- Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.Rehearing deniedPTAB · Dec 21, 2017 · IPR2016-00995 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 26 and 27 unpatentable as anticipated by MC33362.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“arguments. Our claim construction made clear in interpreting “multi-function circuit” that we agree with Patent Owner that the circuit is separate and distinct from the recited “control circuit” in the sense that the claim recites two distinct elements. Dec. 18. However, our interpretation further determined that although we agree “that the multi-function circuit and the control circuit are separate and distinct components in the claims, the claim language does not require that the functions performed by the two distinct circuits must be similarly separate and distinct.” Id. at 22. We further observed that, contrary to Patent Owner’s assertions, the Specification of the ’908 patent mentions certain functions of the multi-function circuit that are clearly tightly coupled to the “core regulation” function of the recited “control circuit.” Id. at 24–25 (e.g., shutting down the power supply in response to detecting over-voltage or under-voltage conditions). Thus, our Decision is consistent with our interpretation of “multi-function circuit” and expressly disagrees with Patent Owner’s arguments that the functions of the two circuits must also be separate and distinct.” slip op. at 3
Claim constructionPatents in suitUS 6,538,908 - LG Electronics, Inc. v. Broadcom CorporationInstitution deniedPTAB · Dec 19, 2017 · IPR2017-01624 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because Diaz did not disclose internally reprogrammable hardware accelerators, and the other grounds did not cure that deficiency.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“3. Construction of “configurable” In construing this term, we have considered the specification of the ’353 patent and its prosecution history. Microsoft Corp. v. Proxycinn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In accord with these portions of the ’844 patent specification and file history discussed supra, we conclude that a hardware accelerator is configurable only if its functionality can be internally reprogrammed. Thus, under our construction, an accelerator selected by an API or other instrumentality would not itself be “configurable.” This will be discussed further infra.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“However, as Patent Owner argues, Diaz ’353 does not explicitly or inherently disclose hardware accelerators that are configurable to perform decoding functions according to a plurality of decoding methods. In Diaz ’533 the overall decoder — as opposed to the constituent hardware accelerators — is configurable in that the processor controls which hardware accelerators are activated. Prelim. Resp. 2, 5–8. We see no meaningful distinction in this respect between Diaz ’353 and Sullivan ’021 which, as discussed above, discloses an API that is configurable to select various hardware accelerators, but which are not themselves configurable, to assist in the decoding process. See Prelim. Resp. 6. In sum, the functionality of the hardware accelerators of Diaz ’353 cannot be internally reprogrammed, but rather can only be bypassed or reused for various operations. Therefore, in accord with our claim construction set forth above, we determine that those hardware accelerators are not “configurable” as required by claim 1. Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“C. Obviousness of Claims 8 and 14 over Diaz ’353 and Purcell ’483, and of Claim 12 over Diaz ’353 and Fandrianto ’459 or Kim As discussed above, Petitioner has not demonstrated a reasonable likelihood of prevailing on the issue of whether Diaz ’353 discloses the claim 1 requirement of configurable hardware accelerators. Claims 8, 12, and 14 depend from claim 1 and so also include this requirement by virtue of their dependency. Petitioner’s obviousness grounds directed to these claims is premised on Petitioner’s arguments with respect to claim 1 that Diaz ’353 discloses configurable hardware accelerators. Pet. 51–63. Petitioner does not provide argument or evidence — aside from the above-considered anticipation arguments based on Diaz ’353 alone — that the combination of Diaz ’353 with Purcell ’483, Fandrianto ’459 or Kim teaches or suggests “a hardware accelerator . . . configurable to perform the decoding function according to a plurality of decoding methods.” Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 8 and 14 as obvious over Diaz ’353 and Purcell ’483, or of claim 12 as obvious over Diaz ’353 and Fandrianto ’459 or Kim.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,284,844 - Hutchinson Technology Inc. / Hutchinson Technology Operations (Thailand) Co., Ltd. v. Nitto Denko CorporationInstitution deniedPTAB · Dec 5, 2017 · IPR2017-01499 · APJ Melissa A Haapala · IPR · Institution
The Board denied institution on claims 1–4 and 6 because Petitioner did not show a reasonable likelihood of proving anticipation or obviousness on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We find that the cited evidence does not support Petitioner’s position that the specific identified trace 53 meets the “eighth line” limitation. Petitioner’s own annotated version of Figure 2A shows the identified trace 53 bypassing the lines identified as the fifth and sixth lines and not “branching from fifth and sixth lines” as asserted by Petitioner. 1 See Pet. 24. The cited portions of Contreras also fail to describe that the identified trace 53 extends to be branched from the end of line 72 (fifth line) or the end of line 74 (sixth line). See Ex. 1005, 3:6–16, 4:26–34. We do not find credible Dr. Coughlin’s testimony that there is a mistake in Figure 2A because it is conclusory and not supported by evidence. See 37. C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017)” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“that the specific identified trace 53 meets the “eighth line” limitation. Petitioner’s own annotated version of Figure 2A shows the identified trace 53 bypassing the lines identified as the fifth and sixth lines and not “branching from fifth and sixth lines” as asserted by Petitioner. 1 See Pet. 24. The cited portions of Contreras also fail to describe that the identified trace 53 extends to be branched from the end of line 72 (fifth line) or the end of line 74 (sixth line). See Ex. 1005, 3:6–16, 4:26–34. We do not find credible Dr. Coughlin’s testimony that there is a mistake in Figure 2A because it is conclusory and not supported by evidence. See 37. C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) 1 Figure 2A does show a trace that extends from the ends of lines 71, 72, 73, 74, but Petitioner maps this trace to the claimed “fourth line” and not the “eighth line.” See Pet. 21–22. (“The Board reviewed the evidence presented by the parties, and chose not to credit Skky’s expert testimony. . . we discern no reversible error in that choice.”). Furthermore, we agree with Patent Owner that even if Dr. Coughlin’s testimony is correct that the identified line should be connected with the buried conductive island (Ex. 1007 ¶ 96), Petitioner fails to explain how a line that connects to the buried conductive island meets the claim limitation “extends to be branched from the other end of said fifth line or the other end of said sixth line” (emphasis added).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In view of our analysis, we do not find it necessary to construe any terms for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9
Claim constructionPatents in suitUS 7,923,644 - Keeper Security, Inc. v. Cumberland Systems LLCInstitution deniedPTAB · Nov 20, 2017 · CBM2017-00057 · APJ Kevin W Cherry · CBM · Institution
The Board denied institution on claims 1–19 because Petitioner did not show that the patent qualified as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We agree with Patent Owner that Petitioner has failed to show adequately that the ’647 patent “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service,” to qualify as a covered business method patent. As we explained above, Secure Axcess requires a challenged patent to “have a claim that contains . . . a financial activity element.” Secure Axcess, 848 F.3d at 1381 (emphasis added). Petitioner fails to point to any element of claims of the ’647 patent that it contends meets the “financial activity element” required by Secure Axcess. Instead, it merely points to statements in the specification regarding potential applications for the claimed cryptographic algorithm. At best, Petitioner argues that the claimed encryption method can be for financial matters, such as securing e-commerce transactions, but this is not sufficient after the Federal Circuit’s guidance in both Unwired Planet and Secure Axcess. See id. Petitioner has simply failed to identify anything in the claims that are financial in nature.” slip op. at 9
Discretionary denialPatents in suitUS 8,023,647 - PTAB · Nov 14, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Rehearing
Granted rehearing and held claims 2, 4, and 6 unpatentable as obvious over Rabinovich because the wireless-network limitation encompasses a connection through a wireless hub.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub. Because we determine that the “wireless network” recited in dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s argument that Rabinovich’s replication method would have been unsuitable for use over an ad hoc network does not persuasively rebut Petitioner’s showing. Having considered the arguments and evidence of both parties, we are persuaded that Petitioner has shown by a preponderance of the evidence that dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rabinovich.” slip op. at 7
- ExcludeNot reached
“We decline to assess the merits of Petitioner’s Motion to Exclude. Even without excluding the identified evidence, we have concluded that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,904,680 - Department Of Justice v. Discovery Patents, LLCSome claims unpatentablePTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision
Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11
Patent outcomesUS 7,323,980 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,323,980 - Samsung Electronics Co., Ltd v. Uusi, LLC D/B/A NartronNo claims unpatentablePTAB · Oct 18, 2017 · IPR2016-00908 · APJ Kamran Jivani · IPR · Final written decision
Petitioner did not prove claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 unpatentable over the instituted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The levels of ordinary skill proposed by the parties do not differ significantly. Both parties’ proposed descriptions require at least an undergraduate degree in electrical engineering or related technical field, and both value industry experience (although Petitioner quantifies this experience as two to three years). We adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition. We further find the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 8
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“testimony of Dr. Cairns that the combination is not predictable and not one that would have been made by a skilled artisan. Ex. 2010 ¶¶ 102– 103. Dr. Cairns relies on the ’183 Patent’s statements that its detection circuit “operates at a higher frequency than prior art touch sensing circuits,” which “is not a benign choice” relative to the prior art detection circuits. Id. ¶ 103 (quoting Ex. 1001, 8:9–14). Dr. Cairns further relies on the ’183 Patent’s description of testing required to identify ideal frequency ranges as further evidence that the combination of prior art elements is not predictable and not one that would have been made by a skilled artisan. Id. ¶¶ 103–104. We credit the testimony of Dr. Cairns on this point over the testimony of Dr. Subramanian because Dr. Cairns’ testimony is more fully developed and is supported by record evidence. For instance, Dr. Subramanian offers no explanation of why one would have found incorporating Gerpheide’s monitoring of oscillator frequencies, calculation of new frequencies, and use of newly-calculated frequencies “to be a predictable and common sense implementation.” Ex. 1002 ¶ 72; see also Ex. 1017 ¶ 8. Rather, Dr. Subrarmanian recites a potential benefit of the combination—namely “to allow the combined Ingraham I-Caldwell system to reject electrical interference regardless of its frequency without expensive nulling circuitry.” Id. Conversely, Dr. Cairns proffers the testing described in the ’183 patent as evidence that identifying the ideal frequency ranges for use in the claimed invention was not a predictable combination of prior art elements. Ex. 2010 ¶¶ 103–104.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“On this evidentiary record, we are not persuaded one of ordinary skill in the art would have combined Gerpheide with Ingraham I and Caldwell to arrive at claim 40. Gerpheide is related to a single point input device, such as those used to provide data input in lieu of a mouse or stylus. Ex. 1012, 1:10–14, 1:19–20, 2:61–3:12. Like the ’183 patent, Ingraham I and Caldwell disclose capacitive response keypads. Ex. 1007. 1:5–9, 2:19–20; Ex. 1009, 1:6–9, 1:42– 44, 2:45–48. The ’183 patent describes monitoring electrical interference across a single electrode and varying the frequency of an oscillator frequency based on an interference measurement. Ex. 1001, 6:13–18, 8:22–9:33. Conversely, the ’183 patent describes “a multiple touch pad circuit” including “an array of touch circuits.” Id. at 18:34–46. The ’183 patent seeks to overcome the problem of unintended actuation of these touch circuits when such circuits are placed in dense arrays. Id. at 3:65–4:3. Recognizing guard rings and sensitivity adjustments “have gone a considerable way in allowing touch switches to be spaced in comparatively close proximity,” the ’183 patent addresses the remaining problem of surface contamination across the keypad. Id. at 4:14–18. The considerations described in the ’183 patent, Ingraham I, and Caldwell related to the close proximity of touch circuits in a keypad are wholly absent from Gerpheide. Petitioner relies on Dr. Subramanian’s testimony that an ordinarily skilled artisan would have looked to Gerpheide “for its teachings regarding electrical interference nullification in touch systems by measuring interference and adjusting the oscillator output frequency based on the measured interference.” Reply 7. Dr. Subramanian’s testimony, however, is conclusory on this point. See Ex. 1002 ¶¶ 69–72. The relevant portion of Dr. Subramanian’s testimony offers only that one would have found incorporating Gerpheide “to be a predictable and common sense implementation to allow the combined Ingraham I-Caldwell system to reject electrical interference regardless of its frequency without expensive nulling circuitry.” Ex. 1002 ¶ 72. It is not sufficient to demonstrate that each of the components in a challenged claim is known in the prior art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Although Petitioner has identified in Gerpheide “teachings regarding electrical interference nullification in touch systems” (Reply 7), Petitioner and Dr. Subramanian fail to address fully—in the face of Petitioner’s evidence to the contrary, including Dr. Cairn’s testimony and Rympalski—why an ordinarily skilled artisan would look to such teachings in Gerpheide with a reasonable expectation of success for combining them with Ingraham I and Caldwell.” slip op. at 18
Patent outcomesUS 5,796,183 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,796,183 - Comcast Cable Communications, LLC v. Rovi Technologies Corp.Institution deniedPTAB · Oct 16, 2017 · IPR2017-00990 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Comcast did not show a reasonable likelihood that claims 7–22 and 74 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“representing an operational state of the controlled computing device” turns, at least in part, on the scope and meaning of the term “state table.” In the specification of the ’281 patent, the terms SST and DST are used interchangeably to describe item 230 illustrated in Figure 3 (i.e., a state table). Compare Ex. 1201, 13:57–60, with id. at 28:41–49. The specification explicitly defines an SST as “[a] logical table consisting of rows of [Variable, Type, Legal Values, Default Value, Current Value] that represents the current electrical, mechanical, and/or logical state of a Service.” Id. at 8:53–56. By identifying the term SST amongst the list of terms that are discussed following the statement “[t]he detailed description that follows uses the terminology defined below” (id. at 6:20–21 (emphasis added)), the specification sets forth an explicit definition for the term SST with reasonable clarity, deliberateness, and precision. See Paulsen, 30 F.3d at 1480. Notably, nothing in the specification of the ’281 patent contradicts the definition of the term SST identified above or suggests another meaning for this term. For instance, the specification discloses that “SST layouts are logically specified in terms of rows of [Variable, Type, Legal Values, Default Value]. The actual instances of a SST would also include a Current Value field in every row.” Ex. 1201, 14:37–40. The specification also discloses the following: [an SST] logically consists of rows of: Variable, Type, Legal Values, Default Value, Current Value[.] Although entries of the [SST] in UPnP consist of these five items, the state table alternatively can contain fewer or additional items. Generally, each entry will minimally consist of a Variable name or identifier, and its current value. Id. at 16:12–18. According to the specification, representing Services in this way “ensures that the state of a Service is easily available in a common way to multiple User Control Points.” Id. at 16:44–46. In summary, we determine for purposes of this Decision that the broadest reasonable interpretation of the claim term “state table” is “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device,” which is consistent with the explicit definition of the term SST and other descriptions of a state table in the specification of the ’281 patent. We further clarify that, based on the plain language of independent claims 7, 11, 17, 18, and 20, the claimed “state table” includes content that “represent[s] an operational state of the controlled computing device.”” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“accounts for “a state table . . . representing an operational state of the controlled computing device,” as recited in independent claim 20. Accordingly, Comcast has not demonstrated a reasonable likelihood that it will prevail on its assertion that the subject matter of this independent claim would have been obvious over the teachings of Ludtke ’241. 4. Claim 74 By virtue of its dependency, claim 74 includes the same limitations as independent claim 20. Therefore, for the same reason discussed above with respect to independent claim 20, Comcast has not demonstrated a reasonable likelihood that it will prevail on its assertion that the subject matter of dependent claim 74 would have been obvious over the teachings of Ludtke ’241.” slip op. at 21
- BurdenNot shown unpatentable
“Comcast relies on for the recited “a state table . . . representing an operational state of the controlled computing device,” we agree with Rovi that Ludtke ’241 does not “expressly show[]” any of the data structures “in the form of a ‘table,’” as Comcast contends. See Prelim. Resp. 22 (citing Pet. 29). As explained above in Section II.A, we disagree with Comcast’s proposed construction of “state table” as simply “a data structure regarding the current state of a device.” Instead, we have construed the term “state table” for purposes of this Decision as “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device.” Under the proper construction, none of the data structures in Ludtke ’241 cited by Comcast (i.e., those in Figures 5, 7A, 7B, and 8), either individually or collectively, meet the claim limitation because they are not in the form of a logical table consisting of rows of at least a variable identifier and a current value. On the current record, we also agree with Rovi that Comcast’s other arguments are conclusory and do not establish that Ludtke ’241 renders obvious “a state table . . . representing an operational state of the controlled computing device,” as recited in independent claim 20. Prelim. Resp. 22–23 (citing Pet. 29–30). Comcast’s contention that the format of state data “is a matter of design choice to organize the status information for ease of use” does not support an obviousness conclusion because it fails to explain why a person of ordinary skill in the art would have replaced any or all of Ludtke ’241’s hierarchical data structures with a state table containing rows and columns. See Cutsforth, Inc. v. Motive Power, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016) (non-precedential) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. [Petitioner] must offer a reason for why a person of ordinary skill in the art would have made the specific design choice.”). Comcast’s argument that using a state table to represent an operational state of the controlled device is a matter of “design choice” is further undermined by explicit statements in Ludtke ’241 that its system eliminates the need for state tables. See Ex. 1202, 5:32–36 (“All issues such as state transitions and inter-control dependencies are handled automatically. . . by the target device independently of the intelligent controller responsibility. The present invention removes all requirements for items such as state transition tables and their execution environment. . . .”); 10:19–20 (“All concerns regarding the state transition. . . are handled inside of the target device.”); 17:30–31 (“In operation, the intelligent controller is not burdened with keeping state tables . . . .”). Notably, neither Comcast nor its declarant, Dr. Lippman, addresses these statements in Ludtke ’241. See Pet. 27–30; Ex. 1212 ¶¶ 66– 69.” slip op. at 19
Claim constructioncites KSR · GrahamPatents in suitUS 6,725,281 - Comcast Cable Communications, LLC v. Rovi Technologies Corp.Institution deniedPTAB · Oct 16, 2017 · IPR2017-00994 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Comcast did not show a reasonable likelihood of proving claims 7–22 and 74 obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Rovi’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Comcast would prevail in challenging claims 7–22 and 74 of the ’281 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ludtke ’069 teaches or suggests “a state table . . . representing an operational state of the controlled computing device,” as recited in independent claim 20. First, we agree with Rovi that Comcast fails to establish that the “self-describing information” in Ludtke ’069 teaches a “state table.” See Prelim. Resp. 18. As explained above in Section II.A, we disagree with Comcast’s proposed construction of “state table” as simply “a data structure regarding the current state of a device.” Instead, we have construed the term “state table” for purposes of this Decision as “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device.” Therefore, even if we accept Comcast’s unsupported premise that entries of the VCR’s operational status in the self-describing information are in the form of a data structure in Ludtke ’069, Comcast fails to show that such a data structure is a “state table” as recited in independent claim 20 (i.e., a logical table consisting of rows of at least a variable identifier and a current value).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“representing an operational state of the controlled computing device” turns, at least in part, on the scope and meaning of the term “state table.” In the specification of the ’281 patent, the terms SST and DST are used interchangeably to describe item 230 illustrated in Figure 3 (i.e., a state table). Compare Ex. 1601, 13:57–60, with id. at 28:41–49. The specification explicitly defines an SST as “[a] logical table consisting of rows of [Variable, Type, Legal Values, Default Value, Current Value] that represents the current electrical, mechanical, and/or logical state of a Service.” Id. at 8:53–56. By identifying the term SST amongst the list of terms that are discussed following the statement “[t]he detailed description that follows uses the terminology defined below” (id. at 6:20–21 (emphasis added)), the specification sets forth an explicit definition for the term SST with reasonable clarity, deliberateness, and precision. See Paulsen, 30 F.3d at 1480.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;2 and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). We analyze this asserted ground based on obviousness with the principles identified above in mind.” slip op. at 13
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,725,281 - Comcast Cable Communications, LLC v. Rovi Technologies Corp.Institution deniedPTAB · Oct 16, 2017 · IPR2017-00992 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Comcast did not show a reasonable likelihood that claims 7–22 and 74 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Rovi’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Comcast would prevail in challenging claims 7–22 and 74 of the ’281 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“representing an operational state of the controlled computing device” turns, at least in part, on the scope and meaning of the term “state table.” In the specification of the ’281 patent, the terms SST and DST are used interchangeably to describe item 230 illustrated in Figure 3 (i.e., a state table). Compare Ex. 1401, 13:57–60, with id. at 28:41–49. The specification explicitly defines an SST as “[a] logical table consisting of rows of [Variable, Type, Legal Values, Default Value, Current Value] that represents the current electrical, mechanical, and/or logical state of a Service.” Id. at 8:53–56. By identifying the term SST amongst the list of terms that are discussed following the statement “[t]he detailed description that follows uses the terminology defined below” (id. at 6:20–21 (emphasis added)), the specification sets forth an explicit definition for the term SST with reasonable clarity, deliberateness, and precision. See Paulsen, 30 F.3d at 1480. Notably, nothing in the specification of the ’281 patent contradicts the definition of the term SST identified above or suggests another meaning for this term. For instance, the specification discloses that “SST layouts are logically specified in terms of rows of [Variable, Type, Legal Values, Default Value]. The actual instances of a SST would also include a Current Value field in every row.” Ex. 1401, 14:37–40. The specification also discloses the following: [an SST] logically consists of rows of: Variable, Type, Legal Values, Default Value, Current Value[.] Although entries of the [SST] in UPnP consist of these five items, the state table alternatively can contain fewer or additional items. Generally, each entry will minimally consist of a Variable name or identifier, and its current value.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Comcast relies on for teaching “a state table . . . representing an operational state of the controlled computing device,” we agree with Rovi that Comcast has not pointed to any disclosure in Dara-Abrams of a data structure in the form of a table. See Prelim. Resp. 20 (citing Pet. 27–28). As explained above in Section II.A, we disagree with Comcast’s proposed construction of “state table” as simply “a data structure regarding the current state of a device.” Instead, we have construed the term “state table” for purposes of this Decision as “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device.” Under the proper construction, none of the data structures in Dara-Abrams identified by Comcast, either individually or collectively, meet the claim limitation because they are not in the form of a logical table consisting of rows of at least a variable identifier and a current value.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art;2 and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). We analyze this asserted ground based on obviousness with the principles identified above in mind.” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,725,281
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.