• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 30, 2022 · IPR2022-00359 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki does not teach or suggest their transmission and cellular-phone limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Patent Owner argues that the preambles should be limiting because they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function” slip op. at 10

  Patent outcomesUS 7,933,431 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,933,431
• Apple, Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., And Google LLC v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 30, 2022 · IPR2022-00091 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki did not teach or suggest their cellular phone or transceiver limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Patent Owner argues that the preambles should be limiting because they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) does not applyDecided for petitioner

    “b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner construction§112(f) appliesDecided for petitioner

    “c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function” slip op. at 10

  Patent outcomesUS 7,933,431 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,933,431
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 30, 2022 · IPR2021-00920 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki does not teach or suggest their limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function 10 In related IPR2021-00917 the petitioner there offered a slightly different construction. See IPR2021-00917, Paper 31, 11–12. The parties do not address the slight differences and we determine that the outcome here is not construction dependent. limitation under §112 ¶ 6. Pet. 10. According to Petitioner, the limitation’s function is “controlling a function of the apparatus using information about the object’s location or movement.” Id. Petitioner argues that the corresponding structure “is a processor programmed to perform the specific algorithms that accomplish this function” which “includes at least [the] Fig. 9 disclosure.” Id. at 10–11. “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. However, as discussed above, we determine that “said apparatus” refers to the handheld computer apparatus in the preamble. Thus, we accept Petitioner’s construction with the added requirement that the general purpose computer be a handheld computer apparatus. e) Means for Transmitting Information Petitioner asserts that claim 11’s limitation of “means for transmitting information” is a means-plus-function limitation under §112 ¶ 6. Pet. 11. Petitioner argues that the ’431 patent teaches the structure for performing the limitation’s function of “transmitting information” is a “wireless cellular transceiver” and thus the corresponding structure required by the claim “includes at least a wireless cellular transceiver.” Id. at 11–12 (citing Ex. 1001, 12:59–13:3). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.11” slip op. at 10

  Patent outcomesUS 7,933,431 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,933,431
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 28, 2022 · IPR2022-00360 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using ring or other targets.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “the light source is used is not a sufficient reason for us to read a limitation into the claims from the Specification. If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)); see also Reply 19. However, this is not the case here. Patent Owner does not identify anywhere in the Specification where “light source” or “plurality of light emitting diodes” are defined as “the light source illuminates the gesture by having two or more (i.e., a plurality) LEDs of the light source emit light at the same time.” For these reasons we decline to adopt Patent Owner’s claim construction. We determine that the added limitation in claims 3, 15, and 23 should be read according to its plain and ordinary meaning. In other words, “the light source includes a plurality of light emitting diodes,” simply means exactly what it says “the light source includes a plurality of light emitting diodes.”” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableMixed

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21

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

    “Petitioner argues that Numazaki ’863 teaches using a plurality of light emitting diodes to illuminate a hand gesture and to control a computer based on the gesture. Pet. 37. Petitioner also identifies a number of reasons to modify Numazaki’s light source to use Numazaki’s ’863’s plurality of light emitting diodes as the light sources are used for similar purposes. Id. at 38– 39. Patent Owner does not contest Petitioner’s positions in the Petition, other than to argue that the combination does not teach the claim limitation under Patent Owner’s construction. PO Resp. 20–22. Patent Owner further admits that Numazaki ’863 teaches a plurality of light emitting diodes used to illuminate an object. Id. at 21 (citing Ex. 1005, 16:36–57, Fig. 4). As we previously rejected Patent Owner’s attempt to read limitations from the Specification into the claims, Patent Owner’s arguments here do not apply to the requirements of the claims. We have reviewed Petitioner’s assertions with respect to these claims and the supporting evidence, and determine that Petitioner has established by a preponderance of the evidence that claims 3, 15, and 23 are unpatentable.” slip op. at 24

  Patent outcomesUS 8,553,079 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,553,079
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 28, 2022 · IPR2022-00090 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using targets.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “The mere fact that the Specification provides an example as to how the light source is used is not a sufficient reason for us to read a limitation into the claims from the Specification. If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)); see also Reply 19. However, this is not the case here. Patent Owner does not identify anywhere in the Specification where “light source” or “plurality of light emitting diodes” are defined as “the light source illuminates the gesture by having two or more (i.e., a plurality) LEDs of the light source emit light at the same time.” For these reasons we decline to adopt Patent Owner’s claim construction. We determine that the added limitation in claims 3, 15, and 23 should be read according to its plain and ordinary meaning. In other words, “the light source includes a plurality of light emitting diodes,” simply means exactly what it says “the light source includes a plurality of light emitting diodes.”” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21

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

    “Petitioner argues that Numazaki ’863 teaches using a plurality of light emitting diodes to illuminate a hand gesture and to control a computer based on the gesture. Pet. 37. Petitioner also identifies a number of reasons to modify Numazaki’s light source to use Numazaki’s ’863’s plurality of light emitting diodes as the light sources are used for similar purposes. Id. at 38– 39. Patent Owner does not contest Petitioner’s positions in the Petition, other than to argue that the combination does not teach the claim limitation under Patent Owner’s construction. PO Resp. 20–22. Patent Owner further admits that Numazaki ’863 teaches a plurality of light emitting diodes used to illuminate an object. Id. at 21 (citing Ex. 1005, 16:36–57, Fig. 4). As we previously rejected Patent Owner’s attempt to read limitations from the Specification into the claims, Patent Owner’s arguments here do not apply to the requirements of the claims. We have reviewed Petitioner’s assertions with respect to these claims and the supporting evidence, and determine that Petitioner has established by a preponderance of the evidence that claims 3, 15, and 23 are unpatentable.” slip op. at 24

  Patent outcomesUS 8,553,079 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,553,079
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 28, 2022 · IPR2021-00922 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using ring or other targets.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Claim construction starts with an analysis of the claim language itself. Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) (“[T]he claims define the invention.”). Claim 1 includes “providing a light source adapted to direct illumination through a work volume above the light source,” a “camera being fixed relative to the light source,” and “determining . . . the gesture performed in the work volume and illuminated by the light source.” Ex. 1001, 13:3–9. Claim 3 adds that “the light source includes a plurality of light emitting diodes.” Id. at 13:12–13. Reading claims 1 and 3 it can be seen that Patent Owner’s construction is not apparent or implied from the claim language. Neither claim requires, for example, that the gesture be illuminated by 100% of the light source, or by at least two LEDs of the light source. Claim 1 merely states that the gesture be “illuminated by the light source.” The amount of illumination is not specified.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21

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

    “The testimony of Petitioner’s declarant cannot overcome the strong “disparagement” that Petitioner admits Numazaki makes against the use of rings or other added targets. This is not a case where Numazaki merely expresses a general preference for an alternative invention, rather Numazaki clearly criticizes, discredits, and discourages the use of rings and other targets. In Petitioner’s own words, “Numazaki[’s] . . . teaching[s] . . . can obviate the need for these targets.” Tr. 28. Neither Petitioner nor Petitioner’s declarant address why one of ordinary skill in the art would have modified Numazaki to use a ring, in view of Petitioner’s admission that “Numazaki[’s] . . . teaching[s] . . . can obviate the need for these targets.” Id. Petitioner also fails to explain how the teachings of Numazaki related to specialized rings supports it conclusion related to a “small [generic] ring,” similar to what people routinely wear. Pet. 23–24. Numazaki discusses rings in specialized colors, as well as “color markers,” and “light emitting elements.” Ex. 1004, 3:7–9, 26–31. Neither Petitioner nor Petitioner’s declarant explain the logical steps between Numazaki’s disclosure and a “small [generic] ring” similar to what people routinely wear, or why one of ordinary skill in the art would have considered them to be the same or similar. For these reasons, we determine that Petitioner has not shown that” slip op. at 22

  Patent outcomesUS 8,553,079 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,553,079
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision

  Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10

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

    “claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13

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

    “As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01037 · APJ John R Kenny · IPR · Final written decision

  Claims 1, 2, 5, 6, 8–15, 18, 19, 21–29, and 34 are unpatentable as obvious over Field and Anderson; claims 3, 4, 7, 16, 17, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “regarding the level of ordinary skill in the art, and Petitioner does not address our preliminary finding in its Reply. Accordingly, we see no reason to disturb that finding, and, therefore, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Accordingly, we find that the record does not support construing” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “away and (2) whether one of ordinary skill in the art would have been motivated to not transmit an inventory with multiple signatures due to a concern with backup efficiency. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 81

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

    “144, 202; Pet. Reply 20–21; Ex. 1024 ¶¶ 59–62. Accordingly, we determine that Petitioner has not proven that claims 3 and 16 would have been obvious over Field and Anderson. Ex. 2008 ¶¶ 129–130.” slip op. at 101

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Netflix, Inc. / Hulu, LLC v. Divx, LLCSome claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00648 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 16, 17, and 19 are unpatentable over Pyle and Marusi; claims 1–6, 8–10, 13, and 14 were not shown unpatentable under the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing 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)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 8–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 10

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

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’515 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “[t]he plain language of the claim clearly indicates only a single [list] is used to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 12–13 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’515 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’515 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[e], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[d] and discussed above. See PO Resp. 1–2; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 15

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

    “motivated to combine these teachings for several reasons. Pet. 21. First, Petitioner contends “the combination is the use of a known technique to improve similar devices because using the capabilities of a client device to choose appropriately formatted content was a well-known technique.” Id. Petitioner asserts that “implementing Marusi’s techniques for organizing multiple representations and choosing among them based upon a client device’s capabilities would predictably function in Pyle’s system, which similarly seeks to target video content based on particular client device types and parameters.” Id. (citing Ex. 1004, 10:57–11:10; Ex. 1003 ¶ 147). Second, Petitioner argues that “detecting a client device’s capabilities based upon client device identifiers was a common and known solution to the problem of supplying information in a format usable by the client device.” Pet. 21. Petitioner contends that one of ordinary skill in the art “would have found it obvious to combine Marusi’s teachings with Pyle because it is one solution, from a finite number of known, and predictable solutions.” Id. (citing Ex. 1003 ¶ 148). Third, with respect to Marusi’s databases, Petitioner contends “[t]he combination of Marusi’s databases to manage the data in Pyle’s system uses a known technique to improve similar systems.” Pet. 21. In particular, Petitioner asserts that one of ordinary skill “would have been motivated to combine Marusi’s database teachings with Pyle because Pyle teaches storing the same content in multiple, different representations.” Id. at 21–22 (citing Ex. 1004, 9:64–10:21). Further, Petitioner argues that “[u]sing a database to store and manage multiple representations of the same data, or even to simply store voluminous data for retrieval, was an extremely well-known and common application of databases.” Id. at 22 (citing Ex. 1003 ¶ 149). Additionally, Dr. Reader opines that one of ordinary skill in the art “would have understood that the teachings of Pyle and Marusi were complementary, and therefore would have been motivated to combine Pyle with Marusi to enhance the efficiency of generating, storing, and delivering multimedia content tailored to the capabilities of particular playback devices.” Ex. 1003 ¶ 150.” slip op. at 27

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

    “Patent Owner that Petitioner and Dr. Reader fail to explain why one of ordinary skill in the art would have understood that Pyle generates a top level index file by placing a manifest file in memory for transmission to a client device. Pet. 35; see Ex. 1003 ¶ 184. “Opinions expressed without disclosing the underlying facts or data may be given little or no weight.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 40–41, available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Here, there is no explanation or reason given for Petitioner’s assertion or Dr. Reader’s testimony and the connection, if any, is not otherwise apparent. Further, aside from Dr. Reader’s unexplained position, Petitioner has not pointed us to any evidence of record supporting the argument that one of ordinary skill in the art would have understood that placement of a file in memory for transmission teaches generating the file as recited in limitation 1[f]. Accordingly, without any explanation whatsoever, the record is without a sufficiently supported basis upon which to make that finding, resulting in a failure of proof by Petitioner with respect to claim 1.11 10 We also note that Petitioner’s Reply does not seek to add a new argument for our consideration; rather, Petitioner’s Reply asserts, albeit incorrectly, that the argument was raised in the Petition. See Pet. Reply 15. 11 Although Petitioner’s Reply sets forth several arguments in response to other arguments raised in Patent Owner’s Response, those additional arguments do not address to this aspect of limitation 1[f]. See, e.g., Pet. c. Dependent Claims 4, 5, 8–10, and 14 Petitioner contends that the combination of Pyle and Marusi would have rendered the subject matter of claims 4, 5, 8–10, and 14 obvious to one of ordinary skill in the art. Pet. 36–41. Claims 4, 5, 8–10, and 14 depend from claim 1 and, therefore, include limitation 1[f], as discussed above. Accordingly, for the same reasons discussed with respect to claim 1, Petitioner’s analysis of these claims suffers from the same deficiency.” slip op. at 34

  Patent outcomesUS 9,998,515 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,998,515
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Jan 12, 2021 · IPR2019-01195 · APJ Minn Chung · IPR · Final written decision

  Claims 13 and 14 are unpatentable as anticipated by Kim; claims 17, 18, and 20 were not shown unpatentable over Kim and Lee because the proposed combination was inadequately explained.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “’026 patent would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Pet. 16 (citing Ex. 1102 ¶ 49). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, preliminarily adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Inst. Dec. 15. Neither Patent Owner, in its Response, nor Dr. Annavaram, in his declaration, proposes a level of ordinary skill in the art. Instead, Patent Owner states that “Patent Owner applies Petitioner’s stated skill level for this response” (PO Resp. 26), and Dr. Annavaram similarly states that “[f]or the purpose of this declaration, I adopt Dr. Harris’ definition of a [person of ordinary skill in the art]” (Ex. 2009 ¶ 24). Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Based on the complete record, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Inst. Dec. 15; see Pet. 16 (citing Ex. 1102 ¶ 49).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “To the extent Patent Owner argues that these particularized selection clauses recited in different claims must have the same or similar meaning because they all use the word “selecting” (see PO Resp. 28–29), we disagree with Patent Owner. See IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray. Claim language must be construed in the claim in which it appears.” (emphasis added)). The selection clauses recited in these claims are plainly different on the face of the claims when considering the material differences in the claim language set forth above. According the same meaning to the limitations that recite “select . . . based on” indicators, “select . . . when” certain conditions are met, and “select . . . out of a group” of values would be improper because it would blur the material differences in the claim language recited expressly in the claims. Instead, we interpret the selection clauses recited in the challenged claims “in the context of the particular claim in which the disputed term appears” and “in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. In other words, we do not construe the single word “selecting” in isolation, but, rather, interpret the full selection clauses recited in the challenged claims in the context of the entire patent. Claim 13 recites “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator.” In our view, the plain meaning of this limitation is clear on the face of the claim—a value of a control signal is selected based on two indicators, the mode indicator and the leakage indicator.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Tr. 47:7–23. Because the output of Kim’s NAND gates will be different depending on the value of Kim’s memory cells C1–CN allowed to “pass through,” we agree with Petitioner that the value of Kim’s memory cells C1– CN (the claimed “leakage indicator”) “plays a role” in deciding what the output of Kim’s NAND gates (the claimed “value of the control signal”) will be. Moreover, Patent Owner acknowledged that the output of Kim’s NAND gate is determined based on the inputs to the NAND gates (i.e., the sleep signal input and the memory cell signal input). JUDGE CHUNG: But, knowing a little bit about how a NAND gate works, isn’t it the case that the input to the NAND gates, G1 through GN, with the input of the sleep signal and the C1 through CN signal, isn’t it the case that input to the NAND gate determines what the output is? MS. ZHONG: Okay. So any logic gate, the output will depend on the input. That’s for sure. Tr. 44:18–25; but see id. at 45:3–10 (stating that even if the “output is in control of the input, . . . that does not mean the selection is based on that input”). Thus, we find that Kim’s NAND gate (the claimed “control circuit”) operates to determine its output (the claimed “value of the control signal”) based on its input of the sleep signal (the claimed “mode indicator”) and the memory cell value input (the claimed “leakage indicator”). As discussed in Section III.B, the Specification indicates that “select[ing] the value of the control signal based on the mode indicator and on the leakage indicator” recited in claim 13 is synonymous to determining the value based on the recited indicators. See Ex. 1101, 4:4–11. Thus, the evidence of record shows that Kim teaches “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator,” as recited in claim 13.” slip op. at 44

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

    “We are not persuaded by Petitioner’s argument and evidence. First, although Petitioner proposes “[s]ubstituting Lee’s inputs of leakage current and temperature for generating a power gate control signal” (i.e., Lee’s “control signal (BIAS)”) for “Kim’s inputs of leakage current and other ‘stimuli’ for generating a power gate control signal” (Pet. 64 (citing Ex. 1102 ¶ 115)), neither Petitioner nor Dr. Harris explains adequately how they are proposing to “substitute” Kim’s control signal with Lee’s “control signal (BIAS).” For example, Figure A reproduced above does not show how Petitioner or Dr. Harris proposes to use Lee’s “control signal (BIAS)” in the proposed combination. Petitioner asserts that “[a]lthough Lee’s control signal is analog and Kim’s control signal is digital, it was well known to apply teachings in an analog domain to a digital domain, and conversions between analog and digital domains were easy to implement.” Pet. 66 (emphases added) (citing Ex. 1102 ¶ 121; Ex. 1115). Dr. Harris similarly states that Figures A and B show examples of obvious ways to use in Kim’s system Lee’s teaching of setting conductance of the array based on temperature. A POSA would have found both of these ways obvious. That Lee uses an analog control signal and Kim uses a digital control signal would have presented no obstacle to a POSA. . . . That is, converting analog circuit elements and signals to digital was well known long before the ’026 patent. Ex. 1102 ¶ 121 (emphases added) (citing (Ex. 1115) (“Analog-to-digital converters (ADC’s) are ubiquitous, critical components of software radio and other signal processing systems.”)). But Dr. Harris does not explain adequately how “to use in Kim’s system” the digitized BIAS signal of Lee. See id. The only additional input signal shown in Figure A compared to Figure 4 of Kim is the temperature line that has the value of 0 when the temperature is cold and the value of 1 when the temperature is hot. See Ex. 1102 ¶ 116 (Fig. A). There is no explanation of how the modified teaching of the BIAS signal of Lee (i.e., modified or converted to a digital signal) would have worked in the proposed combination of Figure A.” slip op. at 69

  Patent outcomesUS 8,081,026 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,081,026

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.