- PTAB · Dec 22, 2016 · DER2016-00022 · APJ Joni Y Chang · DER · Order
The Board denied institution because Shukh had no pending claim substantially the same as the Respondents’ claimed invention or the invention allegedly disclosed to them.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“is required to show that the petitioner has at least one claim that is: (1) the same or substantially the same as the respondent’s claimed invention; and (2) the same or substantially the same as the invention disclosed to the respondent. In the instant Petition, Petitioner asserts that claim 19 of Petitioner’s” slip op. at 3
NonePatents in suitUS 9,853,053 - Nu Mark LLC v. Fontem Holdings 1, B.V.Institution deniedPTAB · Dec 15, 2016 · IPR2016-01309 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the Brooks and Whittemore § 103(a) ground substantially the same as art and arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“For the foregoing reasons, we determine that the content of Brooks is the same or substantially the same as the disclosures in the EP Publication and the ’875 patent. A comparison of Brooks, the EP Publication, and the ’875 patent demonstrates that the smoking article described in the EP Publication and the flavor delivery article described in the ’875 patent are the same in all material respects as the smoking article described in Brooks.” slip op. at 11
Discretionary denialPatents in suitUS 8,863,752 - Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.Some claims unpatentablePTAB · Dec 15, 2016 · IPR2015-01457 · APJ Jameson Lee · IPR · Final written decision
Claims 2–5, 8, 9, 15–18, and 22–24 are unpatentable as obvious over Ejzak and Cisco or Intel; claim 10 was not shown unpatentable over either combination.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“First, the above-reproduced figure does not appear in the Specification of the ’640 patent. Rather, it is a creation of the Patent Owner. The figure creates the impression that a “part” necessarily is a “device.” Patent Owner, however, does not provide adequate support for such a narrow reading of 14 “part.” Although a “device” is a “part” of a telecommunications network, that does not mean a “part” has to be a “device.” Even Dr. Akl, Patent Owner’s expert, testified only that a “device” is a “part” of a telecommunications network and not that a “part” of a telecommunications network has to be a “device.” Ex. 2006 ¶ 56. Second, the figure also creates the impression that neither a domain nor a region would identify a device. But Patent Owner does not provide adequate support for such a narrow reading of “domain” and “region.” In that regard, Dr. Akl, Patent Owner’s expert, testifies only that a “device” is neither a “domain” nor a “region,” not that a “domain” or a “region” would not or could not identify a “device.” Id. By assuming that a “part” of a telecommunications system has to be a “device,” and by assuming that neither “domain” nor “region” would identify one or more devices, Patent Owner sees an alleged contradiction in allowing media connectivity setting to be as we have construed it, and the phrase that immediately follows the claim term—“identifying one or more other devices.” Because of that alleged contradiction, Patent Owner contends that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunication network.”” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Claim 10 recites, among other limitations, an additional requirement of determining from said bypass mode data that said media gateway “must” be bypassed in said media path. That is in contrast with the language of claim 9, which also depends from claim 8, and which recites, among other limitations, the additional requirement of determining from said bypass mode data that said media gateway “may” be bypassed in said media path. Neither Petitioner nor Patent Owner proposes an express construction for the word “must.” In the circumstances here, the plain and ordinary meaning of “must” in the English language applies. There is no indication that one with ordinary skill in the art would understand the word as conveying something different. The Specification of the ’640 patent does not set forth a special definition of “must.” Also, consistent with the plain and ordinary meaning of “must,” the Specification of the ’640 patent distinguishes between “must” and “may”: It may be determined from the retrieved bypass mode data that the media gateway may be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication setup request message. It may be determined from the retrieved bypass mode data that the media gateway must be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication session setup request message. Ex. 1101, 12:35–42 (emphasis added). 34 We determine that “must,” when applied to an action, such as bypassing a media gateway as recited in claim 10, eliminates not taking that action as a possibility and precludes the not taking of that action. In that regard, the different language used between claims 9 and 10 further supports the distinction between the absolute nature of “must” as used in claim 10 and the permissive nature of “may” as used in claim 9. In that regard, as is noted by Patent Owner, Petitioner’s witness, Mr. Bress, agrees that the permissive nature of “may” does not meet the absolute requirement of “must.” PO Resp. 43 (citing Ex. 2004, 123:7–124:5).” slip op. at 34
- Skill levelDecided for patent owner
“Level of Ordinary Skill in the Art Petitioner asserts: As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the 18 telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and that 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). C.” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“49 media gateways. In that connection, we credit the testimony of Petitioner’s witness, Mr. Bress, over the testimony of Patent Owner’s witness, Mr. Akl, in part because Mr. Bress discusses and explains more of the disclosure of Ejzak. Patent Owner’s argument that it is possible to obtain the media connectivity setting of the ensuing device by requesting the ensuing device for such information (PO Resp. 38) is ineffective with respect to claim 4, which does not specify from where the information is retrieved. Retrieving information from the ensuing device nonetheless still is retrieving. With respect to claim 5 which requires retrieving the information from within the given media gateway, not the ensuing device, we have determined that Petitioner has not stablished that Ejzak necessarily discloses retrieving such information from within the storage of the given gateway. Patent Owner’s argument that the claim limitation of “retrieving ensuing device connectivity data for an ensuing device” would not have been regard by one with ordinary skill in the art as an obvious variant of Ejzak’s determining the IP realm for the next segment of the media path is not supported by sufficient reasoning and explanation directed to Ejzak’s disclosure of provisioning IP realms of media gateways as identified and explained by Petitioner. Between the testimony of respective expert witnesses of Petitioner and Patent Owner, we credit the testimony of Mr. Bress, Petitioner’s witness, over that of Mr. Akl, Patent Owner’s witness. Mr. Bress’s testimony, in our view, is more thorough, whereas Mr. Aky’s testimony, in our view, focuses more on what a prior art 50 disclosure literally states without enough explanation as to the understanding by one with ordinary skill in the art of the teachings associated with that language.” slip op. at 49
Patent outcomesUS 8,687,640 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,687,640 - Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.All claims unpatentablePTAB · Dec 15, 2016 · IPR2015-01456 · APJ Jameson Lee · IPR · Final written decision
Claims 1, 6, 7, 11–12, 19–21, and 25–31 are unpatentable as obvious over Ejzak and Cisco and over Ejzak and Intel.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionTerm construed board ownDecided for petitioner
“discussed below, Patent Owner is unpersuasive in arguing (PO Resp. 18–19) that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunications network.” (Emphasis added). Specifically, we determine that the requirement of “identifying one or more other devices” does not exclude information describing domains or regions of a telecommunications network from satisfying the claimed “at least one media connectivity setting identifying one or more other devices.” Patent Owner presents its argument as follows: A “device” is a “part” of a telecommunications network, such as an endpoint or media gateway. Ex. 1001 [’640 Patent] at 11:46 (“a device (endpoint device or media gateway)”); see also Ex. 2006 [Akl Declaration] at ¶ 56. A “device” is neither a “domain” nor a “region” of a telecommunications network. Ex. 2006 [Akl Declaration] at ¶ 56; see also Ex. 2004 [Bress Transcript 1] at 137:15–18 [footnote omitted] and 142:7–11 [footnote omitted]. The following figure demonstrates the relationships between parts, domain, and regions and their associated media connectivity settings:” slip op. at 14
- Skill levelSkill level board ownOther
“As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and that 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 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“37), and based on our discussion of media gateway above, we find that each pair of ALG and associated BG in Ejzak constitutes a media gateway.6 This was a determination first made in the initial decision (Dec. Inst. 21), and Patent Owner put forth no contrary position in the Patent Owner Response. Tr. 48:7–18. Petitioner additionally argues that it would have been obvious to one with ordinary skill to combine each pair of ALG and associated BG in a single physical device, in view of Ejzak alone, because it was well-known in the art that the signaling and media functions of the ALG and BG could be implemented in a single physical device. Pet. 20–21.7 That contingent argument is unnecessary, because none of the claims requires the media gateway to be in the form of a single physical device, such as a unified 6 In particular, each ALG and associated BG pair is a distributed mode SBC (Session Border Controller). 7 Petitioner cites to Cisco and Intel, respectively, as teaching that signaling and media functions can be performed by a single physical device. Pet. 21. In particular, Cisco discloses that SBCs come in two different models, a distributed model and a unified model, and that in the unified model the signaling and media functions are performed not by separate units but by a single operative unit. Ex. 1010, 2. model SBC. Even if we assume that a single physical device is required by the claims, then for reasons expressed by Petitioner, we determine that it would have been obvious to one with ordinary skill in the art, based on the disclosure of Ejzak, to implement Ejzak’s ALG and corresponding BG in a single physical device.8 In that regard, Cisco was cited by Petitioner to show what was well known to one with ordinary skill in the art. In any event, for the reasons indicated by Petitioner on pages 21–25 of the Petition, Cisco would have suggested to one with ordinary skill in the art to implement Ejzak’s ALG and corresponding BG in a single physical device.9” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“In summary, traversed-realm attribute is information about a preceding BG or media gateway including the BG, and that information identifies devices in a traversed IP realm which are accessible from that BG or media gateway. Ejzak discloses limitation [1e]. For limitation [1f], which recites “to enable bypass of said media gateway in said media path if an ensuing device in said outbound signaling path determines that such bypass should be conducted,” Petitioner provides persuasive explanation on pages 16–17, 29–30, and 36–37 of the Petition. For instance, Petitioner explains that in Ejzak, if there is a match between a preceding BG’s IP realm and the next IP realm, one or more BGs may be bypassed. Pet. 16, 30. Petitioner cites to “Case 1,” described in Ejzak, as one example. Pet. 16–17. Ejzak describes: An example of case 1, using FIG. 1 as reference, is that upon receiving an SDP offer from the direction of UA1, ALG3 determines that R4 125 and R1 107 are instances of the same IP realm. ALG3 substitutes the connection and port information from UA1 into the outgoing SDP offer and deletes the traversed-realm instances for R2 113 and R3 119 from the SDP before forwarding. After the end-to-end SDP offer/answer transaction is completed, the media path will bypass BG1 105, BG2 111, and BG3 117. Ex. 1003 ¶ 74. Petitioner also relies on “Case 3,” described in Ejzak, as another example. Pet. 17, 30. Ejzak describes:” slip op. at 27
Patent outcomesUS 8,687,640 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,687,640 - Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01359 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–3 and 5–7 were not shown unpatentable because Petitioner failed to establish that Hiroi taught the claimed voice delay for synchronizing voice and text.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“address the qualifications of one of ordinary skill in the art, but instead assert only that the relevant field of endeavor for the ’426 patent is “telephone communications.” PO Resp. 2; Ex. 2098 ¶ 25. This contention appears to relate to Patent Owner’s argument that Hiroi is not analogous art rather than to the level of ordinary skill in the art for assessing obviousness. See PO Resp. 36–49; Ex. 2098 ¶¶ 123–41. Thus, Patent Owner and its expert do not expressly dispute the level of skill in the art proffered by Petitioner and Mr. Occhiogrosso. In addition, although he does not offer his own opinion regarding the qualifications of a person having ordinary skill in the art, Mr. Zatkovich acknowledges Mr. Occhiogrosso’s definition and states that unless otherwise noted, the opinions expressed in his declaration testimony would not change under Mr. Occhiogrosso’s definition. Ex. 2098 ¶ 25 (citing Ex. 1012 ¶ 29). Based on our review of the record, including the experts’ testimony, the ’426 patent, and the prior art involved in this proceeding, we find that Petitioner’s proposal, as set forth by Mr. Occhiogrosso, accurately describes the qualifications of a person having ordinary skill in the art. Accordingly, we adopt Mr. Occhiogrosso’s characterization of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may provide a meaning for a term that is different from its ordinary meaning by defining the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the Institution Decision, we adopted Petitioner’s proposed construction of “assisted user,” recited in claims 1 and 5, as “a user who may be deaf or hard of hearing, but who also may be a normally hearing person who simply wants text assistance for some reason.” Dec. 5–6. Patent Owner does not challenge that construction. After considering the complete record, we maintain this construction of “assisted user” for this Final Written Decision. No other claim terms require express construction.” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree with and adopt Petitioner’s contentions as to how the combination of Engelke ’482 and Engelke ’405 teaches the identified limitations of claim 1. See Pet. 21–30. We also determine that a person of ordinary skill in the art at the time of the invention would have combined Engelke ’482 and Engelke ’405 in the manner asserted. In particular, we agree with Petitioner that combining the disclosure in Engelke ’405 of sending both voice and text to an assisted user who is hard of hearing with the re-voicing relay of Engelke ’482, which only provides text to an assisted user, would have been the application of a known technique to improve similar devices in the same way, and a combination of prior art elements according to known methods to yield predictable results. See Pet. 37–42, 44–45 (citing KSR, 550 U.S. at 416; Ex. 1012 ¶¶ 62–69).” slip op. at 13
Patent outcomesUS 6,493,426 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,493,426 - Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01357 · APJ Lynne E Pettigrew · IPR · Final written decision
Claim 1 was not shown unpatentable because the asserted combination did not establish that Hiroi taught or motivated the claimed voice delay.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“address the qualifications of one of ordinary skill in the art, but instead assert only that the relevant field of endeavor for the ’366 patent is “telephone communications.” PO Resp. 2; Ex. 2098 ¶ 25. This contention appears to relate to Patent Owner’s argument that Hiroi is not analogous art rather than to the level of ordinary skill in the art for assessing obviousness. See PO Resp. 35–48; Ex. 2098 ¶¶ 122–40. Thus, Patent Owner and its expert do not expressly dispute the level of skill in the art proffered by Petitioner and Mr. Occhiogrosso. In addition, although he does not offer his own opinion regarding the qualifications of a person having ordinary skill in the art, Mr. Zatkovich acknowledges Mr. Occhiogrosso’s definition and states that unless otherwise noted, the opinions expressed in his declaration testimony would not change under Mr. Occhiogrosso’s definition. Ex. 2098 ¶ 25 (citing Ex. 1012 ¶ 29). Based on our review of the record, including the experts’ testimony, the ’366 patent, and the prior art involved in this proceeding, we find that Petitioner’s proposal, as set forth by Mr. Occhiogrosso, accurately describes the qualifications of a person having ordinary skill in the art. Accordingly, we adopt Mr. Occhiogrosso’s characterization of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In the Institution Decision, we adopted Petitioner’s proposed construction of “assisted user” as “a user who may be deaf or hard of hearing, but who also may be a normally hearing person who simply wants text assistance for some reason.” Dec. 5–6. Patent Owner does not challenge that construction. After considering the complete record, we maintain this construction of “assisted user” for this Final Written Decision. No other claim terms require express construction.” slip op. at 6
- ExcludeNot reached
“Under the circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude. As discussed above, even without excluding Mr. Occhiogrosso’s testimony, we have determined that Petitioner has not demonstrated by a preponderance of the evidence that the challenged claims are unpatentable. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
Patent outcomesUS 6,934,366 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,934,366 - Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentablePTAB · Dec 14, 2016 · IPR2015-01355 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–13, 15, and 18 are unpatentable under § 103 over the stated combinations of Liebermann, Aronow, O’Toole, and McLaughlin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge directly Mr. Occhiogrosso’s testimony. See generally PO Resp. 5. Mr. Ivan Zatkovich, Patent Owner’s declarant, does not propose a level of ordinary skill in the art to be adopted, but he does testify that the opinions set forth in his declaration would not change if he “assumed that [one of ordinary skill in the art] had the qualifications set forth in Mr. Occhiogrosso’s declaration.” Ex. 2098 ¶ 24 (citing Ex. 1008 ¶ 27). Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1002–1005), we determine that the level of ordinary skill proposed by Petitioner’s declarant and employed by both declarants is consistent with the challenged patent and the referenced prior art, and we adopt Mr. Occhiogrosso’s definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 11
- ExcludeMotion to exclude, deniedDenied
“Turning to the merits of the Motion to Exclude, we find Patent Owner’s assertion that a person of ordinary skill in the art “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4) lacks sufficient factual corroboration or explanation. For example, Patent 10 Mr. Zatkovich is referring to the level of ordinary skill discussed previously and which we adopted for this proceeding. 14 Owner does not address the sentence that immediately precedes the single citation in the challenged patent on which Patent Owner relies: “[t]he present invention relates to the general field of telephone communications.” Ex. 1001, 1:13–14. Nor does Patent Owner discuss the level of ordinary skill reflected in the prior art of record or other factors that may be considered, including the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Okajima, 261 F.3d at 1355. Even if we were to adopt Patent Owner’s definition of a person of ordinary skill in the art, we find Mr. Occhiogrosso meets Patent Owner’s proffered level of ordinary skill: “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4). Mr. Occhiogrosso’s experience providing expert testimony in proceedings regarding assistive technologies for the deal or hard of hearing is uncontroverted. See Mot. Exc. 4–5 (identifying three inter partes reviews); Ex. 2105, 5:23–6:10 (deposition on August 9, 2016 indicating Mr. Occhiogrosso has been deposed between twelve and twenty times concerning Patent Owner’s patents). Furthermore, the five prior art references Mr. Occhiogrosso considered for this case (Ex. 1008 ¶ 28) all involve telephone technology for the deaf and HOH and support his qualification under the definition of a person of ordinary skill in the art now offers for the first time in its Motion to Exclude (and after it relied on the testimony of its declarant as to a different level). 15” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Mr. Occhiogrosso testifies that one of ordinary skill in the art “would consider the screen in Figure 6 [shown on a cellular phone] as analogous to the screen depicted in Figure 8.” Ex. 1043 ¶ 6; see Pet. Reply 9–10 (citing Ex. 1043 ¶ 4–7). Mr. Occhiogrosso’s testimony relies on, and better comports with, Liebermann’s description of Figure 8 as illustrating “a layout for the visual display to present multiple information to the deaf person.” Ex. 1002, 6:29–36; Ex. 1043 ¶ 6. Mr. Occhiogrosso opines that the layout in Figure 8 “can be applied to different devices with displays of varying dimensions,” including the cellular embodiment of Figure 6, the personal computer embodiment in Figure 5a, and the kiosk embodiment in Figure 5c. Ex. 1043 ¶ 6. Mr. Occhiogrosso explains that Figure 8 depicts a “three-part, logical screen layout [that would be] identical and would be scaled appropriately, depending on display size.” Id. We credit Mr. Occhiogrosso’s testimony over that of Mr. Zatkovich because Mr. Occhiogrosso’s testimony better comports with the express disclosure of Liebermann—Figure 8 is not described as being limited to the embodiments in Figures 5a–5c or otherwise not being applicable to the cellular phone embodiment shown in Figure 6. Rather, Figure 8 is described more generally as being “a layout for the visual display.” Ex. 1002, 6:31– 34 36. In addition, Mr. Zatkovich opines that one of ordinary skill in the art purportedly would not incorporate the display shown in Figure 8—that is, the three-part display. At issue here, however, is only a small portion of that display—the incoming text screen—showing the text communication representing a transcription of the voice of the person speaking to a user of the personal interpreter device.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“skill in the art would combine Aronow’s initiation switch into Liebermann’s device to save power. PO Resp. 35–36. We agree with Patent Owner that, because the initiation switch is not an “on/off switch” that would enable a user to turn off the device and save power, Mr. Occhiogrosso’s power saving rationale (Ex. 1008 ¶¶ 58–59) is an insufficient motivation to combine the initiation switch. PO Resp. 35–36 (citing Ex. 2098 ¶ 62; Ex. 2097, 141:21– 142:12). Similarly, we also agree with Patent Owner’s challenge regarding Mr. Occhiogrosso’s testimony that Aronow’s switch improves Liebermann’s communicator by making it a “low cost, self contained telephonic interface device requiring no programming for operation.” Id. at 36. Relying on Mr. Zatkovich’s testimony, Patent Owner indicates “the communicator/cellular phone embodiment of Fig. 6 of Liebermann[] already appears to be a self-contained device.” Id. (citing Ex. 2098 ¶ 61). Nevertheless, we note that there is no dispute that Liebermann’s communicator and cellular telephone implementations provide for a user initiating a call to the center by dialing the center. See, e.g., PO Resp. 36 (“As a special case of a telephone, Liebermann can initiate a call simply by dialing a stored number to the Center.”). We disagree with Patent Owner that the addition of Aronow’s switch would not simplify the communicator 48 of Liebermann. Id. Common sense suggests that a single initiation switch is a simpler way to initiate a call than by dialing the multiple digits of a telephone number. Furthermore, we credit Mr. Occhiogrosso’s testimony of the simplifying benefits of a user-operated initiation switch, which is based on Aronow’s discussion about the benefits of the initiation switch to simplify operations of the telephonic device, especially for elderly people who are hard of hearing. Ex. 1008 ¶ 58. For these reasons, we determine that Petitioner has provided sufficient” slip op. at 48
Patent outcomesUS 5,974,116 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,974,116 - Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentablePTAB · Dec 9, 2016 · IPR2015-01358 · APJ William V Saindon · IPR · Final written decision
Claim 1 was not shown unpatentable because Petitioner did not establish a sufficient rationale to combine Engelke ’482 and Engelke ’405.
RulingsFinal written decision- Skill levelOther
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“reasonable interpretation in light of the specification of the patent. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Under the broadest reasonable interpretation standard, claim terms are presumed to have their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation foundNot shown unpatentable
“We understand Patent Owner’s argument to be that a person of ordinary skill in the art would not have considered it obvious to follow the teachings of Engelke ’405 in this particular situation, because one of the main benefits taught by Engelke ’405 is to provide voice in addition to text so that non-deaf users can benefit more from voice-to-text services. Here, however, an assisted user does not need the hearing user’s voice to be provided because the assisted user already can hear the hearing user, as they are in close physical proximity (in order to use the personal interpreter). Thus, although a person of ordinary skill in the art might consider Engelke ’405 because it teaches to improve devices for the deaf such as Engelke ’482, we are not persuaded that a person of ordinary skill in the art would have considered it obvious to apply it in this situation. The reason is that the hearing user’s voice would already be present, such that providing that voice again, i.e., when applying the teaching of Engelke ’405, appears to be unnecessary and, as Patent Owner’s declarant suggests, potentially disruptive. Ex. 2098 ¶ 58. Engelke ’405 would not provide the solution to the problem it was intended to solve—the voice is there already. Petitioner offers insufficient reason or evidence explaining why a person of ordinary skill in the art would have considered it obvious to proceed to combine the references nonetheless, in view of this situation.” slip op. at 10
- Obviousness (§103) › KSR rationalesMotivation not foundNot shown unpatentable
“design need or market pressure that indicates it would have been obvious to try to modify the personal interpreter of Engelke ’482 to have simultaneous voice and text as shown in Engelke ’405. An obvious to try rationale generally requires some identification of “a design need or market pressure to solve a problem” before looking at the “finite number of identified, predictable solutions.” See KSR, 550 U.S. at 421. A key of the obvious to try rationale is that the design need or market pressure is what drives a person of ordinary skill in the art to consider the identified, predictable solutions. In other words, the need is addressed by the solutions. Here, the need identified by Petitioner is to upgrade devices previously intended for the deaf to be used for the hard of hearing. See Pet. 38. We agree that this is an identified need in the art. The solutions identified by Petitioner, however, are text alone, VCO, and text-enhanced telephony. Id. at 38–39. Notably, only one of these solutions, text-enhanced telephony, actually addresses the identified need of upgrading devices to include features specifically for hard of hearing users. Text only and VCO are for deaf users. Ex. 1003, 1:25–40 (describing text-only devices for the deaf); Ex. 1012 ¶ 64 (Mr. Occhiogrosso testifying that VCO “allowed a deaf but speaking person to . . . respond directly to the hearing user in voice”). The problem with Petitioner’s rationale is that it is based upon the identification of a finite set of identified, predictable solutions to a need where, in fact, two out of the three so-called solutions in the set are not actually solutions at all, because they do not address the need. In this way, Petitioner’s articulated rationale, as a whole, is internally inconsistent and, for that reason, unpersuasive.” slip op. at 13
Patent outcomesUS 7,006,604 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,006,604 - Polygroup Limited v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Dec 6, 2016 · IPR2016-00802 · APJ William V Saindon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Patent Owner’s second argument for rehearing involves the discretion we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3
- Strike new argumentDecided for petitioner
“Patent Owner’s first argument for rehearing is directed to whether the Petition provided sufficient notice to Patent Owner regarding the basis of the unpatentability challenge. Req. 2–7. Patent Owner argues that Petitioner’s ground was to modify one reference with another as a “wholesale” slip op. at 2
Discretionary denialPatents in suitUS 9,044,056 - Polygroup Limited v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Dec 6, 2016 · IPR2016-00801 · APJ William V Saindon · IPR · Rehearing
The Board denied Willis Electric’s rehearing request, leaving institution in place because it found no abuse of discretion in its notice analysis or decision not to deny under § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3
Discretionary denialPatents in suitUS 8,454,187
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.