• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.Some claims unpatentable
  PTAB · Jan 24, 2023 · IPR2021-01266 · APJ John D Hamann · IPR · Final written decision

  Claims 1, 5, 8, and 12–13 are unpatentable over Reime; claim 11 is unpatentable over Reime and Hinckley. The remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted the following definition for one having ordinary skill in the art at the time of the invention of the ’093 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Dec. on Inst. 22 (quoting Pet. 10 (citing Ex. 1002 ¶ 47)). This definition mirrors what Petitioner proposed, except we excised the phrase “at least” which modified the years of experience as that language is vague and open-ended. Id. Patent Owner proposes a different definition for one of ordinary skill in the art, but does not specifically address any deficiencies in Petitioner’s Petitioner’s obviousness arguments “are not affected [by] differences in the definitions.” Id. (citing Ex. 2056 ¶ 10). Because Petitioner’s definition of the level of skill in the art (excluding “at least”) is consistent with the ’093 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner and conclude that Patent Owner incorrectly attempts to exclude touching from the claims. Patent Owner incorrectly focuses on the term “propinquity” itself and ignores the surrounding claim language. That is, whether propinquity and touching are mutually exclusive, as Patent Owner argues, is inapposite. The claims do not recite having a of propinquity,” without reciting a lower bound. E.g., Ex. 1001, 67:48–51 (emphasis added). The plain meaning thus includes a degree of propinquity, and being closer. The Specification supports this conclusion by disclosing detecting a user’s fingers when they touch, or are located in propinquity to, a surface. See, e.g., id. at 48:48–52 (“[A] position of a user’s fingers is detected by means of a touch responsive input functionality and/or propinquity responsive input functionality.”), 49:49–52 (“When the user’s fingers touch, as in FIG. 20B, or is located in propinquity to, as in FIG. 20A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 50:25–28 (“When the user’s fingers touches, as in FIG. 21B, or is located in propinquity to, as in FIG. 21A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 50:58–61 (“When the user’s fingers touch, or are located in propinquity to, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”). In other words, the Specification discloses that the fingers are sensed when they are within the degree of propinquity, or are closer (e.g., touching). Id.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Patent Owner that Petitioner does not demonstrate by a preponderance of the evidence that one of ordinary skill in the art would have found it obvious to modify Reime’s teachings to distinguish between an object’s directions of motion. In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (holding that we must consider whether a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention). First, we find that Reime’s teachings about tracking the up/down movement of an object (as opposed to left/right movement) relate to two-dimensional movement, rather than three-dimensional movement. Ex. 1010 ¶ 108. Second, we find that Reime’s teaching that “the sensitivity and the optical response of the light receivers . . . may vary from one application to another” does not suggest tracking three-dimensional movement. Id. ¶ 111. Rather, this passage relates to at what distance from a touchpad device Reime’s sensors detect an object (i.e., when is the object adjacent to the surface). Id. ¶¶ 74, 111. Hence, we find that Reime’s teachings do not provide sufficient reasoning to modify Reime in the manner Petitioner does. which in our view, and taken as a whole, uses impermissible hindsight to reconstruct the invention of claim 11. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57– 58; Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” (citation omitted)). In addition, we find that Dr. Bederson’s cited testimony is conclusory, and lacks the underlying factual support to guard against impermissible hindsight. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57–58. In sum, we find that Petitioner does not show that one of ordinary skill in the art would have been motivated to modify Reime in the manner Petitioner does. Hence, we determine that Petitioner does not demonstrate by a preponderance of the evidence that claim 11 would have been obvious to one of ordinary skill in the art over Reime.” slip op. at 43

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “First, we find that Reime’s teachings about tracking the up/down movement of an object (as opposed to left/right movement) relate to two-dimensional movement, rather than three-dimensional movement. Ex. 1010 ¶ 108. Second, we find that Reime’s teaching that “the sensitivity and the optical response of the light receivers . . . may vary from one application to another” does not suggest tracking three-dimensional movement. Id. ¶ 111. Rather, this passage relates to at what distance from a touchpad device Reime’s sensors detect an object (i.e., when is the object adjacent to the surface). Id. ¶¶ 74, 111. Hence, we find that Reime’s teachings do not provide sufficient reasoning to modify Reime in the manner Petitioner does. which in our view, and taken as a whole, uses impermissible hindsight to reconstruct the invention of claim 11. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57– 58; Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” (citation omitted)). In addition, we find that Dr. Bederson’s cited testimony is conclusory, and lacks the underlying factual support to guard against impermissible hindsight. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57–58. In sum, we find that Petitioner does not show that one of ordinary skill in the art would have been motivated to modify Reime in the manner Petitioner does. Hence, we determine that Petitioner does not demonstrate by a preponderance of the evidence that claim 11 would have been obvious to one of ordinary skill in the art over Reime.” slip op. at 43

  Patent outcomesUS 9,569,093 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,569,093
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.Some claims unpatentable
  PTAB · Jan 19, 2023 · IPR2021-01239 · APJ John D Hamann · IPR · Final written decision

  Claims 31 and 41 are unpatentable as obvious over Yamaguchi; claims 15–18, 21, 22, 26, and 30 were not shown unpatentable on the other grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted the following definition for one having ordinary skill in the art at the time of the invention of the ’850 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Dec. on Inst. 20–21 (quoting Pet. 8–9 (citing Ex. 1002 ¶ 44)). This definition mirrors what Petitioner proposed, except we excised the phrase “at least” which modified the years of experience as that language is vague and openended. Id.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner and conclude that Patent Owner incorrectly attempts to exclude touching from the claims. Patent Owner incorrectly focuses on the term “propinquity” itself and ignores the surrounding claim language. That is, whether propinquity and touching are mutually exclusive, as Patent Owner argues, is inapposite. The claims do not recite having a particular propinquity. Rather, they recite “ha[ving] at least a predetermined degree of propinquity,” without reciting a lower bound. E.g., Ex. 1001, 67:2–4 (emphasis added). The plain meaning thus includes a degree of propinquity, and being closer. user’s fingers when they touch, or are located in propinquity to, a surface. See, e.g., id. at 47:28–31 (“[A] position of a user’s fingers is detected by means of a touch responsive input functionality and/or propinquity responsive input functionality.”), 48:26–29 (“When the user’s fingers’ touch, as in FIG. 20B, or is located in propinquity to, as in FIG. 20A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 49:1–4 (“When the user’s fingers touches, as in FIG. 21B, or is located in propinquity to, as in FIG. 21A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 49:33–36 (“When the user's fingers touch, or are located in propinquity to, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”). In other words, the Specification discloses that the fingers are sensed when they have at least the degree of propinquity, or are closer (e.g., touching). Id.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “Having reviewed the parties’ arguments, we agree with Petitioner and conclude that the claims do not require a detector assembly to be physically separate from (i.e., not interspersed with) a pixel array. See, e.g., Ex. 1001, 66:65–67:11. This is not to say that a detector assembly (e.g., detector elements) and the pixels of a pixel array are not distinct components, because they are in that they are separate components and perform different functions. See, e.g., id. at 4:44–54 (disclosing that detector elements detect electromagnetic radiation), 9:50–55 (disclosing display devices including a pixel array operative to provide a visually sensible output), 36:41–46 (disclosing discrete single-element detector elements that are commercially available). Rather, the gravamen of the parties’ dispute is whether claim 15 covers embodiments of the ’850 patent where detector elements are interspersed (at least along an edge) with pixels in a pixel array. Nothing in the claim language or Specification precludes claim 15 from covering those embodiments. Id. In addition, claim 15 recites the location of a detector assembly as being “arranged at least one edge of a viewing plane defining plate.” Id. at by including being behind, about, or along an edge within its scope. Ex. 1001, 42:61–67. Moreover, the ’850 patent illustrates that detector elements can be located, inter alia, along and behind an edge while being interspersed in a pixel array. See id. at Fig. 18F (showing detector elements 1324 along and behind an edge of plate 1328); cf. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (considering drawings for what they reasonably disclose to one of ordinary skill in the art). We find unavailing Patent Owner’s reliance on Becton. First, unlike in Becton where the same structure was relied upon, detector elements and a pixel array are separate components that perform separate functions. Becton, 616 F.3d at 1255 (accused infringer asserting “that the spring means and the hinged arm can be the same structure”); Ex. 1001, 4:44–54, 9:50–55, 36:41–46. Second, in Becton, the claims required one claim element to be “connected to” another claim element, which would be nonsensical if they were the same structure. See Becton, 616 F.3d at 1255. Here, claim 15 recites a location of a detector assembly (i.e., “arranged at least one edge of a viewing plane defining plate”), which is compatible with the detector assembly being interspersed in a pixel array. See, e.g., Ex. 1001, Fig. 18F.” slip op. at 22

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “In addition, we have reviewed the testimony of the parties’ experts that Patent Owner cites, but we give it little, if any, weight in light of the clear disclosure of the intrinsic evidence. See Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (finding extrinsic evidence “is generally of less significance than the intrinsic record” in matters of claim construction); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). Lastly, our conclusion to not include “and does not include touching”” slip op. at 14

  Patent outcomesUS 8,624,850 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,624,850
• Apple Inc. v. Zipit Wireless, Inc.Some claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01130 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 2, 13, 19, 23, 24, 27, 29–31, 46, and 48–50 are unpatentable as obvious; claims 40–42 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;4 Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner offers no proposed claim constructions and applies the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 3. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the patent’s prosecution history.” Id. at 3–4 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11. We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

  Patent outcomesUS 7,894,837 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,894,837
• Juniper Networks, Inc. / Palo Alto Networks, Inc. v. Packet Intelligence LLCSome claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00486 · APJ Kristi L R Sawert · IPR · Final written decision

  Claims 31 and 33 are unpatentable under § 103; claim 34 is not shown unpatentable because the evidence and reasoning do not establish the associative cache limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field (or its equivalent), and one to two years of experience working in networking environments, including at least some experience with network traffic monitors and/or analyzers.” Pet. 8–9 (citing Ex. 1056, 13–14; Ex. 1006 ¶¶ 195–201). In our Institution Decision, we adopted Petitioner’s articulation of the level of skill in the art, which we determined was consistent with the ’789 patent and the asserted prior art. Inst. Dec. 26–27. In its Response, Patent Owner states that it “generally does not object to this finding.” PO Resp. 22. We apply Petitioner’s definition of the level of ordinary skill in the art, as we did in the Institution Decision. Inst. Dec. 26–27. We also maintain our determination that the definition offered by Petitioner is consistent with the teachings of the ’789 patent and the prior art of record. Cf. Okajima, 261 F.3d at 1355 (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “’099 patent as describing two seemingly disjointed packet exchanges involving two different clients or users (the first packet exchange between a client and the server and the second packet exchange between the client who has “inadvertently seen” the print service address and SAP #5) as belonging to the same “conversational flow.” And because Patent Owner’s proposed construction—that a “conversational flow” is client-specific—is inconsistent with the written description, we decline to limit a “conversational flow” to a specific client or user.” slip op. at 20

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

    “been motivated, based on Ferdinand’s teachings, to “modify Riddle’s monitor with an input buffer memory to temporarily store received packets and improve performance by limiting packet drops,” and that including such input buffer memory in a packet acquisition device in accordance with Riddle’s and Ferdinand’s teachings “amounts to nothing more than combining known prior-art technologies used in their ordinary and predictable manner to queue packet traffic.” Pet. 38 (citing Ex. 1006 ¶ 276). Moreover, we agree with Petitioner that “Riddle and Ferdinand are in the same field of endeavor and contain overlapping disclosures with similar purposes,” and “illustrate that it was well-known and ubiquitous in the art for networking devices to include database storage structures” such as buffers. Id. at 28–29 (citing Ex. 1009, 19:8–12, 20:22–22:12, 26:2–7, 28:14–17, Figs. 5, 7A–7C; Ex. 1006 ¶ 258). Patent Owner does not substantively address Petitioner’s contentions or otherwise argue that Riddle, either alone or in combination with Ferdinand, fails to disclose or suggest the input buffer memory limitation recited in claim 19. Accordingly, for the reasons detailed above, we are persuaded that Petitioner has shown by a preponderance of the evidence that Riddle and/or the combination of Riddle and Ferdinand teaches or suggests this subject matter, and that an ordinarily skilled artisan would have been motivated to combine the teachings of the prior art as Petitioner proposes. We therefore adopt the contentions set forth in the Petition and in Dr. Weissman’s Declaration as mapped to this undisputed limitation of claim 19 as our own findings. NuVasive, 841 F.3d at 974.” slip op. at 37

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “not established by a preponderance of the evidence that claim 34 is unpatentable over the combination of Riddle, Ferdinand, and Wakeman. We agree with Patent Owner that Petitioner provides insufficient evidence to support its contentions. Indeed, the Petition’s discussion with respect to the “associative cache subsystem” limitation of claim 34 does not even cite Wakeman but instead cites only the testimony of Dr. Weissman and the specification of the ’789 patent. See Pet. 81.14 And neither Dr. Weissman’s 14 To be sure, the discussion of claim 34 in the Petition also includes an internal cross-reference to the “discuss[ion] for claim 33,” discussed at pages 79–80 of the Petition. Pet. 81. Although the discussion of that assertion that the artisan “would have understood that Wakeman’s CAM cache is fully associative due to Wakeman’s lack of a cache placement policy indicating there are no constraints on placement within Wakeman’s cache.” Id. We agree with Patent Owner that Dr. Weissman “does not explain why the absence of a cache placement policy in Wakeman would lead [an ordinarily skilled artisan] to just assume that Wakeman was teaching using of an associative cache placement policy.” PO Resp. 54. Thus, we determine that Dr. Weissman’s testimony in this regard is entitled to little, if any, weight. 37 CFR § 42.65(a). Moreover, as Patent Owner argues and we agree, Dr. Weissman’s statement that Wakeman could be modified to utilize an associative cache does not demonstrate that an ordinarily skilled artisan would have been motivated to implement Wakeman’s cache as a fully associative cache. PO Resp. 54–55 (citing In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990)). Although we agree with Petitioner that there is no indication that Wakeman disparages the use of an associative cache (Reply 28–29), there still needs to be “some rational underpinning to support the legal conclusion of obviousness” (KSR, 550 U.S. at 418). We do not find such underpinning on the record before us. Accordingly, we determine that Petitioner has not shown by a preponderance of the evidence that claim 34 is unpatentable over Riddle in view of Ferdinand and further in view of Wakeman.” slip op. at 60

  Patent outcomesUS 6,954,789 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,954,789
• Juniper Networks, Inc. / Palo Alto Networks, Inc. v. Packet Intelligence LLCSome claims unpatentable
  PTAB · Sep 8, 2021 · IPR2020-00337 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1, 2, 7, 16, and 18 are unpatentable as obvious over Riddle, Ferdinand, and Wakeman; claim 3 was not shown unpatentable because the associative-cache obviousness showing lacked sufficient evidence and reasoning.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art and, thus, begin with the level of ordinary skill in the art. The level of ordinary skill in the art is “a prism or lens through which . . . the Board views the prior art and the claimed invention” to prevent hindsight bias. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). “[O]ne or more factors may predominate.” Id. Petitioner contends that an ordinarily skilled artisan would have “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field (or its equivalent), and one to two years of experience working in networking environments, including at least some experience with network traffic monitors and/or analyzers.” Pet. 7–8 (citing, inter alia, Ex. 1006 ¶¶ 195–201). In our Institution Decision, we adopted Petitioner’s articulation of the level of skill in the art, which we determined was consistent with the ’646 patent and the asserted prior art. Inst. Dec. 25– 26. In its Response, Patent Owner states that it “generally does not object to this finding.” PO Resp. 22. art, as we did in the Institution Decision. Inst. Dec. 25–26. We also maintain our determination that the definition offered by Petitioner is consistent with the teachings of the ’646 patent and the prior art of record. Cf. Okajima, 261 F.3d at 1355 (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “heart of the parties’ dispute (Ex. 1001, 2:37–45), we determine that the “for instance” phrase is exemplary and does not limit a “conversational flow” to a specific client or user. The phrase “for instance” is synonymous with “for example,” and necessarily indicates that “the running of an application on a server as requested by a client” exemplifies, but does not limit, the conversational flow to a server and a specific client or user. Our determination that the “for instance” phrase is exemplary and non-limiting is consistent with Patent Owner’s argument in its Preliminary Response that the “some” phrase (“some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and server”) is non-limiting. Specifically, Patent Owner argued that the use of the word “some” necessarily means that “some conversational flows involve multiple connections, while, some involve a single connection.” Prelim. Resp. 24. Similarly here, while “conversational flow” certainly may involve the running of an application on a server as requested by a single client or user, “conversational flow” is not limited to a single client or user.” slip op. at 17

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

    “Petitioner has shown by a preponderance of the evidence that the combination of Riddle and Ferdinand renders obvious the recited flow-entry database limitations in view of the proper construction of “conversational flow.” See supra § III.C. Petitioner’s assertions, which we adopt, are supported by the cited evidence and are persuasive. Moreover, we are persuaded that a person of ordinary skill in the art would have been motivated to combine the teachings of Riddle and Ferdinand as proposed by Petitioner and supported by the testimony of Dr. Weissman. See Pet. 25–27 (citing Ex. 1006 ¶¶ 256–257, 259).” slip op. at 44

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

    “not established by a preponderance of the evidence that claim 3 is unpatentable over the combination of Riddle, Ferdinand, and Wakeman. We agree with Patent Owner that Petitioner provides insufficient evidence to support its contentions. Indeed, the Petition’s discussion with respect to claim 3 does not even cite Wakeman, but instead cites only the testimony of Dr. Weissman and the specification of the ’646 patent. See Pet. 75–76.12 And neither Dr. Weissman’s testimony nor the ’646 patent provides any persuasive support for Petitioner’s assertion that “a [person of ordinary skill in the art] would have understood that Wakeman’s CAM cache is fully associative due to Wakeman not disclosing a cache placement policy indicating there are no constraints on placement within Wakeman’s cache.” We agree with Patent Owner that “Dr. Weissman does not explain why the absence of a discussion of a cache placement policy in Wakeman would lead a [person of ordinary skill in the art] to just assume that Wakeman was teaching using of an associative cache placement policy,” and that his testimony in this regard is entitled to little, if any, weight. PO Resp. 58; 37 CFR § 42.65(a). As Patent Owner contends, Dr. Weissman’s statement that Wakeman could be modified to utilize an associative cache does not 12 To be sure, the discussion of claim 3 in the Petition also includes an internal cross-reference to the “discuss[ion] regarding element 1.3,” i.e., the “cache subsystem” limitation of claim 1, discussed at Pet. 57–59. Although the discussion of that limitation does include citations to Wakeman (see Pet. 58 (citing Ex. 1014, 1:20–28, 1:55–67, 2:31–49, 3:36–45, 4:31–40, 5:22–27, Figs. 2, 3)), however, notably absent from that discussion is any assertion that Wakeman specifically suggests an associative cache. motivated to implement Wakeman’s cache as a fully associative cache. Id. (citing In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990)). Although we agree with Petitioner that there is no indication that Wakeman disparages the use of an associative cache (Reply 28–29), there still needs to be “some rational underpinning to support the legal conclusion of obviousness” (KSR, 550 U.S. at 418), and we do not find such underpinning on the record before us. Accordingly, we determine that Petitioner has not shown by a preponderance of the evidence that claim 3 is unpatentable over Riddle in view of Ferdinand and further in view of Wakeman.” slip op. at 59

  Patent outcomesUS 6,771,646 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,771,646
• Apple Inc. v. MPH Technologies OYSome claims unpatentable
  PTAB · Nov 4, 2020 · IPR2019-00823 · APJ John D Hamann · IPR · Final written decision

  Claims 1, 3, 5–8, and 10 are unpatentable as obvious; claims 2, 4, 9, and 11 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted Petitioner’s proposed definition for one having ordinary skill in the art at the time of the invention of the ’494 patent as one who would have had “a Bachelor’s (B.S.) degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, as well as at least 2–5 years of academic or industry experience in the field of Internet security.” Dec. on Inst. 7–8 (citing Pet. 17; Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute our adoption of Petitioner’s definition, nor otherwise address the level of ordinary skill at the time of the invention of the ’494 patent. See generally PO Resp.; see also Ex. 2002 ¶ 22. Because Petitioner’s definition of the level of skill in the art is consistent with the ’494 patent and the asserted prior art, we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s definition in our analysis below. IV.” slip op. at 8

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

    “A. Unique Identity In the Petition, Petitioner argues that “unique identity” means “one or more parameters that uniquely identify a secure connection.” Pet. 18. In our Decision on Institution, “we concluded that no express claim construction of the term ‘unique identity’ [wa]s necessary” because in its Preliminary Response “Patent Owner d[id] not argue that RFC3104 or Grabelsky fails to disclose this term and, therefore, this term is not in controversy.” Dec. on Inst. 9 (citations omitted). In the subsequent papers, the parties confirm “that there is no reason to construe this term” because “Patent Owner does not dispute that some form of a unique identity is found in the primary reference.” PO Resp. 20; see also Pet. Reply 8 (agreeing that this term need not be construed). Accordingly, we find that no express construction of “unique identity” is needed. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Specification support its proposed construction for this term. First, we find that Patent Owner conflates “mobility” with “mobile computer.”5 The Specification states that “the term mobility . . . meant moving from one network to another,” rather than the term “mobile computer” having this meaning. Ex. 1001, 4:34–38 (emphasis added). Moreover, the Specification uses the term “mobility” as a capability or condition. For example, the Specification uses the term “mobility” as follows: (i) certain “protocols are not well suited to mobility”; (ii) “[t]he intermediate host might be a Mobile IP home agent, that provides mobility for the connection between the mobile terminal and the home agent . . . .”; (iii) a disclosed “method solves the mobility problem, at the cost of adding extra headers to packets”; and (iv) “[o]ne example of a change in the [security association (‘SA’)] between the first computer and the intermediate computer is the change of addresses for enabling mobility.” Ex. 1001, 5:7–8, 5:17–21, 5:33–34, 7:56–58 (emphases added). In other words, mobility is a capability a mobile computer has, rather than being synonymous with mobile computer. As such, these passages from the Specification support Petitioner’s construction” slip op. at 17

  • Strike new argumentNot reached

    “Lastly,12 we find that Patent Owner’s remaining arguments for this limitation are premised on either its (i) proposed construction (i.e., a mobile computer is “a computer that moves from one network to another as opposed to a computer that is only capable of a static secure connection”), which we do not adopt; or (ii) inapposite argument that the mobile computer needs to 12 We need not, and thus do not, reach whether Petitioner’s arguments for this limitation in its Reply (Pet. Reply 8–14) are new arguments, as Patent Owner argues in its Sur-Reply (PO Sur-Reply 13–24), because we do not rely on them, but instead, we rely on Petitioner’s arguments, and citations to the record evidence, from the Petition. maintain the same secure connection. See PO Resp. 25–51. Thus, we find these arguments unavailing. Likewise, Dr. Borella’s declaration testimony is not helpful to our analysis as his “declaration employs the assumption that the ‘mobile computer’ recited in the claims moves from one network to another,” which is contrary to our construction, as we discuss above. Ex. 2010 ¶ 42; supra Section IV(B) (construing mobile computer).” slip op. at 37

  Patent outcomesUS 9,712,494 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,712,494
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01144 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2, 7, and 8 are unpatentable as obvious over Bednar and Gunther; claim 3 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8; see Pet. 29 (citing Ex. 1102 ¶¶ 26–27).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “construction is erroneous. Accordingly, because the ’922 patent defines “power island,” we maintain and reaffirm that “power island” means a “group of components with similar power requirements.”” slip op. at 12

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

    “not to expressly construe “conversion controller” was erroneous or that an express construction is required to resolve any dispute between the parties. Accordingly, we maintain and reaffirm that because the construction of “conversion controller” does not resolve a controversy in the matter before us, we decline to construe it expressly.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 86

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Department Of Justice v. Discovery Patents, LLCSome claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,323,980
• Qualcomm Inc. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-01580 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 5, 6, 8, 17, 18, and 20 are unpatentable; claims 7 and 19 were not shown unpatentable because Cuffaro does not disclose a specified number of votes and the obviousness testimony was insufficient.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, Qualcomm Inc. filed substantially the same petition in IPR2015-01580 (IPR2015-01580, Paper 1), together with a Motion for Joinder of IPR2015-01580 with the instant proceeding (IPR2015-01580, Paper 2). On September 17, 2015, we granted a motion to terminate this proceeding with respect to MediaTek Inc. and MediaTek USA, Inc., but not as to Patent Owner, leaving only Patent Owner as a party to the proceeding. Paper 22. On November 16, 2015, we granted Qualcomm Inc.’s Motion for Joinder, joining Qualcomm Inc. to the instant proceeding. Paper 23. Qualcomm Inc. (“Petitioner”) is now the sole petitioner.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “phrase “means for . . . .” Petitioner construes these terms in accordance with 35 U.S.C. § 112 ¶ 6, identifying an algorithm described in the specification corresponding to each “means” limitation. Pet. 7–9 (citing Ex. 1001, col. 8, l. 8–38, col. 8, ll. 49–col. 9, l. 16, col. 19, l. 25–col. 20, l. 67). Petitioner identifies a general purpose computer, processor 704 in Figure 7, as structure for “executing the instructions associated with the corresponding function” recited in each “means limitation,” except for the “means fro [sic] the first participant to communicate . . .” recited in claims 5 and 20. Pet. 7–9 (citing Ex. 1001, Fig. 7, col. 25, ll. 13–18). For the “means fro [sic] the first participant to communicate” limitation, Petitioner identifies transceiver 216, shown in Figure 2, reproduced supra. Pet. 9 (citing Ex. 1001, Fig. 2, col. 9, ll. 54–59). Patent Owner does not contest these identifications. We agree with Petitioner’s identifications and adopt them as our constructions of the means-plus-function limitations. Specifically, as to those means-plus-function limitations that correspond to processor 704 in Figure 7, Petitioner identifies in its claim chart the algorithm described in the specification for performing each function of these means. Pet. 8–9; See also Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (“When dealing with a ‘special purpose computer-implemented means-plus-function limitation,’ [the Federal Circuit] require[s] the specification to disclose the algorithm for performing the function.”); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009) (“[W]hen a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.”).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We are not persuaded by this reasoning. As Petitioner observes, the embodiments of the ’624 patent identified by Patent Owner are characterized as “examples,” and a person of ordinary skill “would understand that the example scenarios of the specification are not necessarily limiting on the claims.” Reply 3 (citing Ding Supp. Decl. ¶ 6). In addition, Petitioner notes that claim language in related patents owned by Patent Owner explicitly refers to participants, evidencing Patent Owner’s understanding “how to expressly create participant-specific voting requirements in claims.” Id. at 3. At the oral hearing, Patent Owner suggested that explicit reference to participants in such other claim language “was because it wanted to clarify that each participant got a single vote,” and explained its position that, in the claims at issue in this proceeding, “participant is implicit in the claim language as it is.” Tr. 78:16–25. But the claims are directed to a “communications apparatus,” and recite “votes” in the context of what the “particular communications channel” “receives.” Nothing within the structure of the claims requires resolving the origin of such votes. Furthermore, Patent Owner’s proposed construction is inconsistent with the construction it agreed to before the district court in the Qualcomm Litigation. In that litigation, the parties agreed that the term “vote” should be construed as “a binary expression (to use or not to use),” a construction that makes no reference to the origin of the “vote” as from a participant or otherwise. Ex. 1014, 6. We see no compelling reason to excuse the inconsistency by adopting a narrower construction when the Board applies a claim-construction standard (broadest reasonable interpretation) that could only result in the same or a broader construction. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to find infringement.” (quoting Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970))). Accordingly, we construe “votes to use a particular communications channel” as “expressions of preference for using the particular communications channel.”” slip op. at 10

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

    “Patent Owner responds that “the Gerten device is not capable of and expressly teaches away from performing this functionality.” PO Resp. 15 (citing Melendez Decl. ¶ 33). Patent Owner contends that “Gerten’s disclosure is directed toward eliminating channels for use in an entire piconet as opposed to eliminating channels for use by certain participants within a piconet.” Id. at 16 (emphasis added). Patent Owner argues that Gerten does not disclose a selection kernel capable of maintaining synchronization between a master and more than one slave in a piconet, with the master and one slave using a default set of channels while the same master and a different slave use a different set of channels. Id. We are not persuaded that the absence of a specific teaching of such a selection kernel supports the conclusion that one of skill in the art would understand Gerten to function in the manner Patent Owner suggests. In this instance, Petitioner refers to two embodiments of Gerten “in which a first participant communicates with a second participant via a normal sequence and with another participant via an adaptive hopping sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below. Figure 3 illustrates “methodology for determining and communicating channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As illustrated in the drawing, a master unit performs a discovery process (block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 60, 64. If the slave unit is capable of using interference avoidance, the master unit begins the process of determining a modified set of channels for use (block 120). Id. ¶ 45. If a second slave unable to use interference avoidance enters the piconet, standard frequency hopping is used. Supp. Ding Decl. ¶ 9. Under Patent Owner’s characterization of Gerten, entry of the second slave into the network would require the first slave necessarily to revert back to the default hopping sequence. Id. ¶ 10. But this would undermine the stated benefits of Gerten, which explicitly discloses: The above process can be applied to a Bluetooth example and includes identification of a Bluetooth device’s ability to support interference avoidance, the measurements of signal strength on all channels and identification of which channel should not be used without violating the FCC rules, a method of modifying the Bluetooth hop sequence so that it will avoid channels containing strong or fixed interferers while still supporting standard Bluetooth hopping with other non-enabled members of the piconet and a method of relating necessary interference avoidance information to the remote Bluetooth devices. Ex. 1003, col. 4, l. 66–col. 5, l. 9 (emphasis added).” slip op. at 17

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentable
  PTAB · May 9, 2016 · IPR2015-01400 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1, 2, and 5 of the ’469 patent and claim 3 of the ’121 patent are unpatentable under §103; the other challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Patent Owner’s argument is not persuasive. We agree with Petitioner that 35 U.S.C. § 315(b) applies only to civil actions for patent infringement, and not to an administrative proceeding, including an ITC investigation. See Amkor, Paper 98, slip op. at 6–18; Brinkman Corp. v. A&J Mfg., LLC, Case IPR2015-00056, slip op. at 7–8 (PTAB Mar. 23, 2015) (Paper 10). Although Amkor and Brinkman Corp. are not precedential, we find them instructive and directly on point. In Amkor, the Board determined that “had Congress intended for arbitration, ITC, or other non-judicial proceedings to trigger the time bar of section 315(b), it would have used more encompassing language than ‘Patent Owner’s Action’ and ‘served with a complaint,’ which are harmonious with a civil action.” Amkor, Paper 98, slip op. at 11 (determining that the time bar is limited to being triggered by the service of a complaint in a civil action). A similar decision by the Board in Brinkman Corp. reaches the same result and specifically is directed toward an ITC investigation. Accordingly, we are not persuaded by Patent Owner that Petitioner is barred under 35 U.S.C. § 315(b).” slip op. at 18

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

    “Petitioner further contends that WINS discloses that NetBIOS is incorporated into the WINS system and expressly discloses that WINS should be combined with NetBIOS. Id. at 37–38 (citing 198 Ex. 1002 ¶ 81; Ex. 1003, 65). Accordingly, Petitioner concludes that one of ordinary skill in the art would have known about and been motivated to combine the references. Id. Petitioner further contends that a person with ordinary skill in the art would have been motivated similarly to combine WINS and NetBIOS with Pinard because Pinard discloses a telephony application with a graphical user interface that allows a user to establish and manage telephone calls. Id. at 38–39. Petitioner specifically argues that Pinard references Windows 3.1 and WINS references Windows 3.11 and Windows NT, and, therefore, a person with ordinary skill in the art would have known how to adapt the graphical user interfaces in Pinard to the system in WINS. Id. We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by WINS, and Pinard’s program is compatible with a Windows operating system, and, therefore, a person with ordinary skill in the art would have readily combined the disclosures of WINS, NetBIOS, and Pinard.” slip op. at 30

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

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly, and (2) requiring a renewal time period in which a computer must reregister. Ex. 1003, 62–63, 68–69. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1003, 68, 150. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1004, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to WINS, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.”” slip op. at 23

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

    “In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query 11 Petitioner argues that the relevant specifications do not include an embodiment that “guarantee[s]” that an entry in its database is online, and, therefore, Patent Owner’s argument does not distinguish the ’704, ’469, and ’121 patents over the prior art. Addʼl Br. 6‒7. However, such an argument goes towards whether there is written description and enablement support for the claims. In Straight Path, the Federal Circuit did not offer a view as to the sufficiency of the written description or enablement based on the asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time that the query is transmitted to the server.” Id. at 1363. Petitioner and Patent Owner argue that the limitations “on-line status” and “is accessible” have the same meaning as “is connected to the computer network.” See 209 Pet. 35–36; 209 PO Resp. 36‒48; 198 Pet. 35–36; 198 PO Resp. 35‒46; 196 Pet. 29; 196 PO Resp. 38‒51. Similar to “is connected to a computer network,” the “on-line status” and “is accessible” of the second process are recited in the present tense, and therefore must be claim construction provided by the Federal Circuit because “written-description and enablement challenges were not, and could not have been, part of the inter partes review.” Straight Path, 806 F.3d at 1363. We similarly do not determine whether this claim limitation is supported by the specifications of the ʼ704, ʼ469, and ʼ121 patents. determined at the time of the querying whether the second process “is accessible” or selecting of the process having an “on-line status.” Therefore, we construe “on-line status” and “is accessible” as having the same meaning as “is connected to the computer network.”” slip op. at 12

  Patent outcomesUS 6,009,469 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,009,469

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.