• LG Display Co., Ltd. / LG Electronics, Inc. v. Innovative Display Technologies LLCAll claims unpatentable
  PTAB · Dec 18, 2015 · IPR2014-01096 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 15 and 27 are unpatentable as obvious over Pristash and over Kobayashi in view of Pristash.

  RulingsFinal written decision

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

    “persuaded us that applying the Phillips standard would affect our determination of this case. In fact, throughout this proceeding, Patent Owner has taken no position on claim construction. Prelim. Resp. 4; PO Resp. 6. The only claim term the Board construed in its Institution Decision is the term “deformities,” appearing in both challenged claims. Paper 11, 4. It was Petitioner who asserted that the ʼ370 patent “expressly defines” the term to mean “any change in the shape or geometry of the panel surface and/or coating or surface treatment that causes a portion of light to be emitted.” Pet. 7 (citing Ex. 1001, col. 4, ll. 36–40). Patent Owner did not oppose that construction. Hearing Tr. 45:20–25. In fact, Patent Owner pointed out that the construction of “deformities” proffered by Petitioner was agreed to and adopted by the district court. PO Resp. 7; Hearing Tr. 47:7–15. Patent Owner’s counsel agreed at the oral hearing that the expiration of the ʼ370 patent has no impact on that construction. Id. at 47:1– 18. Nor does Patent Owner seek any other particular constructions in light of the ʼ370 patent’s expiration. Id. at 46:9–19. In short, Patent Owner points to nothing that would change if the Phillips standard were applied. In light of the foregoing, we see no reason to modify our previous construction of “deformities” based either on the expiration of the ʼ370 patent or positions of the parties as developed during the trial, and adopt that construction for this Final Written Decision. Nor do we see the need to make any further constructions of the claims for the purposes of this decision that would be affected by the expiration of the ʼ370 patent or the Phillips standard.” slip op. at 5

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

    “2. Analysis Petitioner contends that it would have been obvious to combine Pristash’s transition region with Kobayashi. Pet. 47. Petitioner asserts that this combination would have been obvious because “transition devices were known at the time for mixing and spreading light from the light source to the light guide.” Id. The Escuti Declaration (¶¶ 230–33) provides additional support for this contention.” slip op. at 22

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

    “We are not persuaded by Patent Owner’s arguments attempting to distinguish Pristash. Instead, we are convinced by Petitioner’s arguments, citations to the Pristash disclosure, and the testimony of its expert, Dr. Escuti, that Pristash describes a panel that meets this limitation. Specifically, Pristash, taken as a whole, discloses in Figures 5 and 6 the combination of prismatic deformities with other deformity types (e.g., lenticular) on the same side of the light emitting panel as this claim requires. We are supported also in this conclusion by the testimony of Mr. Werner, who agreed that a lens is a different type of deformity than a prism. Werner Dep. 111:12–17. At oral argument, Patent Owner’s counsel asserted that Pristash does not meet this limitation because prismatic surface 48 in Figure 6 is not a “deformity” as the claims require, but is itself the surface of the panel. Hearing Tr. 49:7–10. We are not persuaded by this argument. There is no requirement in the claims that the deformities be on separate surfaces, only that they be on the same side of the panel. Moreover, the ʼ370 patent specifically refers to “prismatic surfaces, depressions or raised surfaces of various shapes” as examples of light extracting deformities. Ex. 1001, col. 5, ll. 57–60. We credit also Petitioner’s evidence, summarized supra (which Patent Owner does not challenge), that the other elements of claim 15 are found in Pristash. We conclude, therefore, that Petitioner has demonstrated, by a preponderance of the evidence that claim 15 would have been obvious over Pristash.” slip op. at 15

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “D. Real Party-in-Interest Patent Owner contends that the Petition is insufficient for failure to name two real parties-in-interest: LG Electronics Inc. and LG Electronics U.S.A. Inc. PO Resp. 15. The identical argument was raised in Patent Owner’s Preliminary Response. Prelim. Resp. 18. We determined in our Institution Decision that Patent Owner failed to provide convincing evidence that LG Electronics Inc. and LG Electronics U.S.A. Inc. are real parties in interest. Paper 11, 16–17. Patent Owner’s Response relies on the same arguments and evidence that we considered in our Institution Decision. For the reasons stated there, we determine that Patent Owner fails to prove that the Petition does not name the real parties-in-interest.” slip op. at 24

  Patent outcomesUS 7,537,370 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,537,370
• Maxmind, Inc. v. Fraud Control Systems.Com CorporationAdverse judgment
  PTAB · Dec 17, 2015 · CBM2015-00094 · APJ James A Worth · CBM · Adverse judgment

  The Board entered adverse judgment against the Patent Owner and cancelled claims 1–30 after the Patent Owner requested cancellation.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Here, Patent Owner requests adverse judgment with cancellation of claims 1–30 of the ’942 patent. Under these circumstances, entry of judgment adverse to the Patent Owner and cancellation of claims 1–30 of the ʼ942 patent are appropriate. CONCLUSION AND ORDER Patent Owner’s Request to Abandon Contest is granted. It is, therefore, ORDERED that adverse judgment against the Patent Owner is entered under 37 C.F.R. § 42.73(b); FURTHER ORDERED that this constitutes a final written decision under 35 U.S.C. § 318(a); and FURTHER ORDERED that claims 1–30 of U.S. Patent No. 8,630,942 B2 be CANCELLED.” slip op. at 2

  None
  Patents in suitUS 8,630,942
• Christie Digital Systems USA, Inc. v. Cascades Projection LLCAdverse judgment
  PTAB · Dec 16, 2015 · IPR2015-01342 · APJ Howard B Blankenship · IPR · Adverse judgment

  The Board entered adverse judgment against Patent Owner on claims 1, 17–19, 27, 28, 60, 61, 68, and 71–73 and terminated the proceeding.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (37 C.F.R § 42.73(b)(2)). No claim remains to be adjudicated in this proceeding. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1, 17–19, 27, 28, 60, 61, 68, and 71–73 of the ’347 patent; and” slip op. at 2

  None
  Patents in suitUS 7,688,347
• Hewlett-Packard Company v. Yyz LLCAdverse judgment
  PTAB · Dec 16, 2015 · CBM2015-00050 · APJ Richard E Rice · CBM · Adverse judgment

  The Board granted adverse judgment based on Patent Owner’s abandonment and cancelled claims 51, 52, and 55–57 of U.S. Patent No. 7,603,674 B2.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Under 37 C.F.R. § 42.73(b)(4), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for such an adverse judgment include abandonment of the contest. We find that Patent Owner’s actions and admissions, as set forth in the Motion, constitute abandonment of these CBM Proceedings, and we determine based on such abandonment that Patent Owner has requested adverse judgment under 37 C.F.R. § 42.73(b)(4) in both proceedings.” slip op. at 2

  None
  Patents in suitUS 7,603,674
• Hewlett-Packard Company v. Yyz LLCAdverse judgment
  PTAB · Dec 16, 2015 · CBM2015-00049 · APJ Richard E Rice · CBM · Adverse judgment

  The Board granted adverse judgment based on Patent Owner’s abandonment and ordered claims 22–23, 27–29 of the ’749 patent and claims 51–52, 55–57 of the ’674 patent cancelled.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “Under 37 C.F.R. § 42.73(b)(4), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for such an adverse judgment include abandonment of the contest. We find that Patent Owner’s actions and admissions, as set forth in the Motion, constitute abandonment of these CBM Proceedings, and we determine based on such abandonment that Patent Owner has requested adverse judgment under 37 C.F.R. § 42.73(b)(4) in both proceedings.” slip op. at 2

  None
  Patents in suitUS 7,062,749
• Microsoft Corporation v. Proxyconn, Inc.All claims unpatentable
  PTAB · Dec 9, 2015 · IPR2012-00026 · APJ Thomas L Giannetti · IPR · Remand

  On remand, claims 1, 3, 6, 7, 9, 10, 22, and 23 are unpatentable: claims 1, 3, 6, 7, 9, and 10 as obvious, and claims 22 and 23 as anticipated.

  RulingsRemand decision

  • RemandOther

    “permitted to consider the merits of Microsoft’s reasserted challenges on remand. First and foremost, the Federal Circuit remanded the case to the Board “for proceedings consistent with this opinion.” 789 F.3d at 1295. We do not interpret the Federal Circuit’s decision as requiring us to enter judgment for Proxyconn. Had this been the court’s intent, it could have done so. See 28 U.S.C. § 2106 (authorizing appellate courts to “affirm, modify, vacate, set aside or reverse” and remand). As the Federal Circuit recently stated regarding another remand to the Board: “The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice. 37 C.F.R. § 42.5(a).” Ariosa Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226, 2015 WL 7148267, at *8 (Fed. Cir. Nov. 16, 2015). We also are not persuaded by Proxyconn’s argument that reconsidering the merits of the case in light of the Federal Circuit’s claim constructions results in unfairness or a “denial of due process.” PO Remand Br. 2. The guidance on claim construction provided by the Federal Circuit was based on claim constructions proposed by Proxyconn during the trial. See PO Resp. 11–16. For this reason, the suggestions that the claim constructions are “new,” or that Proxyconn was never permitted to address them, are unavailing. PO Remand Br. 2.” slip op. at 5

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

    “Finally, we note that persuasive evidence of a rationale to combine DRP and Mattis is found in the Long Declaration. IPR2013-00109, Ex. 1013, 10–16. Proxyconn does not challenge this evidence. We, therefore, conclude that, taking into account the Federal Circuit’s decision, Microsoft has demonstrated that claims 6, 7, and 9 of the ʼ717 patent would have been obvious over DRP and Mattis and are not patentable.” slip op. at 13

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

    “Based on the foregoing, we are persuaded that consistent with the Federal Circuit’s guidance, Mattis discloses a gateway and caching computer connected between “two other computers” as recited in claims 6, 7, and 9. Pet. Remand Br. 5 (identifying Mattis’ proxy server 30 and computer system 1100 as examples of the gateway, and citing IPR2013- 00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2, l. 14, col. 9, l. 65– col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31, and col. 37, ll. 42– 45). We are persuaded, therefore, that the Federal Circuit’s instruction that the gateway be separate from the “other” computers recited in the claims is met by the combination of Mattis and DRP.” slip op. at 11

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

    “We are not persuaded by this argument because it ignores the Pentium II implementation in Santos. We are, instead, persuaded that the use of a Pentium II computer to implement the decompressor as described in Santos meets Proxyconn’s construction of “receiver/computer,” and is consistent with the Federal Circuit’s guidance. For the reasons discussed supra, we determine that the decompressor machine in Santos’s Pentium II implementation is not an intermediary device.” slip op. at 17

  Patent outcomesUS 6,757,717 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,757,717
• Microsoft Corporation v. Proxyconn, Inc.All claims unpatentable
  PTAB · Dec 9, 2015 · IPR2013-00109 · APJ Thomas L Giannetti · IPR · Remand

  On remand, the Board held claims 1, 3, 6, 7, 9, 10, 22, and 23 unpatentable: claims 1, 3, 6, 7, 9, and 10 as obvious, and claims 22 and 23 as anticipated.

  RulingsRemand decision

  • RemandDecided for petitioner

    “permitted to consider the merits of Microsoft’s reasserted challenges on remand. First and foremost, the Federal Circuit remanded the case to the Board “for proceedings consistent with this opinion.” 789 F.3d at 1295. We do not interpret the Federal Circuit’s decision as requiring us to enter judgment for Proxyconn. Had this been the court’s intent, it could have done so. See 28 U.S.C. § 2106 (authorizing appellate courts to “affirm, modify, vacate, set aside or reverse” and remand). As the Federal Circuit recently stated regarding another remand to the Board: “The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice. 37 C.F.R. § 42.5(a).” Ariosa Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226, 2015 WL 7148267, at *8 (Fed. Cir. Nov. 16, 2015). We also are not persuaded by Proxyconn’s argument that reconsidering the merits of the case in light of the Federal Circuit’s claim constructions results in unfairness or a “denial of due process.” PO Remand Br. 2. The guidance on claim construction provided by the Federal Circuit was based on claim constructions proposed by Proxyconn during the trial. See PO Resp. 11–16. For this reason, the suggestions that the claim constructions are “new,” or that Proxyconn was never permitted to address them, are unavailing. PO Remand Br. 2.” slip op. at 5

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

    “Based on the foregoing, we are persuaded that consistent with the Federal Circuit’s guidance, Mattis discloses a gateway and caching computer connected between “two other computers” as recited in claims 6, 7, and 9. Pet. Remand Br. 5 (identifying Mattis’ proxy server 30 and computer system 1100 as examples of the gateway, and citing IPR2013- 00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2, l. 14, col. 9, l. 65– col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31, and col. 37, ll. 42– 45). We are persuaded, therefore, that the Federal Circuit’s instruction that the gateway be separate from the “other” computers recited in the claims is met by the combination of Mattis and DRP.” slip op. at 11

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

    “dispute this assertion. Instead, Proxyconn asserts that it should prevail simply because the Board’s decision was based on a “rejected claim construction.” PO Remand Br. 8. We are not persuaded by this argument. Instead, we are persuaded that Perlman meets the “receiver” and “sender” limitations of the claims, even under Proxyconn’s construction of “sender/computer” and “receiver/computer.” Perlman discusses an illustrative network embodiment using routers. See supra. A router is an intermediary device and, under Proxyconn’s construction, might not be considered a “sender” or “receiver.”7 Nevertheless, we agree with Microsoft that the disclosure of Perlman is not confined to networks using routers, but expressly applies to “any type of distributed system requiring efficient synchronization of the contents of data bases stored on nodes of a computer network.” Pet. Remand Br. 8; Ex. 1003, col. 8, ll. 57–60. Perlman’s express disclosure of nodes is referred to in Microsoft’s Petition at pages 32–33, 35, 37, and 39. And Proxyconn’s Patent Owner Response states, “Perlman discloses a sending node that broadcasts a database identifier to a plurality of receiver nodes, and updates the receiver nodes so that all of the nodes are synchronized.” PO Resp. 29.” slip op. at 15

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

    “We are not persuaded by this argument because it ignores the Pentium II implementation in Santos. We are, instead, persuaded that the use of a Pentium II computer to implement the decompressor as described in Santos meets Proxyconn’s construction of “receiver/computer,” and is consistent with the Federal Circuit’s guidance. For the reasons discussed supra, we determine that the decompressor machine in Santos’s Pentium II implementation is not an intermediary device. Proxyconn contends that “at no point” did Microsoft attempt to show that Santos had a “receiver/computer” without intermediaries. PO Remand Br. 13. This argument is unavailing. Microsoft contended in its claim charts accompanying the Petition that Santos provided such a receiver/computer. As stated in the claim charts: “Receiver implementation is an ‘Intel-based PentiumII’ computer running Linux Operating system (Santos § 3.4, ¶ 1).” Ex. 1001, 6. We, therefore, conclude that taking into account the Federal Circuit’s decision, Microsoft has demonstrated that claims 22 and 23 of the ʼ717 patent are anticipated by Santos.” slip op. at 17

  Patent outcomesUS 6,757,717 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,757,717
• TRW Automotive US LLC v. Magna Electronics Inc.All claims unpatentable
  PTAB · Dec 7, 2015 · IPR2014-01010 · APJ Barry L Grossman · IPR · Final written decision

  Claims 6, 7, and 10 are unpatentable under § 103(a) as obvious over Ponziana and Rayner, with Kakinami added for claim 7.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “We determine that the patentability of the challenged claims does not depend on whether Petitioner’s or Patent Owner’s asserted definition is used. The differences among the asserted positions are insignificant in resolving the issue of the patentability of the challenged claims. Moreover, the prior art itself reflects an appropriate level of skill and a need for testimony is not shown. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

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

    “less” added, to create thereby the word “fastenerless.” The plain and ordinary meaning of the term “fastenerless” means “without a fastener.” Applying this meaning to claim 10, a “fastenerless attachment” is something that detachably mounts accessory module 10 to an attachment member without using a fastener. Petitioner’s assertion that “fastenerless” means a “detachable mount other than a screw” is not supported by the Specification or by a common dictionary definition. We construe the term “fastenerless attachment” in claim 10 to mean an attachment device that does not use a fastener to mount detachably the accessory module. An example of a “fastenerless attachment” is spring clip 400 from the ’687 patent that does not have or use the optional hole or slot 412 in ends 408 and 410 in order to receive a fastener 413 for attaching the respective end to a surface. Ex. 1007, col. 10, ll. 12–19. slip op. at 9

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

    “For a rain sensor mounted on a vehicle windshield, the area to be photographed or sensed may be the windshield itself, as disclosed in Ponziana, or it may be “a larger area,” also as disclosed in Ponziana. Ex. 1004, col. 3, ll. 37–60. For a data recorder as disclosed in Rayner, used to reconstruct events leading up to a vehicle accident, and the accident itself (Ex. 1005, col. 1, ll. 29–41), the area to be photographed or sensed includes preferably “the entire area ahead of the vehicle” (id. at col. 1, ll. 50–55). Rayner also recognizes the need for some “adjustability” to ensure proper orientation of the camera. Ex. 1005, col. 3, ll. 23–27. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Under the correct analysis under § 103(a), “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. In considering the orientation of a camera within an accessory module mounted to a windshield to obtain the desired field of view for the camera, a person of ordinary skill and creativity, that is a person with a degree in engineering and at least two years of relevant experience (Pet. 13–14; PO Resp. 1), would recognize the myriad factors that may affect the orientation of the camera. The angle of the windshield may be substantially raked or angled towards the rear of a vehicle, as in a sports car, or may be substantially vertical, as in a modern bus. The camera may be at 90 degrees to the windshield-facing portion of the module when mounted to a bus windshield, as shown in Ponziana and Rayner, and would be at an angle other than 90 degrees when mounted to the sleek sports car. Both applications compensate for the angle of the windshield to ensure that the field of view of the camera covers the entire area ahead of the vehicle, as disclosed in Rayner, and as recited in claim 6. We find unpersuasive Patent Owner’s assertion” slip op. at 19

  • Obviousness (§103) › KSR rationalesMotivation foundUnpatentable

    “mounting element 26. Pet. 12, 17–18. As stated in Ponziana, a first mounting element 26 is on windshield 15 (Ex. 1004, col. 3, ll. 11–13), and the accessory module (rain sensor 24) attaches to mounting element 26 by a complementary mounting area 32 on housing 30 (id. at col. 3, ll. 16–20). Thus, the issue is whether the combined teachings of the references would have suggested to a person of ordinary skill that the alternative accessory module mounting elements of either suction cups or Velcro-type hook and pile fasteners, as disclosed in Rayner, should be complementary to the windshield mounting element (i.e., element 26), as disclosed in Ponziana. We determine, based on the reference disclosures, that this combination would have been obvious. Rayner discloses that the fastening devices disclosed are alternatives to other known mounting devices. Ex. 1005, col. 7, ll. 30–37. Among the myriad fastening options available, ranging from adhesives to the more complex structure disclosed in Ponziana, we are persuaded, based on the reference disclosures, that it would have been obvious to a person of ordinary skill and creativity to choose the preferred fastening option. We note that claim 6 recites an interior rearview assembly and a “separate” accessory module. Ex. 1002, col. 53, ll. 10–11 (“an accessory module separate from said interior rearview mirror assembly”). In Ponziana and in the embodiment shown and described with respect to Figure 1 in Rayner, the mirror mount and the module mount are integrated. Figure 2 in Rayner, however, discloses a module mount separate and distinct from a mirror mount. As stated clearly in Rayner, the embodiment in Figure 2 “does not include a mirror or function as a rear-view mirror.” Ex. 1005, col. 7, ll. 4–6. Based on this disclosure, a person of ordinary skill would have appreciated the simplicity of Rayner’s Figure 2 embodiment, which allows for more basic mounting structures, ranging from an adhesive to a Velcro-type attachment, than when the mirror and module use a common mounting system. The Velcro-type hook and pile fastener disclosed in Rayner uses two components, a hook component and a pile component. As suggested by the mounting structure in Ponziana, one mounting component is connected to the windshield; and the second component is connected to the module. By attaching the first component to the second component, the module is attached to the windshield.” slip op. at 21

  Patent outcomesUS 7,533,998 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,533,998
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00552 · APJ Thomas L Giannetti · IPR · Final written decision

  Petitioner failed to prove claims 1–23 unpatentable because Webster was disqualified as prior art under § 103(c).

  RulingsFinal written decision

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “In an inter partes review, the burden of proof is on the Petitioner to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). This burden never shifts to the Patent Owner. Id. However, the burden of production, a separate burden, does shift once the Petitioner comes forward with evidence establishing prior art. Id. at 1379–80. Thus, to prevail on this dispositive issue, Patent Owner must overcome Webster by establishing that § 103(c) applies to the fact of this case.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “We agree with Patent Owner and are persuaded that the W–2 form and pay stub should not be excluded. Petitioner’s argument based on alleged inconsistencies goes to the weight, not the admissibility, of the evidence. As to the hearsay objections, we agree with the reasoning of Snow, supra, that the EIN and other information are not assertions subject to the hearsay rule. To the same effect are United States v. Koch, 625 F.3d 470, 480 (8th Cir. 2010) (computer flash drive with manufacturer’s label “China” not inadmissible hearsay to prove place of manufacture); United States v. Bowling, 32 F.3d 326, 328 (8th Cir. 1994) (manufacturer’s name stamped on firearm not hearsay). We are persuaded that the EIN and other identifying information on the W-2 and pay stub, like the examples in those cases, are circumstantial evidence of Seals’employment and not assertions by Intersil. We agree that the pay stub is not hearsay and should be admitted.14 Although Petitioner challenges this evidence as untrustworthy, we are mindful of the fact that Petitioner had a chance to cross-examine Mr. Seals on its content.” slip op. at 22

  Patent outcomesUS 6,754,195 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 6,754,195
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00548 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 4–6, 10, and 13–20 are unpatentable as obvious; claims 2 and 11 were not shown unpatentable because the petition did not establish their variable-length header adjustment limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedOther

    “Fischer teaches that the comparators in coherent demodulator 114 convert a “‘spread spectrum modulated’ analog signal into a digital signal,” as opposed to “other analog signals.” See PO Resp. 13. To the contrary, Fischer states that “[t]he communicators preferably transmit and receive messages over a wireless physical layer provided by a direct-sequence, spread spectrum (DSSS) radio data link.” Ex. 1004, 14:24–27. Fischer further explains that “[s]ince many of the signals in the coherent demodulator 114 are analog signals, the coherent demodulator 114 includes comparators to establish digital waveforms.” Ex. 1004, 16:58–60. As shown in Figure 5 of Fischer, the coherent demodulator 114 is followed by spread spectrum correlator and decoder 130, which “handles the demodulator 114 output to regenerate the unspread data.” Ex. 1004, 17:58– 60. Thus, we agree with Petitioner, as supported by Prof. Ding, that a person of ordinary skill in the art “would have understood Fischer to describe that the demodulator 114 converts the analog DSSS modulated messages received by antennas 100/102 to digital signals and outputs these digital DSSS modulated messages in I and Q format to spread spectrum correlator and decoder 130.” Reply 3–4; Ex. 1013 ¶ 5.” slip op. at 18

  • Skill levelOther

    “3. Claims 1, 10, and 17 Petitioner argues that each of independent claims 1, 10, and 17 is unpatentable as obvious over Fischer and Nakamura. Pet. 15–26. Notwithstanding the fact that claim 1 recites “means” for performing identified functions, whereas claims 10 and 17 do not recite “means” limitations, the three claims recite similar subject matter, and Petitioner advances the same reasoning in its analysis of all three claims. Id. Patent Owner’s Response also generally addresses claims 1, 10, and 17 collectively in a similar manner. PO Resp. 10–31. Although our analysis below primarily focuses on claim 1, our determinations with respect to claim 1 apply for the same reasons to the identified similar limitations of claims 10 and 17.” slip op. at 16

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

    “The Petition makes no mention of Nakamura in its discussion of the additional limitations of claims 2 and 11. Yet in reply, Petitioner argues that “[i]n view of Fischer’s variable length preambles, a [person of ordinary skill in the art] would have found it obvious to utilize Nakamura’s timer function and its repetitive duration function.” Reply 15. Petitioner may not rely on a new argument asserting that Nakamura teaches the additional limitations for claims 2 and 11 presented for the first time in its Reply. Moreover, Petitioner fails to address how either Fischer or Nakamura teaches means for adjusting means for timing when Fischer contains no timer, and when the timer of Nakamura is described as being based on a predetermined period of time. See Ex. 1005, 6:31–36 (“timer 34 permits the switch 14 to transfer from terminal A to terminal B after the lapse of predetermined time”); see also Ex. 2006, ¶¶ 83–84. Petitioner’s contention that “Nakamura’s timer is also flexible” is insufficiently supported by any reference to either Nakamura or the declaration of Prof. Ding. See Reply 16–17; see also Ex. 1013 (no discussion of claims 2 or 11). Petitioner has not demonstrated that the features of claims 2 or 11 are disclosed by the combination of Fischer and Nakamura. 5. Claims 4, 5, 6, 13, 14, 16, and 18–20 Petitioner has persuasively shown that each of the additional limitations of dependent claims 4, 5, 6, 13, 14, 16, and 18–20 are taught by the combination of Fischer and Nakamura. For example, claims 4, 14, and 19 all require a “single monolithic device.” Petitioner has shown that Fischer RF modem 96 is a single monolithic device, and that Fischer communicator 60 is a circuit contained on a single monolithic device that includes RF modem 60. See Pet. 27–28; Ex. 1003 ¶¶ 41–42. Petitioner has also shown that RF modem 96 includes coherent demodulator 114 that provides in-phase and quadrature data outputs that are responsive to an analog signal that has in-phase and quadrature components, corresponding to the requirements of an analog signal “in the form of in-phase and quadrature components” as recited in claims 5 and 16. See Pet. 28–29; Ex. 1003 ¶ 38. With respect to the limitations of claims 6, 16, and 20 requiring PN modulation and phase shift keyed modulation, Petitioner has shown that Fischer discloses RF modem 96 supports BPSK or QPSK, and that it would have been obvious to implement direct sequence spread modulation by using PN modulation. See Pet. 29; Ex. 1003 ¶¶ 34, 37. We are also persuaded that Fischer discloses the “antenna selection circuitry” as recited in claim 13 and the “serial data stream” as recited in claim 18. See Pet. 30–31; Ex. 1003 ¶ 40. Patent Owner does not substantively dispute Petitioner’s assertion that Fischer teaches each of these limitations.” slip op. at 25

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

    “Patent Owner contends that “[i]f reliability alone is the concern,” then “the most reliable method is to use BPSK for the entire packet (as taught by Fischer).” PO Resp. 38. We are not, however, persuaded that “reliability alone is the concern.” Nakamura and Fischer clearly teach a benefit to using both BPSK and QPSK consisting of improved reliability for BPSK with enhanced speed from QPSK. Thus, we find Patent Owner’s contention that those of skill “would not look beyond the teachings of Fischer” unpersuasive. See id. Likewise, Patent Owner’s contention that Fischer already teaches improved reliability by using longer preambles has no bearing on whether one of ordinary skill in the art would have also looked to Nakamura for other means of improving reliability. See id. at 39. We find that Petitioner articulates sufficient reasoning with rational underpinnings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).” slip op. at 28

  Patent outcomesUS 5,712,870 mixed
  § 103 obviousnesscites KSR
  Patents in suitUS 5,712,870

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.