- Intel Corporation v. Parkervision, Inc.No claims unpatentablePTAB · Jan 21, 2022 · IPR2020-01302 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 3, 4, 7, and 9–11 were not determined unpatentable because the asserted Larson and Larson–Butler grounds did not teach sampling.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Neither party contends that the differences in proposals affect the outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art from the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’474 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include the specifics from option (b) of Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because the parties agree that the claims remaining in the trial require “sampling” and also agree that the prior art asserted in this case does not teach “sampling” (as discussed further below), we need not construe these terms expressly to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803. sampling Although claim 1 does not recite “sampling” expressly, the post- institution briefs make clear that the parties agree that claim 1 and its dependent claims require sampling. In particular, Patent Owner contends, (1) “the ’474 patent pertains to a technique called sampling, which involves the use of a ‘switch’” (PO Resp. 2); (2) “all of the challenged claims are directed to a sampling system and, in particular, an energy sampling system (also known as an energy transfer system)” (id.); and (3) “[t]he challenged claims only cover energy sampling and the use of switches” (id. at 20). In its Reply, although Petitioner disagrees with Patent Owner’s interpretation of the claims as limited to energy sampling (i.e., energy transfer systems) (Pet. Reply 3–7), Petitioner contends that based on its “subsequent analysis of [Patent Owner’s] foundational ’551 patent—one of the multiple patents which the ’474 patent incorporates by reference—[Petitioner] now agrees with [Patent Owner] that the claims cover only systems that down-convert by sampling.” Pet. Reply 2. Thus, at a minimum, the parties agree that the claims at issue in this proceeding require sampling.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19
Patent outcomesUS 7,539,474 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,539,474 - Unified Patents Inc. v. Divx, LLCNo claims unpatentablePTAB · Feb 8, 2021 · IPR2019-01379 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1 and 17 were not shown unpatentable over Kim and Huang because Petitioner did not establish an adequate motivation to combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and two to three years of work experience in image and/or video processing.” Pet. 15–16 (citing Ex. 1005 ¶ 42). Patent Owner neither comments on that proposal, nor proposes an alternative level of ordinary skill in the art. See generally PO Resp. 5 The burden of showing something by a preponderance of the evidence requires the trier of fact to believe that the existence of a fact is more probable than its nonexistence. Concrete Pipe & Prods. of Cal., Inc. v. Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993). Because Petitioner’s proposed definition is consistent with the cited prior art, we apply it for purposes of this Decision. In our view, moreover, the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that prior art itself can reflect an appropriate level of skill in the art at the time of the invention).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“00052, which also involves the ’651 patent, the Board construed the term “level of detail” as “level of change of visual elements across adjacent pixels,” and that the same construction should apply here. PO Resp. 58–60 (citing IPR2020-00052, Paper 42). Petitioner does not propose a construction for that term, but argues that “the combined Kim and Huang teachings would determine the level of detail for adjacent pixels under Patent Owner’s ‘adjacent pixels’ construction.” Pet. Reply 5–11. Because our ultimate decision does not rest on the construction of that claim term, we do not construe the term in this proceeding. 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.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). As part of our obviousness analysis, we address additional claim construction arguments regarding the “determining” limitation. See infra § III.E.1.a.” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“We agree with Patent Owner that these exhibits represent expressions of opinion of unnamed users that Patent Owner relies on to show cotemporaneous praise existed. These exhibits are cited in the Hanson Declaration only as evidence of industry praise, i.e., to support testimony based on his personal knowledge. See Ex. 2045 ¶ 51. And although Mr. Hanson quotes statements from these exhibits in his declaration, their relevance lies in that they allegedly reflect praise for DivX’s deblocking method. For example, the statement by user “temperance”—that Petitioner objects to as being relied on for the truth of the matter asserted (Paper 46, 1– 2)—is offered to show that “[t]here was plenty of healthy debate on the boards about the quality of the new version of the codec,” and “many commenters specifically praised the deblocking.” See Ex. 2045 ¶ 46. Moreover, it is clear that these are merely opinions of online users, not factual assertions. See id. (quoting temperance: “IMHO, DivX 6 deblocking is better (for metrics and eyes) than xvid’s”) (emphasis added); see Sonos, slip op. at 7 (separating admissible expressions of opinions that constitute praise from bare factual assertions). Other statements that Petitioner objects to (Paper 46, 2) are similarly opinions of online users, not factual assertions that Patent Owner relies upon for the truth of the matter stated therein. We are therefore not persuaded that Exhibits 2018–2030 and 2032–2033 contain inadmissible hearsay.11 See Cisco Sys., Paper 41 at 50–51 (allowing exhibits cited only as evidence of industry praise); Quanergy Sys., Inc. v. Velodyne Lidar, Inc., IPR2018-00255, 2020 WL 2595492, at *2 (PTAB May 21, 2020) (citing Asetek Danmark A/S v. CMI USA, Inc., 13-CV-00457-JST, 2014 WL 12644295, at *2 (N.D. Cal. Nov. 19, 2014)).” slip op. at 55
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that the Petition does not detail Petitioner’s newly proposed interpretation of this claim limitation. See Pet. 29–36 (arguing only that a person of ordinary skill in the art would have recognized that Kim determines the level of detail for a region comprising an 8 x 8 block of pixels of a reconstructed video frame). On the contrary, the Petition argued: [T]he prior art cited in this Petition teaches and suggests exactly what is claimed and what allegedly distinguished the claims from Kim II: determining the level of detail of a region that includes pixels from multiple rows and multiple columns that encompass pixels immediately adjacent to at least two sides of the block boundary, and selecting a filter to apply.” Pet. 18 (emphasis added).6 Under these circumstances, we consider Petitioner’s new argument waived. See 37 C.F.R. § 42.23(b); see also Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ 6 Petitioner refers to a different prior art reference, U.S. Patent No. 6,983,079, cited by the examiner during the prosecution of the ’651 patent, as Kim II. the ‘evidence that supports the grounds for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)).” slip op. at 23
Patent outcomesUS 8,139,651 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,139,651 - Intel Corporation v. VLSI Technology LLCNo claims unpatentablePTAB · Feb 12, 2020 · IPR2018-01040 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–4, 10, 12, and 13 were not shown unpatentable because the prior art did not teach or support adding the separately claimed third voltage reference.
RulingsFinal written decision- Adverse judgmentDenied
“We agree with Patent Owner that we should not address the patentability of claim 9 in this Decision. See PO Resp. 63–64. Rather, following Federal Circuit case law, we treat claim 9 as if it never existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). Consistent with other Board decisions in which some, but not all, challenged claims have been disclaimed after institution, we address the patentability only of the remaining claims. See LG Elecs., Inc. v. Wi-LAN Inc., IPR2018-00673, Paper 48 at 3 (PTAB Sept. 5, 2019) (Final Written Decision); Yamaha Golf Car, Paper 63 at 3; Baker Hughes, Paper 74 at 6, 11–12. We also agree with Patent Owner that we should not enter adverse judgment as to claim 9. See PO Sur-reply 26–27. Arthrex, the case relied on by Petitioner, does not mandate a different outcome. By its terms, 37 C.F.R. § 42.73(b)(2) permits disclaimer to be construed as a request for adverse action when there are “no remaining claim[s] in the trial.” That was the situation in Arthrex. 880 F.3d at 1347 (“Arthrex, Inc. disclaimed all claims that were the subject of the petition.”). Here, in contrast, several claims remain in the trial. Furthermore, Arthrex does not support Petitioner’s patent are disclaimed.” Pet. Reply 27. The Arthrex language quoted by Petitioner compares disclaimer of an “entire patent” under § 42.73(b)(1) with disclaimer of “some of the claims” of the patent (i.e., fewer than all claims in the patent but all challenged claims so there are no remaining claims in the trial) under § 42.73(b)(2). 880 F.3d at 1350. Neither situation is present here when only one claim (claim 9) has been disclaimed and several challenged claims (claims 1–4, 10, 12, and 13) remain in the trial.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention of the ’207 patent “would have had at least a[n] M.S. degree in electrical engineering and would have at least two years of experience with circuit design.” Pet. 17 (citing Ex. 1002 ¶ 32). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the asserted prior art and adopted Petitioner’s position, which Patent Owner did not oppose in the Preliminary Response. Inst. Dec. 14 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Neither Patent Owner, in its Response, nor Dr. Ipek, in his declaration, proposes a level of ordinary skill in the art. Dr. Ipek, however, states that “[f]or purposes of the subject IPR proceedings, I have been asked to employ [Petitioner’s proposed] standard of a person of ordinary skill, but I do not offer the opinion that it is the correct standard.” Ex. 2011 ¶ 19. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary determination is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one least an M.S. degree in electrical engineering and at least two years of experience with circuit design. See Inst. Dec. 14; Pet. 17.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the complete record developed during this inter partes review, we again conclude that the “third voltage reference” must be separate from the “second voltage reference.” We begin with the language of claim 1, which recites a first voltage reference, a second voltage reference, and a third voltage reference as separate elements.7 “Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citation omitted). The terms “first,” “second,” and “third” are terms used to distinguish separate elements of a claim. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1373 (Fed. Cir. 2005); see also 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1373 (Fed. Cir. 2005) (“The use of the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish between repeated instances of an element or limitation.”). Although Gillette and 3M address whether such terms impose a numerical or serial limitation, they nevertheless support Patent Owner’s position that enumerated elements typically are not construed to be the same element. See Sur-reply 11–12. Other cases cited by Patent Owner also support its position. See id. at 12 (citing Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935–39 (Fed. Cir. 2013) (construing “first” and “second” disks as separate and discrete disks); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1405) (Fed. Cir. 1996)” slip op. at 21
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“ordinary skill in the art would have sought to reduce power consumption in Takahashi to address the well-known problem of current leakage, and that providing a separate voltage reference for transistor 223 in Takahashi’s Figure 15 (i.e., a third voltage reference) would have achieved that goal. Pet. 34–35 (citing Ex. 1002 ¶ 88). But the only evidence Petitioner relies on for adding the proposed third voltage reference is the testimony of Dr. Stojanovic. Id. (citing Ex. 1002 ¶ 88). Without any additional supporting evidence, Dr. Stojanovic’s testimony is insufficient to supply the missing “third voltage reference,” which is a key limitation of claim 1. See K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014); Patent Trial and Appeal Board Consolidated Trial Practice Guide 36 (Nov. 2019)9 (“[I]n an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. . . . In other words, expert testimony may explain ‘patents and publications,’ but is not a substitute for disclosure in a prior art reference itself.” (citing K/S Himpp, 751 F.3d at 1365)); see also Inst. Dec. 30–31 (reaching the same conclusion on the preliminary record). Furthermore, we agree with Patent Owner that Petitioner’s proposed” slip op. at 37
Patent outcomesUS 7,706,207 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,706,207 - Microsoft Corporation v. Bradium Technologies LLCNo claims unpatentablePTAB · Dec 21, 2016 · IPR2015-01432 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1 and 2 were not shown unpatentable because Microsoft did not establish that a skilled artisan would have been motivated to combine Rutledge, Ligtenberg, and Cooper.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Person of Ordinary Skill in the Art Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination—obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Unigene Labs v. Apotex, Inc, 655 F.3d 1352, 1360 (Fed. Cir 2011). Petitioner contends that, in addition to his educational background, a person of ordinary skill in the art would have at least five years of experience in a technical field related to geographic inform systems (GIS). Pet. 11–12. The Patent Owner Response does not dispute explicitly Petitioner’s description of a person of ordinary skill in the art. Nevertheless, Petitioner contends there is a dispute as to the level of ordinary skill in the art because Patent Owner’s expert, Dr. Chandrajit Bajaj, ignores the teachings in the ’794 Patent concerning the relevance of geographic information systems (GIS) and that, unlike Petitioner’s expert, Dr. William Michalson, there is no suggestion on the record that Dr. Bajaj has any experience in GIS systems. Pet. Reply. 2; Hr’g. Tr. 6–8. Petitioner undermines its position that qualifying as a one of ordinary skill requires five years of experience in GIS by arguing the even a person without GIS experience would consider GIS highly relevant to the problem presented in the ’794 Patent and would not ignore this issue. Pet. Reply 2. Thus, although Petitioner attacks the credibility of Dr. Bajaj based on his testimony concerning the applicability of the references, we do not discern any genuine dispute as to the level of ordinary skill in the art.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“in Rutledge or Ligtenberg and that the Petition does not assert that Rutledge or Ligtenberg discloses a priority system. Hr’g Tr. 48. Although Petitioner contends that Rutledge and Ligtenberg suggest a priority system (id.), Petitioner argues “[b]ut the reason we added Cooper is because there was nothing specific as to how you would actually do that or how you could possibly do that” (id. at 19). Thus, Petitioner appears to acknowledge hindsight reasoning in its analysis and does not answer our question as to why a person of ordinary skill would have been motivated to apply the priority techniques in Cooper to Rutledge and Ligtenberg. Patent Owner argues that Petitioner frames its argument at a level of generality that obscures the incompatibility of Cooper with Rutledge and Ligtenberg. PO Resp. 31. We agree with Patent Owner that the level of abstraction argued by Petitioner is insufficient to overcome the incompatibility issues identified by Patent Owner. Id. at 31–32. The Petition does not explain why or how a person of ordinary skill would have applied the importance values Cooper uses to determine priority in a 3D environment to Rutledge and Ligtenberg’s 2D environment. Id. at 32–34. For the reasons discussed above, Petitioner has not demonstrated by a preponderance of the evidence that a person of ordinary skill would have been motivated to combine the teachings of Rutledge and Ligtenberg with the priority teaching of Cooper.” slip op. at 22
- ExcludeMotion to exclude, deniedDenied
“Notwithstanding Dr. Michalson’s incorporation of his earlier declaration by reference, Petitioner contends that it was improper for Patent Owner to cross-examine Dr. Michalson on the subject matter of his first declaration, because Patent Owner waived the opportunity to conduct such cross-examination when it filed its Patent Owner Response without taking any testimony from Dr. Michalson and that Patent Owner’s cross-examination and Motion for Observations on Cross-Examination (Paper 40) should have been limited only to matters in Dr. Michalson’s second declaration submitted in support of Petitioner’s Reply. Mot. to Exclude. 2. This issue is moot because this Final Written Decision does not cite to any of the Subject Exhibits. For that reason, we do not address the matter on the merits and dismiss Petitioner’s Motion to Exclude.” slip op. at 24
Patent outcomesUS 7,139,794 not shown unpatentable§ 103 obviousnessPatents in suitUS 7,139,794 - QSC Audio Products, LLC v. Crest Audio, Inc.No claims unpatentablePTAB · Apr 29, 2015 · IPR2014-00129 · APJ Glenn J Perry · IPR · Final written decision
Claims 5 and 13 were not shown unpatentable under § 103 because the petitioner did not establish a reason to modify the prior art to calculate impedance or power from detected current and voltage.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“meaning of the patent law. The touchstone of whether a particular document is a publication under the patent law is whether it was available to those of ordinary skill in the art to which it pertains.” slip op. at 12
- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s arguments conflate two separate issues — (1) whether Gittleman is authentic, and (2) whether it constitutes a publication under the patent law. Gittleman includes the AES logo. The cover page further identifies a specific address for AES for the purpose of obtaining additional preprints, and states that reproduction of the article is prohibited without permission from the Audio Engineering Society Journal. Ex. 1009. There is no dispute that this document is a preprint of a paper intended for presentation at their respective AES conventions. Therefore, having considered and weighed the distinctive characteristics of the article and the circumstances surrounding its retrieval from the AES E-Library, we find that Gittleman is what it appears to be — a paper categorized by the Audio Engineering Society as a “preprint.” Petitioner has met its authentication burden under Fed. R. Evid. 901 and 902. Whether the self-authenticated “preprint” qualifies as a “publication” under the patent law is a separate matter.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had the following education and experience: Master of Science degree in Electrical Engineering and at least some practical experience with the design and testing of electronic amplifiers. Ex. 1003 ¶ 15. Patent Owner’s declarant agrees generally with the above assertion, asserting that a person of ordinary skill in the art would have had one year of experience with the design and testing of electronic amplifiers. Ex. 2001 ¶ 27. The disagreement appears to be that the Petitioner asserts that a person of ordinary skill would be aware of amplifier designs useful at frequencies ranging from audio frequencies to radio frequencies (RF) (Ex. 1003 ¶ 16), while Patent Owner asserts that a person of ordinary skill would not have practical experience with amplifier designs useful at frequencies ranging from audio frequencies to radio frequencies (RF) (Ex. 2001 ¶¶ 28–30). We credit Petitioner’s declarant, and agree that a person of ordinary skill would be at least aware of amplifier designs useful at radio frequencies (RF) based at least on that person’s educational background. Ex. 1003 ¶ 16. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Porambo reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to audio amplifiers and the incorporation of DSPs in audio amplifiers. See Ex. 1005, Abstract (describing the features of the audio amplifiers and DSPs at issue in Porambo).” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“As to his audio amplifier experience, Dr. Ellis completed a Master of Science degree in Electrical Engineering with numerous years of experience as a research assistant researching audio signal processing, sound synthesis and analysis. Ex. 1004, 1. Dr. Ellis stated during his deposition that, although he is an expert in digital signal processing (Ex. 2002, 154:15–16), he has experience in the design of amplifiers from his undergraduate education. Id. at 124:7–20. Dr. Ellis designed and tested microphone amplifiers as a post-doctoral student at the Computer Science Institute at Berkeley, id. at 111:13–113:4, and is currently designing amplifiers that can drive speakers with the goal of incorporating these into his professional work. Id. at 120:4–121:12. We also note, as discussed above, the field of the ’542 patent invention is related to audio amplifiers generally and the incorporation of DSPs. We find that although Dr. Ellis is less qualified than Mr. Cordell in the area of amplifier design, he is qualified sufficiently to testify about audio amplifiers as they relate to DSPs. As to his alleged bias, Patent Owner points to Dr. Ellis’s testimony that “DSP revolution” has occurred, where DSP solutions were preferred over analog solutions. PO Resp. 20–23. We do not agree with Patent Owner that this indicates that he is biased toward believing that “any DSP application that replaces an analog application is obvious.” See PO Resp. 23. As to his alleged use of the wrong standard for obviousness, Patent Owner argues that Dr. Ellis did not evaluate the prior art from the perspective of a person having ordinary skill in the art at the time of invention because apparently he did not use the words “at the time of invention” when discussing the standard in his declaration. PO Resp. 23–24. We are not persuaded by this argument. Patent Owner also argues that Dr. Ellis must himself be a person of ordinary skill in the art. PO Resp. 24. Patent Owner’s arguments are unpersuasive because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Ellis is qualified in the pertinent art.” slip op. at 15
Patent outcomesUS 5,652,542 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 5,652,542
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.