• Google LLC v. Withrow Networks Inc.Instituted
  PTAB · Sep 29, 2025 · IPR2025-00775 · APJ Jason J Chung · IPR · Institution

  The Board instituted IPR on claims 1–9 and all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable, including over Carmel and Mattavelli.

  RulingsInstitution decision

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

    “1. Principles of Law A claim is unpatentable under § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of obviousness or non-obviousness (i.e., secondary considerations, such as commercial success, long-felt but unsolved need, failure of others, etc.).5 Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). We analyze the asserted grounds based on obviousness with the principles we identify above in mind.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. Relying on the testimony of Dr. Polish, Google argues the following: [a] person of ordinary skill in the art . . . would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet. Additional education could compensate for less practical experience and vice versa.” slip op. at 10

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

    “In the Petition, Google states that it “does not presently contend that any [claim] term requires express construction.” Pet. 6. In response, Withrow acquiesces; in particular, Withrow argues “the Board need not construe any terms of the ’849 Patent. Petitioner does not contend any [claim] terms require express construction.” Prelim. Resp. 13 (citing Pet. 6). Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

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

    “Turning to rationale to combine, Google contends that Carmel and Mattavelli are both directed to processing multimedia data playback “for the appreciation of a user,” while providing the highest perceived audio and video output quality possible in view of system constraints to ensure playback continuity. Pet. 50–51 (citing Ex. 1003, 10:48–54, 11:9–18, 7:35– 49, Figs. 3D, 6B; Ex. 1004, 2309, 2310). Google argues that both Carmel and Mattavelli pertain to compression of multimedia data using well-known coding and compression standards for video streaming. Pet. 51 (citing Ex. 1003, 7:25–26, 11:24–52; Ex. 1004, 2309–2311). Google argues a PHOSITA would appreciate both Carmel and Mattavelli complement each other because Carmel pertains to addressing constraints to available network bandwidth, whereas Mattavalli relates to addressing limits on available processing resources at the client/multimedia player. Pet. 52 (citing Ex. 1003, Abstract, 7:36–41; Ex. 1004, 2309–2312). Google argues that a PHOSITA would have been motivated to combine the complementary teachings in Carmel and Mattavelli to create a more robust streaming system that addresses both bandwidth constraints and client processing limits to provide a best possible playback experience. Pet. 52 (citing Ex. 1002 ¶¶ 212–215). Google argues that Mattavelli teaches merely optimizing transmission bandwidth is not sufficient and is potentially harmful, which provides an express motivation to combine Carmel’s and Mattavelli’s complementary teachings to ensure that different, related links in the streaming playback chain are optimized together. Pet. 53 (citing Ex. 1002 ¶¶ 216–217; Ex. 1004, 2310). In addition, Google argues Carmel contains an express disclosure that would have motivated a PHOSITA to combine Carmel with Mattavelli’s complementary teachings because Carmel states that multimedia playback is achieved “preferably with only a minimal necessary transmission and decoding delay.” Pet. 53–54 (citing Ex. 1002 ¶ 218; Ex. 1003, 10:50–54). Withrow does not specifically respond to these arguments, except for limitations 1[c.ii] and 1[c.iv] discussed infra. See generally Prelim. Resp. Nonetheless, the burden of persuasion remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Based on the preliminary record, we discern no deficiency in Google’s characterizations of Carmel, Mattavelli, or the general background knowledge in the art. In addition, for purposes of institution, we are persuaded by Dr. Polish’s testimony concerning the relevant disclosures in Carmel and Mattavelli.” slip op. at 22

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,771,849
• K/S Himpp v. III Holdings 4, LLCNo claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00496 · APJ James T Moore · IPR · Final written decision

  Claims 1–17 were not shown unpatentable under § 103 over Topholm and Michael because the cited art did not teach adjusting a hearing aid profile.

  RulingsFinal written decision

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

    “The problem we find with this position is that the Petitioner is reading claim elements into the description of these references. Patent Owner points out that the profiles are not being adjusted, but rather being selected from twenty-four previously stored profiles. Resp. 30–31. While the ear module operational profile changes, we observe that this is because it is using a different profile, which was just uploaded from the control unit. The act of moving the finger around on the screen to us perhaps appears to change the profile, when it is in fact moving through a set of preexisting profiles and uploading them to the hearing aid instead, changing operation of the hearing aid itself but not adjusting the profile itself. Michael states: This permits the user to select a hearing profile by simply moving visual indicator 924 over main region 922 while listening to a sound stream broadcast by ear 35 module 10; the sound stream being heard by the user reflects the hearing profile corresponding to the current position of the visual indicator 924 in real-time. Ex. 1005, 8:32–37.” slip op. at 21

  • Expert testimonyPetitioner expert creditedOther

    “4 Petitioner also relies upon the declaration testimony of Dr. Robert E. Morley, Jr. (Ex. 1002). Both references appear to be prior art under 35 U.S.C. § 102(b). We find Dr. Morley, by virtue of his education and experience, qualified to testify to the subject matter of this proceeding. Ex. 1002 ¶¶ 2–14 and Exhibit A thereto. We are cognizant of Patent Owner’s suggestion that we give his testimony “little, if any, weight” because of the similarity of the testimony with Petitioner’s arguments and discrepancies between it and his deposition testimony. PO Resp. 34–36. We give Dr. Morley’s testimony appropriate contextual weight herein based upon the content of the testimony itself, and any contrary testimony in Exhibit 2006. We decline to assign generally no weight to his testimony, however.” slip op. at 3

  • Skill levelSkill level petitioner adoptedOther

    “These underlying factual considerations consist of: (1) the “level of ordinary skill in the pertinent art,”5 (2) the “scope and content of the prior art,” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary considerations” of non-obviousness such as “commercial success, long felt but unsolved needs, failure of others, etc.”6 KSR, 550 U.S. at 406 (quoting Graham, 383 U.S. at 17–18). 5 Petitioner defines the level of ordinary skill in the art as someone with a B.S. degree in electrical or computer engineering, or the equivalent, and at least two years of experience in the design of audiological products. Pet. 7-8 (citing Ex. 1002, ¶ 32). Patent Owner does not challenge this level. PO Resp., passim. The references in the record tend to support a finding that this is the appropriate level.” slip op. at 12

  Patent outcomesUS 8,761,421 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,761,421
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-01690 · APJ Scott C Moore · IPR · Final written decision

  Petitioners failed to prove claims 1–10, 15, 20, and 24 unpatentable because they did not show a reason to refrain from calculating Hsu’s metrics when Franaszek’s type information was absent.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Notably, Dr. Creusere never opines that a person of ordinary skill in the art would have had reason to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type data was not present, in the manner Petitioners allege would have satisfied claim limitations 1f and 24f. See ’179 IPR, Ex. 1002 ¶¶ 141–146, 191–202; ’808 IPR, Ex. 1002 ¶¶ 141– 146, 191–202. In fact, during his deposition, Dr. Creusere confirmed that he was not offering an opinion that a person of ordinary skill in the art would have refrained from calculating Hsu’s block type and redundancy metrics when Franaszek’s “type” information was not present: Q. And in your declaration, you don't propose that a POSA would only use Hsu when Franaszek already has a data type and not use Hsu when Franaszek doesn't have a data type, right? A. I don't propose that a POSA has to do that. Though I do discuss the advantages that one could achieve if one had a data type, and one were to combine that with Hsu, but I don't say -- I don't say that you can only apply Hsu when you -- when you have a data type. Q. You don't have an opinion that a POSA would have been motivated to use Hsu only when Franaszek has a data type, but would not have been motivated to use Hsu when Franaszek doesn't have a data type, right? A. I don't believe that I expressed an opinion on that in my declaration. Ex. 2003, 130:18–131:12 (emphases added).” slip op. at 26

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00808 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–10, 15, 20, and 24 were not shown unpatentable because Petitioners did not establish a reason to forgo Hsu’s analysis when Franaszek lacked type information.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “In contrast, Patent Owner’s declarant, Dr. Zeger, directly addresses the issue in dispute, and testifies that a person of ordinary skill in the art would not have had reason to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type data was not present: While I do not agree that a POSA would be motivated to combine Franaszek with Hsu at all, I do agree with Dr. Creusere that if a POSA were to make such a combination, the POSA would rely on Hsu’s powerful data type recognition and compressibility analysis approach to identify a data type and redundancy metrics for each of Franaszek’s data blocks. I also agree with Dr. Creusere’s testimony that using Hsu in such circumstances would help Franaszek “pick a better compression technique and get more compression.” Id. at 130:12-17. I certainly do not believe that a POSA would want to refrain from using Hsu’s powerful data type recognition and compressibility analysis approach when Franaszek lacks data type information. To the contrary, Hsu describes a system that avoids any content independent compression and that instead uses an entirely content-dependent approach, and its teachings are thus heavily directed toward an approach for always identifying a data block’s data type as well as its three redundancy metrics. Thus a POSA would have to disregard a core aspect of Hsu’s teachings in order not to use Hsu when Franaszek lacks a data type. I agree with Dr. Creusere that a POSA would not take such an approach. It would certainly not be obvious for a POSA to do so. Ex. 2004 ¶ 24. We find Dr. Zeger’s testimony persuasive, especially in view of Dr. Creusere’s deposition testimony that advantages would result from using Hsu’s block type and redundancy metrics, regardless of whether Franaszek’s type data was or was not present.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00179 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–10, 15, 20, and 24 were not shown unpatentable because Petitioners did not establish a reason to refrain from calculating Hsu’s metrics when Franaszek’s type information was absent.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ex. 2004 ¶ 24. We find Dr. Zeger’s testimony persuasive, especially in view of Dr. Creusere’s deposition testimony that advantages would result from using Hsu’s block type and redundancy metrics, regardless of whether Franaszek’s type data was or was not present.” slip op. at 28

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• 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. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 15, 2018 · IPR2016-01671 · APJ Christopher L Crumbley · IPR · Final written decision

  Petitioner failed to prove claims 1–5, 9–12, 14, 18, 19, and 24 unpatentable as obvious because it did not establish a specific combination with a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not observe a meaningful difference 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). Moreover, Dr. Creusere appears to satisfy either assessment. Our analysis in this Decision is supported by either assessment, but, for purposes of this Decision, we adopt Petitioner’s assessment.” slip op. at 8

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

    “The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 5–6. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9

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

    “Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 154–71; Ex. 2017 ¶¶ 187–89. Instead, Petitioner simply asserts, in a conclusory manner, that: Because the relevant art is predictable and compression algorithms and transmission times may be modeled, simulated, and easily tested, a person of ordinary skill in the art would have had a reasonable expectation of success in combining these various teachings found in the prior art to arrive at the claimed invention. Pet. 34 (emphasis added)(citing Ex. 1002 ¶¶ 169–71). Notably, Dr. Creusere acknowledges that the number of possible permutations faced by a person having ordinary skill in the art would have been “unlimited” and that it was “impossible” for him to address “all the permutations of those possibilities.” Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3.” slip op. at 17

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168– 69), on this record, we cannot reconcile these portions of his declaration Dr. Creusere’s his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168–69), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, nor Dr. Creusere’s declaration, nor his deposition testimony, provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” evidentiary burden. Pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009), it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.” Id. at 1359–60 (quoting In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988); see also Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“[O]bviousness law in general recognizes an important distinction between combining known options into ‘a finite number of identified, predictable solutions,’ and ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result.”). Furthermore, as the Federal Circuit explained in Kubin, the Board should not use hindsight based on allegations that require that the person having ordinary skill in the art to randomly pick from a board filled with combinational prior art possibilities. Kubin, 561 F.3d at 1359. To paraphrase, Petitioner is attempting to bypass its evidentiary burden of having to proffer particular evidence of a specific combination, which would teach the “faster than” limitation recited in claims 1 and 24 by instead repeating that “model[ing], simulat[ion], and test[ing]” leads to a reasonable expectation of success (Pet. 34); whereas, in this proceeding, the number of permutations and variables are “unlimited” and “impossible” to address, as acknowledged by Dr. Creusere (Ex. 2015, 81:21–83:24, 84:13– 24, 143:20–144:3). That is, Petitioner attempts to craft a theory of obviousness using non-specific teachings from Franaszek and Osterlund that allegedly demonstrate a reasonable expectation of success; this attempt, however, falls significantly short of the Federal Circuit’s requirements. Another obstacle to our reliance on Dr. Creusere’s vacillating opinions is Patent Owner’s declarant, Dr. Zeger. Dr. Zeger opines in his declaration that Franaszek illustrates complex choices a person having ordinary skill in the art would face in considering whether and how to modify Franaszek in light of Osterlund on this record. Ex. 2017 ¶¶ 152–69. In particular, Dr. Zeger opines that Franaszek’s approach requires numerous steps that each create delays before compression occurs, which are illustrated in Dr. Zeger’s figure below. Id.” slip op. at 18

  Patent outcomesUS 7,415,530 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,415,530
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.No claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01832 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board found claims 1, 18, 81–84, 86, 88–91, 93, 94, 251–254, 256, 258–261, 263, and 264 not proven unpatentable under either asserted obviousness ground.

  RulingsFinal written decision

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

    “ordinary meaning of “bias signal” is “a signal having a steady predetermined level.” Resp. 28; Reply 6–7. The parties also agree that at least some information signals may be considered “bias signals.” The crux of the parties’ disagreement is which type of information signal. The ’940 patent defines “information signal” as “[t]he signal that contains the information that is to be transmitted. As used herein, it refers to the original baseband signal at the source.” Ex. 1001, 8:48–50 (emphasis added). Thus, the ’940 patent clearly defines “information signal” as “the original baseband signal at the source.” The ’940 patent defines “baseband signal” as: Any generic information signal desired for transmission and/or reception. As used herein, it refers to both the information signal that is generated at a source prior to any transmission (also referred to as the modulating baseband signal), and to the signal that is to be used by the recipient after transmission (also referred to as the demodulated baseband signal). Ex. 1001, 7:41–47. The ’940 patent clearly gives a broad meaning to “baseband signal” such that it encompasses any signal desired for transmission and/or reception, but the definition of “information signal,” as quoted above, does not refer to any baseband signal. Rather, it refers to “the original baseband signal at the source.” Ex. 1001, 8:48–54. By including the terms “original” and “at the source,” the meaning of information signal, as defined by the ’940 patent, is more limited than the definition of a baseband signal. Thus, Petitioner’s contention that the meaning of “information signal,” and, hence, “bias signal” should be expanded to include any “baseband signal” (Reply 4) improperly takes “information signal” out of context. Petitioner’s contention eliminates the terms “original” and “at the source” from the ’940 patent’s definition of “information signal,” without providing any reason why those terms should not be considered. Accordingly, we agree with Patent Owner and construe “bias signal” to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.”” slip op. at 11

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

    “Further, Patent Owner explains that “[t]he parties agree on the portion of the ‘to gate’ construction that is material to this IPR, i.e., that ‘to gate,’ the switch module must change between connecting and disconnecting the bias signal from the switch module’s output.” Id. at 37 (citing Pet. 13–14). Patent Owner’s proposed construction is consistent with the construction proposed by Petitioner. See Dec. 11 (discussing Petitioner’s construction of “to gate [a signal]” as “to change . . . between (i) connecting a signal at an input to an output such that the input and output have an equal voltage, and (ii) disconnecting the signal from the output” (quoting Pet. 14)). In light of the consistency between the proposed constructions, and in light of the lack of an actual controversy between the parties with respect to the impact of the minor differences in the proposed meanings of this term, we need not construe expressly the term further.4 Petitioner’s Reply does not challenge Patent Owner’s arguments regarding these claim terms. Accordingly, we adopt the construction of “switch module,” as reproduced above, for the reasons explained in our Decision to Institute. See Dec. 8–11. Additionally, we decline to construe expressly the terms “summer” and “to gate,” for the reasons discussed above.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3. Level of Ordinary Skill in the Art Petitioner contends 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. 11 (citing Ex. 1002 ¶¶ 24–29). Petitioner’s argument is supported by Dr. Larson’s testimony. Ex. 1002 ¶¶ 24–29. Patent Owner does not contest Petitioner’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “High Level Radio Frequency (“RF”) Source 10. The RF signal contains the information that television watchers see and hear.” Pet. 29 (citing Ex. 1023, 1:14–17). Petitioner asserts that Dobrovolny’s “RF Source signals are information signals that constitute ‘bias signals’ as that term is defined by the ‘940 patent.” Id. (citing Ex. 1002 ¶¶ 154, 210). Petitioner’s position is based on its claim construction of “bias signals” as “encompassing information signals.” Id. Notably, in the Petition,5 Petitioner does not assert that the recited “bias signal[s]” would have been obvious to one of ordinary skill in the art in light of Dobrovolny’s RF Source signals; rather, Petitioner’s position is that “bias signal[s]” are disclosed expressly. See id. (“RF Source signals . . . constitute ‘bias signals’”) (emphasis added).6 Patent Owner’s primary argument is as follows: [E]ven accepting [Petitioner’s] assertion that the ’940 patent expanded the ordinary meaning of ‘bias signal’ to include ‘information signal’ as defined in the patent . . . . [Petitioner] does not even allege, much less prove, that the purported ‘bias signal’—Dobrovolny’s high frequency Radio Frequency (RF) television signal—meets either of these definitions. Resp. 38–39. Patent Owner reiterates that Petitioner’s “only attempt to prove that the Dobrovolny RF television signal satisfies the claimed first and second bias signals is its assertion that Dobrovolny’s ‘RF signal contains the information that television watchers see and hear.’” Id. at 39 (quoting 5 As discussed infra, see Section III.C., Petitioner’s additional argument that bias signals would have been obvious in light of Dobrovolny’s RF Source signals constitutes a new argument, set forth only in Petitioner’s Reply, and we do not consider it here for the reasons explained below. 6 With respect to independent claim 18, Petitioner relies upon its arguments directed to the similar claim limitations of claim 1. See Pet. 44–45 (referring to Petitioner’s arguments directed to claim 1). Pet. 29). Patent Owner contends, however, that “an ‘information signal’ is not just any signal containing information . . . as [Petitioner’s] argument implicitly presumes. Rather, as defined in the ’940 patent, an information signal is restricted to ‘the original baseband signal at the source.’” Id. (quoting Ex. 1001, 8:48–54). Petitioner’s argument in its Reply is based on its incorrect claim construction of “bias signal” as encompassing any information signal. See, e.g., Reply 7 (asserting that the “bias signal” is met by Dobrovolny’s disclosure because it teaches “an information carrying High Level RF Source for reception”) (citing Ex. 1023, 1:14–17; Ex. 1002 ¶¶ 154, 210). As explained above, “bias signal” is understood to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.” See supra Section II.A. Petitioner does not argue, and has not established, that Dobrovolny’s RF Source signal is either at a steady, predetermined level or is the original baseband signal at the source. Thus, Petitioner has not shown that Dobrovolny discloses the “bias signal” limitations recited in claims 1 and 18, and the claims that depend from each.7 Accordingly, Petitioner has not shown, by a preponderance of the” slip op. at 19

  Patent outcomesUS 6,091,940 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,091,940
• 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

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.