look at the term header field in a vacuum without any context, it could mean” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “unpatentability, we determine that there are multiple deficiencies with Petitioner’s showing with respect to the proposed combination as related to specifically recited claim limitations. See 35 U.S.C. § 316(e); 35 U.S.C. § 312(a) (requiring the petition to identify “in writing and with particularity . . . the grounds on which the challenge to each claim is based”); see also 37 C.F.R. § 42.104(b) (requiring “a statement of the precise relief request”). Because we find that even the combination, if effected in the manner proposed by Petitioner, does not meet all limitations recited in the challenged claims, we do not reach the issue of whether Petitioner articulates sufficient reasoning with rational underpinning to effect the combination. See Pet. 21–28; PO Resp. 21–47. First, we agree with Patent Owner that Petitioner insufficiently shows that the combination it proposes teaches or suggests “using the routing channel number as an index to select the destination point to which the 7 Although we rely on illustrations of Petitioner’s proposed combination as set forth in the Reply because they are more clear, we find those illustrations consistent with the position taken by Petitioner in the Petition. See Pet. 24– 27. controller subsequently sends the data.” PO Resp. 59–61. This limitation is recited in both independent claims 1 and 12 in the context of searching for a destination point of the data in the routing table. Ex. 1001, col. 19, ll. 6–9, col. 20, ll. 40–43. In articulating how it draws a correspondence between elements recited in the claims and entries of its proposed routing table, Petitioner makes the following identifications: (1) the recited “routing channel number” corresponds to the channel identifier in the inbound VCI allocated to a first data path defined by the card access module and router; (2) the recited “source point” corresponds to “an identifier of the SAP associated with a smart card application on the contact smart card . . . in the inbound ‘VPI’; and (3) the recited “destination point” corresponds to “an identifier of an SAP associated with software . . . in the outbound VPI.” Pet. 36. With these correspondences, we agree with Patent Owner that the channel identifier in the inbound VCI cannot function as an “index to select the destination point” as the claims require because there is no unique association of the outbound VPI with the inbound VCI.8 PO Resp. 59. This is evident from the table provided in the Reply, and reproduced above, in 8 Although we agree with Petitioner, as explained above in Section II.C.3, that a construction of “routing table” does not require a “one-to-one correspondence between the routing channel number and each corresponding routing parameter,” see PO Resp. 57 (emphasis added), the nature of an “index” nevertheless requires a unique association of the index with what it indexes. That is, an “index to select the destination point” must uniquely identify the selected destination point, even if the same destination point can be selected by multiple indexes. A “one-to-one” correspondence would additionally require that each destination point be selected only by a single index. which the same VCIin value of “Chin 1” is associated with different values of VPIout, namely “CPU SAP 1” in the first row and “RF SAP 1” in the third row.” slip op. at 29

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner also contends that “even under [Patent Owner’s] improper interpretation, it would have been an obvious implementation choice to use unique channel numbers as discussed in §V.B [of the Reply], such that the destination point is selected only with the channel number.” Reply 27–28 (citing Ex. 1024 ¶ 123). We do not consider this argument because it goes beyond the scope of argument made in the Petition. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’ [as required by 35 U.S.C. § 312(a)(3)].”).” slip op. at 31

  Patent outcomesUS 7,905,419 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,905,419
• Kingston Technology Company, Inc. v. Spex Technologies, Inc.Institution denied
  PTAB · Aug 17, 2017 · IPR2017-00825 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all asserted grounds because Petitioner did not show a reasonable likelihood of prevailing on claims 55 or 57.

  RulingsInstitution decision

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

    “Our Rules require that a petition for inter partes review identify “[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is 3 Petitioner proposes a definition for a person of ordinary skill in the art. Pet. 13; see Ex. 1010 ¶ 20. Patent Owner does not challenge this definition. For purposes of this Decision and to the extent necessary, we adopt Petitioner’s definition. found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc)).” slip op. at 10

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

    “2. “security module” and “target module” The terms “security module” and “target module” both are recited in each challenged claim. Petitioner identifies a dispute between itself and Patent Owner in related district court litigation as to whether those terms require only “functional (not necessarily physically distinct) modules.” Pet. 15. Specifically, Petitioner points to a statement in an infringement claim chart that appears to have been attached as an exhibit to Patent Owner’s complaint in the litigation that the accused device “has at least two modules, a security module (e.g., cryptographic functionality) and a target module (e.g., storage functionality).” Id. (citing Ex. 1008, 2). Petitioner states that it “expressly disagrees with Patent Owner’s broad construction of the ‘modules’ language as covering structures that are not physically distinct.” Id. Petitioner contends that the proper construction of “module” “requires a structure that performs as a ‘security’ module and another separate (potentially connected) structure that performs as a ‘target’ (e.g., memory module, second security module, etc.).” Id. at 18.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,003,135
• Kingston Technology Company, Inc. v. Spex Technologies, Inc.Institution denied
  PTAB · Aug 17, 2017 · IPR2017-00824 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because Kingston did not show a reasonable likelihood that claims 1–3, 6–8, 11–15, 23–28, and 36–39 were unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we are not persuaded, on this record, that Petitioner has established a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims on the asserted grounds. Accordingly, we deny the Petition and decline to institute an inter partes review of claims 1–3, 6–8, 11–15, 23–28, and 36–39 of the ’802 patent.” slip op. at 2

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

    “A claim limitation using the phrase “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.2 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Section 112 ¶ 6 provides that: An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Construing a means-plus-function claim term is a two-step process, wherein we first identify the claimed function and then determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351; Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Moreover, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004); Cardiac Pacemakers, 296 F.3d at 1113. This analysis applies similarly under both the broadest reasonable construction and district court-type claim construction standards. See Williamson, 792 F.3d at 1348 (affirming application of § 112 ¶ 6 in district court litigation); In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)” slip op. at 8

  • BurdenNot shown unpatentable

    “[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d at 1193). slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d at 1193). slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,088,802
• Askeladden L.L.C. v. Encoditech, LLCRehearing denied
  PTAB · Jul 31, 2017 · IPR2017-00452 · APJ Gregg I Anderson · IPR · Rehearing

  The Board denied Askeladden’s rehearing request and left in place the denial of IPR for claims 1–8 because the request showed no overlooked or misapprehended matter or abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The Request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3

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

    “In the Decision, we concluded Petitioner did not show sufficiently that Chieu taught the “direct limitation,” i.e., a “first mobile station” transmitting a signal “directly to the second mobile station,” as required by claims 1–7 of the ’095 patent. Dec. 16–19 (citing Ex. 1001, col. 21, ll. 34–39 (claim 1); Ex. 1001, col. 23, ll. 8–16 (claim 7)). We also concluded that Petitioner did not point to any teaching in Ford that expressly shows a “first communications device” or a “second communications device” as required by the preamble to independent claim 8. Id. at 19–21. Accordingly, the Petition was denied as to all challenged claims. Id. at 21.” slip op. at 2

  • Strike new argumentNew argument disregardedDenied

    “the ’095 patent, the Examiner found that Chieu disclosed these same [direct] limitations.” Req. Reh’g 4 (citing Pet. at 20 (citing Ex. 1004, 124–125)). Neither page 20 nor any other portion of the Petition argues the prosecution history as a basis for unpatentability. To the extent the prosecution history is a new argument, a request for rehearing is not an opportunity to make new arguments. Accordingly, we are not persuaded to change the Decision based on this assertion.” slip op. at 3

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

    “In essence, Petitioner proposes that Chieu be modified to omit the base station, thus meeting the direct limitation. However, “a proposed modification [is] inappropriate for an obviousness inquiry when the modification [would] render[] the prior art reference inoperable for its intended purpose.” In re Fritch, 972 F.2d 1260, 1266 n.12 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)). As discussed in section II.A.2. above, both the method and apparatus claims of Chieu require a base station. Chieu requires a base station in order to implement the methods and apparatus claimed and ignoring the base station would be counter to the invention described and claimed in Chieu. The invention would be “inoperable” in that nowhere in Chieu is there any suggestion that the base station could be omitted while still achieving the objects of the invention.” slip op. at 11

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,321,095
• Sprint Spectrum, L.P. v. TC Technology LLCInstitution denied
  PTAB · Jul 28, 2017 · IPR2017-00771 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of establishing claims 1 and 2 unpatentable over any of the three asserted § 103 grounds.

  RulingsInstitution decision

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

    “review of claims 1 and 2 of U.S. Patent No. 5,815,488 (Ex. 1001, “the ’488 patent”). Paper 1 (“Pet.”). Patent Owner, TC Technology LLC, filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1 and 2 of the ’488 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.5(b); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted) (“Phillips” standard). Under this approach, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Phillips, 415 F.3d at 1313. Petitioner and Patent Owner do not dispute any claim constructions. Prelim. Resp. 14. For purposes of this decision, we determine no terms need an explicit construction to resolve a controversy at this preliminary stage. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy).” slip op. at 5

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “that Fattouche’s teaching of transmitting a frame 410 over one vc slot is not compatible with Fattouche’s teaching of transmitting a frame that encompasses all of the vc slots shown in Figure 2. Prelim. Resp. 20 (citing Ex. 1004, 6:37–38, Fig. 2; Ex. 2001 ¶¶ 36–47, 53–57). Dr. Haas testifies that: Fattouche states, “the portable transmits a frame 410 over one vc slot. See the discussion in relation to Figure 5a below.” Fattouche 6:38. This is either a different embodiment than Figure 2 above or a mistake because in Figure 2 a “frame” equals all the N vc slots, so transmitting a “frame 410 over one vc slot” does not make sense. Further, certain portions of Fattouche, which I explain further below, describe Figure 2’s frame in more detail and disclose that a frame is all 4096 points (i.e., all N vc slots) and that the full frame is transmitted by a single transmitter. In fact, Fattouche’s detailed description (including its explanation of Figure 5) also describes transmitting a frame over one time slot, and not one vc slot . . . . Ex. 2001 ¶ 37. Dr. Haas further testifies that Fattouche teaches each portable transmitting one frame at a time using the Time Division Duplex operation illustrated in Figure 4. Ex. 2001 ¶¶ 44–45. We are persuaded by the testimony of Dr. Haas that, taken literally, the meaning of Fattouche’s description of transmitting a frame 410 having multiple vc slots over one vc slot “does not make sense.” We are also persuaded by the testimony of Dr. Haas that the description of transmitting a frame 410 over one vc slot in Fattouche likely means transmitting one frame over one time slot, using a Time Division operation, as shown in Figure 4 of Fattouche. In light of this expert testimony, we are not persuaded by Petitioner’s explanation of how Fattouche teaches that a person of ordinary skill in the art would transmit a frame of N voice channel slots as shown in Figure 2 of Fattouche over one voice channel slot as discussed on Page 6, line 38 of Fattouche. Petitioner, therefore, does not sufficiently show that Fattouche teaches “the subsets of baseband frequencies allocated to each remote location being mutually exclusive” as claimed in the “translating” step.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “2. Analysis Claim 1 recites the following “translating” step: at each remote location, coding data to be transmitted by translating each group of one or more bits of said data into a transform coefficient associated with a particular baseband frequency in a particular subset of orthogonal baseband frequencies allocated to the remote location . . . the subsets of baseband frequencies allocated to each remote location being mutually exclusive. Ex. 1001, 10:49–53 (emphasis added). Claim 2 recites a similar limitation. Id. at 11:13–17. Petitioner contends that Fattouche teaches this limitation in disclosing that each portable transmits information over one vc slot. Pet. 18 (citing Ex. 1004, 6:38). Petitioner also asserts that Fattouche “teaches the portables use the set of N vc slots depicted in Figure 2, each vc representing a particular subset of the baseband frequencies, in accordance with frequency division multiple access (“FDMA”). Id. Petitioner relies on testimony of Dr. Singer to support its argument that FDMA denotes assigning multiple users exclusive frequencies within a frequency band. Id. (citing Ex. 1002 ¶ 86).” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 5,815,488

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.