• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-01688 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable under § 103(a) over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian, because the combinations render the claims obvious.

  RulingsFinal written decision

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

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • PTAB / AIA Trials › Motions to amend / substitute claimsOther

    “Schulhauser was only raised by Petitioner after the time to bring a motion to amend had passed. PO Br. 2–3. To the extent that Patent Owner is suggesting that it was deprived of the opportunity to file a motion to amend, we disagree because Patent Owner should have been aware of Schulhauser since at least the filing of Petitioner’s Reply (i.e., December 5, 2017). Yet, Patent Owner’s additional briefing filed on March 5, 2018 was the first and only time Patent Owner made reference to a motion to amend. PO Br. 2–3. Although the time to file a motion to amend, under the Scheduling Order, had passed when Petitioner filed its Reply, Patent Owner was free to seek leave to file a late motion to amend. However, Patent Owner did not contact the Board on this issue.11 We, therefore, find that it is appropriate to apply Schulhauser in the context of this proceeding for at least the reasons explained supra.12” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s Declarant Dr. Kenneth A. Zeger, Ph.D., does not disagree with Petitioner’s statements regarding the level of ordinary skill in the art. Ex. 2005 ¶ 20. Based on our review of the ’506 patent, the types of problems and solutions described in the ’506 patent and cited prior art, and the testimony of Dr. Creusere and Dr. Zeger, we adopt and apply Dr. Creusere’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision.” slip op. at 9

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

    “always perform the if A, then perform step X limitation of claim 104. In addition, Dr. Zeger’s opinion that the Franaszek and Hsu combination fails applies only to the if not A, then perform step Y limitation of claim 104. Dr. Zeger’s opinion that the combination fails was given in the context of his opinion that both the if A, then perform step X limitation of claim 104 and the if not A, then perform step Y limitation of claim 104, must be taught in order to demonstrate unpatentability. It is noted that claim 104 is a method claim being analyzed under Schulhauser16; therefore, it is sufficient for Petitioner to show that the combination of Franaszek and Hsu teaches either the if A, then perform step X limitation of claim 104 or the if not A, then perform step Y limitation of claim 104. We find Dr. Zeger’s testimony regarding the absence of a rationale to combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00806 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable as obvious over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian.

  RulingsFinal written decision

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

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art 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) (internal quotation and citation omitted). In that regard, Petitioner’s declarant, Dr. Creusere, testifies that a person with ordinary skill in the art at the time of the invention” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “using Hsu’s approach will always identify a result for a block’s data type (id.); we agree with Dr. Creusere’s testimonial admission. In particular, in response to Patent Owner’s question of whether Hsu’s approach always identifies a given data block, Dr. Creusere answered: As far as the – as the data type information as output by Hsu’s new file routine, that, that’s – that will – that should in my, in my opinion, as a person of ordinary skill in the art, my best estimate is that will always output something. It will always give you something. Id. (quoting Ex. 2003, 21:13–22:6).” slip op. at 34

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

    “combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00176 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable as obvious under § 103(a) over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian.

  RulingsFinal written decision

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

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • Strike new argumentNew argument consideredDecided for patent owner

    “As an initial matter, as discussed further below, we follow Schulhauser because it is precedential. Moreover, we find that each of the cases cited by Patent Owner is factually distinguishable from Schulhauser. The Board’s Standard Operating Procedures (“SOP”) require it to follow its precedential decisions. PTAB SOP No. 2, Rev. 9, 3 (Sept. 22, 2014) (“A precedential opinion is binding authority in subsequent matters involving similar facts or issues.”). Because this issue concerns claim construction, we conclude the best course of action under these specific circumstances is to follow our Tribunal’s SOP and our precedent in Schulhauser. To address APA concerns, due process concerns, the sufficiency of notice and potential prejudice, we allowed the parties the additional opportunity to brief the issue.10 Additional Briefing 1–2. In summary, Schulhauser is our precedent and it should apply given its potential applicability to the claim construction for the claims at issue.” slip op. at 12

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

    “We find Dr. Zeger’s testimony regarding the absence of a rationale to combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

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

    “Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient 16 Supra § II.C. 17 We considered Patent Owner’s objections (Tr. 30:1–34:4, 63:17–23) and dismiss them as moot because we did not rely on Petitioner’s theory that Franaszek does not have a data type, then if you were to use Hsu in that showings that both grounds would have taught the remaining limitations of claim 104 (Pet. 14–36) and Patent Owner does not dispute these assertions (Paper 20, § B.1.b.) (“[A]ny arguments for patentability not raised in the response will be deemed waived.”). e. Conclusion In conclusion, and having performed the factual inquiries required by Graham, for the reasons given above and based on our review of the arguments and evidence of record, Petitioner has shown by a preponderance of the evidence that the combination of: (1) Franaszek and Hsu; and (2) Franaszek, Hsu, and Sebastian render obvious the subject matter of claim 104 of the ’506 patent.18” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506
• Apple, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Mar 16, 2018 · IPR2016-01738 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 8–12, 14–22, 59–82, 101–104, 114, 115, and 117 are unpatentable as obvious; the motion to amend is granted for substitute claims 174–218.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “substitute claims “without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d at 1328. Yet, Patent Owner’s proposed substitute claims still must meet the statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of 37 C.F.R. § 42.121. See also “Guidance on Motions to Amend in view of Aqua Products” (Nov. 21, 2017) (https://www.uspto.gov/sites/default/files/documents/guidance_ on_motions_to_amend_11_2017.pdf) (“Guidance”). Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. See 37 C.F.R. § 42.121.” slip op. at 51

  • ExcludeMotion to exclude, deniedDenied

    “substitute claims. Furthermore, Patent Owner’s arguments on this exhibits goes to the weight to be accorded to the evidence. The Board is capable of determining and assigning the appropriate weight to the evidence. For these reasons, we deny Patent Owner’s motion as to Exhibit 1043.” slip op. at 72

  • Strike new argumentOther

    “IV. CHALLENGE TO PETITIONER’S REPLY ARGUMENTS Patent Owner filed a list of alleged improper reply arguments (Paper 34) to which Petitioner filed a Reply (Paper 35). Patent Owner lists several portions of Petitioner’s Reply and evidence allegedly beyond the scope of what can be considered appropriate for a reply. See Paper 34. We have considered Patent Owner’s listing, but disagree that the cited portions of Petitioner’s Reply and reply evidence are beyond the scope of what is appropriate for a reply. Replies are a vehicle for responding to arguments raised in a corresponding patent owner response. Petitioner’s arguments and evidence that Patent Owner objects to are not beyond the proper scope of a reply; rather, we find that they fairly respond to Patent Owner’s arguments raised in Patent Owner’s Response. See Idemitsu Kosan Co. v. SFC LTD, 870 F.3d 1376, 1381: This back-and-forth shows that what Idemitsu characterizes as an argument raised “too late” is simply the by-product of one party necessarily getting the last word. If anything, Idemitsu is the party that first raised this issue, by arguing—at least implicitly—that Arkane teaches away from non-energy-gap combinations. SFC simply countered, as it was entitled to do. We also note for each of the items in Patent Owner’s list, Petitioner cites to pages in the Petition for support. See e.g., Paper 35, 2 (“Support for Petitioner’s argument can be found at, for example, pages 13–16 of the Petition.”), 4 (“Support for Petitioner’s argument can be found at, for example, pages 39–41 of the Petition.”); 5 (“Support for Petitioner’s argument can be found, for example, at pages 6–16, 28–29, and 32–34 of the Petition.”); 6 (“Support for Petitioner’s argument can be found, for example, at pages 11–16 of the Petition.”); 8 (“Support for Petitioner’s argument can be found, for example, at pages 11–16 of the Petition.”).” slip op. at 72

  • Expert testimonyPetitioner expert creditedOther

    “updating boot data lists by removing an association of control information that is associated with management information Table 3A. Specifically, we credit the testimony of Dr. Neuhauser, who explains how and why Sukegawa renders obvious updating a boot data list by disassociating non-accessed boot data from the boot data list. See Ex. 1003 ¶¶ 474–478 (citing Ex. 1005, 7:40–55). Dr. Neuhauser concludes an ordinarily skilled artisan “would have []found it obvious based on their knowledge of cache operation that upon the deletion of the non-accessed control information, or boot data, that management information table 3A is updated to reflect the deletion.” Ex. 1003 ¶ 474. Accordingly, we find Petitioner has established by a preponderance of the evidence that claims 20, 102, and 104 of the ’862 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Sukegawa and Dye.” slip op. at 42

  Patent outcomesUS 8,880,862 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,880,862
• Apple, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Mar 13, 2018 · IPR2016-01739 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 5, 35–46, 97, 98, and 112 are unpatentable under § 103 over at least one instituted combination; claim 46 was not shown unpatentable over Settsu alone or with Zwiegincew.

  RulingsFinal written decision

  • BurdenFwd mixedUnpatentable

    “IV. CONCLUSION For the foregoing reasons, we conclude Petitioner has shown by a preponderance of the evidence that (1) Claims 5, 35–45, and 97 are unpatentable under 35 U.S.C. § 103(a) in view of Settsu; (2) Claims 5, 35– 45, 97, 98, and 112 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu and Zwiegincew; (3) Claims 5, 35–46, and 97 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu and Dye; and (4) Claims 5, 35–46, 97, 98, and 112 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu, Zwiegincew, and Dye. V. ORDER Accordingly, it is ORDERED that, by a preponderance of the evidence, claims 5, 35–46, 97, 98, and 112 of the ’862 patent are unpatentable;” slip op. at 46

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

    “broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Therefore, we consult the patent’s specification to help clarify the meaning of claim terms. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (holding claims “must be read in view of the specification, of which they are a part” (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996))). We must be careful, however, not to import improperly limitations into the claims or to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Given our mandate under 37 C.F.R. § 42.100(b) and the patent’s various descriptions of “boot data list,” we understand that the examples laid out in the specification are exemplary and are not to be read as limitations in the claims. Patent Owner’s proffered claim construction imports selected limitations from specific embodiments in the specification into the claim and provides an overly narrow interpretation of the claim term. Additionally, Patent Owner has not pointed to any definitions or disavowals in the specification or otherwise clearly explained why the specification’s disclosure of “boot data lists” should not guide our claim construction analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which appear to be based on a narrow reading of the claim that is inconsistent with the broadest reasonable interpretation of the claims. Accordingly, we decline to adopt Patent Owner’s claim construction as it would limit unnecessarily the scope of the claims. Instead, we find the broadest reasonable construction of “boot data list” to encompass a “list of boot data.”” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner does not dispute Dr. Neuhauser’ testimony. See generally PO Resp. Patent Owner’s Declarant, Dr. Godmar Back (“Dr. Back”), however, provides his own assessment regarding a person of ordinary skill in the art relevant to the ’862 patent and agrees with Dr. Neuhauser’s testimony. Ex. 2008 ¶ 50. We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment. Based on our review of the ’862 patent, the types of problems and solutions described in the ’862 patent and cited prior art, and the testimony of Dr. Neuhauser and Dr. Back, we adopt and apply Dr. Back’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. D. Overview of the Asserted Prior Art” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Settsu fails to teach “updating a boot list.” Rather, we agree with the testimony of Dr. Neuhauser regarding the similarities between Settsu’s OS and the functionality of the Windows 98 OS, and why a person of ordinary skill in the art would have considered updates to have occurred to the boot data lists in Settsu. See Ex. 1003 ¶ 117; Ex. 1003, 5:39–51, 13:55–65, 14:44–52, 16:7–17:62, Figs. 12, 20(ST213). Specifically, we determine that a person of ordinary skill in the art would have understood that OS modules, such as Settsu’s, would have required updates when new, updated code becomes available. See Ex. 1003 ¶ 117 (citing O’Reilly 110–112). We agree with Dr. Neuhauser that to accomplish these updates, a person of ordinary skill in the art would have understood that updates occur to boot data lists in Settsu; namely, updates to lists of boot data included within OS functional module files stored in boot device 3, as well as updates to lists of boot data, such as the function definition file 71 or the OS main body module 8. See id. Given the explicit teaching of Settsu and the credible testimony of Dr. Neuhauser regarding the state of the art and the knowledge of one of skill the art, we are unmoved by Patent Owner’s argument regarding the prosecution history of the ’862 patent or that the Examiner fully understood the implications of Settsu’s Figure 20. Accordingly, based on the entirety of the record and evidence, and crediting the testimony from Dr. Neuhauser (see Ex. 1003 ¶¶ 78, 116–118), we determine that “updating the boot data list” is taught or suggested by Settsu, and the subject matter of the claim as whole would have been obvious to a person of ordinary skill in art in view of Settsu.” slip op. at 22

  Patent outcomesUS 8,880,862 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,880,862
• Apple, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Mar 13, 2018 · IPR2016-01737 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–4, 6, 7, 13, 23–34, 47–58, 83–96, 99, 100, 105–111, 113, and 116 are unpatentable as obvious; substitute claims 118–173 are allowed.

  RulingsFinal written decision

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

    “broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Therefore, we consult the patent’s specification to help clarify the meaning of claim terms. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (holding claims “must be read in view of the specification, of which they are a part” (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996))). We must be careful, however, not to import improperly limitations into the claims or to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Given our mandate under 37 C.F.R. § 42.100(b) and the patent’s various descriptions of “boot data list,” we understand that the examples laid out in the specification are exemplary and are not to be read as limitations in the claims. Patent Owner’s proffered claim construction imports selected limitations from specific embodiments in the specification into the claim and provides an overly narrow interpretation of the claim term. Additionally, Patent Owner has not pointed to any definitions or disavowals in the specification or otherwise clearly explained why the specification’s disclosure of “boot data lists” should not guide our claim construction analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which appear to be based on a narrow reading of the claim that is inconsistent with the broadest reasonable interpretation of the claims. Accordingly, we decline to adopt Patent Owner’s claim construction as it would limit unnecessarily the scope of the claims. Instead, we find the broadest reasonable construction of “boot data list” to encompass a “list of boot data.”” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner does not dispute Dr. Neuhauser’ testimony. See generally PO Resp. Patent Owner’s Declarant, Dr. Godmar Back (“Dr. Back”), however, provides his own assessment regarding a person of ordinary skill in the art relevant to the ’862 patent and agrees with Dr. Neuhauser’s testimony. Ex. 2008 ¶ 55. We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment. Based on our review of the ’862 patent, the types of problems and solutions described in the ’862 patent and cited prior art, and the testimony of Dr. Neuhauser and Dr. Back, we adopt and apply Dr. Back’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. D. Overview of the Asserted Prior Art” slip op. at 14

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

    “Based on (1) the teachings of Dye that are directed to improved memory capacity and performance, specifically improved data density, efficiency, and bandwidth (Ex. 1008, at [57], 2:42–46), (2) the teachings of Dye ’284 directed to implementing Dye’s techniques to hard disk drives and flash memory, and (3) crediting of the persuasive testimony of Dr. Neuhauser demonstrating both the applicability of Dye to Sukegawa and explaining why a person of ordinary skill in the art would have combined the prior art teachings, we find Petitioner has articulated sufficient reasoning with rational underpinning to combine the references as asserted.” slip op. at 33

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “of right, but rather must be proposed as a part of a Motion to Amend. 35 U.S.C. § 316(d). The Board must assess the patentability of proposed substitute claims “without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d 1290. Yet, Patent Owner’s proposed substitute claims still must meet the statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of 37 C.F.R. § 42.121. See also “Guidance on Motions to Amend in view of Aqua Products” (Nov. 21, 2017) (https://www.uspto.gov/sites/default/files/documents/guidance_ on_motions_to_amend_11_2017.pdf) (“Guidance”). Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. See Guidance. For reasons set forth below, we determine Patent Owner has satisfied its burden with respect to the above-discussed requirements of 37 C.F.R. § 42.121. Patent Owner seeks to add fifty-five (55) substitute claims to replace the fifty-five (55) challenged claims found unpatentable, and each substitute claim adds limitations that purport to narrow the scope of the original claim it replaces. See Mot. 2–4, Claim Appendix, iii–xii. Patent Owner also identifies disclosures in the originally-filed application that fall within the scope of proposed substitute claims 118–173. Mot. 4–17 (citing Ex. 2010; Ex. 2017; Ex. 2022). Patent Owner further identifies support in the original specification for the limitation in substitute independent claims 118, 122, and 124 that the preloading may occur into volatile memory. Mot. 5–6 (citing Ex. 2017, 12:16–18 (“[T]he cache 13 may comprise volatile or non-volatile memory, or any combination thereof. Preferably, the cache 13 is implemented in SDRAM (static dynamic random access memory), 41:4– 9, 42:17–20, 43:13–14, Fig. 7B), 8–15.” According to the testimony of Dr. Back, a person of ordinary skill in the art would have understood that SDRAM is volatile memory. See Ex. 2022 ¶ 23. We note that further support for substitute claims 118–173 can be found in the original specification’s discussion of preloading portions of the computer operating system from the boot device (e.g., hard disk) into the onboard cache memory. Ex. 2017, 41:4–5. We, thus, find written description support for Patent Owner’s proposed substitute claims. Moreover, Patent Owner proposes a narrowing limitation in each proposed substitute claim in direct response to the grounds of unpatentability involved in this trial. Therefore, Patent Owner has satisfied the procedural” slip op. at 44

  Patent outcomesUS 8,880,862 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,880,862
• Apple, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Jan 17, 2018 · IPR2016-01365 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1–31 are unpatentable as obvious over Sukegawa and Dye under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts, through its declarant Dr. Neuhauser, one of ordinary skill would be a person with a Bachelor’s Degree in electrical engineering, computer engineering, or a related area of study. In addition, this person would have between three and five years of practical experience in the design and implementation of computer systems, such as personal computers. Alternatively, a person with a Master’s Degree in the area of electrical engineering, computer engineering, or a related area of study and somewhat less practical experience would be similarly qualified (Ex. 1003 ¶ 15). Patent Owner does not appear to dispute the educational level or experiential aspects of Petitioner’s definition, and indeed, Patent Owner’s declarant, Dr. Back, agrees with Dr. Neuhauser as to the level of ordinary skill in the art (Ex. 2003 ¶ 42). We agree with and adopt Petitioner’s assessment of a level of skill in the art. We note also that the applied prior art reflects the appropriate level of skill at the time of the claimed invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)).” slip op. at 10

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

    “The prefix “pre” means “before,” but absent additional information, does not convey how long “before” is. As such, Patent Owner’s proposed interpretation is too narrow. For example, Dictionary of Computer and Internet Words defines “load” as “[t]o transfer a program from a storage device into a computer’s memory” (Ex. 2005, 3). The IEEE Standard Computer Dictionary defines “load” as “[t]o copy computer instructions or data from external storage to internal storage or from internal storage to registers” (Ex. 2006, 3–4; see Ex. 2008, 4). Indeed, none of the proffered definitions includes any time component for use of the loaded data. “Preloading,” thus, would be copying computer instructions or data from external storage to internal storage or from internal storage to registers before an unspecified event occurs.” slip op. at 16

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “technology (Ex. 1008, Abstract). In particular, Dye teaches Compression Enhanced Flash Memory controller (CEFMC) allow data to be stored in normal or compressed format or transmitted and stored on a medium in normal or compressed format (id. at 3:66–4:8, 7:35–43, 8:6–12). Dye ’284 teaches data may be stored in compressed form on non-volatile memory (Ex. 1009, 4:16–24) and that such data may include program data and operating system data (id. at 11:32–35, 38:30–42, Figs. 22, 23). As set forth by Petitioner’s declarant, Dr. Neuhauser, Dye ’284 “describes benefits of using compression in several types of computer system storage devices, including hard disks, such as Sukegawa’s HDD2, and flash memory devices, such as Sukegawa’s flash memory unit” (Ex. 1003 ¶ 62 (citing Ex. 1009, 4:16–24, 8:44–53, 11:28–37, 11:54–12:33; Ex. 1008, Abstract, 7:34–43)). We credit Dr. Neuhauser’s statement that Sukegawa’s HDD2 and flash memory unit 1 are “hard disks and flash memory,” respectively, as described in Dye ’284 (id.). We further credit Dr. Neuhauser’s statement that “[b]ased on the clear teachings of Dye with respect to the advantages of data compression, one of ordinary skill [would] have been motivated to apply Dye to the system of Sukegawa to obtain improved performance of [Sukegawa’s] Flash Memory Unit 1” (id. ¶ 67; see id. ¶¶ 119–121).” slip op. at 40

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

    “combination of Sukegawa and Dye teaches the disputed limitation. “‘To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents’” (Apple Inc. v. International Trade Comm’n, 725 F.3d 1356, 1362 (Fed. Cir. 2013)). The host document must “[cite the] material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein” (Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000)). Here, unlike in the cases cited by Patent Owner (PO Resp. 46, n.138), Dye specifically states the U.S. patent application (now Dye ’284) is “incorporated by reference in its entirety as though fully and completely set forth herein” (Ex. 1008, 6:3–9). Indeed, as noted by Petitioner (Pet. Reply 24–25), the specific material to be incorporated is identified with detailed particularity: U.S. patent application Ser. No. 09/239,659 titled “Bandwidth Reducing Memory Controller Including Scalable Embedded Parallel Data Compression and Decompression Engines[,]” which was filed on Jan. 29, 1999 (5143-01700), is hereby incorporated by reference in its entirety as though fully and completely set forth herein (Ex. 1008, 6:3–9). Dye additionally refers to specific features of Dye ’284 (id. at 3:66–4:19). Thus, Dye cited Dye ’284 in a manner that makes clear that Dye ’284 is effectively part of Dye, as if it were explicitly therein, and accordingly, Dye properly incorporates Dye ’284 by reference. We further note that Dye is a continuation-in-part of Dye ’284 and thus, has a significant amount of overlapping disclosure (id. at 1:9–13, [63]). Petitioner relies on the combination of Sukegawa’s HDD2 (boot drive) and Dye’s teaching of compressed data on the boot device (Pet. 33– 35). Petitioner asserts because “‘the storage area of the flash memory is limited’ in Sukegawa, a [person of ordinary skill in the art] would have appreciated how compression would have improved storage capacity of Sukegawa’s flash memory unit 1, as well as speed of data access” (Pet. 10 (citing Ex. 1003 ¶ 241; Ex. 1005, 2:28–29)). According to Petitioner, “a [person of ordinary skill in the art] would have been motivated to modify Sukegawa to increase the effective density and read access rate of the non-volatile storage devices in Sukegawa’s system, and to thereby achieve further reduction in the time required for booting up” (Pet. 34 (citing Ex. 1003 ¶¶ 118–121)). Petitioner points to Dye as explaining “how compression ‘improves system wide memory density and data bandwidth” and “allows lower cost systems due to smaller data storage” and “reduced bandwidth requirements’” (Pet. Reply 26 (citing Ex. 1008, Abstract)(emphasis omitted)). Petitioner further asserts Dye renders compression on Sukegawa’s hard disk drive obvious (Pet. 33–34 (citing Ex. 1008, Abstract, 2:42–4:55, 7:34–9:5, 10:19–41); Pet. Reply 27 (citing Ex. 1008, Abstract, 2:42–4:55, 7:34–9:5, 10:19–41)). Petitioner additionally contends “Dye ’284 [] describes the use of a controller including ‘the compression/decompression engine’ to compress the same types of data that are stored in Sukegawa’s HDD2 and flash memory unit 1: namely, ‘application data’ and ‘operating system data’” (Pet. 14 (citing Ex. 1009 11:32–35, 38:29–39:44, FIGS. 22, 23)). Therefore, Petitioner asserts “a [person of ordinary skill in the art] would have been motivated by Dye to store Sukegawa’s control information (e.g., OS/AP) on HDD2 in compressed form and load the compressed control information from the HDD2 into Sukegawa’s flash memory unit 1 as compressed data (Pet. 34 (citing Ex. 1003 ¶ 120)). Dye teaches use of parallel compression and decompression technology (Ex. 1008, Abstract). In particular, Dye teaches Compression Enhanced Flash Memory controller (CEFMC) allow data to be stored in normal or compressed format or transmitted and stored on a medium in normal or compressed format (id. at 3:66–4:8, 7:35–43, 8:6–12). Dye ’284 teaches data may be stored in compressed form on non-volatile memory (Ex. 1009, 4:16–24) and that such data may include program data and operating system data (id. at 11:32–35, 38:30–42, Figs. 22, 23). As set forth by Petitioner’s declarant, Dr. Neuhauser, Dye ’284 “describes benefits of using compression in several types of computer system storage devices, including hard disks, such as Sukegawa’s HDD2, and flash memory devices, such as Sukegawa’s flash memory unit” (Ex. 1003 ¶ 62 (citing Ex. 1009, 4:16–24, 8:44–53, 11:28–37, 11:54–12:33; Ex. 1008, Abstract, 7:34–43)). We credit Dr. Neuhauser’s statement that Sukegawa’s HDD2 and flash memory unit 1 are “hard disks and flash memory,” respectively, as described in Dye ’284 (id.). We further credit Dr. Neuhauser’s statement that “[b]ased on the clear teachings of Dye with respect to the advantages of data compression, one of ordinary skill [would] have been motivated to apply Dye to the system of Sukegawa to obtain improved performance of [Sukegawa’s] Flash Memory Unit 1” (id. ¶ 67; see id. ¶¶ 119–121). Furthermore, Petitioner is not relying on incorporation of Dye’s controller, but rather on Dye’s data compression/decompression and storage of compressed/decompressed data (Pet. 33–35).” slip op. at 38

  Patent outcomesUS 7,181,608 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,181,608
• Riverbed Technology, Inc. / Dell Inc. et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · Oct 30, 2017 · IPR2016-00978 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1–4, 6, 10–16, 18–20, and 22 are unpatentable as obvious over Wang, Matsubara, and Franaszek under § 103(a).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioners’ Declarant, Dr. Creusere, opines that a person of ordinary skill in the art relevant to the ’513 patent, and in the time period around 2001, would have been a person with “at least a bachelor’s degree in computer science, computer engineering, electrical and computer engineering, electrical engineering, or electronics and at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” Ex. 1013 ¶ 25. Patent Owner does not offer any alternative explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’513 patent. Based on our review of the ’513 patent, the types of problems and solutions described in the ’513 patent and cited prior art, and the testimony of Petitioners’ Declarant, we adopt and apply Dr. Creusere’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. We also note that, in this case, the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “We are not persuaded by Patent Owner’s arguments. The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Under the correct [obviousness] analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). “[A]n analysis of obviousness . . . may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). Here, Wang teaches that if a file format is not identified or recognized, then the file is compressed with a default lossless compression algorithm. Pet. 19 (citing Ex. 1009, 4). Dr. Zeger, Patent Owner’s Declarant, agreed that a file format potentially could refer to a data type. Pet. Reply 13 (citing Ex. 1014, 87–88). With respect to Patent Owner’s argument that Wang never fails to recognize any data types, Franaszek recognizes the issue and teaches the use of a default compression algorithm if a data type is not recognized. Pet. 22 (citing Ex. 1011, 5:49–54). This is consistent with the holding in KSR, that any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed by” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “We think Patent Owner’s argument and its reliance on In re Schweickert is misplaced here. First, as discussed supra, Petitioner combines Matsubara with Wang to address an automatic recognition issue and combines Franaszek with Wang to address a known issue when there is a lack of recognition. These are distinct issues with different reasons for their combination. In particular, Petitioner’s rationale for combining Matsubara and Wang is based on incorporating Matsubara’s construction of histograms using a file’s byte pattern, and then analyzing the pattern to determine the data type as the method for Wang to “automatically” determine the data type of a file. Pet. 22–24. Petitioner relies on Franaszek’s techniques for using a default compression algorithm to compress data types that may not be recognized or identified by Wang. Id. at 24–26. Second, in In re Schweickert, the Board affirmed the Examiner’s conclusion of obviousness, relying on a combination of two prior art references, with the bare assertion that “modifying [the references] would have been a predictable use of prior art elements according to their established functions—an obvious improvement.” In re Schweickert at 993. The Court found that there was no sufficient justification in the opinion by the Board why the combination would provide the asserted “obvious improvement.” Id. at 994. Moreover, the Court noted that it was apparent that substitution would “defeat[] the purpose” of the prior art the Board contended would be obvious to modify. Id. The Court found that even if the technology of the second prior art reference were “readily applicable” to the first prior art reference, there still needed to be an explanation as to “why a skilled artisan would still have a reason to combine [the references] to achieve the claimed invention,” which the Board did not do. Id. at 995. Here, unlike in Schweickert, Petitioner provided evidentiary support for modifying Wang’s method for automatically compressing files using an identification technique (Matsubara) since Wang teaches automatically recognizing the data type in the file, (Ex. 1013 ¶ 77) and using Franaszek’s default lossless compression algorithm when a file’s data type is not recognized because Wang teaches to use a default lossless compression algorithm when a file format is not identified or recognized (id. ¶ 86). Thus, Petitioner has articulated sufficient reasoning why a POSITA would have combined the teachings of Wang and Matsubara, as well as reasons why a POSITA would have also combined the teachings of Wang and Franaszek addressing a distinct issue, and how those combinations achieve the claimed invention. Accordingly, we are persuaded by Petitioner’s evidence and arguments that a person of ordinary skill in the art would have had reason to combine (1) Wang’s teaching to use a default lossless compression algorithm, such as LZW, when the file format is not recognized with Franaszek’s teaching of using a default compression method when the data type is not recognized; and (2) Wang’s method for automatically compressing computer files with Franaszek’s techniques for using a default compression algorithm to compress data types that are not recognized or identified. See Pet. 24–26, 30–42. Petitioner’s rationale for combining Wang and Matsubara is based on using Matsubara’s data analysis technique in Wang’s step of automatic data recognition, whereas Petitioner’s rationale for combining Wang and Franaszek is directed to both references suggesting default compression methods for unrecognized data. See Pet. 22–24, 30–42. Thus, each of the aspects that would be used from Matsubara and Franaszek with Wang are different. Therefore, we are persuaded by Petitioner’s evidence and arguments that one of ordinary skill in the art would have been led to combine the teachings of Wang, Matsubara, and Franaszek in the manner articulated by Petitioner.” slip op. at 28

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

    “We agree with Patent Owner’s position that the file extension names and control information in Wang appear to be “descriptors” of a data block. Nevertheless, we are persuaded by Petitioner that the combination of Wang, Matsubara, and Franaszek teaches the recited analysis steps. Specifically, we are persuaded that Wang recognizes the format of a file by the extension name of the file and determines whether the file is a simple file or a compound file, then teaches automatically recognizing the type of data contained in the file and automatically compressing the data using a compression algorithm suitable for the type of data identified. Pet. 32 (citing Ex. 1009, 4; Ex. 1013 ¶ 115). In addition, we are persuaded Matsubara teaches determining a file’s data type based on an analysis of its byte patterns (i.e., something other than a descriptor) (Ex. 1011, 3:61–67), while Franaszek teaches analysis of a sample taken from uncompressed data appended to a data block and compressing a data block with a default compression algorithm when the data type is not identified (Ex. 1011, 4:30– 35, 5:18–21, 5:53–54, Fig. 2). Furthermore, based on the testimony of Dr. Creusere (Ex. 1013 ¶ 116), histograms of byte patterns of a file in Matsubara function as an analysis of a data block and not merely as a descriptor of the data block. Accordingly, we find the combination of Wang, Matsubara, and Franaszek teaches the recited analysis steps as limited by the “wherein” clauses of independent claims 1 and 15.” slip op. at 31

  Patent outcomesUS 8,643,513 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,643,513
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01831 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 4, 22, 23, 100, 113–116, 118, 119, 309–312, 314, 315, and 319 are unpatentable as obvious over Nozawa and Philips 4052, with Maas added for claims 119 and 315.

  RulingsFinal written decision

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

    “During the trial, ParkerVision asserted that we should maintain our construction of “harmonic” (PO Resp. 18–22), and Qualcomm did not address the adopted construction. With respect to the remaining terms, ParkerVision argues that none of these terms are material to the remaining dispute between the parties, which is focused on the “harmonic” limitation. Id. at 23–24. On this, we agree. As the remaining terms are not material to the parties’ dispute, we decline to construe them further. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Qualcomm contends, citing Dr. Larson’s testimony, that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 10 (citing Ex. 1002 ¶¶ 31–39). ParkerVision does not contest Qualcomm’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, we adopt Qualcomm’s proposed level of ordinary skill in the art.” slip op. at 12

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

    “Qualcomm contends that “Nozawa and Philips 4052 both provide architectures and methods for upconversion that can be used for a transmitter.” Pet. 21. Indeed, as Qualcomm observes, the 74HC4052 chip described in Philips 4052 is used in Nozawa. Id. at 23–24. We agree with Qualcomm that a person of ordinary skill in the art would have had reason to look to the disclosure of Philips 4052 to learn more about the operation of the 74HC4052 chip disclosed in Nozawa. ParkerVision does not challenge that a person of ordinary skill in the art would have combined Nozawa with Philips 4052.” slip op. at 12

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

    “The parties’ disagreements over the various inputs and permutations of the Maas equation aside, one point appears to be beyond dispute: under some conditions, but not all conditions, the Maas equation shows that Nozawa’s structure will produce a periodic signal that contains integer multiples of the fundamental frequency. In other words, the structure of Nozawa is capable of producing a signal that satisfies the limitations of the claim. Qualcomm argues that this is sufficient to show unpatentability. Pet. Reply 13 (citing Gen. Electric Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 248–49 (1945)). On this point, we agree. The challenged claims at issue here are apparatus claims; as such, they “cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). In other words, the “periodic signal” limitations, which are directed to the transitory electrical signals produced by the apparatus, cannot give rise to patentability so long as the underlying apparatus has been shown to be capable of generating those signals. Here, it is undisputed that Nozawa’s circuit is capable of generating a periodic signal having a plurality of harmonics, wherein those harmonics are integer multiples of the fundamental frequency. Furthermore, we agree with Qualcomm that Nozawa’s low-pass filter is capable of isolating one or more of those harmonics, as desired. Accordingly, we find that Qualcomm has shown,5 by a preponderance of the evidence, that the combination of Nozawa and Philips 4052 teaches each and every limitation of claims 4, 22, 23, 100, 113–116, 118, 309–312, 314, and 319. Additionally, for the reasons discussed above, we find that Qualcomm has shown that one of ordinary skill in the art would have been prompted to combine the teachings of the references in the manner proposed.” slip op. at 16

  Patent outcomesUS 6,091,940 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,091,940
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.All claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01829 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 2, 18, 81–84, 86, 88–91, 93, 94, 251–254, 256, 258–261, 263, and 264 are unpatentable as obvious over Krauss and Ariie, with Sullivan added for claims 86, 93, 256, and 263.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 12 (citing Ex. 1002 ¶¶ 24–29). ParkerVision does not contest Qualcomm’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, we adopt Qualcomm’s proposed level of ordinary skill in the art.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “experts. We agree with Qualcomm that, in the combination of references as proposed, the rectangular wave of Krauss would drive the Ariie FET as a switch. That switch, in turn, would cause the FET to gate the input signals of Krauss, satisfying the disputed limitations of the claims. We note that Dr. Birkett does not testify to the contrary, stating only that Ariie does not teach the FET as alternating between connecting and disconnecting the data signal. Ex. 2008 ¶ 37. While this is correct, Dr. Birkett’s testimony is directed to the disclosure of Ariie individually, rather than looking to the proposed combination. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” (citing In re Young, 409 F.2d 754 (CCPA 1968))). Dr. Birkett does not address—and ParkerVision does not dispute—that when operated with the rectangular waves of Krauss, Ariie’s FET acts as a switch.” slip op. at 14

  • Strike new argumentNew argument consideredDecided for petitioner

    “5 ParkerVision contends that Qualcomm’s argument—regarding operating Ariie’s mixer with a rectangular wave—is a new argument that goes beyond the scope of a proper reply. See Paper 24, 1 (identifying pages 9–12 and 16– 18). We have evaluated ParkerVision’s position and disagree that Qualcomm raised the argument for the first time in its Reply. In particular, we note that the Petition specifically highlighted the “First Oscillating Signal D” of Figure 16-3(c)—the rectangular wave—and states that gate G of Ariie’s FET Q1 would receive that signal. Pet. 26, 28. Krauss, is shown as an input into one of the mixers of Figure 16-3(a). Ex. 1003, 64. Qualcomm contends that when wave D is high, it would cause the FET to close; whereas, when D is low, the FET would open. Pet. Reply 11. The same reasoning holds for rectangular wave E, which drives the second mixer of Krauss. Qualcomm argues that it is irrelevant whether the FET of Ariie could be run in another manner, which does not operate as a switch, because the rectangular control signal of Krauss has only two states, off and on. Id. at 12.” slip op. at 13

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

    “In its Reply, Qualcomm does not contest any of ParkerVision’s claim construction assertions, or take issue with its characterization that the parties agree on the salient aspects. Given the parties’ positions, and upon review of the entire record, we maintain our prior constructions of “switch module” and “harmonic,” and adopt ParkerVision’s proffered construction of “to gate” as “to change between connecting and disconnecting.” As the construction of “summer” is not material to the parties’ dispute, we decline to provide an express construction here. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8

  Patent outcomesUS 6,091,940 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,091,940

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.