• Juniper Networks, Inc. v. Correct Transmission, LLCNo claims unpatentable
  PTAB · Oct 3, 2022 · IPR2021-00682 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–7, 9, 12–16, 27, and 28 were not shown unpatentable over Kuo and Balakrishnan or Casey and Balakrishnan because reasonable expectation of success was not established.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’465 patent, the background technical field, the prior art, and Petitioner’s unopposed proposed definition of the skilled artisan, (a) we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Yang (Ex. 1003 ¶¶ 64–68); and (b) we determine this would have provided a sufficient level of skill in light of the technology at issue in the ’465 patent and prior art.” slip op. at 12

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

    “C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 8 (“Juniper construes each of the ’465 claim terms as having its ordinary and customer meaning.”); PO Resp. 11 (“Patent Owner submits that no claim terms require construction beyond their plain and ordinary meaning.”). We do not find that the express construction of any term is necessary for this decision. See 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.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 13

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

    “In particular, we determine that Petitioner has not proven, by a preponderance of the evidence, that the skilled artisan would have had a reasonable expectation of success in provisioning Kuo to periodically synchronize forwarding tables. Neither the Petition nor the declaration from Dr. Yang that accompanied the Petition analyzed whether the skilled artisan would have had a reasonable expectation of success in provisioning Kuo to periodically synchronize forwarding tables. Pet. 49–68; Ex. 1003 ¶¶ 52–63, 186–229; see generally Pet. 1–84; Ex. 1003. Dr. Yang did not submit a second declaration in this proceeding. Pet. Reply (Exhibit List). Nevertheless, Petitioner argues that it proved the requisite reasonable expectation of success with the evidence that it cited in the Petition for other issues (e.g., motivation to combine) including Dr. Yang’s declaration testimony on those issues, Dr. Yang’s cross-examination testimony, Dr. Akl’s cross-examination testimony, and additional evidence that Petitioner cited in its Reply. Pet. Reply 8–11. But the expert testimony and other evidence cited by Petitioner fail to prove, by a preponderance of the evidence, that the skilled artisan would have had a reasonable expectation of success in provisioning Kuo to periodically synchronize forwarding tables. We turn first to the Petition itself.” slip op. at 21

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1003 ¶ 225 (cited by Pet. 65–67 n.191, which in turn is cited by Pet. Reply 8–10 n.28); see Ex. 1003 ¶¶ 217–224. To the extent that this testimony was intended to evidence a reasonable expectation of success, rather than a reason or motivation to modify Kuo (or combine Kuo and Balakrishnan) as expressly stated in the Petition, such testimony is conclusory. Dr. Yang refers to “predictable results” in the abstract, without explaining what those “results” are, how they relate to the invention of claim 1, or how such “results” may evidence the ordinarily skilled artisan (not an expert) having a reasonable expectation that provisioning Kuo’s disclosed system to periodically synchronize forwarding tables would be successful. Moreover, even if “Kuo’s network provides multipoint connectivity similar to Balakrishnan” (Ex. 1003 ¶ 225 (emphasis added)), this is merely a high-level feature or goal of many such networks and does not itself show why the skilled artisan would have had a reasonable expectation of success in modifying Kuo’s particular network to periodically synchronize forwarding tables given the particular design of Kuo’s system, and given the complex nature of virtual private local area networking technology (and computer networking technology generally). Thus, we do not find this testimony persuasive. See Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015).” slip op. at 28

  Patent outcomesUS 7,283,465 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,283,465
• Juniper Networks, Inc. v. Correct Transmission, LLCNo claims unpatentable
  PTAB · Aug 8, 2022 · IPR2021-00469 · APJ John R Kenny · IPR · Final written decision

  Claims 1–5, 8–15, and 18–20 were not shown unpatentable under either §103 ground because Petitioner failed to prove the required teachings and reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “takes no position with respect to Petitioner’s proposed level of skill” and does not offer any alternative characterization. PO Resp. 16. We adopt Petitioner’s characterization of the level of ordinary skill, which we determine is consistent with the ’150 patent’s written description and the asserted prior art.” slip op. at 6

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

    “B. Claim Construction Neither party proposes that we construe any claim term (Pet. 8; PO Resp. 6), and upon reviewing the record, we determine that it is not necessary to expressly construe any claim term. 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.”).” slip op. at 6

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “This cross-examination testimony by Dr. Yang, however, is conclusory and thus not persuasive. Dr. Yang does not identify the common features and similarities in the packet header formats between VPLS and Togazaki, nor did she explain why, in light of those features and similarities in the packet headers, it would be easy to bring VPLS into Togazaki. Ex. 2012, 90:25–91.6, 103:11–18. She merely concluded that doing so would be easy. Id. Further, Dr. Yang has not identified the modifications that would be required to provision a VPLS on Togazaki or why an ordinarily skilled artisan would have found those modifications to be minor. Id. Admittedly, it can be difficult for an expert to support cross-examination testimony during cross-examination, but Petitioner had other means to support this testimony. Petitioner could have questioned Dr. Yang on redirect to support this testimony. Further, Petitioner could have submitted a reply declaration from Dr. Yang, particularly where Petitioner knew that it would be relying on this cross-examination testimony in its Reply. Moreover, Dr. Yang could have analyzed the issue of reasonable expectation of success in her original declaration and provided this testimony and its support there. But Petitioner and Dr. Yang did not support the cited cross examination testimony, and unsupported expert testimony is not persuasive. In sum, we determine that Dr. Yang’s declaration and cross- examination testimony do not support a finding of a reasonable expectation of success.” slip op. at 14

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

    “We determine that Petitioner has not proven that an ordinarily skilled artisan would have had a reasonable expectation of success in provisioning a VPLS in Togazaki. Neither the Petition nor the declaration from Dr. Yang that accompanied the Petition analyzed whether an ordinarily skilled artisan would have had a reasonable expectation of success in provisioning a VPLS in Togazaki. Pet. 8–51; Ex. 1003 ¶¶ 66–107, 157–170. Dr. Yang did not submit a second declaration in this proceeding. Pet. Reply (Exhibit List). Nevertheless, Petitioner argues that it proved the requisite reasonable expectation of success with the evidence that it cited in the Petition for other issues (e.g., motivation to combine) including Dr. Yang’s declaration testimony on those issues, Dr. Yang’s cross-examination testimony, Dr. Akl’s cross-examination testimony, and additional evidence that Petitioner cited in its Reply. Id. at 29–33. As set forth below, although we agree with Petitioner that the cited prior art teaches provisioning VPLSs in certain prior art systems, that prior art teaching by itself does not establish a reasonable expectation of success in provisioning a VPLS in Togazaki’s system. Further, the expert testimony and other evidence cited by Petitioner fail to prove, by a preponderance of the evidence, that an ordinarily skilled artisan would have had a reasonable expectation of success in provisioning a VPLS in Togazaki’s system.” slip op. at 10

  Patent outcomesUS 7,983,150 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,983,150
• Fantasia Trading LLC D/B/A Ankerdirect v. Cognipower, LLCNo claims unpatentable
  PTAB · May 11, 2022 · IPR2021-00067 · APJ Jeffrey S Smith · IPR · Final written decision

  The Board held claims 1, 2, 8, 10, 18, 25, 27, 30–33, 37, 38, 40, 43–46, 49, 52–55, and 58–61 not shown unpatentable over either asserted obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Mr. Bohannon testifies that an ordinarily skilled artisan would have “B.S. degree, or its equivalent, in electrical engineering or physics and approximately two years of practical experience working with switching regulators and analog/mixed signal circuit design, or an equivalent 1 US 2011/0096573 A1, published Apr. 28, 2011 (Ex. 1005). 2 US 6,466,461 B2, issued Oct. 15, 2002 (Ex. 1006). 3 US 5,498,995, issued Mar. 12, 1996 (Ex. 1007). combination of academic study and work experience.” Ex. 1003 ¶ 41. Mr. Sandler uses the same definition for his analysis. Ex. 2001 ¶ 19. We are persuaded that Messrs. Bohannon’s and Sandler’s description of the level of ordinary skill in the art is appropriate for the subject matter of the ’031 patent, and, for this Decision, we adopt that description.” slip op. at 7

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

    “B. Claim Construction We determine that we do not need to construe any claim term expressly for this Decision. 4 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any 4 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision.” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “identify Zhu’s purported bias circuit. Inst. Dec. 30. Although we did not decline institution on that basis, we do agree with Patent Owner that, in the Petition, Petitioner should have identified the purported bias circuit in Zhu that an ordinarily skilled artisan would have been motivated to improve. Further, in our Institution Decision, we instructed Petitioner to identify Zhu’s purported bias circuit during the trial. Id. As set forth below, during trial, Mr. Bohannon, upon whose testimony Petitioner relies to prove a motivation to combine, gave inconsistent testimony regarding that bias circuit. That inconsistent testimony, coupled with Mr. Bohannon’s initial failure to identify Zhu’s bias circuit, diminishes the weight we accord to Mr. Bohannon’s testimony regarding motivations to combine. As mentioned, the Petition does not identify the bias circuit in Zhu that it claims an ordinarily skilled artisan would be motivated to improve. Pet. 12–13. In his original declaration, Mr. Bohannon also does not identify that bias circuit. Ex. 1003 ¶¶ 56–58. Zhu itself does not show or discuss any bias circuit. Ex. 2015 ¶ 118. Thus, Mr. Bohannon’s original testimony regarding motivations to combine lacks specificity: all four rationales set forth by Mr. Bohannon are directed to improving a bias circuit in Zhu, which Mr. Bohannon did not identify. Ex. 1003 ¶¶ 56–58; Pet. 12–13. As discussed, in our Institution Decision, we instructed Petitioner to identify the bias circuit in Zhu that an ordinarily skilled artisan would have been motivated to improve. Inst. Dec. 30. During subsequent cross-examination, Mr. Bohannon was asked to identify that bias circuit and identified the wire in Figure 3 of Zhu from Vout up to VCC at controller 320 as Zhu’s bias circuit. Ex. 2016, 186:4–6 (“The bias circuit was just a wire from Vout or trace out of circuit, probably a trace out of PCB going from Vout to 320.”). After Mr. Sandler testified that there was no evidence that a wire would have the problems that Mr. Bohannon identified Zhu’s bias circuit as having (Ex. 2015 ¶ 125), Mr. Bohannon changed his identification of Zhu’s bias circuit (Ex. 1025 ¶ 27), now identifying the elements highlighted in red in the annotated portion of Figure 3 of Zhu, reproduced below: Ex. 1025 ¶ 27. The above annotated figure additionally identifies diode 313, capacitor 314, and the wire extending from Vcc to Vout as Zhu’s bias circuit. Id. This latter identification is not only inconsistent with Mr. Bohannon’s cross examination testimony, it is also inconsistent with his original declaration testimony. In his original declaration, Mr. Bohannon illustrated the combination of Zhu and Mao as follows: Ex. 1003 ¶ 57. Mr. Bohannon described this combined structure as showing “the bias circuitry of FIG. 9 of Mao has been attached in place of the bias circuitry in Zhu, which merely powered the secondary controller using the output voltage.” Id. ¶ 58 (emphasis added). As can be seen from the above figure, diode 313 and capacitor 314 from Zhu Figure 2 were not replaced in this combined structure. Thus, Mr. Bohannon’s reply testimony that diode 313 and capacitor 314 are part of what he originally referred to as Zhu’s bias circuit is inconsistent with his original declaration testimony. This inconsistent testimony, coupled with the initial failure by Mr.” slip op. at 19

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Bohannon to identify Zhu’s bias circuit, diminishes the weight we accord to Mr. Bohannon’s testimony regarding motivations to combine. The proper identification of Zhu’s bias circuit is not a minor issue: all four rationales for Petitioner’s motivation to combine are directed to improving Zhu’s bias circuit. Pet. 12. Further, although, over Patent Owner’s objections, we gave Petitioner the opportunity to identify the bias circuit in Zhu to be improved during trial, we do not permit Petitioner and Mr. Bohannon to identify that bias circuit during cross examination and then completely change that identification after Patent Owner argued the initial identification was flawed. A “petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated Trial Practice Guide”), 73;5 see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new rationale to explain why one of skill in the art would have combined the references at issue); 37 C.F.R. § 42.23(b); Apple Inc. v. e- Watch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”). To be clear, we do not hold the issues concerning Petitioner’s and Mr. Bohannon’s identification of the bias circuit in Zhu to be dispositive, but those issues do diminish the weight we accord Mr. Bohannon’s testimony regarding motivations to combine, which undermines Petitioner’s showing regarding those motivations.” slip op. at 21

  Patent outcomesUS RE47,031 not shown unpatentable
  Claim construction§ 103 obviousness
• Fantasia Trading LLC D/B/A Ankerdirect v. Cognipower, LLCNo claims unpatentable
  PTAB · May 11, 2022 · IPR2021-00071 · APJ John R Kenny · IPR · Final written decision

  Claims 18–23, 25, 30–31, 34–36, 41–43, 45, and 48–51 were not shown unpatentable because the petitioner did not prove motivation to combine for any asserted obviousness ground.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Mr. Bohannon testifies that an ordinarily skilled artisan would have had a “B.S. degree, or its equivalent, in electrical engineering or physics and approximately two years of practical experience working with switching regulators and analog/mixed signal circuit design, or an equivalent combination of academic study and work experience.” Ex. 1003 ¶ 43. Mr. Sandler uses the same definition for his analysis. Ex. 2015 ¶ 19. We are persuaded that Messrs. Bohannon’s and Sandler’s description of the level of ordinary skill in the art is appropriate for the subject matter of the ’713 patent, and we adopt that description.” slip op. at 8

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

    “B. Claim Construction Patent Owner requests that we construe the term “regulate” in claims 18 and 48. PO Resp. 13. We determine that we do not need to expressly construe any claim term for this Decision. 6 Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of 6 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision.” slip op. at 9

  • BurdenFwd all claims patentableNot shown unpatentable

    “III. ANALYSIS OF ASSERTED GROUNDS “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). To satisfy its burden of proving obviousness, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of 6 We authorized the parties to file additional briefs regarding the meaning of the term “frequency” and appreciate the parties’ briefing of that issue. Papers 50–54. We have nevertheless determined that we do no need to construe that term for this Decision. prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Further, it is Petitioner’s “burden to burden to demonstrate both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quoting Intelligent Bio–Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367- 68 (Fed. Cir. 2016)). As set forth below, we determine that Petitioner has not proven that an ordinarily skilled artisan would have been motivated to make any of the combinations set forth in its asserted grounds. Thus, Petitioner has not proven that any challenged claim would be unpatentable. Magnum Oil, 829 F.3d at 1381.” slip op. at 9

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

    “First, Mr. Bohannon’s testimony, upon which Petitioner’s analysis for this rationale to combine relies, is unspecific and conclusory, and thus is entitled to little weight. Ex. 1003 ¶¶ 58–60. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015); Regents of Univ. of Min v. AGA Med. Corp., 717 F.3d 929, 941 (Fed. Cir. 2013); Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004); 37 C.F.R. § 42.22(a)(2) (“Each petition . . . must include . . . [a] full statement of the reasons for the relief requested including material facts.”). As discussed in Section III.A.4.b. above, Mr. Bohannon’s testimony regarding Zhu’s bias circuit was initially unspecific and subsequently contradictory. Further, as set forth below, Mr. Bohannon’s additional testimony for this rationale is conclusory and thus entitled to little weight. In his original declaration, Mr. Bohannon testifies that a passage in Mao (Ex. 1006, 1:50–55) teaches that a secondary bias circuit such as the one disclosed in Zhu can be disadvantageously vulnerable to output voltage fluctuations. Ex. 1003 ¶¶ 58–60. The cited passage reads “Although changing the polarity of the bias winding Tb may somewhat reduce the variation range of the voltage bias Vbias in some cases, the reduction is usually not significant, considering that both input voltage and output voltage can change in a typical dc-dc converter.” Ex. 1006, 1:50–55. This passage does not, on its face, teach that a secondary bias circuit, such as the one disclosed in Zhu, can be disadvantageously vulnerable to output voltage fluctuations. Id. And Mr. Bohannon does not explain why that passage teaches that the circuit disclosed in Zhu is vulnerable to such fluctuations. Ex. 1003 ¶¶ 58–60; Ex. 1025 ¶¶ 39–45. Second, the record indicates Zhu’s circuit would not be vulnerable to” slip op. at 24

  Patent outcomesUS RE47,713 not shown unpatentable
  Claim construction§ 103 obviousness
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationNo claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01505 · APJ John R Kenny · IPR · Final written decision

  Claims 1–10 were not shown unpatentable because Petitioner failed to establish that Zhang disclosed the claimed response to a non-zero grant construed as a power ratio greater than zero.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Here, we determine that the term “power ratio” in the involved parenthetical in the Specification is a definition, and not merely an illustrative example, of a “grant.” First, the Specification does not identify any other type of grant. Dr. Mahon testifies that the Specification does not provide an example of any other type of grant. Ex. 2001 ¶ 35. Petitioner offers no rebuttal expert testimony and identifies no other type of grant disclosed in the Specification. See Pet. Reply 1–5. We credit Dr. Mahon’s unrebutted testimony that the Specification does not identify any other type of grant. Ex. 2001 ¶ 35. Thus, the parenthetical at issue in this case does not exclude any grant described in the Specification (nor, as set forth in Section II.B.2.ii, any grant set forth by ordinary meaning of the term grant based on the extrinsic evidence of record).” slip op. at 11

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Petitioner offers no extrinsic evidence, other than the testimony of Dr. Kakaes, regarding the ordinary meaning of the term “grant,” and Dr. Kakaes cites no extrinsic evidence to support his definition of the term “non-zero grant.” Pet. 12; Pet. Reply 1–5; Ex. 1003 ¶¶ 63–65. Dr. Kakaes does not separately address the meaning of “grant.” Ex. 1003 ¶¶ 63–65. We find Dr. Mahon’s testimony and the 3GPP Technical Specification persuasive. As set forth above, the 3GPP Technical Specification describes grants as power ratios—a fact that Petitioner does not dispute. Pet. Reply 1– 5. Further, as set forth above, in light of the Specification’s references to 3GPP standards and the 3GPP recitations in the preambles of claims 1 and 6, 3GPP standards from the time of the ’873 patent are highly relevant evidence to an ordinarily skilled artisan of the ordinary meaning of the terms “grant” and “non-zero grant.” iii. A Non-zero Power Ratio is a Power Ratio Greater than Zero Dr. Mahon testifies that a “non-zero grant” should be construed as “a power ratio greater than zero.” Ex. 2001 ¶ 33. Dr. Mahon explains that a power ratio cannot be negative, so a “non-zero” power grant must be greater than zero. Id. ¶ 38. Petitioner does not dispute Dr. Mahon’s testimony that a power ratio cannot be negative. Pet. Reply 1–5. Petitioner further does not dispute that if a “grant” is construed to be a “power ratio,” a “non-zero grant” should be construed to be a “power ratio greater than zero.” Id. We credit Dr. Mahon’s testimony that a power ratio cannot be negative. Ex. 2001 ¶ 38. Thus, in light of the Specification’s and extrinsic evidence’s teachings that a “grant” is a “power ratio,” we construe “non-zero grant” to be a “power ratio greater than zero.”” slip op. at 19

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

    “2. Claim 1 Claim 1 recites the following limitation: triggering transmission of scheduling information (SI), from the WTRU to a Node-B, in response to the WTRU having a non-zero grant smaller than needed preventing the WTRU from sending a medium access control protocol data unit (PDU) of any of a plurality of scheduled medium access control-d (MAC-d) flows. [“responsive limitation of claim 1”] Ex. 1001, 7:36–8:6 (emphasis added). Petitioner does not argue, let alone prove, that Zhang discloses the transmission of scheduling information “in response to the WTRU having a non-zero grant smaller than needed” when “non-zero grant” is construed as a “power ratio greater than zero.” Pet. 25–29; Pet. Reply 1–5, 12–13. Thus, Petitioner has not proven that claim 1 is anticipated by Zhang. 3. Claim 5 Claim 5 depends on claim 1. Ex. 1001, 8:15–16. Petitioner relies on its showing for claim 1 for the limitations that claim 5 incorporates from claim 1. Pet. 29–30. Thus, Petitioner has not proven that claim 5 is anticipated by Zhang.” slip op. at 25

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

    “B. Ground 2: Asserted Obviousness over Zhang Petitioner asserts that claims 1, 5, 6, and 10 would have been obvious over Zhang. Pet. 5. For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 32–33. Thus, Petitioner has not proven that claims 1 and 6 would have been obvious over Zhang. For claims 5 and 10, Petitioner also relies on its showing for Ground 1. Id. at 33. Thus, Petitioner has not proven that claims 5 and 10 would have been obvious over Zhang. C. Ground 3: Asserted Obviousness over Zhang and TS 25.321 Petitioner asserts that claims 1–10 would have been obvious over Zhang and TS 25.321. Pet. 5. For this ground, Petitioner argues “[t]o the extent one might argue that Zhang does not . . . sufficiently disclose a WTRU configured to process ‘a plurality of scheduled medium access control-d (MAC-d) flows,’ it would have been obvious to include that functionality in the WTRU of Zhang in view TS 25.321.” Id. at 34 (emphasis omitted). For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 34–40, 48. Thus, Petitioner has not proven that claims 1–10 would have been obvious over Zhang and TS 25.321. D. Ground 4: Asserted Obviousness of Claims 1, 5, 6, and 10 over Zhang and Lohr Petitioner asserts that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr. Pet. 5. For this ground, Petitioner argues “[t]o the extent one might argue that Zhang alone, or Zhang in combination with TS 25.321 do not does not sufficiently disclose a WTRU configured to process “a plurality of scheduled medium access control-d (MAC-d) flows,’ it would have also been obvious to include that functionality in the WTRU of Zhang in view” of Lohr. Id. at 52–53 (emphasis omitted). For the responsive limitations of claims 1 and 6, Petitioner relies on its showing for Ground 1. Id. at 52–55. Thus, Petitioner has not proven that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr. E. Ground 5: Asserted Obviousness of Claims 1–10 over Zhang, Lohr, and TS 25.321 Petitioner asserts that claims 1–10 would have been obvious over Zhang, Lohr, and TS 25.321. Pet. 5. For this ground, Petitioner argues that claims 1, 5, 6, and 10 would have been obvious over Zhang and Lohr for the reasons set forth for Grounds 1–4. Id. at 56. Thus, Petitioner has not proven that claims 1–10 would have been obvious over Zhang, Lohr, and TS 25.321. See Sections III.A–D above.” slip op. at 27

  Patent outcomesUS 8,797,873 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,797,873
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.No claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01801 · APJ Peter P Chen · IPR · Final written decision

  Claims 30, 31, 33, and 40–46 were not shown unpatentable because Rabinovich required prior client access before replication, and Carter did not cure that limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Ratner, testifies that a person of ordinary skill in the art at the time of the alleged invention “would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 14. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 21–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 20. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. at 21. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12

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

    “whether to replicate data object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating/migrating object xs only if the ratio of cnt(s,xs) over aff(xs) is greater than m, and the ratio can be greater than m only if cnt(s,xs) is greater than zero. PO Resp. 19; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication or migration step. This means that Rabinovich will not replicate or migrate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independent of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer.” slip op. at 18

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

    “30, for use with a computer game (claim 45) and with an interactive computer game accessed by at least two users (claim 46). Ex. 1001, 30:47– 54. In connection with its obviousness contentions, Petitioner makes no separate arguments why Rabinovich teaches or suggests shifting redundantly stored data based upon data transmission parameters between the servers independent of an access of the client. Pet. 45–47; Reply 17–18. Because claims 45 and 46 depend from claim 30, we find that Petitioner has failed to demonstrate by a preponderance of the evidence that Rabinovich teaches or suggests the limitations in these two dependent claims for the same reasons discussed above with respect to claim 30.” slip op. at 21

  Patent outcomesUS RE40,521 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
• Corelogic, Inc. v. Boundary Solutions, Inc.No claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00219 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 12–15 and 17–21 were not shown unpatentable because Oosterom did not disclose searching the database using a jurisdictional identifier.

  RulingsFinal written decision

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

    “In the Institution Decision, we construed “jurisdictional identifier” to mean “a number or other name, code, or description that identifies a jurisdiction.” Dec. 6. We based our construction on the only appearance of “jurisdictional identifier” in the written description of the ’352 patent, which states: FIG. 3 illustrates a USA County Boundary Map (USACM). This is a public domain boundary file of each and every of the 3140 counties within the United States. Each of these polygons is geocoded with its county name and FIPS number, a numerical jurisdictional identifier, as illustrated in the figure. Ex. 1001, 8:48–53 (emphasis added).3 BSI does not challenge our construction of “jurisdictional identifier” in its Patent Owner Response, see PO Resp. 6, nor does CoreLogic challenge the construction in its Reply, see Reply 10. For this Final Written Decision, after considering the complete record, we maintain our construction of “jurisdictional identifier” as “a number or other name, code, or description that identifies a jurisdiction.”” slip op. at 5

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

    “Having reviewed the arguments and evidence, we are not persuaded CoreLogic has demonstrated that Oosterom discloses searching the parcel map database “using a jurisdictional identifier” as recited in claim 12. Among the attributes in Oosterom’s parcel and boundary tables identified by CoreLogic in its analysis, only the municipality codes (i.e., “municip” in the parcel table and “L_municip” and “R_municip” in the boundary table) qualify as “jurisdictional identifiers.” See Ex. 1010, 513–14 (Tables 1, 2). The “object_id” of an object, e.g., a parcel or a boundary, is a nationwide unique identifier, but there is no indication in Oosterom that the object_id of a parcel or boundary identifies a jurisdiction. See id. at 512; see also id. at 513–14 (showing object_id attribute in parcel and boundary tables). As for the “ogroup” attribute in the parcel and boundary tables, Oosterom states only that it “indicates to which group the record belongs.” Id. at 519. Nothing in Oosterom describes the ogroup as identifying a jurisdiction. Although the municipality code attributes in the parcel and boundary tables identify jurisdiction, CoreLogic does not cite any portion of Oosterom that illustrates the use of municipality codes in searching the database for selected parcels as required by claim 12. See Pet. 45. Dr. Goodchild opines that the “municipality code . . . would allow us to search [the] parcel table by that jurisdiction and to identify all the parcels in that jurisdiction.” Ex. 2010, 19:22–24. He further testifies that in his analysis, he “was concerned with the specific kind of query identified in the claim, which is much narrower than Oosterom’s discussion [and] much more specific than the broad range of queries discussed by Oosterom.” Id. at 21:14–25. Ultimately, he states that the “question [he] analyzed is whether [Oosterom’s] database is capable of supporting the type of query identified in the claim.” Id. at 22:14–16 (emphasis added). Dr. Goodchild’s testimony that municipality codes could be used in searching Oosterom’s database, however, is insufficient to establish for anticipation purposes that Oosterom discloses the step of searching a multi-jurisdictional digital parcel map database for a selected parcel boundary polygon “using a jurisdictional identifier.”” slip op. at 10

  • ExcludeOther

    “C. CoreLogic’s Motion to Exclude Evidence CoreLogic moves to exclude the redirect testimony of BSI’s expert, Mr. William Huxhold, on the ground that it was provided in response to leading questions. Mot. Excl. 1 (citing Ex. 1034, 150:6–153:8). The redirect testimony relates to a portion of Mr. Huxhold’s cross-examination testimony. Id. at 1–2 (citing Ex. 1034, 72:5–22). Because we do not rely on Mr. Huxhold’s testimony, CoreLogic’s motion is dismissed as moot.” slip op. at 12

  Patent outcomesUS 8,065,352 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,065,352
• Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01372 · APJ Linda M Gaudette · IPR · Final written decision

  The Board held claims 1–4, 14–20, 27, and 29 not unpatentable because Averbuj did not disclose a control module configured to generate the claimed address signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-970. We, therefore, adopt our finding in IPR-970 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST. IPR-970 FWD, 10–11 (noting that our finding was “based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art”).” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’434 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’434 patent. See Ex. 1008, 6:3–5, 10:67–11:2, 6:14–17. Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “supports a finding that a customary meaning of “generate” to one of ordinary skill in the art is “cause.”1 We, therefore, determine the broadest reasonable 1 Petitioner relies on Webster’s II, for a definition of “cause.” See Reply 4, 6–8 (citing Ex. 1032, 3). Having determined the broadest reasonable interpretation of “generate” does not encompass “cause,” we do not find this evidence relevant to our claim construction analysis. construction of “generate” is “produce” for the reasons stated above and in our Final Written Decision in IPR-970. We adopt and incorporate by reference our analysis and construction of the term “generate” in our Final Written Decision in IPR-970 (IPR-970 FWD, 24–33).” slip op. at 16

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

    “Moreover, the evidence in this proceeding fails to support a finding that Averbuj’s BIST controller 4 is configured to generate address signals for testing the memory devices in the manner claimed. In Averbuj, the algorithms (i.e., CMD_DATA containing OP CODE such as SET ADDRESS (see Ex. 1011, 4:4–12, 5:19–21, Table 1)) communicated to sequencers 8 are either received by user interface 22 via external input (id. at 5:41–43) or generated by another component (i.e., a component that is not part of BIST controller 4 circuitry) and stored in algorithm memory 20 (see Ex. 2012, 30:23–24, 41:1–4, 54:21–22, 55:6–25, 55:20–56:9 (wherein Dr. Bagherzadeh testifies that OP CODE residing in the algorithm memory of BIST controller 4 are generated by hand or by a tool, e.g., a compiler, and that “99 percent of the designs or chips do not have a compiler on-board”)). Multiplexer 24 selects one of the algorithms (i.e., CMD_DATA) and BIST controller 4 provides to sequencers 8 the same CMD_DATA (e.g., address signals) without transformation or modification. See Ex. 1011, 4:4–12, 5:16–21; Ex. 2012, 54:8–13 (“Averbuj Figure 2, without consideration of any other disclosure in Averbuj, illustrates that a multiplexer selects an input from the algorithm memory and the output [] reflect[s] what’s in the input, based on the selection.”). Based on our interpretation of the terms “configured to” and “generate,” as discussed above, the claim recitation “a control module configured to generate address . . . signals for testing the memory devices” (claims 1, 20, and 29) does not read on Averbuj’s BIST controller 4, because the SET ADDRESS signal output by BIST controller 4 is produced by a component external to BIST controller 4, and merely selected by multiplexer 24 and provided to sequencers 8 without transformation or modification by BIST controller 4. In sum, after considering the parties’ arguments and evidence, we determine Petitioner has not shown, by a preponderance of the evidence, that Averbuj discloses “a control module configured to generate address . . . signals for testing the memory devices” as recited in independent claims 1, 20, and 29. Petitioner does not correct this deficiency in its challenges as to dependent claims 2–4, 14–19, and 27. See Pet. 32–39; 35 U.S.C. § 112, ¶ 4 (“A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”). Because Petitioner has not identified in Averbuj a teaching of each and every limitation recited in claims 1–4, 14–20, 27, and 29, Petitioner has not met its burden to show these claims are unpatentable under 35 U.S.C. § 102(b) as anticipated by Averbuj.” slip op. at 30

  Patent outcomesUS 8,001,434 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,001,434

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.