- Microsoft Corporation v. Smart Skins LLCRehearing deniedPTAB · Nov 21, 2017 · IPR2016-00404 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied Microsoft's rehearing request, maintaining that claims 1, 12, 13, 15, 23, and 24 are entitled to the July 17, 2001 priority date and that Janik and Kehoe are not prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“part of U.S. Patent Application No. 10/087,098 (Ex. 1014, “the ’098 application”), which was filed on March 1, 2002, and that the ’864 patent and the ’098 application claim priority to U.S. Provisional Patent Application No. 60/306,326 (Ex. 1015, “the ’326 provisional”), which was filed on July 17, 2001. Dec. 14–15 (citing Paper 1 (“Pet.”), 10; Paper 14 (“PO Resp.”), 8; Ex. 1001; Ex. 1014, 2). We determined that Smart Skins LLC (“Patent Owner”) had shown sufficiently that the challenged claims of the ’864 patent are entitled to a filing date of July 17, 2001, because the disclosures of the ’098 application and the ’326 provisional (collectively, “the priority applications”) provide written description support for the challenged claims of the ’864 patent. Dec. 14–21.” slip op. at 3
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date awardedDecided for patent owner
“established by Patent Owner for the challenged claims (July 17, 2001) predates the earliest filing dates of Janik and Kehoe established by Petitioner (September 4, 2001, and October 24, 2001, respectively). Dec. 22. We determined that, as a result, Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e). Dec. 22. Therefore, we concluded that Petitioner had not shown by a preponderance of the evidence that claims 1, 12, 13, 15, 23, and 24 would have been obvious over Janik and Kehoe. Id. at 23. Petitioner argues that, because we erred in determining that the challenged claims of the ’864 patent are entitled to the benefit of the filing date of the priority applications, we should reconsider our determination that Janik and Kehoe are not prior art. Req. Reh’g 15. For the reasons discussed above, we maintain our determination that the challenged claims are entitled to the benefit of the filing date of the priority applications. Thus, we also maintain our determination that Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“challenged claims of the ’864 patent are entitled to the benefit of the filing date of the priority applications, we should reconsider our determination that Janik and Kehoe are not prior art. Req. Reh’g 15. For the reasons discussed above, we maintain our determination that the challenged claims are entitled to the benefit of the filing date of the priority applications. Thus, we also maintain our determination that Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e). Petitioner requests that we address the asserted ground of unpatentability based on Janik and Kehoe “conditionally,” even if we do not change our determination regarding the priority date of the challenged claims. Req. Reh’g 15. We are not persuaded, though, that it would be an efficient use of resources to address all of the parties’ arguments and evidence regarding the asserted ground of unpatentability based on Janik and Kehoe when Petitioner has not met its burden to show that Janik and Kehoe are prior art to the challenged claims. Therefore, we decline to “conditionally” address any remaining issues regarding the asserted ground of unpatentability based on Janik and Kehoe.” slip op. at 15
§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 7,079,864 - Talari Networks, Inc. v. Fatpipe Networks India LimitedSome claims unpatentablePTAB · Nov 1, 2017 · IPR2016-00976 · APJ Stacey G White · IPR · Final written decision
Claims 4, 5, and 7–15 are unpatentable; claim 19 was not shown unpatentable, because Karol anticipates some claims and Karol, alone or with Stallings, renders others obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“selecting paths. See id. 5:48–50. These methods allow for the selection to “be performed once per packet, or a given selection may pertain to multiple packets.” Id. at 14:40–46 (emphasis added). Thus, we find that the specification discloses both selection for each individual packet and selection for a group of packets.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“with either a manual or an automated environment. The cited passage distinguished routing by departments from dynamic load balancing by stating that the department-based routing is not dynamic because in dynamic load balancing the “router loads dynamically in response to actual traffic.” Id. at 2:63–64. We find that the cited passages show that the contemplated load balancing is performed based on actual traffic, but are insufficient to establish that the Patentee intended load balancing to be equated with a manual selection process. See Id. at 2:61–65, 7:31–32. Further, we are not convinced by Patent Owner’s arguments regarding the alleged requirement that traffic be assessed at some point after the packet’s arrival. The portion of the specification cited in support of this assertion refers to multiple scenarios or “cases.” See PO Resp. 16 (citing Ex. 1001, 14:53–58). The specification states that in one of those cases the path may be determined after the packet arrives and states that, for example, the path determination may be done using dynamic load balancing. See Ex. 1001, 14:53–58. This passage does not provide any specific temporal limitation to the term “dynamic load balancing,” but rather it illustrates an example of when load balancing could be used. It is improper to limit the claims to this one exemplary embodiment without more express language in the claims or the specification that would narrow the scope of this term. Thus, we find that the proper construction of dynamic load balancing is “distributing packets based on actual traffic.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“selection for each packet then Karol would have rendered this limitation obvious. Pet. 45. Petitioner asserts that this limitation would have been obvious because (1) modifying Karol to select networks on a per-packet basis would have amounted to nothing more than the simple substitution of one known element for another to obtain predictable results (id. at 45); and (2) the combination of Karol and the knowledge of one of ordinary skill in the art would have been obvious to try (id. at 46).” slip op. at 19
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We are not persuaded by Petitioner’s contention that Karol discloses sending different packets of a given message to different parallel networks. Karol does not describe any logical grouping of datagrams into a message. Ex. 2001 ¶¶72–74. On behalf of Patent Owner, Mr. Williams testifies that “Karol . . . never describes dividing up messages and sending those across disparate networks.” Id. ¶ 73. We note, that Karol uses the terms datagram and message in an interchangeable manner. See Ex. 1006, 1:10, 3:34–35 (“datagrams (sometimes hereinafter called messages)”). Karol also interchanges the terms packet and datagram. See id. 5:23–25. Thus, the mere use of the term “message” in Karol is not sufficient to show that Karol uses the term in the same manner as it is used in claim 19. We find Karol’s use of the terms datagram, packet, and message to be consistent with the ’235 patent’s use of the term packet because Karol treats these terms as disclosing a discrete unit of transmission that may be stored, halted, or turned around. Petitioner’s discussion of UDP segments is insufficient to establish that packets from a given message are sent to different networks because it is not clear from Karol’s disclosures that these UDP segments should be considered to be a “message.” Thus, we determine that Petitioner has not demonstrated by a preponderance of the evidence that claim 19 is anticipated by Karol.” slip op. at 37
Patent outcomesUS 6,775,235 mixedClaim construction§ 103 obviousnessPatents in suitUS 6,775,235 - Talari Networks, Inc. v. Fatpipe Networks India LimitedAll claims unpatentablePTAB · Nov 1, 2017 · IPR2016-00977 · APJ Stacey G White · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18, 19, 21, 22, and 24 are anticipated by Karol; all claims are obvious over Karol.
RulingsFinal written decision- Skill levelOther
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownGranted in part
“information to be gleaned by construing the words selecting/selects to mean “make a choice.” We also are not persuaded that there is a basis for inserting the word “discrete” into this construction. Therefore, based on the disputes before us, we see no reason to provide an express construction for the common terms select/selection.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Figure 5 of Karol depicts the packet forwarding process. Ex. 1006, 3:6–8. In step 501, a packet arrives at Karol’s CL router/switch 420. Id. 8:56–58. Step 503, then inquires as to whether the received packet is “a packet from a flow that needs CO Service.” Id. at Fig. 5, element 503 (emphasis added). Thus, we determine that Karol’s routing decisions are made for a flow of packets and not for an individual packet. As discussed above, we construed “selecting/selects, . . . within the controller on a per-packet basis” to require “selecting a network path for each packet.” See supra § II. Thus, we find that Karol does not disclose the per-packet selection required in claims 7 and 19. Therefore, we determine that Petitioner has not met its burden to establish that claims 7 and 19 are anticipated by Karol.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Path First) to determine routing prior to a packet being received at the gateway. PO Resp. 22. Patent Owner further contends that “[t]he OSPF routing protocol expressly excludes the possibility of making packet routing decisions on a per-packet basis.” Id. at 24. We find this to be an overly narrow view of Karol’s disclosures because Karol is not limited to OSPF. See Ex. 1006, 14:20–22 (“the description below assumes the OSPF routing protocol, the concept is readily applicable to other IP routing protocols”). We determine that Petitioner has shown that it would have been obvious to modify Karol to select networks on a per-packet basis. Petitioner has proposed a modification to Karol that is “much simpler” and, therefore, we find that one of ordinary skill in the art would have been motivated to make this modification in order to reduce system complexity. See Ex. 1005 ¶ 335. Petitioner has provided arguments and evidence sufficient to show that this modification would be within the abilities of one of ordinary skill in the art and that there would have been a reasonable expectation of success. See id. Thus, we find that Petitioner has put forth sufficient evidence to demonstrate that it would have been obvious to modify Karol in a manner that would have taught this limitation.” slip op. at 24
Patent outcomesUS 7,406,048 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,406,048 - Juniper Networks, Inc. / Brocade Communications Systems, Inc. et al. v. Mobile Telecommunications Technologies, LLCAdverse judgmentPTAB · Oct 31, 2017 · IPR2017-00640 · APJ Meredith C Petravick · IPR · Adverse judgment
Claims 1–5 were cancelled and adverse judgment was entered against Patent Owner after it requested cancellation of all claims at trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Patent Owner requests cancellation of claims 1–5 of U.S. Patent No. 5,659,891 (“the ’891 patent) and entry of adverse judgment against it. Paper 20. Claims 1–5 are all claims of the ’891 patent and all claims at trial. We determine that entry of adverse judgment against Patent Owner is appropriate. Accordingly, it is: ORDERED that claims 1–5 of U.S. Patent No. 5,659,891 are cancelled; ORDERED that adverse judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner; and FURTHER ORDERED that this Order constitutes a final written decision under 35 U.S.C. § 318(a).” slip op. at 1
NonePatents in suitUS 5,659,891 - General Electric Company v. United Technologies CorporationSome claims unpatentablePTAB · Oct 26, 2017 · IPR2016-00952 · APJ Hyun J Jung · IPR · Final written decision
Claim 11 was held unpatentable as obvious over Davies; Petitioner did not show claims 1, 2, 4, 5, 7, and 8 unpatentable on the instituted grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Claim 1 recites “wherein said row of propulsor blades has a solidity value (R) defined as CD/CP that is between 0.6 and 0.9.” Ex. 1001, 4:59– 60. Similarly, now disclaimed independent claim 9 recites “wherein said row of propulsor blades has a solidity value (R) defined as CD/CP.” Id. at 6:9–10. Thus, according to the claims, “solidity value (R)” is defined as “CD/CP,” or chord dimension CD divided by circumferential pitch CP. Also, as pointed out by Patent Owner (PO Resp. 15), the specification of the ’412 patent states that the “solidity value is defined as a ratio (R) of CD/CP (i.e., CD divided by CP).” Ex. 1001, 3:24–25; see also Mathioudakis Decl. ¶ 19 (Patent Owner’s declarant testifying that the ’412 patent defines solidity as the ratio of CD and CP). Patent Owner also quotes a portion of the specification that describes chord dimension CD as the “length that extends between the leading edge 82 and the trailing edge 84 at the tip” (Ex. 1001, 3:5–7) and circumferential pitch CP as “equivalent to the arc distance between the tips 80 of neighboring propulsor blades” (id. at 3:8– 10). PO Resp. 15. In view of these portions of the specification, we find that the ’412 patent provides a clear, deliberate, and precise definition of “solidity value.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision). Also, as discussed above, claim 1 similarly relates “solidity value” to “CD/CP.” Compare Ex. 1001, 4:59–60 with id. at 3:24–25.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“art would use fan dimensions given to “illustrate the magnitude of the problem” of restraining blades in the hub to calculate a value of tip solidity, which has already been disclosed in a list of “main features of the chosen design” for the V.P. fan. The tip solidity of 0.83 comes immediately after Davies discusses the “aerodynamic design philosophy” of fixed pitch fans (Ex. 1005, 6) and V.P. fans (id. at 6–8). Davies also states that “[i]n order to achieve a design pressure ratio of say 1.27:1 . . . , a transonic blade design was required with a tip solidity of .8.” Id. at 7. The fan diameter and blade chord at the tip, which Petitioner uses to calculate its tip solidity value, come from a discussion in Davies regarding the hub, in particular restraining V.P. blades in the hub. Id. at 9. Davies states, at the design speed, each aerofoil part exerts 15 tons of centrifugal force, and a “total restraint of about 40 tons” would be required. Id. at 9–10. The numbers that Petitioner uses to calculate its tip solidity value are numbers that Davies uses “[t]o illustrate the magnitude of the problem” in designing its hub. Pet. 29–30; Ex. 1005, 9–10. Thus, we find that Davies gives fan dimensions sufficient to calculate that each fan blade exerts 15 tons of centrifugal force and hence a needed “total restraint of about 40 tons.” See id. We find that these statements would indicate to one of ordinary skill in the art that the numbers given for the fan dimensions are for purposes of estimating what the hub is required to restrain, and not sufficient for calculating tip solidity value, which was previously listed as 0.83 and as one of the “main features” after discussing aerodynamic design philosophy for its V.P. fan. See id. at 7–8; Mathioudakis Decl. ¶¶ 57, 69, 70 (“One would not attempt to use the approximate chord lengths and blade diameters in Section 6 to derive or interpret from Davies a substitute solidity value”). The Petition also does not explain sufficiently why one of ordinary skill in the art would understand Davies to disclose a tip solidity value of 0.74 instead of the expressly disclosed tip solidity of 0.83. See Pet. 29–30 (citing Abhari Decl. ¶¶ 80–82). The Petition and the cited portions of the Abhari Declaration do not address the disclosed tip solidity of 0.83. See Pet. 29–30; Abhari Decl. ¶¶ 80–82. Thus, given the entire context of Davies, a “Solidity Tip” of 0.83 as one of the “main features,” and Petitioner’s tip solidity calculated from fan dimensions given for illustration purposes, the full record does not persuade us that one of ordinary skill in the art would understand that Davies discloses a tip solidity value of 0.74, as argued by Petitioner, for its V.P. fan. One of ordinary skill in the art would understand, instead, that the fan dimensions provided for illustration purposes are not sufficiently specific to calculate a tip solidity value because they are given for evaluating the restraint the hub must provide. See Mathioudakis Decl. ¶ 69. Also, the record provides insufficient basis for determining that one of ordinary skill in the art would have accepted the calculated value of 0.74 over the listed value of 0.83 for tip solidity.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Davies indicates, as Patent Owner argues, that chord length, circumferential pitch, and solidity are interrelated and one of ordinary skill in the art considers implications of varying one parameter on other parameters of a V.P. fan. See, e.g., Ex. 1005, 6–8; Mathioudakis Decl. ¶¶ 72–76. However, Patent Owner’s argument that Petitioner’s proposed modification would lead to larger, heavier, fan blades (PO Resp. 36) does not show a deficiency in Petitioner’s reason for modifying the blade chord of Davies to achieve a ratio of N/R of 15.7 (Abhari Decl. ¶ 95), which would be within the recited range 15 to 16. Petitioner argues, and its Declarant states, that “blade chord dimension can be varied in order to balance the stability, efficiency, and weight of the fan section.” Pet. 39; Abhari Decl. ¶ 94 (citing Ex. 1021). Petitioner’s Declarant acknowledges that increasing chord length would “result in increased weight” but indicates that “increasing the chord length can lead to improved efficiency and stability margin.” Abhari Decl. ¶ 94 (citing Ex. 1021). Petitioner’s reason for modification, thus, acknowledges and anticipates that increasing the chord length to achieve a ratio of N/R equal to 15.7 would lead to heavier blades, but also greater efficiency and stability margin. See Pet. 39; Abhari Decl. ¶¶ 94–95. Also, the arguments and evidence before us persuade us that Petitioner’s proposed modification to achieve a ratio of N/R of 15.7 would not render Davies inoperable for its intended purpose, as argued by Patent Owner (PO Resp. 34, 37, 38). Davies states that the “requirement of reverse thrust via fine pitch implies that the blade solidity must be less than unity since the blades must pass each other.” Ex. 1005, 7. Davies also indicates that “to achieve a design pressure ratio of say 1.27:1 . . . a transonic blade design was required with a tip solidity of .8,” thus indicating that a different design pressure ratio requires a different tip solidity. Id.; see also id. at 5 (“The precise choice of pressure ratio . . . is not particularly important.”). Davies determines a taper ratio based on a “hub solidity near 1 and a tip solidity of 0.8.” Id. We, thus, find that Davies teaches or suggests that a taper ratio can be determined for a hub solidity near 1 and a different tip solidity for a different design pressure ratio in view of the requirement of blade solidity less than unity so that blades can pass. Therefore, we find that Petitioner’s proposed modification to achieve a ratio of N/R of 15.7 would not render Davies inoperable for its intended purpose. Further, based on the statements that the “precise choice of pressure ratio for technology demonstration fan design is not particularly important” (Ex. 1005, 5) and that “[i]n order to achieve a design pressure ratio of say 1.27:1 . . . a transonic blade design was required with a tip solidity of 0.8” (id. at 7), we find that one of ordinary skill in the art would understand that the pressure ratio depends on the application and that one of ordinary skill in the art has the skill to choose an appropriate pressure ratio, and thereby, determine an appropriate tip solidity value and blade chord, as was done in Davies with a design pressure ratio of 1.27:1. We find that, other than the requirement of blade solidity less than unity so that blades can pass, Davies does not preclude increasing the chord length for a different design pressure ratio or for greater efficiency and stability margin to achieve a ratio of N/R between 15 and 16, as proposed by Petitioner. Also, we agree with Petitioner that the record shows that increasing chord dimension to achieve a ratio of N/R of 15.7 would increase blade efficiency and stability margin. Abhari Decl. ¶ 94; Ex. 1021, 1:30–33. We are not pointed to any part of the record that indicates increasing chord dimension would degrade blade efficiency. See PO Resp. 34–44. For the reasons above, we agree with Petitioner that, for claim 11, one of ordinary skill would have modified Davies’ N/R ratio to be 15.7 or between 15 and 16 because the modification can “lead to improved efficiency and stability margin” (Pet. 39 (citing Abhari Decl. ¶ 94; Ex. 1021 1:30–33)). We, thus, determine that Petitioner has shown by a preponderance of the evidence that claim 11 is unpatentable over Davies.” slip op. at 31
- Skill levelSkill level petitioner adoptedOther
“A. Level of Ordinary Skill Petitioner’s Declarant provides a level of ordinary skill. Abhari Decl. ¶ 4. Patent Owner’s Declarant generally agrees to that level of ordinary skill. Mathioudakis Decl. ¶ 16. We note that, to the extent there are any differences in the parties’ proposed level of ordinary skill, such differences do not impact our analysis.” slip op. at 25
Patent outcomesUS 9,121,412 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,121,412 - Viptela, Inc. v. Fatpipe Networks Private LimitedInstitution deniedPTAB · Oct 3, 2017 · IPR2017-01125 · APJ Christa P Zado · IPR · Institution
The Board denied institution on claims 4–15, 19, and 22–24, exercising discretion under §§ 314(a) and 325(d) based on overlapping petitions, follow-on arguments, and inefficient use of resources.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“’684 IPR, which in turn was a “copy-cat” of the ’976 IPR petition. Prelim. Resp. 2, 5. However, in deciding whether we should exercise our discretion and decline to go forward with this Petition, our concern is not only whether “the same or substantially the same prior art or arguments previously were presented to the Office,” as expressed in § 325(d), but also whether other factors weigh in favor of denying institution in light of the discretion afforded to us pursuant to § 314(a).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“whether at the time of filing of the ’684 petition, Petitioner knew, or should have known, of Pearce, Zhang, and McCullough (“the Additional References”); the length of time that elapsed between learning of the Additional References, and the filing of the instant Petition; whether Petitioner has provided adequate explanation for the time lapse; whether at the time of filing of the instant Petition, Petitioner already had access to Patent Owner’s response in the ’976 IPR; and the finite resources of the Board. See Gen. Plastic Indus. at 16 (Paper 19) (informative). Petitioner provides no explanation of whether it knew or should have known of the Additional References when filing the ’684 petition; of when it first learned of these references; or of any time lapse between learning of these references and the filing of the instant Petition.” slip op. at 13
- Other 314aInstitution denied discretionary otherInstitution denied
“August 14, 2017, and a final decision is due by November 2, 2017. At this point, the decision in the ’976 IPR as to whether to see the matter through to final determination is squarely in our hands, regardless of whether any settlement is reached between the parties. See 37 C.F.R. § 42.74(a) (“The parties may agree to settle any issue in a proceeding, but the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice.”). Thus, if we deem it appropriate, we can reach a final decision on the grounds presented in the ’976 IPR with or without participation from the parties in that matter. These facts weigh in favor of us exercising our discretion not to move forward with the instant Petition, at least with respect to the ’976 instituted claims insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’976 IPR, because the issues raised are fully briefed and ripe for a final decision in the ’976 IPR, and Petitioner’s non-participation in that proceeding is at best neutral to our analysis. Petitioner is a party to the ’684 IPR, and in that proceeding the petition is directed to the same claims of the same patent as in this Petition. This fact weighs in favor of us not moving forward with the instant Petition. Also, at least with respect to the ’684 instituted claims, insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’684 IPR, Petitioner has the opportunity to address the same art and arguments in the ’684 proceeding. It would be an inefficient use of Office resources, and would run counter to securing the just, speedy, and inexpensive resolution of the challenges to the patentability of the ’235 patent, if we were to allow Petitioner to proceed on the same art and arguments in two separate proceedings.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits a list of terms for which Patent Owner has proposed construction in a co-pending district court case. Pet. 7–8. Petitioner, however, asserts that for the purposes of this Decision no terms need to be construed. Id. Patent Owner does not address claim construction in its Preliminary Response. See generally Prelim. Resp. We reviewed the parties’ arguments, and, for the purposes of this Decision, we have determined that no terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7
Claim constructionDiscretionary denialPatents in suitUS 6,775,235 - Mobile Tech, Inc. v. Invue Security Products Inc.All claims unpatentablePTAB · Sep 28, 2017 · IPR2016-00892 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–27 are unpatentable: claims 1, 5–20, 22–25, and 27 as obvious over Rothbaum and Denison; claims 2–4, 21, and 26 as obvious over Rothbaum, Denison, and Ott.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We begin with the plain language of the claims. The term “matching” is used as a gerund (i.e., a verb acting as a noun) in claims 1 and 25 and ordinarily means “[t]he action of match.” Ex. 1020, 4, 6. Thus, the use of “upon a matching” suggests some action of a match, as opposed to, for example, “upon a match,” which might be read to require simply the existence of a match. This supports Petitioner’s view that the arming or disarming must be as a result of a “determination of a match” (a particular type of action).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We do not agree that the recital of various “forms of data communication” (Ex. 1001, 3:4–19) in the ’762 patent broadened the meanings of the term “communicate” and the phrase “configured to communicate” themselves. Rather, the “forms” of communication in the cited portion of the ’762 patent merely represent examples of the media or means by which the communication occurs in various preferred embodiments. Ex. 1001, 3:4–19 (listing at least seven examples). Thus, Petitioner does not persuade us that we need to construe the terms “communicate” and “configured to communicate” expressly to encompass both wireless and wired communications.” slip op. at 15
- Skill levelSkill level board ownOther
“Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Although there are slight differences between the proposed levels of ordinary skill in the art, the parties’ declarants agree that an ordinarily skilled artisan would have had a four-year technical degree or the equivalent and some amount of professional experience. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that the skill level of a person of ordinary skill in the art would have been that of a person having a four year technical degree or equivalent experience with a minimum of two years of professional technical experience in the field of theft prevention devices or related security devices. We apply this level of ordinary skill in the art in our obviousness analysis.” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“i. Analogousness of Rothbaum and Denison As an initial matter, to be considered for obviousness, a reference must be analogous art. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). A prior art reference qualifies as analogous art (1) if it is from the same field of endeavor as the claimed invention, regardless of the problem addressed, or (2) if the reference is not within the field of the inventor’s endeavor, it is nonetheless reasonably pertinent to the particular problem with which the inventor is involved. Id.” slip op. at 27
Patent outcomesUS 8,884,762 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,884,762 - PTAB · Sep 20, 2017 · IPR2015-01611 · APJ Stacey G White · IPR · Rehearing
Denied Volkswagen’s rehearing request; the Board maintained that Kniffin did not show the “responsive to” limitation for claims 26, 31, 38, 42, 43, 48, 60, 63, 64, 73, 74, 85, 138, 139, and 143.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he 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.” Id.” slip op. at 2
NonePatents in suitUS 6,549,130 - Arris Group, Inc. / Aruba Networks, Inc. et al. v. Mobile Telecommunications Technologies, LLCAll claims unpatentablePTAB · Sep 20, 2017 · IPR2016-00766 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–5 are unpatentable: claims 1–5 are anticipated by Petrovic, and claim 5 is also obvious over Petrovic, Raith, and Alakija.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The asymmetrical condition recites “the band edge of the mask defining the channel,” referring to the “single mask-defined, bandlimited channel” also recited by the claims. A channel is a range or band of frequencies. See Pet. 5–6; see also Ex. 2001 ¶ 49; Ex. 2011 ¶ 48 (testimony of Patent Owner’s declarant Dr. Kesan that “[t]he word ‘band’ of ‘band edge’ refers to a frequency band or range.”). The language of the claims, themselves, thus indicates that “the band edge” is the edge of the mask that defines the range or band of frequencies of the channel. For example, in Annotation B of Figure 3B the left vertical line 31a and right vertical line 31b are the edges of the mask that define the range or band of frequencies of the channel. In other words, the entire range or band of frequencies of the channel are between left vertical line 31a and right vertical line 31b.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Third, according to Dr. Kesan, example masks described in the specification of the ’891 and other extrinsic evidence support Patent Owner’s proposed construction. PO Resp. 21–33 (citing Ex. 2011). Dr. Kesan’s testimony is unpersuasive because it is not adequately supported by the cited evidence. See Pet Reply. 6–13. For example, Dr. Kesan testifies that “FCC emission masks can have multiple band edges,” meaning “all points along the edge of the mask that limits the frequency band” (Ex. 2011 ¶¶ 48–51 (citing id. at Appendix C). However, the material cited by Dr. Kesan does not mention the term “the band edges.” See id. at Appendix C. As another example, Dr. Kesan testifies that drawing the mask depicted in Figure 4 of the ’891 patent on Figure 5A of the ’891 patent proves that “not choosing the nearest band edges of the mask of Figure 4 would cause the two carriers of Figure 5A to exceed the diagonal band edges of the masks when the carriers are modulated.” PO Resp. 28–30 (citing Ex. 2011 ¶¶ 71– 76). Dr. Kesan, however, does not sufficiently explain why his placement of the Figure 4 mask on Figure 5A is the correct placement. See generally Ex. 2011 ¶¶ 71–76; see also Ex. 1018 ¶¶ 20–25 (testimony of Dr. Kakaes indicating the Dr. Kesan’s placement is incorrect). Further, Patent Owner’s argument that a POSITA would construe “the band edge” according to its proposed construction is unpersuasive. See generally PO Resp. 21–30. Patent Owner relies upon the testimony of Dr. Kesan for support. Id. We give Dr. Kesan’s testimony little weight because it is not credible due to inconsistency in his testimony. For example, in its Preliminary Response, Patent Owner points to an annotation of Figure 3B of the ’891 patent by Dr. Kesan in related district court litigation. See Prelim. Resp. 27 (reproducing a figure from Ex. 20106, 5). Annotated Figure 3B from the related district court litigation is reproduced below.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Upon review of Petitioner’s evidence and analysis, which we agree with and hereby adopt, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. Pet. 13–14, 23–26; Pet. Reply 16–28. In particular, we are persuaded by Dr. Kakaes’s testimony that Petrovic meets the asymmetric condition. Dr. Kakaes testifies that in Petrovic: the frequency difference between the center frequency of the outer most of the carriers and the band edge of the mask defining said channel (which is greater than 7.5 kHz) is more than half the frequency difference between the center frequencies of each adjacent carrier (which is 5 kHz), as required by claim 1. Ex. 1003 ¶ 22. Dr. Kakaes’s testimony is based upon Petrovic’s description of doubling the 25 kHz bandwidth to 50 kHz to provide “a 35 kHz pass band in the middle of the channel and 7.5 kHz guard bands on each side,” with eight subcarriers spaced 5 kHz apart.” Ex. 1013 1. Further, we are persuaded by Petitioner that Petrovic describes transmitting the carriers from the same location. Petrovic states that “[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset of the 8 frequencies. Outputs of the subtransmitters are combined and sent to a common antenna.” Id. at 2; see also Ex. 1003 ¶¶ 25, 26. We are not persuaded by Patent Owner that Petrovic fails to anticipate claims 1, 3, and 5 because Patent Owner’s arguments are not commensurate with the scope of the claims. See PO Resp. 41–52. First, Patent Owner contends that Petrovic does not meet the asymmetric condition when “the band edge of the mask” is construed, according to Patent Owner’s proposed construction, as “the nearest band edge of the mask,” where “the nearest band edge” is defined as “the band edge that is nearest to the center frequency of each outer most carrier at the highest power level of each outer most carrier.” Id. at 42–50. As discussed above, however, we determine that Patent Owner’s proposed construction of “the band edge of the mask” is not the correct construction. Second, Patent Owner argues that Petrovic does not describe transmitting the carriers from the same location because it does not describes transmitting multiple carriers from the same location at the same time. PO Resp. 51–52. As also discussed above, claims 1, 3, and 5 do not require the carriers to be transmitted at the same time. Claims 1, 3, and 5 do not recite any temporal requirement, i.e., that all the carriers must be transmitted at the same time, only that the carriers must be transmitted from the same location. Patent Owner’s arguments, thus, are not commensurate with the scope of the claims. After consideration of both Petitioner’s and Patent Owner’s argument and evidence, Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“In addition, we are persuaded by Petitioner that the combination of Petrovic, Raith, and Alakija teaches the claimed co-locating. Petrovic describes an experiment in which two transmitters are located seven miles apart and synchronized to provide a simulcast overlap area. Ex. 1013, 2. Raith describes a similar cellular digital mobile radio system with plural base station transmitters. Pet. 33 (citing Ex. 1014, Title). Raith describes diving a geographical area into multiple cells and providing two transmitters, which simultaneously transmit the same message information to mobile stations, in each cell. Ex. 1014, Abstract, 6:1–3; Ex. 1003 ¶ 30. For adjacent cells, Raith teaches co-locating groups of three base transmitters to transmit information to contiguous cells. See Ex. 1014, 6:11–15; see also Pet. 33 (reproducing Figure 1 of Raith with annotations to illustrate the co-located transmitters). Dr. Kakaes testifies that a POSITA would have been motivated to expand the experimental paging system configuration described in Petrovic to include multiple adjacent paging cells/regions similar to the structure illustrated in Figure 1 of Raith . . . in order to provide messaging services to a larger geographic area and a larger number of mobile devices. Ex. 1003 ¶¶ 31–32; Ex. 1018 ¶ 73. Alakija describes a “mobile communications base station antenna, which utilizes a cylindrical array design.” Ex. 1015, Abstract. Alakija describes that, “[b]y combining a number of feed networks into a single antenna system, an antenna with multiple independently steerable beams is achieved.” Ex. 1015, 1–2; see also id. at Fig. 6. Dr. Kakaes testifies that a POSITA would have been motivated to utilize a single cylindrical antenna structure to emit the output signals of the three co-located transmitters described by Petrovic in view of Raith instead of three separate antennas, because a single antenna structure “[c]an be used to realize advantages such as...hardware savings, low manufacturing costs, [and] low installation costs,” as recognized by Alakija. Ex. 1003 ¶ 36 (quoting Ex. 1015, 3); Ex. 1018 ¶ 73.” slip op. at 27
Patent outcomesUS 5,659,891 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 5,659,891 - Arris Group, Inc. / Aruba Networks, Inc. et al. v. Mobile Telecommunications Technologies, LLCAll claims unpatentablePTAB · Sep 20, 2017 · IPR2016-00768 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–5 are unpatentable: claims 1–5 as anticipated by Petrovic, and claim 5 also as obvious over Petrovic, Raith, and Alakija.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The asymmetrical condition recites “the band edge of the mask defining the channel,” referring to the “single mask-defined, bandlimited channel” also recited by the claims. A channel is a range or band of frequencies. See Pet. 5–6; see also Ex. 2001 ¶ 49; Ex. 2011 ¶ 48 (testimony of Patent Owner’s declarant Dr. Kesan that “[t]he word ‘band’ of ‘band edge’ refers to a frequency band or range.”). The language of the claims, themselves, thus indicates that “the band edge” is the edge of the mask that defines the range or band of frequencies of the channel. For example, in Annotation B of Figure 3B the left vertical line 31a and right vertical line 31b are the edges of the mask that define the range or band of frequencies of the channel. In other words, the entire range or band of frequencies of the channel are between left vertical line 31a and right vertical line 31b.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“with and hereby adopt, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. Pet. 13–14, 23–26; Pet. Reply 16–28. In particular, we are persuaded by Dr. Kakaes’s testimony that Petrovic meets the asymmetric condition. Dr. Kakaes testifies that in Petrovic: the frequency difference between the center frequency of the outer most of the carriers and the band edge of the mask defining said channel (which is greater than 7.5 kHz) is more than half the frequency difference between the center frequencies of each adjacent carrier (which is 5 kHz), as required by claim 1. Ex. 1003 ¶ 22. Dr. Kakaes’s testimony is based upon Petrovic’s description of doubling the 25 kHz bandwidth to 50 kHz to provide “a 35 kHz pass band in the middle of the channel and 7.5 kHz guard bands on each side,” with eight subcarriers spaced 5 kHz apart.” Ex. 1013 1. Further, we are persuaded by Petitioner that Petrovic describes transmitting the carriers from the same location. Petrovic states that “[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset of the 8 frequencies. Outputs of the subtransmitters are combined and sent to a common antenna.” Id. at 2; see also Ex. 1003 ¶¶ 25, 26. We are not persuaded by Patent Owner that Petrovic fails to anticipate claims 1, 3, and 5 because Patent Owner’s arguments are not commensurate with the scope of the claims. See PO Resp. 41–52. First, Patent Owner contends that Petrovic does not meet the asymmetric condition when “the band edge of the mask” is construed, according to Patent Owner’s proposed construction, as “the nearest band edge of the mask,” where “the nearest band edge” is defined as “the band edge that is nearest to the center frequency of each outer most carrier at the highest power level of each outer most carrier.” Id. at 42–50. As discussed above, however, we determine that Patent Owner’s proposed construction of “the band edge of the mask” is not the correct construction. Second, Patent Owner argues that Petrovic does not describe transmitting the carriers from the same location because it does not describes transmitting multiple carriers from the same location at the same time. PO Resp. 51–52. As also discussed above, claims 1, 3, and 5 do not require the carriers to be transmitted at the same time. Claims 1, 3, and 5 do not recite any temporal requirement, i.e., that all the carriers must be transmitted at the same time, only that the carriers must be transmitted from the same location. Patent Owner’s arguments, thus, are not commensurate with the scope of the claims. After consideration of both Petitioner’s and Patent Owner’s argument and evidence, Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. 3. Dependent claims 2 and 4 With respect to the additional limitations of dependent claims 2 and 4, Petitioner proffers annotated versions of Petrovic’s Figure 1 (Pet. 22–23) to show that adjacent carriers (claim 2) and subchannels (claim 4) “overlap with each other,” as recited in these claims. Id. at 21–23, 27. Figure 6 and Figure 7, the annotated versions of Petrovic’s Figure 1, are reproduced sideby-side below. Figure 6 depicts Petrovic’s Figure 1 with annotations to show transmission levels if subchannels 1–8 are all on. Pet. 21; Ex. 1003 ¶ 23. Figure 7 depicts a portion of Petrovic’s Figure 1 around carrier 1 and carrier 2 and has been annotated to highlight the overlap. According to Patent Owner, to meet claims 2 and 4, Petrovic must “teach overlap of the carriers that could be recognized by a receiver as the carrier except for near-far interference.” PO Resp. 53–59. Patent Owner argues that Petrovic does not teach overlapping carriers, because Petrovic’s overlap is caused by near-far interference and is at a very low power. PO Resp. 53–56 (citing Ex. 2011 ¶¶ 112, 115–120). Patent Owner argues that overlap must be overlap of those portions of a carrier that could be recognized by a receiver as the carrier except for near-far interference. Id. at 54.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In addition, we are persuaded by Petitioner that the combination of Petrovic, Raith, and Alakija teaches the claimed co-locating. Petrovic describes an experiment in which two transmitters are located seven miles apart and synchronized to provide a simulcast overlap area. Ex. 1013, 2. Raith describes a similar cellular digital mobile radio system with plural base station transmitters. Pet. 33 (citing Ex. 1014, Title). Raith describes diving a geographical area into multiple cells and providing two transmitters, which simultaneously transmit the same message information to mobile stations, in each cell. Ex. 1014, Abstract, 6:1–3; Ex. 1003 ¶ 30. For adjacent cells, Raith teaches co-locating groups of three base transmitters to transmit information to contiguous cells. See Ex. 1014, 6:11–15; see also Pet. 33 (reproducing Figure 1 of Raith with annotations to illustrate the co-located transmitters). Dr. Kakaes testifies that a POSITA would have been motivated to expand the experimental paging system configuration described in Petrovic to include multiple adjacent paging cells/regions similar to the structure illustrated in Figure 1 of Raith . . . in order to provide messaging services to a larger geographic area and a larger number of mobile devices. Ex. 1003 ¶¶ 31–32; Ex. 1018 ¶ 73. Alakija describes a “mobile communications base station antenna, which utilizes a cylindrical array design.” Ex. 1015, Abstract. Alakija describes that, “[b]y combining a number of feed networks into a single antenna system, an antenna with multiple independently steerable beams is achieved.” Ex. 1015, 1–2; see also id. at Fig. 6. Dr. Kakaes testifies that a POSITA would have been motivated to utilize a single cylindrical antenna structure to emit the output signals of the three co-located transmitters described by Petrovic in view of Raith instead of three separate antennas, because a single antenna structure “[c]an be used to realize advantages such as...hardware savings, low manufacturing costs, [and] low installation costs,” as recognized by Alakija. Ex. 1003 ¶ 36 (quoting Ex. 1015, 3); Ex. 1018 ¶ 73.” slip op. at 27
Patent outcomesUS 5,659,891 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 5,659,891
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.