• Askeladden L.L.C. v. Kioba Processing LLCAll claims unpatentable
  PTAB · Mar 25, 2024 · IPR2023-00147 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 8–22 are unpatentable as anticipated by Lauper or obvious over Lauper, ISO 7816-4, and ISO 14443; claim 23 is obvious over Lauper and Fu, with or without the ISO standards.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner presents the following assessment as to the level of skill in the art: 7 Neither party presents any objective indicia of non-obviousness. As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[8] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15–16 (citing Ex. 1002 ¶¶ 101–103; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther

    “C. Claim Construction We construe claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioner offers claims construction for the following terms: “transaction controller” (claims 8–23); “smartcard chip” (claims 8, 9); “said processor” (claims 10, 14, 25); “mobile user interface device” (claims 8–11, 13, 15, 16, 18, 21). Pet. 11–15. For purposes of instituting trial, we adopted Petitioner’s proposed constructions for the above-noted terms. Inst. 8 Person of ordinary skill in the art. Dec. 10–12. Patent Owner has offered no challenges to any of those claim constructions as a part of this proceeding. After reviewing the record, we adopt Petitioner’s proposed constructions. See Ex. 1001, 31:39–54; Ex. 1002 ¶¶ 79–100; Pet. 12–15. For convenience, we reproduce them in table format below:” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We have considered the record and determine that Petitioner’s proposed grounds of unpatentability based on (1) Lauper alone, and, (2) Lauper, ISO 7816–4, and ISO 14443, find ample evidentiary support in the disclosures of the prior art. In particular, we are satisfied that Petitioner demonstrates that claims 8–22 are anticipated by Lauper and also rendered obvious based on Lauper, ISO 7816–4, and ISO 14443. See Pet. 16–64. We also credit Mr. Zatkovich’s unrefuted testimony offered in support of those proposed grounds of unpatentability. See, e.g., Ex. 1002 ¶¶ 318–456. For the foregoing reasons, we determine that Petitioner has shown that all the limitations of claims 8–22 are accounted for by either Lauper alone, or, alternatively, by Lauper taken with ISO 7816–4 and ISO 14443. We also determine that Petitioner has set forth adequate reason to combine the teachings of the prior art, with a reasonable likelihood of success in combining those teachings. Accordingly, we conclude that Petitioner has established by a preponderance of the evidence that claims 8–22 are unpatentable.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We have considered the record and determine that Petitioner’s proposed grounds of unpatentability based on (1) Lauper alone, and, (2) Lauper, ISO 7816–4, and ISO 14443, find ample evidentiary support in the disclosures of the prior art. In particular, we are satisfied that Petitioner demonstrates that claims 8–22 are anticipated by Lauper and also rendered obvious based on Lauper, ISO 7816–4, and ISO 14443. See Pet. 16–64. We also credit Mr. Zatkovich’s unrefuted testimony offered in support of those proposed grounds of unpatentability. See, e.g., Ex. 1002 ¶¶ 318–456. For the foregoing reasons, we determine that Petitioner has shown that all the limitations of claims 8–22 are accounted for by either Lauper alone, or, alternatively, by Lauper taken with ISO 7816–4 and ISO 14443. We also determine that Petitioner has set forth adequate reason to combine the teachings of the prior art, with a reasonable likelihood of success in combining those teachings. Accordingly, we conclude that Petitioner has established by a preponderance of the evidence that claims 8–22 are unpatentable.” slip op. at 17

  Patent outcomesUS 7,110,792 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,792
• Askeladden L.L.C. v. Kioba Processing LLCAll claims unpatentable
  PTAB · Mar 25, 2024 · IPR2023-00146 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–7 and 24–31 are unpatentable as anticipated by Lauper and, alternatively, as obvious over Lauper, ISO 7816-4, and ISO 14443.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner presents the following assessment as to the level of skill in the art: As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[7] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15 (citing Ex. 1002 ¶¶ 101–103; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Cir. 2005) (en banc). Petitioner offers claim constructions for the following terms: “smartlink module” (claims 1 and 24); “the module” (claims 2–7 and 25–31); “smartcard chip” (claims 1, 5, 24, and 26–31); and “said smartcard processor chip” (claims 2, 5, and 7). Pet. 11–15. For purposes of instituting trial, we adopted Petitioner’s proposed constructions for the above-noted terms. Inst. Dec. 10–12. Patent Owner has offered no challenges to any of those claim constructions as a part of this proceeding. Upon review of the record, we adopt Petitioner’s proposed constructions as a part of this Final Written Decision. See Ex. 1002 ¶¶ 67– 78–88; Pet. 12–15. For convenience, we reproduce them in table format below: Claim Terms Petitioner’s Proposed Constructions “smartlink module” and “the “a device that includes (1) a module” processor, (2) a wireless data channel to wirelessly communicate transaction data between said processor and a third party terminal, and (3) a second data channel electronically coupled to a mobile communication device.” Pet. 12 (citing Ex. 1002 ¶¶ 69–70). “smartcard chip” and “said “a device including a processor and smartcard processor chip”” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “integrated circuit (communication controller 21’ . . . includes a processor and memory and processor executable code for providing data processing capability” and that a skilled artisan would understand that integrated circuit “includes all of the components called out in the claims the ’792 Patent which would be included in a ‘smartcard chip.’” Pet. 30 (citing Ex. 1005, Fig. 1, ¶¶ 18, 22, 23, 25; Ex. 1002 ¶¶ 169–172, 179–190). On the record, we are satisfied that Lauper’s integrated circuit constitutes the claimed smartcard chip. slip op. at 15

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

    “does not constitute a smartcard chip, “it would have been obvious to a POSITA (as Ground 2) to modify Lauper to replace the ‘integrated circuit (communication controller 21)’ with a smartcard chip that conforms to the ISO standards.” Pet. 32 (citing Ex. 1002 ¶¶ 178–190) (emphasis omitted).8 In so contending, Petitioner points to disclosure in Lauper that it is “an aim of the present invention to propose a mobile telephone that is suited for the transmission of data with external devices according to a plurality of different standards.” Id. (quoting Ex. 1005 ¶ 5) (emphasis omitted). Petitioner also relies on the testimony of Mr. Zatkovich discussing the use of smartcard chips as a part of the ISO standards, such as ISO 7816-4 and ISO 14443, for the type of operations and functions disclosed in Lauper. Id. at 8 Petitioner makes the same alternative argument in connection with the “smartcard chip” recitation in independent claim 24. See Pet. 60–61. 32–34 (citing, e.g., Ex. 1002 ¶¶ 39–41, 42–45 124–125, 152, 174, 175, 177, 191, 192, 193; Ex. 1005 ¶¶ 23, 25, 32). Petitioner further explains that a skilled artisan would have had adequate reason to combine the teachings of Lauper, ISO 7816-4, and ISO 14443, with a reasonable likelihood of success in so combining those teachings. See id. We also are satisfied that Petitioner also accounts for the smartcard chip requirement of the claims as a part of the ground based on Lauper, ISO 7816-4, and ISO 14443.” slip op. at 15

  Patent outcomesUS 7,110,792 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,110,792
• T-Mobile USA, Inc. v. Dali Wireless Inc.All claims unpatentable
  PTAB · Mar 6, 2024 · IPR2023-00820 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–22 are unpatentable as obvious over Wu, alone for claims 1–3, 5–10, 12–14, and 16–21, and with Cannon for claims 4, 11, 15, and 22.

  RulingsFinal written decision

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

    “B. Claim Construction In inter partes reviews, the Board construes claims using the same” slip op. at 10

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

    “reasoning belies its conclusion. That Kabemoto and Bauman address the same problem and that Bauman’s cache was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.” slip op. at 85

  • PTAB / AIA Trials › §315(e) estoppelNot reached

    “III. RULE ESTOPPEL Petitioner asserts that estoppel applies under 37 C.F.R. § 42.73(d)(3) based on a prior adverse judgment with respect to a related patent. See Pet. 2–6. Patent Owner disagrees that rule estoppel applies. PO Resp. 21–22. Based on Petitioner’s showing of obviousness and common law collateral estoppel with respect to the DAU and digital representation of radio resources limitations of the challenged claims as indicated above, we do not reach alleged estoppel under 37 C.F.R. § 42.73(d)(3).” slip op. at 97

  Patent outcomesUS 11,006,343 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,006,343
• T-Mobile USA, Inc. v. Dali Wireless Inc.All claims unpatentable
  PTAB · Mar 6, 2024 · IPR2023-00832 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–22 are unpatentable: claims 1–3, 5–10, 12–14, and 16–21 as obvious over Wu; claims 4, 11, 15, and 22 as obvious over Wu and Cannon.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “digital representation of radio resources. See PO Resp. 30 (citing Ex. 2016 ¶¶ 50–51). Nevertheless, whether there is the stated need in Wu does not address Petitioner’s showing that digital sampling via an A/D converter describes the original analog carrier. As further discussed below in connection with claim 4, Dr. Chrissan does not address Wu’s paragraphs 55– 56 in rendering his conclusion that Wu’s RTUs are “pass-through devices,” rendering the testimony conclusory because it does not address this critical evidence. See PO Resp. 30 (citing Ex. 2016 ¶¶ 50–51); Ex. 2016 ¶¶ 50–51 (discussing Ex. 1007 ¶ 50)). In addition, as discussed in the previous paragraph, Dr. Chrissan’s deposition testimony shows that Wu sends and receives a digital representation of a carrier, which describes the carrier, because that is the essence of digital sampling.” slip op. at 53

  • PTAB / AIA Trials › §315(e) estoppelNot reached

    “based on a prior adverse judgment with respect to a related patent. See Pet. 2–6. Patent Owner disagrees that rule estoppel applies. PO Resp. 21–22. Based on Petitioner’s showing of obviousness and common law collateral estoppel with respect to the DAU and digital representation of radio resources limitations of the challenged claims as indicated above, we do not reach alleged estoppel under 37 C.F.R. § 42.73(d)(3).” slip op. at 97

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

    “reasoning belies its conclusion. That Kabemoto and Bauman address the same problem and that Bauman’s cache was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.” slip op. at 85

  Patent outcomesUS 11,006,343 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,006,343
• T-Mobile USA, Inc. v. Dali Wireless Inc.All claims unpatentable
  PTAB · Mar 6, 2024 · IPR2022-01345 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–22 are unpatentable as obvious over Wu, or Wu and Cannon, because Petitioner established unpatentability by a preponderance of the evidence.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “digital representation of radio resources. See PO Resp. 30 (citing Ex. 2016 ¶¶ 50–51). Nevertheless, whether there is the stated need in Wu does not address Petitioner’s showing that digital sampling via an A/D converter describes the original analog carrier. As further discussed below in connection with claim 4, Dr. Chrissan does not address Wu’s paragraphs 55– 56 in rendering his conclusion that Wu’s RTUs are “pass-through devices,” rendering the testimony conclusory because it does not address this critical evidence. See PO Resp. 30 (citing Ex. 2016 ¶¶ 50–51); Ex. 2016 ¶¶ 50–51 (discussing Ex. 1007 ¶ 50)). In addition, as discussed in the previous paragraph, Dr. Chrissan’s deposition testimony shows that Wu sends and receives a digital representation of a carrier, which describes the carrier, because that is the essence of digital sampling.” slip op. at 53

  • PTAB / AIA Trials › §315(e) estoppelNot reached

    “based on a prior adverse judgment with respect to a related patent. See Pet. 2–6. Patent Owner disagrees that rule estoppel applies. PO Resp. 21–22. Based on Petitioner’s showing of obviousness and common law collateral estoppel with respect to the DAU and digital representation of radio resources limitations of the challenged claims as indicated above, we do not reach alleged estoppel under 37 C.F.R. § 42.73(d)(3).” slip op. at 97

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

    “reasoning belies its conclusion. That Kabemoto and Bauman address the same problem and that Bauman’s cache was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.” slip op. at 85

  Patent outcomesUS 11,006,343 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,006,343
• Google LLC v. Mira Advanced Technology Systems, Inc.All claims unpatentable
  PTAB · Oct 20, 2023 · IPR2022-00742 · APJ Stacey G White · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious under § 103(a) over Dunton, Barchi, and Bedingfield.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Here, Petitioner asserts that a person having ordinary skill in the art “in the technology field of the ’854 Patent had a bachelor’s degree in Computer Science, Computer Engineering, or Electrical Engineering, or an equivalent course of study, as well as 2 or more years of academic or industry experience in the field of wireless communication devices and location-based services.” Pet. 12 (citing Ex. 1003 ¶ 65). Patent Owner “generally agrees with Petitioner” as to the level of ordinary skill in the art and does not propose any changes to Petitioner’s definition. PO Resp. 8. Petitioner’s description is consistent with the prior art and patent specification currently before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For purposes of our Decision, we adopt Petitioner’s description.” slip op. at 11

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

    “B. Claim Construction In an inter partes review proceeding, a patent claim shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as amended Oct. 11, 2018). Our rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13. Petitioner “interpret[s] all claim terms in accordance with their ordinary and customary meaning.” Pet. 12. Patent Owner has not put forth any arguments in its papers related to claim construction.13 See PO Resp. 2. We determine that no claim terms require express construction for purposes of this Decision. 13 At the oral hearing, Patent Owner’s counsel indicated that a formal claim construction would be useful, but he also stated that “it’s too late to do anything like claim construction.” Tr. 43:1–6, 34:8–12. Notwithstanding Patent Owner’s comments at the oral hearing, we find that the issues in the case are amenable to resolution without an express claim construction.” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We do not agree with Patent Owner’s assertions. We find Petitioner’s rationale for the combination to be well supported. Petitioner points out that “Dunton itself states that ‘[t]echniques to improve management of [] tasks may result in more productivity and better time management’ and that ‘[a]ccordingly, there may be a need for such techniques in a device or network.’” Reply 17 (citing Ex. 1006 ¶ 1; Ex. 1003 ¶ 133) (alternations in original). Mr. Schmandt supports Petitioner’s arguments by opining that “[a person of ordinary skill in the art] looking to obtain additional information regarding where and when to perform tasks to improve management of tasks (as discussed in Dunton) would be motivated to look to references like Barchi that teach methods to obtain additional contact information using techniques like the reverse phone number lookup or use of other databases.” Ex. 1003 ¶ 135. Thus, we agree with Petitioner and find that Dunton provides a rationale for looking to the other cited references to provide techniques to improve task management. As such, we find Petitioner’s rationale for the combination to be persuasive and well supported.” slip op. at 33

  Patent outcomesUS 10,594,854 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,594,854
• Unified Patents, LLC v. Commworks Solutions, LLCAll claims unpatentable
  PTAB · Feb 13, 2023 · IPR2021-01297 · APJ John R Kenny · IPR · Final written decision

  Claims 1–6, 9–13, and 16–20 are unpatentable under § 103 based on the Rune–ETSI and Pirkola–Rune–ETSI combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “or similar post-undergraduate education; and (2) at least two years of experience in mobile telecommunications, with more education substituting for less experience and vice versa.” Pet. 5–6 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not contest Petitioner’s definition of an ordinarily skilled artisan. See generally PO Resp. We adopt Petitioner’s proposed description of an ordinarily skilled artisan as it is supported by Dr. Haas’s testimony and is consistent with the ’846 patent and the asserted prior art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “b. Analysis We construe a transport address as “the current address through which the mobile subscriber can be reached,” which is Petitioner’s proposed construction excluding Petitioner’s proposed requirement that a transport address excludes a home address. The Specification supports the above construction. The Specification describes a transport address as “the current address where the subscriber is reachable.” Ex. 1001, 5:14–18. Moreover, Patent Owner does not dispute that a transport address is a current address where the mobile subscriber can be reached. PO Resp. 4–13.” slip op. at 13

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

    “Petitioner argues an ordinarily skilled artisan would have had a reasonable expectation of success in combining ETSI’s and Rune’s teachings because both references relate to mobile communications systems employing the same architecture and protocols. Pet. 19. Petitioner asserts that both references are directed to the components and methods used in GSM systems. Id. Petitioner further argues that, combined, these references teach a mobile communications system that recovers a mobile subscriber’s location identity information from one server to another. Id. According to Petitioner, ETSI is part of the standards framework under which Rune’s system exists, so incorporating ETSI’s teachings into Rune’s embodiments would have required at most minor modifications in server or database software and would have yielded predictable results consistent with thoroughly vetted GSM standards. Id. Patent Owner does not dispute that an ordinarily skilled artisan would have been motivated to combine Rune’s and ETSI’s teachings, nor does Patent Owner dispute that an ordinarily skilled artisan would have had a reasonable expectation of success in combining these teachings. PO Resp. 13–19. As set forth below, however, Patent Owner disputes that the combination of Rune and ETSI teaches or suggests every limitation of the challenged claims. Id. After reviewing the record, we determine that Petitioner has proven that an ordinarily skilled artisan would have been motivated to combine Rune’s and ETSI’s teachings in the manner proposed by Petitioner and had a reasonable expectation of success in so doing. See, e.g., Ex. 1008 ¶¶ 52–56.” slip op. at 28

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Upon review of the record, we determine that Petitioner has proven by a preponderance of the evidence that the combination of Rune and ETSI teaches limitation 1.1. As set forth in Section II.C.1 above, with our construction, a transport address does not have to be an IP address. Thus, we disagree with Patent Owner’s argument that the LMSI is not a transport address because it is not an IP address. Ex. 1008 ¶ 57.” slip op. at 31

  Patent outcomesUS 8,923,846 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,923,846
• Unified Patents, LLC v. Sovereign Peak Ventures, LLCAll claims unpatentable
  PTAB · Nov 8, 2022 · IPR2021-00852 · APJ John R Kenny · IPR · Final written decision

  Claims 1–5 are unpatentable under § 103: claims 1–4 over Ravi and Goetz, and claim 5 over Ravi, Goetz, and Rhee; the Zhu grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner adopts Petitioner’s position that [an ordinarily skilled artisan], at the time of the invention, would have had a (1) an undergraduate degree in electrical engineering or a closely related scientific field, such as physics, computer engineering, or computer science, or similar advanced post-graduate education in this area; and (2) two or more years of experience with video processing. PO Resp. 6 (citing Pet. 8, Ex. 2005 ¶¶ 26–27). After reviewing the record, we find Petitioner’s proposed definition to be reasonable and adopt it. We, however, would reach the same conclusions if were to adopt Patent Owner’s slightly different definition.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “b. Partial Construction We agree with Petitioner that limitation 1.2.4 does not require that its recited retransmission decision be based directly on the bit rates of received packets without any additional or intermediate calculations. The plain language of the limitation merely requires that its retransmission decision be based on the bit rates of received packages. Ex. 1001, 8:16–21. This plain language does not require that the retransmission be directly based on the bit rates of received packages or that the bit rates not be subject to any additional and intermediate calculations. Id. Further, we agree with Petitioner that the Specification does not support requiring that the recited retransmission be directly based on the bit rates of received packages or preclude any additional and intermediate calculations. We credit Dr. Houh’s undisputed testimony that the Specification does not disclose any determinations based on the bit rates of previously received packets. Ex. 1022 ¶ 12. We further credit Dr. Houh’s undisputed testimony that the only bit rate-based determination described in the Specification depends on the bit rates of sent frames, not received data” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Second, Ravi teaches making a retransmission decision based on an estimate of round trip time from when a retransmission request is sent to a server and the time a copy of the missing data packet is received at the client computer in response to the transmission request. Ex. 1003 ¶¶ 79–81. Figure 12 of Ravi “is a flow chart illustrating selective retransmission” of “missing data packets for just-in-time (JIT) reliability.” Ex. 1005, 4:13–14, 11:42–45. In the process of Figure 12, if a skipped packet is not found in a playout buffer, computer 240 computes a Round_Trip_Time for the missing data packet # n+1. Id. at 11:53–56. “The Round_Trip_Time is an estimate of the time beginning from the time a retransmission request is sent to stream server 220 till the time a copy of the missing data packet 240 is received at client computer in response to the retransmission request (step 1230).” Id. at 11:56–60. “If there is sufficient time to reasonably execute a timely retransmission, e.g., the difference between the timestamp of the missing data packet and the timestamp of the currently displayed data packet is greater than the Round_Trip_Time (step 1240), then client computer 240 sends a request to server 220 for a retransmission of the missing data packet (step 1250).” Id. at 11:61–67. Thus, Ravi teaches making a retransmission decision based on an estimate of round trip time for a missing packet. Ex. 1003 ¶¶ 79–83. Third, although Ravi does not expressly explain how it calculates estimated round trip times, those estimates are based on bit rates of previously received data packets. Ex. 1003 ¶ 82. A bit rate is a measure of “speed at which binary digits are transmitted” (Ex. 1017, Microsoft Computer Dictionary 4th ed.) or the “streaming speed of digital content on a network” (Ex. 1019, Microsoft Computer Dictionary 5th ed.14). Ex. 1003 ¶ 82. As Dr. Houh explains, this means that Ravi’s retransmission decision is based on the speed at which that content will be received over the network after examining the speed at which previous content was received (i.e., the receiver estimates how long a future packet will take to receive with knowledge of how long it took to receive previous packets). Id. ¶ 83. Slower bit rates lead to longer round trip times; faster bit rates lead to shorter round trip times. Ex. 1022 ¶ 32. As Dr. Houh sets forth, with 50 Kb video packets and 1 Kb transmission requests, if the bit rate for a network is 50 Kbps, the round trip time would be approximately 1.02 seconds, excluding additional 14 Dr. Houh testifies that although the 5th edition of the Microsoft Computer Dictionary was published in 2002, a POSITA would have recognized this definition of “bit rate” as the “streaming speed of digital content on a network” to be applicable at the time of the ’038 Patent’s May 2000 priority date. Ex. 1003 ¶ 82 n.3. Patent Owner has not disputed this testimony. See generally PO Resp.; Ex. 2005. propagation and queing delays. Id. ¶ 39. If the bit rate speed is 100 Kbps, then the round trip transmission is 0.51 seconds, excluding additional propagation and queing delays. Id. ¶ 40. Thus, the round trip transmission at 50 Kbps is significantly slower than that at 100 kbps. Id. As a result, if the time stamp difference for the packets is 1.00 seconds, the retransmission request would occur with the 100 Kbps bit rate, but not with the 50 Kbps bit rate. Id. ¶ 42. Thus, Ravi’s retransmission decision based on an estimate of round trip time is a retransmission decision based on bit rates of previously received data packets. Ex. 1003 ¶ 82; Ex. 1022 ¶ 42.” slip op. at 35

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

    “Second, an ordinarily skilled artisan would have combined the teachings of Ravi and Goetz based on motivations provided by those references. Ex. 1003 ¶ 103; Ex. 1022 ¶ 61. In Ravi, an overarching consideration in making a retransmission decision is whether there is sufficient time to reasonably execute a timely resubmission. Ex. 1005, 11:61–67; Ex. 1003 ¶ 103. Ravi acknowledges that its algorithm can be modified. Ex. 1005, 12:36–37; Ex. 1003 ¶ 103. Further, Ravi’s goals include “reducing network traffic . . . and further improving network efficiency.” Ex. 1005, 12:5–12; Ex. 1003 ¶ 103. Goetz sets forth a similar goal, noting that its “underlying philosophy is that, if the network resources are available, then they should be utilized to increase the likelihood that the presentation will include more of the media information.” Ex 1006, 15:17– 23; Ex. 1003 ¶ 104. In other words, Goetz motivates an ordinarily skilled artisan to incorporate a bandwidth measure in making retransmission decisions so that the end-user’s presentation includes more information, which in turn provides an improved media presentation. Ex. 1003 ¶ 104. For example, delivering more media information to the user results in a higher quality presentation (e.g., a presentation with higher resolution, or a presentation without substantial skips, or a presentation with fewer blocking artifacts). Id. Thus, we determine that an ordinarily skilled artisan would have been motivated to combine Ravi’s and Goetz’s teachings. Id.; Ex. 1022 ¶ 61. Third, an ordinarily skilled artisan would have had a reasonable expectation of success in combining Ravi’s and Goetz’s teachings. Id. Ravi and Goetz use similar hardware to make retransmission decisions. Ex. 1022 ¶ 62; Ex. 1005, 4:28–5:30; Ex. 1006, 1059–60. In addition, received bandwidth measurement techniques and equations were well known. Ex. 1022 ¶ 62 (citing Ex. 1026, 4:8–34, 13:11–17:37; Ex 1027, 10:28–46, 12:62–13:4).” slip op. at 43

  Patent outcomesUS 6,877,038 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,877,038
• Unified Patents, LLC v. Sovereign Peak Ventures, LLCAll claims unpatentable
  PTAB · Oct 3, 2022 · IPR2021-00705 · APJ John R Kenny · IPR · Final written decision

  Claims 7 and 8 are unpatentable as obvious over Pearson and H.264; the Board did not reach the Chen and H.264 ground.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Upon review of the record, we agree with Petitioner’s proposed definition for the ordinary level of skill in the art with the modifications proposed by Patent Owner. We find that this modified definition is reasonable in light of the subject matter involved in the ’457 patent, and adopt this modified definition. In other words, we find that an ordinarily skilled artisan at the time of the invention would have had (1) an undergraduate degree in electrical engineering or a closely related scientific field, such as physics, computer engineering, or computer science, or similar advanced post-graduate education in this area; and (2) two years of experience with video processing. Ex. 1003 ¶¶ 38–40. Further, we find that “[m]ore experience [could] substitut[e] for less education, and vice versa.” Id. ¶ 39.” slip op. at 8

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

    “We agree with Patent Owner that the term “block decoding information” does not require construction. Claim 7 recites that its “block decoding information” is “a parameter necessary for decoding another block group from among the plurality of macroblocks.” Ex. 1001, 30:13–33. Petitioner’s proposed construction adds the requirement that the “block decoding information” be “a parameter necessary for decoding other macroblock groups,” rather than just another block group. Pet. 20 (emphasis added). Petitioner provides no persuasive explanation of why “block decoding information” should have such an additional requirement. Id. The definition that Petitioner cites from the Specification for “block decoding information” has no such requirement. Ex. 1001, 3:17–19. Petitioner, in fact, acknowledges that the definition in the Specification does not require that “block decoding information” be “a parameter necessary for decoding other macroblocks” by arguing that “[t]he ’457 patent explicitly defines 9 Paragraph 33 of Exhibit 1003 indicates that the quoted language is also found in the abstract of the ’457 patent, but the full quoted phrase does not appear in that abstract. Ex. 1001, code (57). ‘block decoding information [as] being a parameter necessary for decoding an other [sic] block group.’” Pet. 20 (emphasis added). The remainder of Petitioner’s construction for “block decoding information” by itself is already recited in claim 7 (i.e., a parameter necessary for decoding a macroblock). Thus, construing “block decoding information” to be “a parameter necessary for decoding a macroblock” is not necessary because claim 7 expressly recites that requirement. Further, we do not want to construe the term “block decoding information” in isolation in a manner that would render its express definition in claim 7 superfluous, as constructions that render claim language superfluous are highly disfavored. Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 810 (Fed. Cir. 2021) (“It is highly disfavored to construe terms in a way that renders them void, meaningless, or superfluous.”) (quoting Wasica Finance GmbH v. Continental Automotive Systems, Inc., 853 F.3d 1272, 1288 n.10 (Fed. Cir. 2017)). Therefore, we determine that the term “block decoding information” in isolation does not require construction. Claim 7 properly defines the term. 10” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “the Specification, in fact, teaches that a macroblock line is a block group. Ex. 1001, 8:1–7. In describing decoding unit 500, the Specification states that “[t]he variable length decoding unit 500 performs variable length decoding on a block group including plural macroblocks (for example, a macroblock line) to be decoded.” Id. (emphasis added). Further, Petitioner has not objected to characterizing a row as a block group. Pet. Reply 2–3. Thus, no party has expressed any objection to construing a block group as encompassing a row or line of macroblocks. Petitioner, however, objects to limiting the term “block group” to a row or line of macroblocks. Pet. Reply 2–3. Petitioner argues that the term, if construed, should be construed more broadly. Id. Patent Owner disagrees. PO Resp. 12; Sur-reply 7. For purposes of this Decision, we do not need to determine whether a broader construction of “block group” is warranted or whether, in particular, Petitioner’s broader proposed construction is correct. Construing the term “block group” as encompassing the undisputed subject matter of a row or line of macroblocks is all that is needed to resolve the disputes in this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). Thus, we construe the term “block group” as encompassing a line or row of macroblocks.” slip op. at 12

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

    “3. Assertion of Analogous Art Petitioner argues that Pearson and H.264 are analogous art because they are in the same field of endeavor as the ’457 patent, which Petitioner describes as systems and methods of decoding video data. Pet. 26–27 (citing Ex. 1001, 1:7–10; Ex. 1005, 1:6–9, Ex. 1006 § 1; Ex. 1003 ¶ 83). Patent Owner does not dispute this assertion. After reviewing the record, we determine that Petitioner has proven that Pearson and H.264 are analogous art.” slip op. at 17

  Patent outcomesUS 9,042,457 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,042,457
• Samsung Electroncis Co. Ltd. v. Acorn Semi, LLCAll claims unpatentable
  PTAB · Feb 9, 2022 · IPR2020-01183 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–3, 17–18, and 21–24 are unpatentable: claims 1–3 and 17–18 are obvious over Jammy, and claims 21–24 are anticipated by Grupp ’483 and Jammy.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); PowerOasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002),” slip op. at 22

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “As discussed above, Petitioner has demonstrated Grupp ’483 is prior art to challenged claims 1–3, 17–18, and 21–24 of the ’261 patent. It is undisputed that the priority applications disclose at least some group IV semiconductors. Thus, claims reciting the metal oxide interface layer and Group IV semiconductor are anticipated under In re Slayter, 276 F.2d 408, 411 (CCPA 1960) (“It is well settled that a generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus; in other words, whatever would infringe if subsequent will anticipate if prior.”) and In re Gosteli, 872 F. 2d 1008, 1010 (Fed. Cir. 1989). The additional limitations of the challenged dependent claims are also disclosed in Grupp ’483. See Pet. 25–26. For the reasons discussed above, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claims 1–3, 17–18, and 21–24 are anticipated by Grupp ’483.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “On this record Patent Owner has not provided sufficient evidence of a nexus between the long felt and the specific limitations recited in claims 1–3 and 17–18, e.g., the structure recited in independent claim 1, in which a metal oxide interface layer interposed between a metal and a group IV semiconductor comprising the source or drain of a transistor has a thickness between 0.1 nm and 5 nm.” slip op. at 39

  Patent outcomesUS 9,209,261 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,209,261

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.