• Microsoft Corporation v. Uniloc 2017 LLCInstitution denied
  PTAB · Nov 27, 2019 · IPR2019-01125 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on claim 5 because its ambiguous scope prevented a reliable merits assessment and made trial resource intensive.

  RulingsInstitution decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “Id. at 2:29–42. Thus, within the context of both the claim and the Specification, a radio system and a station are not the same. It is unclear what is referred to by the reference in claim 5 to “radio systems in accordance with the first radio interface standard.”” slip op. at 14

  • Other 314aInstitution denied discretionary otherDenied

    “Because the claim language is ambiguous as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds 5 We recognize that in limited circumstances, clear errors in claims can be corrected. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). The deficiency in the claim language here clearly does not meet that standard. What the Applicant for patent intended by the language used is subject to much speculation and conjecture. of unpatentability. If the scope of the claims cannot be determined without undue speculation, as is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63. Furthermore, given that any trial instituted here would address a single claim that we regard to be ambiguous, that issue would likely become the sole focus of that trial. That seems problematic given that Petitioner may not request to cancel any claim based on an assertion of indefiniteness. See 35 U.S.C. § 311(b). See 35 U.S.C. § 311(b).” slip op. at 16

  Claim constructionDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,016,676
• Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Rehearing denied
  PTAB · Nov 26, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because § 315(a)(1) barred review after Petitioner filed and voluntarily dismissed a declaratory judgment action.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied

    “institution of an inter partes review because Petitioner previously filed a declaratory judgment action challenging the validity of claims in the ’012 patent, notwithstanding Petitioner’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 5–8. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 6–8.” slip op. at 2

  Discretionary denial
  Patents in suitUS 8,155,012
• Apple Inc. v. Uniloc 2017 LLCRehearing denied
  PTAB · Nov 18, 2019 · IPR2018-00884 · APJ Sean P O’Hanlon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and left intact the unpatentability of claims 1–17 and 23–25 under § 103.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD A request for rehearing “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.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “suggested by the Examiner to express more clearly the applicants’ intention to convey that the network entity is not the intended end recipient device. Final Dec. 11–12. As we explained, our interpretation that “a network entity intercepting a signaling message associated with a call between a sender device of the message and an intended recipient device of the message” means that the network entity receives the message and the network entity is not the intended end recipient device is supported by the prosecution history: [T]his interpretation is consistent with the prosecution history of the application resulting in the ’552 patent, which reveals that the patent examiner suggested using the word intercepting in the claims to further clarify the applicants’ intention to convey that “the independent claims involve a network entity receiving and filtering messages that are sent between two end users.” Ex. 1002, 364–65 (first emphasis added); see also id. at 367–68 (distinguishing an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message). Id. Thus, rather than ignoring the amendment “as if it had never happened” (Req. Reh’g 3), we explained our interpretation that the Examiner suggested using “intercepting” to more clearly convey that the recited network entity is not one of the intended end user devices between which the signaling message is sent. Although Patent Owner argues that the Decision “d[oes] not appear to apply the presumption that the applicant’s decision to narrow claim 1 by amendment gave rise to a general disclaimer of the territory between the original claim and the amended claim” (Req. Reh’g 4 (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740, (2002)), Patent Owner does not identify the alleged “disclaimer of the territory,” and thus fails to specifically identify how we allegedly erred. See 37 C.F.R. § 42.71(d). Nor are we apprised that we misapprehended or overlooked any matter by Patent Owner’s assertions regarding the applicants’ comments about the amendment. See Req. Reh’g 4. Patent Owner characterizes the comments as “distinguish[ing] ‘intercepting’ in this context from the disclosure in a cited reference2 directed to merely receiving a message at a network entity.” Id. This characterization is incomplete, as the reference describes a “service request [that] is sent from the service-used apparatus directly to the service-provider apparatus, not to some other apparatus.” Ex. 1002, 368 (emphasis added). As we explained in the Decision, the applicants “distinguish[ed] an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message.” Final Dec. 12 (citing Ex. 1002, 367–68).” slip op. at 4

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Patent Owner’s declarant is entitled to little weight: Dr. Easttom’s declaration testimony interpreting “receiving” fails to consider the full disclosure and prosecution history of the ’552 patent, as explained above, and, thus is not entitled to substantial weight. See, e.g. Ex. 2001 ¶¶ 8–9; see also PO Resp. 6 (citing same). Additionally, Patent Owner hindered or prevented Petitioner from cross-examining Dr. Easttom, further undermining the weight given to Dr. Easttom’s testimony. See, e.g., Pet. Reply 2–6; Exs. 1011–24. Final Dec. 12 n.9.” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for petitioner

    “[t]he intercepting of call control server 112 at least includes seizing a message, which is not sent directly . . . from a client 104 to the server 112, 2 US 2003/0177363 (“Yokota”). and obstructing the message from progress while authentication processes are performed.” Req. Reh’g 5 (citing Paper 14, 4–5 (PO Sur-Reply)). Although Patent Owner cites to its Sur-Reply, we see no argument there regarding “seizing” and “obstruction.” As this was not an argument on which Patent Owner previously relied, it was not an argument that we could have misapprehended or overlooked. slip op. at 5

  Claim construction
  Patents in suitUS 8,539,552
• Kathrein USA, Inc. / T-Mobile US, Inc v. Fractus S.A.Institution denied
  PTAB · Oct 25, 2019 · IPR2019-00953 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims because claim ambiguity prevented a reasonable likelihood determination on any asserted obviousness ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any one of claims 1, 6, 7, 8, 11, 13, 14, 17, and 20 on any ground. Accordingly, the Petition is denied, and no inter partes review is instituted.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “2. The Term Juxtaposition As discussed above, the district court construed “juxtaposition” as “interleaving.” Ex. 1176, 24. The district court did so largely on the basis that, on the record before the district court, it had not been shown that “juxtaposition” has any well-known meaning in the relevant art and because the Specification of the ’256 patent appears to use the terms “juxtaposition” and “interleaving” interchangeably. Id. at 15–24. The record before us similarly demonstrates no well-known meaning for “juxtaposition” in the relevant art, and neither party makes such a contention. Further, we also read the Specification as using the terms “juxtaposition” and “interleaving” interchangeably. For instance, the ’256 patent states “[t]he array configuration is described on a basis of the juxtaposition or interleaving of various conventional single-band arrays operating in the different bands of interest.” Ex, 1101, 1:28–30 (emphasis added). We find no portions of the Specification that make a distinction between “juxtaposition” and “interleaving.” Therefore, we agree with the district court’s construction of “juxtaposition” as “interleaving.” Ex. 1176, 24.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “As noted above, we agree with the district court that the term “juxtaposition” means “interleaving.” The ’256 patent, however, does not define “interleave” or “interleaving.” We consult a technical dictionary, which defines “interleave” as follows: interleave (1) To arrange parts of one sequence of things or events so that they alternate with parts of one or more sequences of things or events and so that each sequence retains its identity; for example, to alternately perform the steps of two different tasks in order to achieve concurrent operation of the tasks. (C/C) [20], [85] (2) (software) To alternate the elements of one sequence with the elements of one or more other sequences so that each sequence retains its identity; for example, to alternatively perform the steps of two different tasks in order to achieve concurrent operation of tasks. (C) 610.12-1990. (3) To arrange parts of one sequence of things or events so that they alternate with parts of one or more sequences of the same nature such that each sequence retains its identity; [f]or example, to assign successive addresses to physically separated storage locations in such a way to reduce access time. (C) 610.10-1994w. IEEE 100: The Authoritative Dictionary of IEEE Standards Terms 577 (7th ed. 2000) (“IEEE Dictionary”) (Ex. 3002). The juxtaposition of two antenna arrays as shown in Figure 1 of the ’256 patent, i.e., columns 1a and 1b, which results in the positions of the elements in the multiband array shown in column 1c, however, is not consistent with the above-reproduced definition of “interleave.” In that regard, we again reproduce Figure 1 of the ’256 patent below:” slip op. at 14

  • BurdenDenied

    “C.F.R. § 42.104(b)(3), the Petition must identify how to construe each challenged claim. In this case, the Petition does not address the issues discussed above sufficiently to eliminate uncertainty and speculation as to whether the claims read on the prior art.” slip op. at 21

  Claim constructioncites Phillips · Graham
  Patents in suitUS 8,228,256
• Kathrein USA, Inc. / T-Mobile US, Inc v. Fractus S.A.Institution denied
  PTAB · Oct 25, 2019 · IPR2019-00952 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims because ambiguous claim language left it unable to assess the asserted grounds without speculation.

  RulingsInstitution decision

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Because the claim language is ambiguous in numerous respects as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds of unpatentability. If the scope of the claims cannot be determined without undue speculation, as it is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013- 00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d at 862–63 and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63.” slip op. at 21

  • Prior constructionPrior construction adoptedDecided for patent owner

    “2. The Term Juxtaposition As discussed above, the district court construed “juxtaposition” as “interleaving.” Ex. 1076, 24. The district court did so largely on the basis that, on the record before the district court, it had not been shown that “juxtaposition” has any well-known meaning in the relevant art and because the Specification of the ’256 patent appears to use the terms “juxtaposition” and “interleaving” interchangeably. Id. at 15–24. The record before us similarly demonstrates no well-known meaning for “juxtaposition” in the relevant art, and neither party makes such a contention. Further, we also read the Specification as using the terms “juxtaposition” and “interleaving” interchangeably. For instance, the ’256 patent states “[t]he array configuration is described on a basis of the juxtaposition or interleaving of various conventional single-band arrays operating in the different bands of interest.” Ex, 1001, 1:28–30 (emphasis added). We find no portions of the Specification that make a distinction between “juxtaposition” and “interleaving.” Therefore, we agree with the district court’s construction of “juxtaposition” as “interleaving.” Ex. 1076, 24.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, we only need to address construction of the recited juxtaposition of antenna arrays and the term “juxtaposition” itself.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2 Petitioner asserts that the level of ordinary skill in the art corresponds to that of one who had (1) “an accredited Master’s degree in electrical engineering, applied physics, or any similar course of study, and a few years of experience related to the design and/or application of antennas,” or (2) “a doctorate in electrical engineering, applied physics, or any similar course of study, with knowledge of electromagnetic theory as applied to design and/or application of antennas.” Pet. 29. Patent Owner adopts for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). The Petition here was filed on April 9, 2019. Paper 3. So we apply the claim construction standard from Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (“the Phillips standard”). Claim terms are generally given their ordinary and customary meaning as would be understood by one with ordinary skill in the art in the context of the specification, the prosecution history, other claims, and even extrinsic evidence including expert and inventor testimony, dictionaries, and learned treatises, although extrinsic evidence is less significant than the intrinsic record. Phillips, 415 F.3d at 1312–1317. Usually, the specification is dispositive, and it is the single best guide to the meaning of a disputed term. Id. at 1315. The specification may reveal a special definition given to a claim term by the patentee, or the specification may reveal an intentional disclaimer or disavowal of claim scope by the inventor. Id. at 1316. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The disavowal, if any, can be effectuated by Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 14. On this record, we have no basis to question Petitioner’s articulation. Thus, we adopt the level of ordinary skill as articulated by Petitioner.” slip op. at 8

  Claim constructionDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,228,256
• Red Hat, Inc. / Dell Inc. et al. v. Electronics & Telecommunications Research InstituteRehearing denied
  PTAB · Oct 16, 2019 · IPR2019-00465 · APJ Jameson Lee · IPR · Rehearing

  The Board denied rehearing, leaving institution denied for claims 1–14 because Petitioner did not show an abuse of discretion in the claim construction underlying the merits decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “including tables. Step “b)” of claims 1 and 11 reads as follows: “b) generating the metadata including information of the logical volume and the disk partitions forming the logical volume and storing the metadata to the disk partitions forming the logical volume.” Ex. 1001, 12:22–25, 14:32– 35 (emphasis added). Claim 8 essentially recites the same. See id. at 13:36– 39. Each of claims 1, 8, and 11 further recites: “wherein the metadata includes a disk partition table . . . ; a logical volume table . . . ; an extent allocation table . . . ; and a mapping table . . . .” Id. at 12:35–47, 13:49–61, 14:46–67. The antecedent basis for “the metadata” is that metadata which has been generated and stored in the disk partitions forming the logical volume.” slip op. at 3

  Claim constructioncites Phillips
  Patents in suitUS 6,718,436
• Acronis, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Sep 24, 2019 · IPR2018-00706 · APJ Garth D Baer · IPR · Final written decision

  Claims 12–14, 20, and 21 are unpatentable as obvious over Dawson and Gormish because their combined teachings meet the claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that “[a] person of ordinary skill in the art at the time of the alleged invention of the ’204 Patent would have had at least a bachelor’s degree, or equivalent, in Computer and Electrical Engineer[ing], Computer Science, Engineering, or a closely related program of study, and one to two years of industry or graduate experience.” Pet. 5 (citing Ex. 1002 ¶¶ 11–13). Patent Owner does not provide its own formulation of a person of ordinary skill or contest Petitioner’s assertion. We agree with and adopt Petitioner’s proposal because it is consistent with the problems and solutions in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 5

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

    “CLAIM CONSTRUCTION Petitioner proposes that we construe the terms “recognizing” and “analyzing” of claims 12 and 21 as not requiring an active step of directly analyzing data within data blocks. Pet. 5. Patent Owner asserts that the terms do not require construction to resolve the parties’ dispute. Resp. 4. We agree with Patent Owner that no express claim construction is necessary 1 U.S. Patent No. 5,553,160 (issued Sept. 3, 1996) (Ex. 1003, “Dawson”). 2 U.S. Patent No. 5,912,636 (issued June 15, 1999) (Ex. 1004, “Gormish”). to determine whether the challenged claims are unpatentable. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 5

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In addition, the record supports that one skilled in the art would have had a reasonable expectation of success in combining the asserted teachings to achieve the claimed timing and compression ratio constraints. We credit Dr. Boncelet’s testimony that “[a] person of ordinary skill in the art certainly could use Gormish and . . . have a reasonable expectation that Gormish would work well in the Dawson framework.” Ex. 2005, 21:22–22:1; see id. at 88:19–89:1 (explaining that “as one of ordinary skill in the art, I would have a reasonable expectation that the combination of Dawson and Gormish would meet the stated goals of Dawson, to be able to transmit the images faster compressed than uncompressed”); id. at 70:16–22 (explaining that Dawson “chose the 4K number because that was — given the hardware available to them at the time, that was probably where the break-even point was”); see also Ex. 1002 ¶¶ 65–69 (describing the asserted combination and explaining how and why a skilled artisan would have combined the references). The prior art supports Dr. Boncelet’s assertion. Dawson notes that “[a]ny of a wide variety of data compression algorithms can be used,” Ex. 1003, 12:22–24, while Gormish states that its finite state machine can be implemented as either a lossless or lossy compressor, Ex. 1004, 20:34–38. Thus, as Dr. Boncelet testified, “Dawson allows the choice of what kind of compressor to use, either lossy or lossless, whether it’s Huffman coding, arithmetic coding, Gormish, LZW, JPEG, et cetera . . . . The system still works with the existing thresholds and with Gormish.” Ex. 2005, 55:25– 56:9. We note the ’204 patent includes none of the encoder speed or communication channel speed metrics that Patent Owner asserts are missing from Dawson. In addition, Dawson’s methods of achieving the timing and compression ratio constraints do not depend on the compression implementation details that Patent Owner contends are missing. To the contrary, Dawson’s algorithm for achieving at least a 4:1 compression ratio looks only to post compression results, while its algorithm for achieving the timing constraint looks only to pre-compression file size. See Ex. 1003, Fig. 4 (steps 405, 460). Thus, both algorithms would be unaffected by the specific encoder employed or the type of data to be compressed. In light of the evidence of record, we find Petitioner adequately demonstrates how the asserted prior art would be combined and that one skilled in the art would have a reasonable expectation of success in doing so.” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

  Patent outcomesUS 8,717,204 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,717,204
• Samsung Electronics Co., Ltd. v. M & K Holdings Inc.All claims unpatentable
  PTAB · Sep 11, 2019 · IPR2018-00697 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Budagavi, WD3-v1, and Sole; the motion to amend is granted, adding substitute claims 8–14.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “A. Principles of Law It is a petitioner’s burden to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said 2 Budagavi et al., U.S. Pub. No. 2011/0170594 A1 (July 14, 2011, filed Dec. 30, 2010) (Ex. 1005). 3 Sole et al., Unified Scans for the Significance Map and Coefficient level Coding in High Coding Efficiency, JCTVC-E335 (version 3) (uploaded Mar. 19, 2011) (Ex. 1006). 4 Thomas Wiegand et al., WD3: Working Draft 3 of High-Efficiency Video Coding, JCTVC-E603 (version 1) (uploaded March 30, 2011) (Ex. 1007). subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on the following underlying factual determinations: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations.5 Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the principles stated above in mind.” slip op. at 9

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

    “1, which teaches using a single scan depending on a prediction mode, with teachings related to Figure 2, which teaches scanning subsets in a different direction than scanning coefficients within a subset (without teaching the two scans depend on the intra prediction mode). See Ex. 1006, 1–2, Figs. 1 and 2; Opp. 8–9 (citing Pet. 43–49; Ex. 1002 ¶¶ 134–135). In so doing, Petitioner improperly combines two teachings from separate embodiments without an adequate reason. As the main reason for the combination, Petitioner contends that Sole combines the teachings from the two embodiments. See Pet. 45 (arguing “Sole also discloses using a backward zigzag scan for scanning the quantized coefficients of each subset and the plurality of subsets, which is a modified version of the scan technique shown in Figure 2” (emphasis added)), 45–51 (relying on what Sole allegedly teaches and explaining why an artisan of ordinary skill would have looked to Sole). Dr. Kalva credibly testifies that Sole does not teach combining the teachings. See, e.g., Ex. 2025 ¶ 91 (“Sole repeatedly asserts that its aim is to apply the same scan pattern used for the significance map to the coefficient level coding (e.g., the quantized coefficients.)”), ¶ 94 (The conclusion that Sole does not teach or suggest scanning subsets using a scan pattern determined by the intra prediction mode is confirmed by Davies and Sole II.”), ¶ 95 (“[T]he subsets are not scanned, let alone scanned using a scan pattern determined by the intra prediction”).” slip op. at 103

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “algorithm implements a single scan direction without suggesting retaining the sub-block concept and without suggesting scanning sub-blocks according to an intra prediction mode. Therefore, Sole does not teach scanning a plurality of subsets according to an intra prediction mode as claim 8 requires. Accordingly, Petitioner fails to meet the burden of showing that a person of ordinary skill would have considered the combined teachings of Budagavi and Sole to meet the last limitation of proposed substitute claim 8. After reviewing the entire record, we determine Petitioner has not shown that the subject matter of proposed substitute claim 8 would have been obvious over Budagavi and Sole. We therefore grant Patent Owner’s Motion to Amend as to proposed substitute claim 8. 2. Patentability of Claims 9–14 Because the parties do present not separate arguments for proposed substitute claims 9–14, which depend from proposed substitute claim 8, they stand with claim 8. Accordingly, we further grant Patent Owner’s Motion to Amend as to these proposed substitute dependent claims. IV.” slip op. at 107

  • ExcludeMotion to exclude, deniedDenied

    “For the foregoing reasons, Patent Owner does not meet the burden on its Motion. In addition, even if we disregard statements by Mr. Bross in paragraphs 11 and 12 that we hold here fall under a hearsay exception or constitute non-hearsay, it would not alter the outcome, given other evidence, including (but not requiring) the evidence of a verbal act discussed above, and including other Exhibits discussed above collectively showing that interested artisans exercising reasonable diligence should have been able to visit the website and would have known it archived HEVC standards, lending a reason to visit it.” slip op. at 115

  Patent outcomesUS 9,191,673 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,191,673
• Samsung Electronics Co., Ltd. v. M & K Holdings Inc.All claims unpatentable
  PTAB · Sep 4, 2019 · IPR2018-00696 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 2, 5, and 6 are unpatentable as anticipated by WD4-v3; claims 3 and 4 are unpatentable as obvious over WD4-v3, Park, and Zhou.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art We adopt Petitioner’s proposed level of ordinary skill in the art, which” slip op. at 11

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

    “Petitioner shows by a preponderance of evidence that WD4-v3 anticipates claims 1, 2, 5 and 6 of the ’163 patent under 35 U.S.C. § 102(a); and, the combination of WD4-v3, Park, and Zhou renders claims 3 and 4 obvious under 35 U.S.C. § 103(a).” slip op. at 100

  • ExcludeMotion to exclude, deniedDenied

    “For the foregoing reasons, Patent Owner does not meet the burden on its Motion. In addition, even if we disregard statements by Mr. Bross in paragraphs 11 and 12 that we hold here fall under a hearsay exception or constitute non-hearsay, it would not alter the outcome, given other evidence, including (but not requiring) the evidence of a verbal act discussed above, and including other Exhibits discussed above collectively showing that interested artisans exercising reasonable diligence should have been able to visit the website and would have known it archived HEVC standards, lending a reason to visit it.” slip op. at 100

  Patent outcomesUS 9,113,163 unpatentable
  § 103 obviousness
  Patents in suitUS 9,113,163
• Red Hat, Inc. / Dell Inc. et al. v. Electronics & Telecommunications Research InstituteInstitution denied
  PTAB · Jul 10, 2019 · IPR2019-00467 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims 1–14 because the petition did not show a reasonable likelihood of unpatentability on any asserted obviousness ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered all submissions of both parties, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–14. Accordingly, the Petition is denied, and no inter partes review is” slip op. at 2

  • Parallel petitionsNot reached

    “35 U.S.C. § 314(a) to not institute review in this case, because Petitioner has filed, simultaneously, two petitions for inter partes review of the same claims of the ’436 patent. Prelim. Resp. 33–35. According to Patent Owner, “[m]ultiple simultaneous petitions can pose more harassment risks than ones spread out over time as they multiply the patent owner’s work and expense in the compressed time frames of IPR proceedings.” Id. at 34. Patent Owner argues that multiple simultaneously filings amount to paying more to argue more, which is contrary to “the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete [review] proceedings.” Id. (citing 35 U.S.C. § 316(b)). We do not reach the issue of discretionary denial of the Petition, because, as discussed above, Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any claim.” slip op. at 39

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Level of Ordinary Skill in the Art Petitioner asserts that the level of ordinary skill in the art corresponds to “at least an undergraduate degree or equivalent academic or professional training in computer science or computer engineering, or a related field, and two years of industry experience in the field of data storage systems.” Pet. 7 (citing Ex. 1003 ¶ 11). Patent Owner has not offered an articulation of the level of ordinary skill in the art. We adopt the level of ordinary skill as articulated by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. Degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. C.” slip op. at 11

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

    “Petitioner proposes a construction for the claims terms “disk partition” and “extent.” Pet. 9–11. Patent Owner does not disagree with Petitioner’s proposed constructions of “disk partition” and “extent.” It is not necessary in this Decision, however, to construe the term “extent.” Petitioner proposes that “disk partition” means “one of a plurality of disks or portions of a disk that form a logical volume.” Pet. 9. We have reviewed the specification and the prosecution history of record, and have no reason to disagree with Petitioner’s construction of “disk partition,” with the understanding that “form a logical volume” refers to actual storage space allocated exclusively to a logical volume. The specification of the ’436 patent does not indicate any overlap in the disk partitions of separate logical volumes. Petitioner also has not explained how such an overlap could be permitted without creating usage conflicts between logical volumes that would render the data unreliable. Petitioner’s articulation plus our additional clarification is consistent with the specification, particularly the illustration shown in Figure 2 reproduced above. Each of the first quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 1. Each of the second quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 2. Each of the third quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 3. Each of the fourth quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 4. Each of the whole of disks 5, 6, 7, and 8 is a disk partition forming logical volume 4. D.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 6,718,436

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.