- Mercedes-Benz USA, LLC v. Daedalus Prime LLCNo claims unpatentablePTAB · Jan 8, 2025 · IPR2023-01343 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–7, 13–15, 17, and 18 were not shown unpatentable because Bose and White, alone or in the asserted combinations, failed to teach claimed workload comparisons or workload monitoring.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are persuaded and find for the reasons given that Petitioner fails to prove by a preponderance of the evidence that White teaches or suggests “receiving a bus workload for a communication bus and a first processing element workload for a first processing element based on an integrated circuit reaching a limit.” Patent Owner’s expert Dr. Brogioli testifies that “[t]he workload is a function of the demands imposed by, e.g., applications running on the system, and may or may not be subject to direct control, whereas the conditions under which that workload is processed are controlled directly.” Brogioli Decl. ¶ 66. We agree with Dr. Brogioli and find that White’s frequency and voltage monitoring and adjustments do not result in the power management logic receiving the bus workload as recited in claim element 4[a]. Id. ¶¶ 64–66. We find the testimony of Mr. Wyatt on this issue unconvincing. Wyatt Decl. ¶ 103. In support of his opinion that “monitoring the operating voltages and frequencies of the logic core 120A and common logic bridge 110 is monitoring the workload of those components,” he states: “It was well understood that operating frequency and voltage of a component reflect the activity and use, or workload, of that component.” Id. However, he does not provide any evidentiary support for this statement. We, therefore, give it little weight. See PTAB Consolidated Trial Practice Guide 40 (Nov. 2019)5 (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”) (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)).” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“response. Paper 9. At the institution stage, therefore, Patent Owner did not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 12–13. In its Response, Patent Owner states that it “uses this definition” in its analysis. PO Resp. 15 (citing Brogioli Decl. ¶ 25). In view of the foregoing, for this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’494 patent and the prior art of record, and is supported by the testimony of Mr. Wyatt. See Wyatt Decl. ¶ 21.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionGranted
“Post-institution, Patent Owner proposes a construction for the term “workload.” PO Resp. 15–16. Patent Owner contends that “[a] person of ordinary skill in the art would understand that in the ’494 patent, the term ‘workload’ means ‘an amount of activity over a quantum or period of time.’” Id. at 15. Dr. Brogioli’s testimony supports this construction, as does Mr. Wyatt’s. Brogioli Decl. ¶¶ 36–38; Wyatt Dep. 34:14–36:9. The ’494 patent also supports this construction. Ex. 1001, 8:20–22, 9:60–63. Petitioner does not dispute this proposed construction in its Reply. For the reasons given, we adopt Patent Owner’s construction for “workload.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Nowhere does Petitioner or its expert point to an explicit disclosure in Bose of making a comparison of the claimed “bus workload and a bus workload threshold.” Instead, Petitioner relies on its expert’s opinion as to what a person of ordinary skill might have known, without any additional supporting evidence. See, e.g., Pet. 26 (“[A person of ordinary skill] would have understood global PMCU compares a workload threshold as exemplified by the predicted power and performance of each power mode and the monitored workload to select and adjust the power mode of a component” (citing Wyatt Decl. ¶¶ 54–55)). This opinion is not supported by the record. The only disclosure of a comparison in Bose that we have been shown is the comparison of PowerTotal to PowerMax in step 303 of Figure 3, which Petitioner does not rely on to meet the “comparison” limitation in the claim. Hearing Tr. 17:16–20. Also without proper support is Petitioner’s assertion that “a [person of ordinary skill] would have understood that in Bose, selecting or adjusting power mode for a component entails comparing a workload threshold, such as predicted power and performance associated with each power mode with real time statistics, such as the monitored workload of a component.” Pet. 26 (citing Wyatt Decl. ¶¶ 55–56). We determine that for the reasons given, Petitioner fails to demonstrate by a preponderance of the evidence that the claimed comparison element 1[g] of claim 1 is taught or suggested by Bose. We find, therefore, that Petitioner has not demonstrated that claim 1 is anticipated by Bose, nor has Petitioner demonstrated that to a person of ordinary skill, claim 1 would have been obvious in light of Bose.” slip op. at 25
Patent outcomesUS 8,898,494 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,898,494 - HTC Corporation / ZTE (USA) et al. v. Cellular Communications Equipment LLCNo claims unpatentablePTAB · Jan 4, 2016 · IPR2014-01135 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 1 and 3–9 were not shown unpatentable because neither Sasuta nor Lawrence disclosed the home network preference limitation explicitly or inherently.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Whether a party is a real party in interest is a “highly fact-dependent question” that is evaluated “on a case-by-case basis.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Some of the common considerations for determining whether a party is a real party in interest include whether the party funds, directs, or controls the petition or proceeding. Id. at 48,760. Here, Patent Owner does not identify any evidence indicating that HTC America funds, directs, controls, or otherwise is involved in this petition or proceeding. Patent Owner’s argument that HTC America and HTC Corporation acted jointly in other cases and that HTC America is named as a real party in interest in other cases does not indicate that HTC America is a real party in interest in this case. Similarly, Patent Owner’s argument that HTC America and HTC Corporation share counsel does not indicate that HTC America funds, directs, controls, or otherwise is involved in this case. The only evidence specifically related to this proceeding is that an employee of HTC America is identified on the power of attorney for HTC Corporation. PO Resp. 12–18; see also, Ex. 2022, 24:20–25:6 (Transcript of conference call with the Board: counsel for Patent Owner “So if we want to talk about evidence specific to these cases, it’s this power of attorney in the 1135 case.”). We are not persuaded that this evidence, by itself, is sufficient to indicate that HTC America is a real party in interest in this case. There is no dispute that the actual signature on the power of attorney is from an employee of HTC Corporation. See PO Resp. 14; Paper 33 (“Reply”) 23. And Petitioner represents that the reference to an HTC America employee on the document was a simple oversight. Reply 23. Patent Owner does not provide evidence to the contrary.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“preamble “is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation marks omitted). Id. A preamble, however, “limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” For example, “dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.” Id. Both parties agree that, although it is part of the preamble, the term “home network” acts as a limitation of claim 1. PO Resp. 25; Paper 42 (“Tr.”), 5–6 (Petitioner’s counsel: “We think that home network is limiting.”), 12–13 (Petitioner’s counsel: “Since the preamble, we agreed, is limiting . . .”). We agree that the preamble limits the scope of the challenged claims. The body of claim 1 refers to “said first network,” which refers to the “first . . . mobile telephone network[]” recited in the preamble. The preamble further defines “said first network is the home network of the mobile communication device.” We are persuaded that this language “indicates a reliance on both the preamble and claim body to define the claimed invention” and is not merely a statement of intended purpose or intended use. Catalina Marketing, 289 F.3d at 808 (citing Bell Comm’s Research, Inc. v. Vitalink Comm’s Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Patent Owner proposes a broadest reasonable interpretation of “home network”—“the network that the mobile communication device is preconfigured to access first.” PO Resp. 25. According to Patent Owner, several examples described in the ’804 patent, including those illustrated by Figures 3, 4a, and 4b, support this interpretation by showing a mobile station that is “preconfigured to access [the] home network first.” Id. at 25–27 (citing Ex. 1001, Figs. 3, 4a, 4b, 3:22–29, 3:61–65). Petitioner proposes a competing interpretation for the term—“the network to which the mobile stations subscribe.” Reply 3. Petitioner argues that there is “a clear and unambiguous definition” of the term in the specification. Id. (quoting Ex. 1001, 1:41–42 (“the ‘home’ network (i.e. the network to which the mobile stations subscribe”)). We agree with Petitioner that the broadest reasonable interpretation of “home network” is “the network to which a mobile station subscribes,” as explicitly defined in the specification. Ex. 1001, 1:40–47. Nothing in the ’804 patent indicates that the patentee intended to modify this definition. In particular, the word “preconfigure” in Patent Owner’s proposed construction is never recited in the ’804 patent. We, therefore, are not persuaded that limiting the term “home network” in such a way is proper.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Nothing in Sasuta’s description requires that in choosing a service provider from the catalog of service providers, a provider must be chosen in any particular order. In fact, Sasuta is silent on whether any particular network, such as a home network, has priority and should be chosen first. The Petition relies, primarily, on Figures 3 and 4, and the corresponding descriptions, for support of anticipation by Sasuta. Pet. 31–32, 49 (citing Ex. 1010, 3:44–4:8, 6:1–10). These portions of Sasuta, however, do not describe a home network or any other type of network that is selected first among those networks listed in the catalog. To the contrary, the language corresponding with Figure 3 describes communication unit 1001 choosing service provider 103 for its telephone interconnect service, without any explanation, despite the fact that service provider 101 also includes that service. The language corresponding with Figure 4, similarly, does not shed any light on whether there is a home network that is always chosen first from the catalog of service providers. The only language relating to how a network is chosen in this portion of Sasuta states that “the communication unit uses this service characteristic information by comparing them against corresponding threshold values for these characteristics . . . [i]n this manner, the communication unit can determine whether a particular service provider should be considered for providing a particular service.” Ex. 1010, 5:5–14. Thus, Sasuta does not disclose explicitly the home network preference limitation. Petitioner also has not met its burden to show that the home network preference limitation is disclosed inherently by Sasuta. “To serve as anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Petitioner acknowledges that its inherency argument was not made until, at the earliest, the Reply brief, and that it did not proffer evidence on the issue. Tr. 14:16–18 (“JUDGE WEINSCHENK: What evidence have you provided us that shows us that [the home network preference limitation is] so well-known that we don’t need it in the reference? MR. THILL: In terms of the record, I don’t know that we made an explicit argument, and that was not part of the testimony of our expert.”); see also Reply 3–4 (asserting that “[a]bsent a [home network] cellular telephone is inoperable” and that it “is inherent in the definition of a working cellular telephone” to have a home network, but providing no citations to supporting evidence for these assertions).” slip op. at 15
Patent outcomesUS 6,377,804 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 6,377,804
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.