- PTAB · Mar 19, 2024 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Final written decision
The Board cancelled claims 1–27 and denied substitute claims 28–51 because the original disclosure lacked written-description support for the claimed CSP limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s proposed level of ordinary skill in the art, with the exclusion of “at least” because it introduces ambiguity. Inst. Dec. 8. Patent Owner “does not dispute the Board’s findings on the qualifications of a POSA [person of ordinary skill in the art] for purposes of this proceeding.” See RMTA 13. We determine that Petitioner’s definition, with the exclusion of “at least,” is consistent with the prior art of record and the skill reflected in the Specification of the ’034 patent and we use this level of skill here in the evaluation of the Revised Motion to Amend.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that “claim construction is not necessary” and that “the meaning of the claims would be easily understood by a POSA.” RMTA 13. In the Petition, Petitioner proposed constructions for the terms “client device” and “first server,” and the original claims were rendered obvious under this construction. Pet. 23–27. Petitioner does not assert that the substitute claims of the Revised Motion to Amend are anticipated or rendered obvious by prior art or are patent ineligible. See generally RMTA Opp. Nor does Petitioner’s patentability challenge of the substitute claims contend that express construction is needed. See generally id. For purposes of this Decision, we determine that express claim construction is unnecessary. We need only construe terms that are necessary to resolve disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989); All Dental Prodx LLC v. Advantage Dental Prods., 309 F.3d 774, 779 (Fed. Cir. 2002). The issue here, however, is whether the disclosure of the ’034 patent would have reasonably conveyed to a person of ordinary skill that the inventors had possession of the CSP Limitations. Ariad, 598” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“to cancelling claims 1–27; and deny-in-part the Motion to Amend as to proposed substitute claims 28–51. In summary: Motion to Amend Outcome Claim(s) Original Claims Cancelled by Amendment 1–27 Substitute Claims Proposed in the Amendment 28–51 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied” slip op. at 20
Claim construction§ 112 disclosurePatents in suitUS 11,272,034 - Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentablePTAB · Apr 10, 2023 · IPR2021-01598 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–9 and 11–20 are unpatentable as obvious over either asserted combination; the motion to amend is granted for substitute claims 29, 31, and 32.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated “[w]e would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner.” Institution Dec. 16. We reasoned that our review of the ’637 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’637 patent on more general principles of cellular communications and signaling. Id. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and, therefore, our decision would be the same under either formulation. Id. at 16–17.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Resp. 12–14. The fact that Kalanick may not “disclose any problem” arising from the possibility of two passengers in the same area having the same signal does not prove a problem did not exist or that a person of ordinary skill would not be motivated to improve upon the solution for it. See Pet. Reply 5–6. Similarly, we are not persuaded by Patent Owner’s argument that there would be no reasonable expectation of success based on Kemler’s disclosure of a server farm. PO Resp. 24 (“The immense expense and complexity of operating a server ‘farm’ would be a reason to avoid Kemler’s teachings.”). Testimony from Mr. Williams establishes the advantages of such systems. Pet. Reply 7 (citing Williams I Decl. ¶¶ 124); Williams Dep. 82:1–88:25, 92:13–93:1; Williams III Decl. ¶¶ 34–35.5” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–27; Williams I Decl. ¶¶ 113–125; Williams III Decl. ¶¶ 5–17. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“The ’637 patent describes an indicator as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier, on the display 130 and on a mobile communication device 140 associated with the user P to enable the user P to identify the vehicle that he/she has requested for a ride service.” Ex. 1001, 4:6–10. Consistent with this description in the specification, we construed the term “indicator” as a code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver. Institution Dec. 20. We did not see a basis in the claims or specification for Patent Owner’s contention that a “new unique indicator” must be “actively formulate[d] . . . for each rider-driver trip while the driver is in transit.” Id. at 20 (citing Prelim. Resp. 29). Patent Owner does not address the construction of “indicator” in its Response. For the reasons given, therefore, we maintain our construction of this term. We discuss Patent Owner’s contention that a new indicator must be “actively formulated” further in connection with our consideration of the claim term “generate,” infra.” slip op. at 15
Patent outcomesUS 9,892,637 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,892,637 - Renesas Electronics Corporation v. Broadcom CorporationAll claims unpatentablePTAB · Nov 12, 2020 · IPR2019-01040 · APJ Norman H Beamer · IPR · Final written decision
Claims 1 and 9–14 are unpatentable as obvious; the motion to amend is denied for substitute claim 15 and granted for substitute claims 16–19.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we instituted an inter partes review of claims 1 and 9–14. Paper 9 (“Institution Dec.”). In the Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would prevail as to the challenged claims, and we instituted trial on all challenged claims and all grounds in the Petition. Institution Dec. 35.” slip op. at 2
- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner contends that “a person of ordinary skill in the art” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Accordingly, we construe “configurable” in this context to mean” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, based on our review of the record and the parties’ submissions, we determine that the record establishes that each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as claimed, and that Fandrianto ’459 would have taught the second limitation of claim 1. d) Claim 1 Summary In sum, based on our review of the record and the parties’ submissions, we determine that the record establishes that RISC microprocessor 220 disclosed in Fandrianto ’459 is a “processor,” as required by claim 1, and each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as required by that claim. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that claim 1 of the ’844 patent would have been obvious in light of Fandrianto ’459.” slip op. at 33
Patent outcomesUS 8,284,844 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 8,284,844 - Intel Corporation v. Hera Wireless S.A.All claims unpatentablePTAB · Mar 18, 2020 · IPR2018-01657 · APJ Robert L Kinder · IPR · Final written decision
The Board cancelled claims 1, 5, 6, 12, 16, and 17, and denied substitute claims 21 and 22 because Wallace anticipated them and rendered them obvious.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 and IPR2018-01130, Paper 14 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”). We then consider the patentability of proposed substitute claims.” slip op. at 9
- 112 supportDecided for patent owner
“Based on the disclosures in the ’095 application, the ’655 application, and the ’375 application, we find that there is at least one embodiment where a terminal transmits antenna number information in a link channel request. Specifically, in the First Embodiment discussed supra in relation to Figure 3, the antenna number information is transmitted to the base station from terminal 1000 as control information in requesting establishment of a link channel (LCH allocation request). Ex. 1001, 9:59–64. We further find that this amounts to transmitting “information on the maximum number of spatial signals that can be processed” in “a request to establish a link channel,” as recited in proposed substitute claims 21 and 22. So, too, does the description of the first variation of the Figure 7 Second Embodiment described supra. This showing discharges Patent Owner’s burden on this issue. However, because we also conclude, infra, that Wallace anticipates and renders obvious proposed substitute claims proposed claims 21 and 22, we do not find it necessary to further address Petitioner’s specific written description arguments.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“3. Person of Ordinary Skill Relying on the testimony of Dr. Sharony, Patent Owner contends that a person of ordinary skill in the art at the time of the invention of the ’024 patent would have possessed a working knowledge of multi-input multi-output (MIMO) wireless communications. The person would have gained this knowledge through a Bachelor of Science degree in Electrical Engineering or an equivalent degree, and three to five years of experience working in the field of wireless communications. Additional education or experience may serve as a substitute for these requirements. Motion 4 (citing Ex. 2018 ¶ 28).” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Claim 21 first requires a “storage means for storing prior to any request to establish a link channel being sent to the another radio apparatus information on the maximum number of spatial signals that can be processed by the signal processing unit for multiplex communication.” Motion, Claims App. We construe this claim language pursuant to 35 U.S.C. § 112 ¶ 6. The stated function of “storing prior to any request to establish a link channel being sent to the another radio apparatus information on the maximum number of spatial signals that can be processed by the signal processing unit for multiplex communication,” is carried out by a memory. See Institution Dec. 14. Claim 21 next requires “control means for controlling a process of transmitting the information on the maximum number of spatial signals.” We construe this language pursuant to 35 U.S.C. § 112 ¶ 6. The stated function of “controlling a process of transmitting the information on the maximum number of spatial signals,” is carried out by a controller or processor. See Institution Dec. 14–15. The ’024 patent discloses this function being performed by a “control circuit” or “a digital signal processor executing a software algorithm.” Id. (citing Ex. 1001, 7:61–62, 8:44–48, 8:51–55, 8:64–9:4, 17:21–38, 19:36–41). Further, “[a] control circuit is simply another name for a controller or processor.” Id. (citing Ex. 1002 ¶¶ 165, 175). Claim 22 requires “a storage unit” and “a control unit.” We determine that these terms should not be construed pursuant to § 112 ¶ 6, and also that their scope is clear from the context of the Specification. Patent Owner made a deliberate choice to employ the word “unit” instead of “means.” See Institution Dec. 14. Thus, based on the final record, we determine that Patent Owner intended to invoke § 112 ¶ 6 for the “means” terms (claim 21) but did not so intend for the “unit” terms (claim 22) in the ’024 patent.” slip op. at 19
Patent outcomesUS 9,270,024 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,270,024 - Ruckus Wireless, Inc. / Belkin International, Inc. et al. v. Hera Wireless S.A.All claims unpatentablePTAB · Feb 25, 2020 · IPR2018-01418 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–6 are cancelled; the motion to substitute claims 7 and 8 is denied because both claims are obvious over Wallace.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121, before considering the patentability of the proposed substitute claim, as set forth further below. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 and IPR2018-01130, Paper 14 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”). 1. A Reasonable Number of Substitute Claims A motion to amend may, “[f]or each challenged claim, propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B) (2012). “The presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.” 37 C.F.R. § 42.121(a)(3) (2018). Patent Owner cancels six claims and proposes two replacements— claims 7 and 8. We determine that the number of proposed substitute claims is reasonable under 35 U.S.C. § 316(d)(1)(B) and 37 C.F.R. §§ 42.121(a)(3).” slip op. at 9
- 112 supportDecided for patent owner
“Petitioner’s opposition challenges Patent Owner’s showing of written description support for this proposed amendment. Opp. 2–7. Petitioner contends that, “to the extent that Hera is arguing that the claimed ‘value indicating a maximum number of spatial paths’ that is transmitted/received in a ‘request to establish a link channel’ is something other than the terminal’s number of antennas, it fails to show § 112(a) written description support for the claim limitation.” Id. at 6–7. At the oral hearing, however, counsel stated that, if we were to agree with Petitioner’s position that the proposed claim is unpatentable over Wallace, “it becomes unnecessary to address the written description point.” Hearing Tr. 70:9–11 Based on the disclosures in the ’657 application, the ’655 application, and the ’375 application, we find that there is sufficient written description support for this limitation. The ’103 patent and its previously-filed supporting applications describe at least one embodiment where a terminal transmits antenna number information in a link channel request. Specifically, in the First Embodiment discussed supra in relation to Figure 3, the antenna number information is transmitted to the base station from terminal 1000 as control information in requesting establishment of a link channel (LCH allocation request). Ex. 1001, 9:62–65. We further find that this amounts to transmitting a “value indicating the maximum number of spatial paths formable” in “a request to establish a link channel,” as recited in the proposed substitute claims. See discussion infra. So, too, does the description of the first variation of the Figure 7 Second Embodiment, described supra. This showing discharges Patent Owner’s burden on this issue. However, because we also conclude, infra, that proposed substitute claims 7 and 8 would have been obvious in light of Wallace, and in view of counsel’s concession at the oral hearing, we do not find it necessary to further address Petitioner’s specific written description arguments. See Hearing Tr. 70:9–11 (“[I]f you agree with us on Wallace, it becomes unnecessary to address the written description point”).” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 18–19 (citing Ex. 1002 ¶ 29). The parties’ formulations differ mainly in the amount of experience in wireless communications for a Bachelor’s degree level engineer: three to four years (Petitioner) or three to five years (Patent Owner). We regard any differences in the two formulations as insignificant. For the purpose of this Final Written Decision, we adopt Patent Owner’s proposal as consistent with the prior art before us. However, we would reach the same result with regard to this decision under either formulation.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Referring to the terms in the original claims that are carried over in claims 7 and 8, Patent Owner asserts it “does not rely on those or any other specific claim constructions to demonstrate patentability of the proposed substitute claim over the prior art. Rather, Patent Owner demonstrates patentability based on the new limitations of the proposed substitute claims.” Motion 10. Thus, Patent Owner contends that “[t]he meanings of any new limitations (e.g., ‘maximum number of spatial paths’ or ‘request to establish a link channel’)—taken as a whole—are discernable from their context and would be readily understood by those of ordinary skill in the art.” Id. Petitioner does not contend that any claim term requires an explicit construction to determine whether the proposed substitute claims would have been obvious in light of the prior art of record. In the course of our discussion of the merits of Petitioner’s opposition, however, we do address the scope of proposed substitute claims 7 and 8 in applying them to Wallace.” slip op. at 18
Patent outcomesUS 7,962,103 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,962,103 - Intel Corporation v. Hera Wireless S.A.All claims unpatentablePTAB · Feb 25, 2020 · IPR2018-01371 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–6 are cancelled; proposed substitute claims 7 and 8 are unpatentable as anticipated by and obvious over Wallace, so the motion to amend is denied as to those claims.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“the level of skill in the art. The Petition, however, provides the following description: “As of 2002 or 2003, a skilled person in the ’103 patent’s field would have a Master’s degree in Electrical Engineering and at least 2-4 years of academic or industry experience in designing and implementing digital wireless communication systems.” Pet. 13 (citing Wicker Decl. ¶ 54). The parties’ formulations differ mainly in the level of education (Bachelor’s degree for Patent Owner, Master’s degree for Petitioner) and amount of experience in wireless communications (three to five years for Patent Owner, two to four years for Petitioner). We regard any differences in the two formulations as insignificant. For the purpose of this Final Written Decision, we adopt Patent Owner’s proposal as consistent with the prior art before us. However, we would reach the same result with regard to this decision under either formulation.” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In light of the foregoing, we credit Petitioner’s evidence on this limitation, supported by the testimony of Dr. Wicker, and find that the limitation is met by Wallace. Wicker Supp. Decl. ¶¶ 22–27.” slip op. at 30
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Motion 11–12 (alterations in original). Patent Owner contends “[n]one of Petitioner’s references teaches or suggests systems having this new combination of limitations.” Id. at 12. We determine that the amended language in the proposed substitute claims, which will be discussed in more detail infra, is responsive to the ground of unpatentability involved in this trial under 37 C.F.R. § 42.121(a)(2)(i). 3. Scope of the Proposed Substitute Claims A motion to amend “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). Patent Owner contends that the substitute claims are “narrower than the original, now-cancelled claims and introduce no new matter.” Motion 3. We have reviewed the limitations added in the proposed substitute claims (see supra) and determine that they do not enlarge the scope of the original cancelled claims.” slip op. at 10
- 112 supportDecided for patent owner
“Based on the disclosures in the ’657 application, the ’655 application, and the ’375 application, we find that there is sufficient written description support for this limitation. The ’103 patent and its previously-filed supporting applications describe at least one embodiment where a terminal transmits antenna number information in a link channel request. Specifically, in the First Embodiment discussed supra in relation to Figure 3, the antenna number information is transmitted to the base station from terminal 1000 as control information in requesting establishment of a link channel (LCH allocation request). Ex. 1001, 9:62–65. We further find that this amounts to transmitting a “value indicating the maximum number of spatial paths formable” in “a request to establish a link channel,” as recited in the proposed substitute claims. See discussion infra. So, too, does the description of the first variation of the Figure 7 Second Embodiment, described supra. This showing discharges Patent Owner’s burden on this issue. However, because we also conclude, infra, that proposed substitute claims 7 and 8 are anticipated by and would have been obvious in light of Wallace, and in view of counsel’s concession at the oral hearing, we do not find it necessary to further address Petitioner’s specific written description” slip op. at 14
Patent outcomesUS 7,962,103 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,962,103 - PTAB · Feb 3, 2020 · IPR2018-01373 · APJ Michael R Zecher · IPR · Final written decision
The Board granted cancellation of claims 1–9 and denied substitution of claims 10–12 because Wallace anticipated and rendered the substitute claims obvious.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“need.” 37 C.F.R. § 42.121(a)(3) (2018). Patent Owner proposes three substitute claims—one for each of cancelled independent claims 1, 4, and 7. Mot. to Amend 1, Claims App’x. We determine that the number of proposed substitute claims is reasonable under 35 U.S.C. § 316(d)(1)(B) and 37 C.F.R. § 42.121(a)(3).” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Apart from Dr. Sharony’s assessment requiring a Bachelor of Science degree in Electrical Engineering or an equivalent degree and Dr. Wicker’s assessment requiring a Master’s degree in Electrical Engineering, we do not discern a material difference between the assessments advanced by the declarants. In any event, each party’s declarant appears to meet or exceed both parties’ assessments (see Ex. 1002 ¶¶ 3–24, App’x A; Ex. 2016 ¶¶ 11– 19), and either assessment of the level of skill in the art is consistent with the ’851 patent and the prior art of record. We, therefore, adopt Dr. Sharony’s assessment and apply it to our anticipation and obviousness evaluations below, but we note that our conclusions would remain the same under Dr. Wicker’s assessment.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Patent Owner contends that “[t]he meanings of any new limitations (e.g., ‘maximum number of spatial paths’ or ‘request to establish a link channel’)—taken as a whole—are discernable from their context and would be readily understood by those of ordinary skill in the art.” Mot. to Amend 12 (citing Ex. 2016 ¶ 16). In its Opposition, Petitioner does not contend that any claim term requires an explicit construction to determine whether the prior art of record anticipates or renders obvious proposed substitute claims 10–12. See generally Opp. 1–30. In the course of our discussion of the merits of Petitioner’s opposition, we address the scope of proposed substitute claims 10–12 in applying them to Wallace.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the record developed during trial, we find that Wallace discloses or reasonably suggests antenna number information that sets the maximum number of spatial paths that a terminal can form. Accordingly, Wallace accounts for “a value indicating the maximum number of spatial paths formable by said communication unit for multiplex communication,” as recited in proposed substitute claim 11.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,934,851 - Flir Systems, Inc. / Flir Maritime US, Inc. (F/K/A Raymarine, Inc.) v. Garmin Switzerland GmbHSome claims unpatentablePTAB · Jul 10, 2018 · IPR2017-00946 · APJ Scott B Howard · IPR · Final written decision
Claims 28, 29, and 45 were held unpatentable; claims 1–7, 12–23, 25–27, and 41–44 were not shown unpatentable. Substitute claims 73 and 74 were allowed.
RulingsFinal written decision- BurdenFwd mixedMixed
“C. Legal Principles 1. Anticipation A patent claim is unpatentable under 35 U.S.C. § 102 if “the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“and agree with Patent Owner that the terms “re-routing the course” and “re-route the course” mean “to change at least a portion of the route of the course relative to a previous routing.” That is, there must be a first routing of a course and that routing must be changed by performance of the marine route calculation algorithm to avoid preselected conditions by identifying one or more non-user selected waypoints. The construction is consistent with the words of the claims. The claims do not merely require routing a course, but “re-routing the course.” The ordinary meaning of the prefix “re” is that something is being done again. See Tr. 18 (Petitioner agreeing that “if you put R-E in front of a word, normally that means it’s occurring a second time”). Although the claims do not explicitly recite both an original “routing” of a course that is changed by “re-routing the course,” the original “routing” is implicitly required by the use of the prefix “re.” See Tr. 34 (Patent Owner agreeing that although the claims do not explicitly require an initial routing, the initial routing is implicit in the use of “re-routing”), 44–45 (Petitioner agreeing that “re-routing” ordinarily implies an initial routing).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“proposed construction of “course” as “the path of intended travel of a craft with respect to the earth.” Instead, we need only focus on the words recited in the claim. Claim 1, which is representative, recites that performing the marine route calculation algorithm to “route a course between a first location and the potential waypoint avoiding the preselected conditions,” where such performance includes “identifying one or more non-user selected waypoints.” Ex. 1001, claim 1. The other independent claims recite similar limitations. See Ex. 1001, claims 12, 20, 27. Based on the limitation recited in the claim, the broadest reasonable interpretation of routing a “course” encompasses the identification of one or more non-user selected waypoints between a first location and a potential waypoint. No further construction is necessary for purposes of this Decision.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded by Petitioner’s argument that the person of ordinary skill in the art need not have first-hand experience with marine navigation devices and systems. Pet. Reply 25–26. The ’703 patent explicitly defines “marine navigation” broadly, noting that “the use of the word ‘marine’ in the embodiments of the present invention (including the claims) could be replaced with the phrase ‘non-street based.’” Ex. 1001, 1:57–67 (emphasis added). Such non-street based navigation is broad enough to encompass avionic navigation. See Pet. Reply 25–26; cf. Ex. 1003, 4–7 (demonstrating Dr. Braasch’s experience in avionic navigation). We find that Petitioner’s definition is supported by the testimony of its expert, Dr. Braasch, and, for the reasons stated above, we are not persuaded that the person of ordinary skill in the art necessarily would have had first-hand experience in marine—as opposed to non-street based— navigation. We, therefore, determine, based on the complete record, that Petitioner’s proposed definition correctly states the level of ordinary skill in the art, and we apply it for purposes of this Decision.7, 8” slip op. at 24
Patent outcomesUS 7,268,703 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,268,703 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision
The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5
Patent outcomesUS 8,823,732 not shown unpatentable§ 102 anticipationPatents in suitUS 8,823,732 - Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing grantedPTAB · May 19, 2017 · IPR2016-00151 · APJ Miriam L Quinn · IPR · Rehearing
The Board clarified the construction of “a call to a first function” but left unchanged its determination that claims 1–8, 10, and 11 were not shown unpatentable over Ross.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“proceeding. Paper 51 (“Final Dec.”). On April 14, 2017, Palo Alto Networks, Inc. (“Petitioner”) filed a Request for Rehearing. Paper 52 (Req. Reh’g.). Petitioner’s Request urges the Board to review the construction of “a call to a first function” for consistency with the construction given to the same term in our Final Written Decision in IPR2015-01979.2 We agree with Petitioner that the construction of “a call to a first function” must be consistent with our determination in IPR2015-01979. Accordingly, we hereby modify our Final Written Decision in this proceeding to reflect that the construction for the term “a call to a first function” means “a statement or instruction in the content, the execution of which causes the function to provide a service.” That construction remains, however, consistent with our analysis and determinations made in our Final Written Decision, and therefore requires no modification of our conclusions. For example, at page 8 of that Decision we stated that “we determine that the ‘call’ is a statement or instruction in the content, the execution of which causes the function to provide a service.” Final Dec. 8. Accordingly, the last sentence of the first paragraph in page 9 of the Final Written Decision is modified to repeat what we stated earlier in page 8 of the Decision: “we determine that a ‘call to a first function’ means a statement or instruction in the content, the execution of which causes the function to provide a service.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Petitioner advocates. The word “call” is recited in claim 1 as a noun, and is the statement or instruction included in the content that causes the first function to provide a service. Final Dec. 7; Ex. 1001, 17:34−36. The word “invoking” appears elsewhere in the claim in connection with the transmission of the call’s input, which occurs “when the first function is invoked.” Ex. 1001, 17:39−40. The claim language is straightforward: the received content includes a call to a first function, and when that same first function is invoked, the function’s input is transmitted to the security computer. In summary, Petitioner’s request urges us to view the claim construction as allowing the call included in the received content to request the services of a function different from the function in the call statement or instruction. To illustrate, if the content states “call function X” but instead, during runtime, function Y is invoked, Petitioner asserts that this scenario would be a “call” to function Y, and therefore meet the claim. As stated above, however, the claim language does not support this reading. The call to the first function must be included in the content, and it is the same first function that is invoked later in the claim. Our claim construction does not change the plain reading of the claim language. Therefore, the execution of the statement or instruction included in the content must cause the function identified in the statement or instruction to provide a service. To illustrate, if the content states “call function X,” during runtime, function X must be invoked. Ross,3 as we discuss in our Final Written Decision, does not do this. See Final Dec. 17−19 (concluding that Ross invokes indirectly the hook function without any need to include a call to that hook function).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“construction as allowing the call included in the received content to request the services of a function different from the function in the call statement or instruction. To illustrate, if the content states “call function X” but instead, during runtime, function Y is invoked, Petitioner asserts that this scenario would be a “call” to function Y, and therefore meet the claim. As stated above, however, the claim language does not support this reading. The call to the first function must be included in the content, and it is the same first function that is invoked later in the claim. Our claim construction does not change the plain reading of the claim language. Therefore, the execution of the statement or instruction included in the content must cause the function identified in the statement or instruction to provide a service. To illustrate, if the content states “call function X,” during runtime, function X must be invoked. Ross,3 as we discuss in our Final Written Decision, does not do this. See Final Dec. 17−19 (concluding that Ross invokes indirectly the hook function without any need to include a call to that hook function).” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,141,154
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.