- SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00692 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1–14 as anticipated by Best and obvious over Best, and claim 15 as obvious over Best, Mills, and Bonella.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“construction “requires two layers of IC packages, in which a first IC package (the Board’s ‘carrier’) contains one or more second IC packages (the Board’s memory chips).” PO Resp. 39. Petitioner counters that “[t]he Board’s construction does no such thing.” Pet. Reply 18–19. We agree with Petitioner. Patent Owner’s argument is predicated upon the erroneous assertion that “[e]ach memory chip in the Board’s ‘carrier’ requires a different IC package (i.e., a second IC package) that encloses at least one memory die.” PO Resp. 39. Each memory chip does not require its own integrated circuit package. On the contrary, it may be, as Best discloses, a die enclosed with another die in a single IC package. Having considered the arguments and evidence, we maintain our construction of “memory module” to mean “a carrier that contains one or more memory chips,” where “carrier” encompasses an integrated circuit package.” slip op. at 14
- Skill levelSkill level board ownOther
“Otherwise, we determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient to have Mr. Maltiel’s declaration excluded in its entirety. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give the entirety of Mr. Maltiel’s declaration no weight.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“8–14. Pet. 30–37, 44–49. Notwithstanding Patent Owner’s arguments, which we have considered and which we address below, we are persuaded by Petitioner’s showing, which we adopt as our own findings and conclusions, that claims 1–14 are unpatentable under 35 U.S.C. § 102 as anticipated by Best.” slip op. at 24
Patent outcomesUS 8,874,831 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,874,831 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00561 · APJ Bryan F Moore · IPR · Final written decision
Claims 2–7 were held unpatentable as obvious over Averbuj and Tsern; trial as to claim 1 was terminated based on collateral estoppel.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“Patent Owner asserts that “collateral estoppel does not apply to the application of the claim 1 limitations in assessing dependent claims 2–7.” Id. at 2. Patent Owner further asserts “[a] party seeking to apply collateral estoppel based on a prior action must show that (1) the identical issue was actually litigated; (2) the issue was actually decided in a final decision on the merits; (3) the issue was necessary to the final decision; and (4) the party being estopped was adequately represented in the prior action [i.e. “the United Access test”].” Id. at 2 (citing United Access Techs., LLC v. CenturyTel Broadband Services LLC, 778 F.3d 1327, 1331 (Fed. Cir. 2015)). We agree that this is the proper test to use to assess the applicability of collateral estoppel. Nevertheless, we note United Access applies collateral estoppel in a different context and suggests that issue preclusion can be applied in an obvoisness challenge, even if the final decision on the original issue was considered under an anticipation challenge. In particular, in United Access it was noted that “[i]ssue preclusion [traditionally called “collateral estoppel”3] applies to issues litigated in prior disputes . . . [and, thus, i]t thus makes no difference that the earlier no-damages-due-to-competition ruling arose in a case under the Truth in Negotiation Act and that this dispute arises under the False Claims Act and the common law.” United Access, 778 F.3d. at 726. The “issue” of whether Averbuj teaches the limitations of claim 1 is identical to the issue in and has been litigated in the ‘970 IPR which found that Averbuj anticipates the limitations of claim 1.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1475, 1480 (Fed. Cir. 1994). Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ‘434 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 9 (citing Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. 16 Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Pet. 41. In other words, Petitioner asserts that because a BIST unit can be incorporated into a chip mounted on a PCB and because memory module 12 is part of the BIST unit, memory unit 12 is mounted on a PCB. We disagree. Unlike claim 1, which simply requires the memory unit is “on” the PCB, claim 2 requires that the memory module be a “physically separate component” and “mounted” on the PCB. Petitioner has not shown sufficient support for its broad reading that a module which is a circuit embedded in a larger circuit included in a chip may be considered a physically separate component mounted on a PCB. Claims 3–7 depend from claim 2, and the Petition fails to provide additional prior art disclosures that cure the deficiency with respect to claim 2; that is, disclosure of separate components 22 mounted on a printed circuit board in Averbuj. Pet. 41–48. Thus, Petitioner has failed to establish, by a preponderance of the evidence, its assertion that claims 2–7 are anticipated by Averbuj.” slip op. at 22
Patent outcomesUS 8,001,434 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,001,434 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00562 · APJ Bryan F Moore · IPR · Final written decision
Claim 4 was held unpatentable as obvious over Averbuj and Tsern; the trial was terminated as to claim 1 based on collateral estoppel.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedOther
“Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Skill Analysis Petitioner asserts “[a] a person of ordinary skill in the art at the time of the ‘501 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST” Pet. 6 (citing, inter alia, Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“a. Claim 1 Claim 1 is anticipated by Averbuj under the doctrine of collateral estoppel. See supra Section II. A. b. Claim 4 Claim 4 recites “[t]he memory system of claim 1, wherein the memory system comprises at least two physically separate integrated circuit packages, wherein each of the at least two physically separate integrated circuit packages comprises at least one data handler of the plurality of data handlers.” Petitioner asserts that Averbuj discloses that BIST units are “commonly incorporated into memory chips and other integrated circuits.” Ex. 1005 at ¶ [0003]. Because the memory interfaces are part of a BIST unit, Averbuj also discloses the memory interface (10, 41) is commonly incorporated into (memory or other) chips, or “integrated circuits.” Ex. 1012 at 98, 277; Ex. 1003 at ¶ 126. Averbuj further discloses that the device block (6) and the components contained therein, such as the sequencer (8) and the memory modules (12), are “distributed” and “located throughout an electronic device,” i.e., physically separated. See e.g., Ex. 1005 at ¶¶ [0013], [0015]; Ex. 1003 at ¶ 127. Since memory interfaces (10, 41) are also components of each device block (6), at a minimum, the different sets of memory interfaces (10, 41) belonging to different device blocks (6) must also be physically separated. Ex. 1003 at ¶ 127. Averbuj also discloses that the various integrated circuits or chips of an electronic device are “mounted on a circuit board,” indicating that the integrated circuits and chips comprising the electronic device are packaged integrated circuits or chips. Ex. 1005 at ¶ [0005]; Ex. 1016 at 1:15-27; Ex. 1003 at ¶ 128. Therefore, Averbuj discloses that the memory interfaces (each containing a “data handler”) of different device blocks (which comprise a “memory system”) must be distributed across “at least two physically separate integrated circuit packages.” Ex. 1003 at ¶ 129. Pet. 30–31. In other words, Petitioner asserts that because the sequencer can be” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“There must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) (internal quotations omitted) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For example, in ActiveVideo Networks, Inc. v. Verizon, our reviewing court 7 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS and to explain the background in the context of Patent Owners’ Motion to Strike. held that the following expert testimony on the motivation to combine was deficient as a matter of law: [Y]ou wanted to build something better. You wanted a system that was more efficient, cheaper, or you wanted a system that had more features, makes it more attractive to your customers, because by combining these two things you could do something new that hadn’t been able to do before. Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight. As to other of Petitioner’s arguments supported by its declarant, we find those to employ hindsight to piece together the device as claimed. The expert provides a host of rationales for separating the components of Averbuj into separate ICs including structures of Tsern (Ex. 1003 ¶ 143) and other secondary references. We acknowledge that Tsern contains structures that suggest the claimed configuration of the data handlers, but in this ground Petitioner does not assert Tsern as a reference, rather simply as evidence of the knowledge of one of skill in the art. Pet. 34–38. Relying on knowledge in the art does not obviate the need to prove a reference is prior art as of the critical date and show a motivation to combine existing slip op. at 25
Patent outcomesUS 8,359,501 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,359,501 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00577 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–3, 7, 8, and 10–12 are unpatentable as obvious over Halbert and Amidi; the other asserted grounds did not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. 10 Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Analysis We determine that it is not necessary to provide an express interpretation of any term of the claims.” slip op. at 11
- BurdenNot shown unpatentable
“written to or read from simultaneously. Pet. 37–41. In particular, Petitioner asserts that Halbert’s directing of data, during a write operation, from the system memory data bus to registers 126 and 128 in successive clock cycles means that data being received by the memory devices corresponding to registers 126 and 128, respectively (e.g., ranks 140 and 142, respectively), occurs in successive clock cycles. Thus, according to Petitioner, “those memory devices associated with register 126 (i.e. Rank 140) receive data transmission from the system memory controller in the first clock cycle, but not in the second clock cycle . . . [and] those memory devices associated with register 128 (i.e., Rank 142) receive data transmissions from the system memory controller in the second clock cycle, but not in the first clock cycle.” Id. at 38. Therefore, according to Petitioner, Halbert does not, and cannot, write to the memory devices in ranks 140 and 142 simultaneously, because the memory devices in ranks 140 and 142 do not receive data concurrently. Id. In its Preliminary Response, Patent Owner asserts8 while data is sequentially latched onto registers 126 and 128, that data is then concurrently, not sequentially, written to memory device array 140/142—such operation is illustrated in Fig. 4, 8 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS. 15 above. Thus, all of Halbert’s memory devices are selected or enabled concurrently such that Halbert can write to all of its memory devices simultaneously. This is not, and is exactly counter to, the Petitioner’s assertions that the memory devices in ranks 140 and 142 receive—and thus, store—data sequentially. Prelim. Resp. 27–28. We agree. Petitioner has not explained how latching data to registers 126 and 128 is data transmission between a memory controller and a memory module when registers 126 and 128 are outside of the memory module. Moreover, Petitioner’s arguments and evidence with respect to claims 2, 3, 7, 8, and 10–12 do not cure this deficiency.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on Petitioner’s citations to specific prior art disclosures and supporting evidence, we are persuaded that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the legal conclusion that it would have been obvious to modify the teachings of Halbert with Amidi’s teachings to include rank select functionality. Pet. 64– 66. For example, Petitioner asserts: 19 To employ this chip select functionality of Amidi in the system of Halbert would have been only the arrangement old elements with each performing the same function it had been known to perform and yielding no more than one would expect from such an arrangement, i.e., the predictable result of operating each rank at desired times, and well within the level of ordinary skill to achieve. EX1003 ¶¶175-176. Moreover, a person of ordinary skill in the art would have been motivated to use the chip select functionality of Amidi in the system of Halbert to permit the use of lower density, and therefore cheaper and more readily available, memory in the system of Halbert, while using the existing address and data signal lines of Halbert. EX1019, ¶[0008]; see also id., ¶¶ [0002- 0012]; EX1003 ¶177. A skilled artisan would also have been motivated to include such prior art chip selection signals in Halbert in order to follow the traditional design of memory ranks including the use of traditional memory devices and the traditional address signals, as Halbert explains. EX1005, 3:55-57; EX1003 ¶178. Furthermore, Halbert suggests such a use by disclosing that “[m]any other variations on the illustrated embodiments are possible. For instance, . . . [t]he illustrated examples also show two ranks of memory, but other numbers of ranks are also possible.” EX1005, 9:20-26. Skilled artisans at the time would have understood that, in case the number of ranks is increased, chip/bank select signals would need to be used to activate some but not all of the ranks. See, e.g., EX1019 at FIGS. 5, 6A-6B (showing logic circuitry to generate chip select signals for” slip op. at 19
Patent outcomesUS 8,516,185 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,516,185 - Superior Communications, Inc. v. Voltstar Technologies, Inc.All claims unpatentablePTAB · Apr 20, 2018 · IPR2017-00067 · APJ Christa P Zado · IPR · Final written decision
Claims 4, 11, 12, 16–18, and 20–22 are unpatentable under § 103 as obvious over the stated combinations of prior art.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. (Emphasis added). The language of the statute makes clear § 315(e) applies to grounds the petitioner raised or reasonably could have raised during an “inter partes review . . . that results in a final written decision under 35 U.S.C. § 318(a).” The statute does not refer to grounds that were raised or reasonably could have been raised during reexamination. Because the prior proceeding was a reexamination proceeding under pre-AIA 35 U.S.C. § 311, not an inter partes review under post-AIA 35 U.S.C. § 311, and did not result in a final written decision under § 318(a), Petitioner is not estopped under § 315(e) from bringing this inter partes review.” slip op. at 13
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Section 315(b) provides that: An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b). Patent Owner alleges a privy of Petitioner, AT&T,10 was served with a complaint on or about February 29, 2012 and Petitioner was served with a complaint on or about February 1, 2013. PO Resp., 9; see also Prelim. Resp. 8. Petitioner does not dispute that it was served with a complaint alleging infringement of the ’833 patent more than one year prior to filing the Petition in the instant proceeding. Pet. 3–5. Petitioner argues, however, that the instant proceeding is not barred under § 315(b) because the district court action resulting from the earlier-filed complaint was dismissed without prejudice pursuant to Federal Rule of Civil Procedure 41(a), leaving the parties “as though the action had never been brought.” Pet. 5 (citing Ariosa Diagnostics v. Isis Innovation Ltd., Case IPR2012-00022, slip op. at 17 (PTAB Sept. 2, 2014) (Paper 166)); see also Ex. 1008 (dismissal order). As we have noted in previous Board decisions, the “Federal Circuit has consistently interpreted the effect of such dismissals as leaving the parties as though the action had never been brought.” Oracle v. Click-to-call, Case IPR2013-00312, slip op. at 17 (PTAB Oct. 30, 2013) (Paper 26) (precedential); Macauto U.S.A. v. Bos GmbH & KG, Case IPR2012-00004, 10 Patent Owner adduces insufficient evidence that AT&T is a privy of Petitioner. In any event, the action against AT&T was consolidated with the action against Petitioner (PO Resp.), and both actions were dismissed, in a single consolidated order, without prejudice (Ex. 1008). slip op. at 15 (PTAB Jan. 24, 2013) (Paper 18) (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002); Bonneville Assocs., Ltd. P’ship v. Baram, 165 F.3d 1360, 1364 (Fed. Cir. 1999)). Because the effect of a voluntary dismissal without prejudice is to render the prior action a nullity, such action does not give rise to a statutory bar under 35 U.S.C. § 315(b).” slip op. at 15
- ExcludeMotion to exclude, deniedDenied
“J. Patent Owner’s Motion to Exclude Patent Owner filed a Motion to Exclude Evidence (Paper 29), Petitioner filed an opposition thereto (Paper 32), and Patent Owner filed a reply (Paper 33). Patent Owner seeks to exclude paragraphs 4–13 of the Declaration of Andrew S. Flior (Ex. 1018, “the Flior Declaration”), which relate to prior art searches relating to the ’833 patent obtained by Mr. Flior’s law firm. This evidence relates to arguments we need not, and do not, address regarding whether Petitioner is estopped under 35 U.S.C. § 315(e) from bringing this inter partes review. See supra Section II.D. Because we do not rely on, or reference, paragraphs 4–13 of the Flior Declaration in our Final Written Decision, Patent Owner’s Motion to Exclude Evidence is dismissed as moot.” slip op. at 65
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of our determination below, we determine the level of ordinary skill in the art with respect to the ’833 patent is consistent with the assessment provided by Dr. Horenstein, which Patent Owner does not dispute. Accordingly, we adopt the level of ordinary skill in the art asserted by Petitioner. Also, we are guided by the level of ordinary skill in the art reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
Patent outcomesUS 7,910,833 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,910,833 - Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.All claims unpatentablePTAB · Apr 19, 2018 · IPR2016-01829 · APJ Kevin C Trock · IPR · Final written decision
Claims 1, 2, 6, and 7 are unpatentable as obvious over Hermann, the BootMagic User Guide, and the ACPI Specification.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“In assessing the probative value of an expert opinion, [the Board] must consider three factors: (1) the interest in the outcome of the case, (2) the presence or absence of factual support for the expert’s opinion, and (3) the strength of any opposing evidence.” EC Data Sys., Inc. v. J2 Global, Inc., No. 2014-008203, 2014 WL 7171966, at *4 (PTAB Dec. 15, 2014) (citing Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985)); see also Ex Parte Magna Elecs., Inc., No. 2013-004164, 2014 WL 2360424, at *3 (PTAB May 28, 2014) (expert who “was employed by Patent owner when he provided the expert opinion . . . has a substantial interest in the outcome of the case”). Given Mr. Rafizadeh’s admitted personal and financial interest in the outcome of this case, we give his testimony less weight. We therefore find that a person of ordinary skill in the art relevant to the ’677 patent would have had a bachelor’s degree in computer science, computer engineering, or the equivalent, and between about two to four years’ experience in computer operating systems, programs and databases, and/or graphical user interfaces or virtualization. slip op. at 14
- Expert testimonyDecided for petitioner
“In assessing the probative value of an expert opinion, [the Board] must consider three factors: (1) the interest in the outcome of the case, (2) the presence or absence of factual support for the expert’s opinion, and (3) the strength of any opposing evidence.” EC Data Sys., Inc. v. J2 Global, Inc., No. 2014-008203, 2014 WL 7171966, at *4 (PTAB Dec. 15, 2014) (citing Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985)); see also Ex Parte Magna Elecs., Inc., No. 2013-004164, 2014 WL 2360424, at *3 (PTAB May 28, 2014) (expert who “was employed by Patent owner when he provided the expert opinion . . . has a substantial interest in the outcome of the case”). Given Mr. Rafizadeh’s admitted personal and financial interest in the outcome of this case, we give his testimony less weight. slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s arguments are not persuasive because nonobviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee’s invention to a person of ordinary skill in the art. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).” slip op. at 31
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“attorney argument, Patent Owner provides no evidence that these commercial systems utilize the claimed invention. See id. at 44–47; Pet. Reply 20–22. Patent Owner, for example, does not map any of the limitations recited in claim 1 to any particular feature of these commercial systems. See id. Assuming, arguendo, that these services use the claimed invention, Patent Owner has not presented any evidence that the claimed invention contributes to the commercial success of these systems. Patent Owner argues that “the fast switching afforded by the [’]677 [p]atent has provided each of these companies with the ability to provide their customers with an incredible amount of data at the tip of their fingertips at amazing speeds.” Id. at 48. The quote from AWS’s website, however, indicates that its cloud service constitutes “a broad set of infrastructure services” and other items. Ex. 2025. The allegedly “fast switching afforded by the ’677 patent,” even if true, therefore, would be only one feature of a much larger system. Patent Owner does not show these services employed the same switching technique, and does not quantify any switching speeds. Even assuming, however, some switching mechanism is employed by these services, “[w]hen the thing that is commercially successful is not coextensive with the patented invention—for example, if the patented invention is only a component of a commercially successful machine or process—the patentee must show prima facie a legally sufficient relationship between that which is patented and that which is sold.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988); see also Polaris Industries, Inc. v. Artic Cat, Inc., 882 F.3d 1056 (Fed. Cir. 2018) (citing Demaco, 851 F.2d at 1392, and stating “[p]ut another way, ‘objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” (quoting In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983)).” slip op. at 43
Patent outcomesUS 7,356,677 unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 7,356,677 - Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.All claims unpatentablePTAB · Apr 18, 2018 · IPR2016-01828 · APJ Kevin C Trock · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over the Partition Magic 3.0 User Guide because it teaches or suggests all claim limitations, and the secondary considerations lack evidentiary support and nexus.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“Reply 6. At oral argument, Petitioner’s counsel and Patent Owner’s counsel both agreed that the district court’s construction in the Lead Case with respect to the claim term “virtual cabinet” was acceptable. Tr. 18: 18–20; 25: 6–8, 17–20; 28: 10–13; 31: 8–15; 39: 1–5; 40: 5–8; 41: 13–17. The district court construed the term “virtual cabinet” as follows: “‘virtual cabinet,’ ‘cabinet record,’ and ‘virtual cabinet record’ each means ‘virtual storage device, capable of containing, typically through the use of virtual table of content pointers, all (or partitions of) shared (or non-shared) operating systems, application software (both OS dependent and No-OS embedded), databases and memory.’” Ex. 1010, 32–33. The district court’s construction of “virtual cabinet” is derived from the ’400 patent’s definition of the term “cabinet.” See e.g. Ex. 1001, 2:47–52; 5:24–29. The ’400 patent equates the terms “cabinet,” “Cabinet Record,” and “Virtual Cabinet.” Id. at 2:46–47; 5:22–24. Because the district court’s construction of “virtual cabinet” is reasonable and is based upon the express definition of “cabinet” found in the ’400 patent, we accept and adopt the district court’s construction.” Our analysis does not require the express construction of any additional claim terms.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preamble of claim 1 should be considered limiting.” PO Resp. 21. We note that this is the opposite position Patent Owner took in the Lead Case, where Patent Owner argued that the preamble is not limiting. See Ex. 1010, 20–21. In the Lead Case, the district court found that the preamble of claim 1 was not limiting. Id. at 25. We agree with the district court. As the district court pointed out, “[t]he preamble simply states the intended use of the” graphical user interface—i.e., “for displaying means for allocating a computer device’s resources to multiple operating system environments, partitioned on individual virtual cabinets, on said computer device.” Id. Moreover, the district court noted “[t]here is nothing in the prosecution history that establishes that the preamble was used to overcome a prior art rejection” and, “[t]o the contrary, the patentee expressly distinguishes the prior art using limitations found in the body of the claim, not using the preamble.” Id. Even if the preamble were limiting, however, we would still not be persuaded by Patent Owner’s argument that the graphical user interface taught by Figure 3.7 of the 3.0 User Guide “is limited to partitioning hard disk space, and fails to allocate any other computer resources such as memory” (PO Resp. 22) because those arguments are not commensurate with the scope of the preamble, which does not recite allocating all of a computer device’s resources or allocating memory specifically. On the contrary, the preamble is satisfied if any of a computer device’s resources are allocated to multiple operating system environments.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that Patent Owner’s proposed level of skill is unreasonably high. Pet. Reply 11–12. Petitioner argues that Mr. Rafizadeh, a named inventor on the ’400 patent, would not qualify as a POSITA under Patent Owner’s proposed standard, because Mr. Rafizadeh did not start working on virtualization until 1997, and would not have had four years of experience in virtualization as of the filing date of the ’400 patent application. Id. (citing Ex. 1026, 22:4–6; Ex. 2007 ¶¶ 21–22). Moreover, Petitioner argues, the other individuals Mr. Rafizadeh believed to be POSITAs at the time of the invention—such as Parviz Moayyad, Peter Druschell, and Jeff Barnes—all had been working on virtualization for only two years as of 1999, and thus would not have qualified as POSITAs under Patent Owner’s proposed level of skill. Id. at 12 (citing Ex. 1026, 54:11–20, 56:2–10). Petitioner also notes that Patent Owner’s Declarant, Dr. Rosenberg, proposed a definition of a POSITA that did not require four years of experience in virtualization. Id. (citing Ex. 2002 ¶ 33). We agree with Petitioner that Patent Owner’s proposed level of skill is unreasonably high. The educational background and experience of those working in the field, including the inventor, are factors considered, among others, in determining the appropriate level of ordinary skill. Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed. Cir. 2007). Here, however, Patent Owner proposes years of experience in computer virtualization beyond that held by the inventor and other acknowledged skilled artisans working in the field at the time of the claimed invention. Accordingly, we decline to adopt Patent Owner’s proposed years of experience in virtualization and find that a POSITA would be a person with a bachelor’s degree in computer science, computer engineering, or the equivalent, having between two to four years of experience in computer operating systems, programs and databases, and/or graphical user interfaces or virtualization.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Our construction of “virtual cabinet” requires only that a virtual cabinet is capable of containing operating systems, application software, databases and memory, and that this is accomplished typically by using content pointers. See also Ex. 1001, 2:47–52. The 3.0 User Guide teaches that “partitions will be like file cabinet drawers in which you can separate your operating systems, applications, and data files” (Pet. 29–30, quoting Ex. 1005, 3), and that “you should create primary partitions to install operating systems” (Pet. 29, quoting Ex. 1005, 38), allowing users “to make the currently selected partition the active partition” (id., quoting Ex. 1005, 79). The 3.0 User Guide also teaches that “[a] primary partition may contain any operating system (OS) as well as data files, such as applications and user files.” Pet. Reply 16 (quoting Ex. 1005, 126). Thus, we are persuaded that the primary partitions illustrated in Figure 3.7 and taught by the 3.0 User Guide are “capable of containing . . . operating systems, application software . . ., databases, and memory,” as required by our construction, thereby teaching the recited “cabinet selection button bar graphically representing at least one virtual cabinet.”” slip op. at 19
Patent outcomesUS 6,690,400 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,690,400 - Cisco Systems, Inc. v. TQ Delta, LLCAll claims unpatentablePTAB · Mar 12, 2018 · IPR2016-01760 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1, 2, 4, 11, 12, 14, 16, and 18 are unpatentable as obvious over Bowie and Yamano; Patent Owner’s motion to exclude is denied.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are not persuaded by Patent Owner’s arguments which are grounded in the ADSL standard applicable to Bowie. Patent Owner has not provided persuasive evidence or argument that the xDSL improvements in Yamano would alter the ADSL compliance of Bowie to discourage the combination of Bowie and Yamano. PO Resp. 37–39 (citing Ex. 2005 ¶¶ 23, 24, 26, 124–132). Instead, we credit the testimony of Petitioner’s declarant, who testifies that “a POSITA would understand Yamano’s burst mode to be compatible with the ANSI standard because low power mode operation is just an additional function that the standard permits.” Ex. 1012 33 ¶ 23. Thus, we disagree with Patent Owner that Bowie and Yamano are incompatible.” slip op. at 33
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner’s Declarant Testimony Patent Owner argues that we should ignore Petitioner’s declarant testimony because it is contradictory, and lacks credibility and objective support. PO Resp. 56–59. Specifically, Patent Owner argues that [Petitioner’s declarant,] Dr. Kiaei’s testimony is not reliable or credible, and the Board should give it no weight in evaluating Petitioner’s arguments. See 37 C.F.R. § 42.65(a); Icon Health, 849 F.3d at 1041 (the Board is entitled to “weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed”) (quoting In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004)); Rohm & Haas, 127 F.3d at 1092 (noting that “[n]othing in the rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness”); In re Nuvasive, 842 F.3d at 1379-1380 (noting that an agency’s factual determination should be based on “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion”).” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude is not a vehicle to argue that a reply contains new arguments. See Vibrant Media, Inc. v. General Electric Co., IPR2013- 00170, slip op. at 31 (PTAB June 26, 2014) (Paper 56). We agree with Petitioner, that a motion to exclude is available to parties to explain why certain evidence is inadmissible, and is not the proper place to raise arguments regarding the scope of a reply. Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012); Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., Case No. CBM2012-00002, slip op. at 62 (PTAB Jan. 23, 2014) (Paper 66) (stating that a motion to exclude “is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case”). We also agree with Petitioner that Patent Owner has not carried its burden to show that the identified paragraphs of Exhibit 1012 and Exhibit 1016 are not admissible under the Fed. R. Evid. 402 and 403. Rule 401 of the Federal Rules of Evidence states that evidence is relevant if “it has any tendency to make a fact more or less probable than it would be without the evidence.” Fed. R. Evid. 401. We find that Petitioner has met the threshold to establish that the evidence Patent Owner seeks to exclude is relevant. See OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1407 (Fed. Cir. 1997); Laird Techs., Inc. v. GrafTech Int’l Holdings, Inc., IPR2014-00025, slip op. at 44 (PTAB Mar. 25, 2015).” slip op. at 42
- Strike new argumentNew argument consideredDecided for petitioner
“Having reviewed Patent Owner’s listing of statements and evidence in connection with Petitioner’s Reply it deemed to be beyond the proper scope of a reply, and Petitioner’s response, we do not agree with Patent Owner that portions of Petitioner’s Reply are beyond the scope of a proper reply. The mere fact that a petitioner submits rebuttal testimony that relies on new evidence not previously identified in the petition does not suffice to establish its impropriety. Indeed, the very nature of a reply is to rebut the Patent Owner’s response. 37 C.F.R. § 42.23(b). For example, Patent Owner identifies evidence and argument addressed in Petitioner’s Reply to claim construction issues first raised in Patent Owner’s Response. See, e.g., Paper 23 (items 1 and 2); Paper 28 (citing PO Resp. 19–24 as supporting Petitioner’s response to items 1 and 2). Finding that Petitioner’s response to Patent Owner’s claim construction identification is an improper new 43 argument would deprive Petitioner of the ability to address Patent Owner’s claim construction evidence and argument introduced after Institution. Having fully considered Patent Owner’s list of alleged new arguments in Petitioner’s Reply and Petitioner’s identification of the portions in Patent Owner’s Response that prompted Petitioner’s Reply, we do not find that Petitioner introduced improper new argument and evidence that is beyond the scope of a proper reply. Our Order in this proceeding states that “the panel is capable of determining whether new argument/evidence is outside the proper scope of a reply when writing the final written decision.” Paper 22, 3. In this case, we do not agree with Patent Owner that the portions of Petitioner’s Reply and evidence identified in Paper 23 are beyond the scope of a proper reply. Petitioner’s reply argument and evidence are sufficiently responsive to Patent Owner’s argument and evidence introduced in Patent Owner’s response.” slip op. at 43
Patent outcomesUS 9,094,268 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,268 - DISH Network, LLC v. TQ Delta, LLCAll claims unpatentablePTAB · Feb 10, 2018 · IPR2016-01469 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1, 2, 11, and 12 are unpatentable over Bowie, Morelli, and ANSI T1.413; claims 4, 14, 16, and 18 are unpatentable over Bowie and Morelli.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Having considered the parties’ arguments and evidence, we do not agree with Patent Owner’s proposed construction that “maintaining synchronization” requires timing synchronization by correcting errors or differences between timing references. The claims of the ’268 patent do not recite “synchronization signal” or “synchronization frame” but refer only to “maintaining synchronization” during low power mode without specification as to the method of synchronization. See, e.g., Ex. 1001, 10:6–17 (claims 1 and 2). Indeed, claims 2 and 12 do not recite any particular synchronization signal or synchronization frame as a limitation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In light of the arguments and evidence presented, we are not persuaded that this term requires an express construction. Patent Owner’s proposed construction does not add necessary clarity to the claims, as it merely replaces “full power mode operation” with “transmission and/or reception of data during normal operation.” The parties, however, do not dispute the meaning of “full power mode operation.” Accordingly, an express construction is not necessary to resolve the disputes between the parties.” slip op. at 13
- Skill levelOther
“We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Petitioner notes, Morelli expressly discusses the receiver receiving while the transmitter is in low power mode. Reply 8–9; Ex. 1005, Fig. 6A (block 102), 15:46–52; 16:29–34). Thus, Morelli does not disclose mere boilerplate language that is not specific or nonenabling, but specifically discloses a transmitter 12 and receiver 16 in Figures 6A–9 where the receiver remains on while the transmitter is off. Reply 7–8. We are not persuaded by Patent Owner’s argument regarding Morelli’s Received Signal Strength Indicator (RSSI). PO Resp. 31–32, 33–34 (discussing RSSI). We do not agree with Patent Owner that Morelli’s teaching regarding using RSSI to determine whether to enter or exit a low power (“sleep”) (Ex. 1005, Abstract) could indicate that the receiver in Morelli is performing the RSSI function to determine when data is “available to be received,” but not actually using the receiver to receive data during the transceiver’s low power mode. Id. Such speculation is belied by the express teachings of Morelli. As Petitioner argues, Morelli states that “it is equally possible to have either the transmitter 12 or receiver 16 be designed to enter a sleep mode as described herein while the other is always in an active mode” (Ex. 1005, 21:51–54). Pet. 23, 40–41. We are also persuaded by Petitioner’s argument and evidence that Morelli is enabling, as it discloses in Figures 6A–9 and accompanying embodiments that the data received by the receiver is provided to MAC 30 to determine if the received packet requires a response necessary to switch the transmitter from sleep to active mode. Reply 9; Ex. 1005, Figs. 1 (control signal on line 38), 6A (block 102), 15:46–52, 15:59–62, 16:29–34; see also Pet. 40–41 (citing Ex. 1005, 1:45–50, 6:43–51, 8:16–20, 8:46–59, Fig. 2, 8:60–9:57, Fig. 3, 14:6–64, 19:7–10, 21:51–54). As Petitioner argues, in the case when Morelli determines that a response is not required, the receiver in Morelli is on and actively receiving data to make the determination based on the data received, while the transmitter is off or sleeping. Reply 8–9; Ex. 1005, Fig. 5A, 15:46–52; see also Pet. 40–41. We also note that Petitioner has provided testimony that a person of ordinary skill in the art would have been able to configure a circuit in accordance with the operation of Morelli and Bowie combined. Ex. 1002 ¶¶ 152–153; Pet. 41; Reply 8–9. Accordingly, we determine that Morelli provides sufficient detailed disclosure teaching of a receiver in full power mode and the transmitter in low power mode as required in the challenged claims.” slip op. at 22
Patent outcomesUS 9,094,268 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,268 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2017-00420 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Milbrandt, Hwang, Chang, and ANSI T1.413 under § 103(a).
RulingsFinal written decision- Skill levelSkill level board ownOther
“Patent Owner’s expert, Dr. Douglas Chrissan, opines that a person of ordinary skill in the art would have had (1) a bachelor’s degree in electrical engineering, and (2) at least three years of experience working with multicarrier communication systems. Ex. 2001 ¶ 34. We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“frequency domain received idle channel noise information,” “array,” and “transceiver.” Pet. 8–9. In our Decision to Institute, we interpreted these terms. Dec. 5–8. Neither party has indicated that our interpretations were improper and we do not perceive any reason or evidence that now compels any deviation from our initial interpretations. See, PO Resp. 6 (“Patent Owner does not contest the Board’s express claim constructions.”); Pet. Reply 8 n.2. Accordingly, the following constructions apply to this Decision: Claim Term Construction frequency domain received idle information about the background channel noise information noise present in each of a plurality of frequency subchannels when the subchannels are not in use array an ordered collection of multiple data items of the same type transceiver a device, such as a modem, with a transmitter and receiver slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“ordinary skill would have recognized that Chang measures frequency domain received idle channel noise information (background noise).10 Pet. 31‒32; Ex. 1009, 60‒61. Petitioner concludes that it would have been obvious for Milbrandt to measure and evaluate background channel noise, for the purpose of assessing system interactions from different sources of noises and to address any problems. Pet. 32; Ex. 1009, 35‒37. Notwithstanding Patent Owner’s arguments with respect to the combined teachings of Milbrandt and Chang, which we address below, we are persuaded by Petitioner’s showing, and agree that it would have been obvious to combine Chang with the teachings of Milbrandt for the purpose of assessing interactions from other sources. The record evidence supports the conclusion of obviousness, because combining Chang’s teaching of assessing idle channel noise to Milbrandt’s system would have provided a person of ordinary skill in the art additional information, such as assessing interactions from other sources, enabling a person of ordinary skill in the art to have taken remedial measures to address system interactions. Pet. 16 (citing Ex. 1009, 35‒36).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added). The claims do not foreclose a “truck roll.” For instance, claim 1 recites a transceiver capable of transmitting test information over a communication channel. Claim 1 further recites that the transceiver comprise a “transmitter portion capable of transmitting a message” where “the message comprises one or more data variables that represent the test information” and that at least one data variable “comprises an array representing frequency domain received idle channel noise information.” Thus, claim 1 is directed to a transceiver and the type of message the transceiver is capable of transmitting. There is nothing in claim 1 that specifies how the transceiver message originates or how the test information is measured. While we agree with Patent Owner that the Specification of the ’430 patent describes that dispatching a technician to a remote site to perform testing, e.g., a “truck roll,” is time consuming and expensive (PO Resp. 12 (citing Ex. 1001, 1:21‒23)), we find that there are described embodiments of the invention that include a truck roll. Ex. 1001, 6:31‒38 (“If the CRC checker 210 does not determine a correct CRC at the maximum power level and the diagnostic link mode [cannot] be initiated then other methods for determining diagnostic information are utilized, such as dispatching a technician to the remote site, or the like.”) and 3:12‒14 (“[t]he systems and methods of this invention can enter the diagnostic link mode manually, for example, at the direction of a technician or a user after completing a portion of initialization.”). For these reasons, the claimed invention does not preclude a truck roll. In any event, as discussed above, the claims are not directed to how test information is obtained or measured. Accordingly, even if Patent Owner is correct that Milbrandt discourages a truck roll for its own purposes, we find the combined teachings of Milbrandt and Chang are relevant because the combination remains suitable for the claimed invention.” slip op. at 20
Patent outcomesUS 7,835,430 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,835,430
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.