- Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentablePTAB · May 14, 2019 · IPR2018-00132 · APJ Thu A Dang · IPR · Final written decision
Claims 1, 3, 7, 12, 18, 22–27, 36, 41–46, 55, and 58–63 are unpatentable as obvious over the stated combinations of Aldred and RFC 1692 with Ulrich or Denzer.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On this record, the ’686 Specification supports Petitioner’s argument that the claim term “aggregated message” or “server message,” consistent with its ordinary and plain meaning, includes a message having an aggregated payload and at least one header in addition to any additional headers that may happen to be within the aggregated payload. Here, Patent Owner’s past claim construction positions support this determination by showing, at the least, prior to this inter partes trial, how Patent Owner viewed the meaning of this claim term. See Ex. 1005, 396–97; Ex. 1006, 234–36; Ex. 1052, 108:8–24; Ex. 1054, and Ex. B, 1.13” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have to be an individual with “at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years of experience related to networked interactive applications,” or a person with “at least a bachelor’s degree in computer science, computer engineering, or physics” who has “approximately four years’ experience in network[ing] interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the art. 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 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“7. Prior Art Printed Publication Status of RFC 1692 Patent Owner does not challenge our initial determination in the Institution Decision that RFC 1692 (dated August 1994) was available to persons of ordinary skill interested in computer networking and security sufficiently to be deemed “publicly accessible” at the relevant time. See Inst. Dec. 25–30; SRI Int’l, Inc. v. Internet Security Sys., Inc., 511 F.3d 1186, 1194 (Fed. 21 Cir. 2008). For the reasons discussed in the Institution Decision, we maintain our preliminary determination that RFC 1692 qualifies as prior art printed publications.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Nevertheless, as to Patent Owner’s contention that Petitioner has failed to consider “the effect of larger packets on the packet order of the CSP of Aldred if the TMux protocol is included” (PO Resp. 23), we are persuaded by Petitioner’s argument that “RFC 1692 discusses adding segments to a multiplexed message in the order they are received.” Pet. Reply 4 (citing 1010 ¶¶ 6–7). In particular, Petitioner argues that “RFC 1692 expressly discloses that large TCP segments can be added to the end of any pending multiplexed packet, such that all segments would be sent in the order received.” Pet. Reply 3. According to Petitioner, “RFC 1692 explains that when a segment that would not normally be multiplexed – such as a large segment – is received and a multiplexed message is under construction, ‘the extra segment can be added to the TMux message under construction, and this complete message should be sent immediately . . . .’” Id. (citing Ex. 1010, 8–9). That is, RFC 1692 discloses that “large and small TCP segments can be sent in-order by the multiplexing process.” Id. at 4 (citing Ex. 1053 ¶¶ 19–23). In its Sur-Reply, Patent Owner does not dispute Petitioner’s point and its declarant’s, Dr. White’s, testimony that the logical channels in Aldred guarantee order. See generally Sur-Reply; Reply 5; Ex.1053 ¶ 25. Rather, Patent Owner summarizes its position by, again, relying on its large packet argument. Sur-Reply 3 (arguing “smaller items would be removed from the serialization queue and added to the TMux buffer, and larger segments would be transmitted immediately”); see also id. at 3–4 (similar large packet arguments). However, in Aldred, after demultiplexing, to the extent TMux does not maintain packet order, the higher level channel logical channel layer maintains packet order. See Ex. 1009, 6 (defining a channel “by the sending application” and “with application specified transmission characteristics,” and stating “a receiving port . . . receives data packets from the channel in the order in which they were sent”). Furthermore, as Petitioner points out, by contending that combining” slip op. at 37
Patent outcomesUS 6,226,686 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,226,686 - Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentablePTAB · May 14, 2019 · IPR2018-01238 · APJ Thu A Dang · IPR · Final written decision
Claims 1–4, 7–21, 28–35, 39, 40, 47–54, 56, 57, and 64–70 are unpatentable under § 103 over Aldred and RFC 1692, with RFC 1459 for certain claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have had at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years’ experience related to networked interactive applications,” or “at least a bachelor’s degree in computer science, computer engineering, or physics, and approximately four years’ experience in networking interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the art. 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 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As an initial matter, we agree with Petitioner that Patent Owner “unjustifiably assumes that every embodiment of Aldred would require the use of ‘large’ TCP segments,” but “neither the challenged claims nor Aldred require ‘large’ packets,” wherein “both encompass scenarios where only small packets are generated.” Pet. Reply 7. According to Petitioner, Patent Owner’s “‘large’ packet scenario does not show nonobviousness when the claim and Aldred’s disclosure encompass systems that use only small packets.” Id. at 8 (citing Apple Inc. v VirnetX Inc., IPR2014-00237, paper 41, 40 (PTAB May 11, 2015)). That is, although Patent Owner contends that “Petitioner’s alleged motivation for this combination is based on its small packet centric argument that RFC 1692 provides benefits for systems generating a number of small packets” (PO Resp. 17 (citing Pet. 33)), nothing in the challenged claims preclude a scenario in which small packets are generated. We agree with Petitioner’s contention, to which Patent Owner does not contest, that, in scenarios where only small packets are generated, “[a]n Ordinary Artisan would have understood that Aldred’s system could likewise produce small packets that would benefit from RFC 1692’s multiplexing” (Pet. 33 (citing Ex. 1007 ¶146)) because the Ordinary Artisan would have realized that “[a]s combined with RFC 1692, Aldred’s messages would be multiplexed via TMux (‘aggregat[ed]’) into a single packet (‘aggregated payload’) prior to transmission from the CSP to each member of the serialising channel set associated with the Sharing Set.” Pet. 35 (citing Ex. 1007 ¶¶ 150–151).” slip op. at 35
Patent outcomesUS 6,226,686 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,226,686 - Riot Games, Inc. v. Paltalk Holdings, Inc.All claims unpatentablePTAB · May 14, 2019 · IPR2018-00131 · APJ Thu A Dang · IPR · Final written decision
Claims 1–4, 7–21, 28–35, 39, 40, 47–54, 56, 57, and 64–70 are unpatentable under § 103 over Aldred and RFC 1692, with RFC 1459 for certain claims.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On this record, the ’686 Specification supports Petitioner’s argument that the claim term “aggregated message” or “server message,” consistent with its ordinary and plain meaning, includes a message having an aggregated payload and at least one header in addition to any additional headers that may happen to be within the aggregated payload. Here, Patent Owner’s past claim construction positions support this determination by showing, at the least, prior to this inter partes trial, how Patent Owner viewed the meaning of this claim term. See Ex. 1005, 396–97; Ex. 1006, 234–36; Ex. 1052, 108:8–24; Ex. 1054, and Ex. B, 1.12” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Relying on the declaration of Dr. White, Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have had at least a master’s degree (or equivalent course work) in computer science, computer engineering, or physics, and at least two years’ experience related to networked interactive applications,” or “at least a bachelor’s degree in computer science, computer engineering, or physics, and approximately four years’ experience in networking interactive applications, or the equivalent, which would include experience in network programming.” Pet. 4 (citing Ex. 1007 ¶¶ 42–43). Patent Owner does not assess the level of ordinary skill in the art. We adopt the Petitioner’s, and Dr. White’s assessment of the level of ordinary skill in the art because it is consistent with the ’686 patent and the asserted prior art, and apply it to our obviousness evaluation below. We also observe that the prior art of record reflects the level of ordinary skill in the art. 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 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“6. Prior Art Printed Publication Status of RFC 1459, and RFC 1692 Patent Owner does not challenge our initial determination in the Institution Decision that RFC 1692 (dated August 1994) and RFC 1459 (dated May 1993) were available to persons of ordinary skill interested in computer networking and security sufficiently to be deemed “publicly accessible” at the relevant time. See Inst. Dec. 25–30; SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. 21 Cir. 2008). For the reasons discussed in the Institution Decision, we maintain our preliminary determination that RFC 1692 and RFC 1459 qualify as prior art printed publications.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Based on the record before us, we are unpersuaded by Patent Owner’s contention that “Petitioner’s analysis has provided an insufficient bases for the combination of Aldred and RFC 1692.” PO Resp. 15. As an initial matter, we agree with Petitioner that Patent Owner “unjustifiably assumes that every embodiment of Aldred would require the use of ‘large’ TCP segments,” but “neither the challenged claims nor Aldred require ‘large’ packets,” wherein “both encompass scenarios where only small packets are generated.” Pet. Reply 7. According to Petitioner, Patent Owner’s “‘large’ packet scenario does not show nonobviousness when the claim and Aldred’s disclosure encompass systems that use only small packets.” Id. at 8 (citing Apple Inc. v VirnetX Inc., IPR2014-00237, paper 41, 40 (PTAB May 11, 2015)). That is, although Patent Owner contends that “Petitioner’s alleged motivation for this combination is based on its small packet centric argument that RFC 1692 provides benefits for systems generating a number of small packets” (PO Resp. 17 (citing Pet. 33)), nothing in the challenged claims preclude a scenario in which small packets are generated. We agree with Petitioner’s contention, to which Patent Owner does not contest, that, in scenarios where only small packets are generated, “[a]n Ordinary Artisan would have understood that Aldred’s system could likewise produce small packets that would benefit from RFC 1692’s multiplexing” (Pet. 33 (citing Ex. 1007 ¶146)) because the Ordinary Artisan would have realized that “[a]s combined with RFC 1692, Aldred’s messages would be multiplexed via TMux (‘aggregat[ed]’) into a single packet (‘aggregated payload’) prior to transmission from the CSP to each member of the serialising channel set associated with the Sharing Set.” Pet. 35 (citing Ex. 1007 ¶¶ 150–151).” slip op. at 34
Patent outcomesUS 6,226,686 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,226,686 - PTAB · May 8, 2019 · IPR2017-02108 · APJ Norman H Beamer · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter in its denial of the motion to amend proposed substitute claims 21–25 and 27 as obvious.
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. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In our Final Decision, we construed “a video stream comprising a series of frame images” as “a series of frame images captured automatically, but not necessarily continuously at a constant rate.” Decision 14. Because this exact language was added to the claim by the motion to amend, we could not have construed it earlier. We do not agree, however, that Patent Owner was denied “an opportunity to present argument under the Board’s new construction.” Request 1. Patent Owner has long been on notice that construction of the term “video,” and the distinction between still frame images and an image made up of a video stream, was central to the case. In particular, Petitioner, relying on its expert, argued that a video image is made up of a series of still images: “The plurality of still images, which are captured, constitute the video image.” Paper 3, 9; Ex. 1020 ¶ 24; see also Paper 16, 11 (“still images make up the video image”). During cross examination, Patent Owner’s testimony supported the view that a single frame image of a video stream is essentially the same as a still frame image. Rodriguez Dep. 13:14–19, 14:6–13, 15:12–16, 16:14−20. Petitioner emphasized that only “in some scenarios, a series of frame images can form a video image. . . .” Paper 16, 10. In arguing that it would have been obvious to modify the prior art Morichika reference to use a video camera in place of a still camera, Petitioner asserted that such substitution amounted to “continuously capturing images of a target area using a video camera [to]” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“amounts to a disagreement with the Board’s findings on the motivation to combine references. Patent Owner does not demonstrate that the Board misapprehended or overlooked the applicable law. Request 6–14. Patent Owner argues, “the Board provided vague, generalized combinations and did not mention its own claim construction in its obviousness analysis, leaving the specific basis for its legal conclusion unclear.” Request 8. Patent Owner further asserts that the Board applied “a double standard” because, “the Board’s construction of ‘video stream comprising a series of frame images’ never appears in the obviousness analysis.” Request 10. We disagree with both arguments. To the contrary, the Board relied on its claim construction in its obviousness findings when it stated, “as discussed above . . . the distinction between capturing a series of still frame images and capturing a video stream of frame images, is that a video stream is made up of a series of frame images that are automatically captured.” Final Decision 44. Nothing was misapprehended or overlooked in making those determinations. Patent Owner further argues, “no motivation to entirely replace the still image camera with a video camera and separate video processor is specifically taught or suggested.” Request 9, see also Request 11. However, the Board relied on extensive teachings in the art that established such a motivation. Final Decision 35–43.” slip op. at 9
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,508,751 - HTC Corporation / HTC America, Inc. v. Invt Spe LLCInstitution deniedPTAB · Mar 5, 2019 · IPR2018-01556 · APJ Thu A Dang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 4 was obvious over Padovani and Gils.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Principles of Law In an inter partes review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied on). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Although Petitioner contends “a POSITA would have been motivated to provide greater protection for the decimal integer portion (an error in which would be magnified versus an error in the decimal fraction portion)” in Padovani (Pet. 33), Petitioner does not identify any passage or combination of passages in Padovani that teaches or suggests providing, or even the need to provide, greater protection for one decimal portion than the other decimal portion, let alone by using “different coding schemes for the different parts.” Id. As Patent Owner asserts, “Padovani discloses using a single code to encode the DRC message[,]” and “does not teach using multiple codes to encode different portions of the DRC message.” Prelim. Resp. 14 (citing Ex. 1009, 45:20–22 (emphasis added)). We recognize that Petitioner’s Declarant, Dr. Min, testifies that, “by virtue of Padovani contemplating the use of an (n,k) coding scheme,” the POSITA “would have naturally sought out similar coding schemes [as those of Gils] to protect DRC messages.” See Pet. 41 (citing Ex. 1017 ¶ 156). Dr. Min further testifies that “a POSITA would have been motivated to provide greater protection for certain bits by selecting appropriate code words generated by one or more of the coding schemes contemplated by Gils,” and thus, use “different coding schemes for the different parts.” Ex. 1017 ¶ 132. Dr. Min’s testimony, however, does not address adequately why one of ordinary skill in the art would have used together different coding schemes from Gils, let alone a separate scheme for certain bits over the other bits. As Dr. Min testifies, “a single UEP coding scheme could also be used depending upon how a POSITA would have wanted to implement unequal error protection.” Ex. 1017 ¶ 132; see Pet. 33 (citing Ex. 1017 ¶ 132). As such, Dr. Min acknowledges that a single unequal error protection coding scheme could be used as well as applying different coding schemes to different parts of a message. Here, Dr. Min’s testimony that a single unequal error protection coding scheme could be used further undermines Petitioner’s position that one of ordinary skill in the art would have used the different coding schemes for different parts as set forth in Gils. Thus, Dr. Min’s testimony does not adequately explain why one of ordinary skill in the art would have applied different coding schemes from Gils to the DRC message of Padovani, much less in the manner proposed by Petitioner, of providing greater protection for the decimal integer portion than the decimal fraction portion, especially when Padovani discloses “using a single code to encode the DRC message.” See Prelim. Resp. 14 (citing Ex. 1009, 45:20–22).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Min’s declaration testimony to support its contention that one of ordinary skill in the art would have used Gils’s techniques to encode Padovani’s DRC message in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Petitioner also has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Moreover, Dr. Min’s contention that “[t]he nature of binary numbers (or other base-x number systems) means that the leftmost bit of any binary number is the most significant bit” (Ex. 1017 ¶ 154) is conclusory. As Patent Owner points out, “Dr Min’s declaration, however, merely repeats the allegations of the Petition without any explanation or citation to any supporting or corroborating evidence.” Prelim. Resp. 20 (citing Ex. 1017 ¶ 154). That is, “[t]here is no proffered evidence that it was well understood by a POSITA at the time that the leftmost bit in binary numbers, and specifically in the DRC message of Padovani, is the ‘most significant bit.’” Prelim. Resp. 20. For that reason, we give little weight to Dr. Min’s uncorroborated testimony that “the leftmost bit of any binary number is the most significant bit.” 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re 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[.]”).” slip op. at 15
§ 103 obviousnesscites KSRPatents in suitUS 7,206,587 - Apple Inc. / Zte(Usa) Inc. v. Invt Spe LLCInstitution deniedPTAB · Mar 5, 2019 · IPR2018-01474 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claim 4 because Petitioner did not show a reasonable likelihood that Bender and Piret rendered it obvious; claim 3 had been statutorily disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“For the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 4 would have been obvious over Bender and Piret. See 35 U.S.C. § 316(e) (To prevail in an inter partes review that has been instituted, “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’587 patent challenged in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’587 patent, and no trial is instituted.” slip op. at 17
- Adverse judgmentAdverse judgmentOther
“We agree with Patent Owner. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An inter partes review cannot be instituted on claims that have been disclaimed and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). This conclusion is consistent with other panel decisions addressing this issue. See, e.g., Intuitive Surgical, Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7, 2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015, Paper 9, 12–14 (PTAB Nov. 14, 2018). Accordingly, we treat claim 3 as having never been part of the ’587 patent, and do not institute inter partes review on this claim. As discussed above, we regard claim 4 as the only challenged claim. See Sections I.A and I.E.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Accordingly, a plain reading of the reference does not support a finding that Bender teaches or suggests that the FEC scheme is used to encode the SNR itself. Therefore, we are not persuaded that Bender’s FEC description would have provided reason to look to Piret’s encoding techniques for encoding Bender’s “quality” information. That is, although we agree with the Petitioner that Piret teaches and suggests a method of encoding less significant bits differently from the more significant bits of each data word, wherein the most significant bit of the plurality of bits is encoded to be less susceptible to errors (Ex. 1005, 1:20–33), that alone is insufficient to support a conclusion of obviousness of providing an encoder that encodes Bender’s SNR “quality” information, as required by claim 4. That Piret discloses encoding transmitted information does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, the Petitioner’s obviousness position does not explain why a person of ordinary skill in the art would have encoded the SNR value in Bender, which may not even be transmitted, using Piret’s encoding method. Indeed, Petitioner does not direct us to persuasive evidence that encoding the SNR value would have been expected to provide any advantage, outside the teachings of the ’587 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Singer’s declaration testimony to support its contention that one of ordinary skill in the art would have used Piret’s techniques to encode Bender’s SNR values in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. In that regard, Petitioner’s Declarant, Dr. Singer, testifies that a person of ordinary skill in the art at the time of the ʼ587 Patent’s invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with wireless communication systems or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 6; Ex. 1003 ¶ 39. At this juncture, Patent Owner does not dispute Dr. Singer’s assessment on the level of ordinary skill in the art. See generally Prelim. Resp. Based on the current record, we apply Dr. Singer’s assessment for purposes of this Decision. We also note that the prior art of record currently in the instant proceeding is consistent with this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,206,587
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.