• 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
• Microsoft Corporation v. Ipa Technologies Inc.Institution denied
  PTAB · Nov 7, 2019 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution of IPR on claims 1, 13–18, 22, and 33–38 under § 325(d) because the same or substantially the same prior art had been presented to the Office.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In evaluating whether to deny institution on the basis of § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office, the Board considers the following non-exclusive factors: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (4) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the” slip op. at 13

  Discretionary denial
  Patents in suitUS 7,036,128
• 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
• Google LLC v. Ipa Technologies Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00736 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the asserted combinations taught the claimed conversational protocol.

  RulingsInstitution decision

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

    “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 the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’128 patent is unpatentable. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • BurdenDenied

    “event types” as recited in claim 1. See Pet. 12–13. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. Petitioner’s evidence and argument fails to persuasively and adequately explain how the speech acts or performatives as described in Nodine are the events recited in the challenged claims. Although both Finin and Bayardo define and disclose performatives (Ex. 1016, 297; Ex. 1017, 197), Petitioner does not discuss these disclosures or explain sufficiently how the speech acts/performatives in Nodine, Finin, and Bayardo alone or combination teach the “layer of conversational protocol defined by event types and parameter lists associated with one or more events, and wherein the parameter lists further refine the one or more events” limitation of claim 22 and 45. Petitioner asserts that “Nodine in combination with Steiner and Finin discloses or suggests this limitation” of claim 45 (Pet. 49), but Petitioner does not identify adequately any reliance on Steiner for this limitation (id. at 28–33, 49). slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “in the art at the time of the invention of the ’128 patent would have had at least a Bachelor’s degree in computer science, electrical engineering, or a similar discipline, and one to two years of work experience in networked computer systems or a related area. Ex. 1002 ¶ 14; Pet. 4. At this stage of the proceeding, Patent Owner does not dispute Dr. Olsen’s assessment of the level of ordinary skill in the art. Prelim. Resp. 6.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 12–13. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,036,128
• Google LLC v. Ipa Technologies Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00735 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted combinations rendered claim 1 and its dependent claims obvious.

  RulingsInstitution decision

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

    “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. slip op. at 14

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “35 U.S.C. § 325(d) because (1) it relies on similar art that applicant overcame during prosecution of the parent ’115 patent, and (2) it is duplicative of the co-pending petition in IPR2019-00733. Prelim. Resp. 48– 61. Because, for reasons discussed below, we deny the Petition on other grounds, we need not determine whether it also would be appropriate to deny the Petition pursuant to our discretion under § 325(d).” slip op. at 8

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

    “The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 14. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10

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

    “Pet. 25. Petitioner’s arguments offer conclusory statements that equate Nodine’s speech act/performative types to “event types” recited in the challenged claims, and the parameters associated with Nodine’s speech act/performatives with “one or more of the events” recited in the challenged claims. See id. Petitioner argues that Nodine thus discloses the conversational protocols defined by events. Id.; see Ex. 1002 ¶¶ 106–107. In sum, Petitioner maps Nodine’s “speech acts” or “performatives” to the “events” recited in claim 1. We note that Petitioner does not offer a construction for “event” or “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,036,128
• 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
• Triple Plus Ltd. v. Mordechai Ben OldAll claims unpatentable
  PTAB · Aug 16, 2019 · PGR2018-00038 · APJ Bart A Gerstenblith · PGR · Final written decision

  Claim 1 is unpatentable as obvious over the Triple+ NWL, including the obvious substitution of a butterfly valve for its ball valve.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden of proving unpatentability of the challenged claim, and the burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued” slip op. at 2

  • ExcludeMotion to exclude, grantedGranted

    “subject declaration was filed as Patent Owner’s Preliminary Response. Patent Owner’s Preliminary Response states: “Patent Owner, Mordechai Ben Old, hereby submits the following preliminary response in the form of declaration.” Paper 7, 2. To the extent Patent Owner’s Preliminary Response/declaration would be given any weight post-institution, we agree with Petitioner that it would be considered routine discovery and that Patent Owner was required to make himself available for deposition. See Practice Guide, 77 Fed. Reg. at 48,761 (“Routine discovery includes: . . . (2) the cross-examination of the other side[’]s declarants . . . .”). Patent Owner did not do so. Additionally, the record reflects that Patent Owner has continued to fail to participate in this proceeding. In particular, Patent Owner did not respond to our Order specifying “that Patent Owner shall appear . . . on or before May 30, 2019, and show cause as to why adverse judgment should not be issued against Patent Owner for abandonment of the contest pursuant to 37 C.F.R. § 42.73(b)(4).” Paper 14, 3. Accordingly, in light of Patent Owner’s failure to participate in the proceeding by appearing for a deposition by Petitioner or otherwise, we agree that the appropriate remedy is to exclude Patent Owner’s declaration, submitted as its Preliminary Response (Paper 7). Thus, to the extent we would have considered Patent Owner’s declaration at this post-institution stage of the proceeding, we decline to do so.3” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had: “a Bachelor of Science degree in a field of engineering or a closely related discipline, and at least one year of practical academic or industrial experience designing, testing and/or manufacturing fluid control valves.” Pet. 11 (citing Ex. 1003 ¶¶ 28–30). As discussed above, Patent Owner did not file a Response. We reiterate our preliminary finding from the Decision on Institution, that, consistent with the level of ordinary skill in the art reflected by the prior art of record, we adopt the level of ordinary skill in the art proposed by Petitioner based on the present record. See Dec. on Inst. 10; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 14

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

    “one exception that the Triple+ NWL includes a ball valve whereas claim 1 requires a butterfly. See id. at 32–63; see also id. at 31 (“the Triple+ NWL discloses every element of claim 1 except for the choice of quarter turn rotary valve type,” i.e., the claimed butterfly valve). Petitioner asserts that “[t]he ball valve is interchangeable with the claimed ‘butterfly,’ and it would have been obvious to [a person of ordinary skill in the art] to substitute one for the other.” Id. at 35 (citing Ex. 1003 ¶¶ 36–40, 56–57). Petitioner relies upon Dr. Johnson’s testimony in support of this position. See, e.g., id. at 36 (citing Ex. 1003 ¶¶ 36–40). In particular, Petitioner states: a ball valve (like in the Triple+ NWL) is a member of the same family of valves as the butterfly. Except for the shape of the valve member, both are functionally and operationally identical, and both can and were used as shut-off valves for main water lines entering a residence or other structure. Id. (citing Ex. 1003 ¶¶ 36–40). Petitioner asserts that “[t]he Triple+ NWL used a ball valve and was intended for use as a shut-off valve on the main water line.” Id. at 37. Petitioner thus contends that: (1) this use for any quarter turn rotary valve type was well known to one of ordinary skill in the art, id. (citing Ex. 1003 ¶¶ 39–40); (2) “replacing a ball valve with a butterfly valve was a ‘simple design choice and an obvious replacement’” to a person of ordinary skill in the art, id. at 37–38 (quoting Ex. 1003 ¶¶ 56– 57); and (3) “[s]ubstituting one known type of a valve for another— particularly within the same family of valves such as the quarter turn rotary valve family—is the epitome of an obvious design choice” to a person of ordinary skill in the art, id. at 38 (citing KSR, 550 U.S. at 416, 421).7” slip op. at 17

  Patent outcomesUS 9,671,031 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,671,031
• 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.