• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Mar 7, 2023 · IPR2021-01449 · APJ Julia Heaney · IPR · Final written decision

  Claim 5 is unpatentable as anticipated by Kim; claims 1–4 were not shown unpatentable under the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’174 patent and the prior art of record. We note, however, that neither party contends that any issue in this case turns on the differences between the parties’ definitions of one of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Having reviewed the parties’ arguments and evidence, we determine that Petitioner’s proposed construction of “rotation vector” is consistent with the ’174 patent’s usage of the term “rotation vector” (or “vector of rotation”). See Ex. 1001, 1:54–2:11. Dr. Kanellakopoulos’s opinion supports that “rotation vector” would be understood by a person of ordinary skill in the art to describe the motion of a body that is rotating around a point. As to the other aspects of Patent Owner’s proposed construction, describing the characteristics of magnitude and direction, we determine that those attributes are not necessary to interpreting how a skilled artisan would understand “rotation vector” in light of the claim language and specification. See Tr. 47:26–48:7 (in Patent Owner’s proposed construction of “rotation vector,” “the magnitude requirement is not particularly important”). We address the parties’ arguments as to differences between a rotation vector and angular momentum vector in Section II.D.2 below, because they underlie Petitioner’s challenges involving Kleppner.” slip op. at 14

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

    “Having considered the parties’ positions as to construction of the term “movement vector” and applicability of the definition of “movement vector” set forth in the ’174 patent specification (Ex. 1001, 2:29–31), we construe the term “movement vector” to mean “a vector derived from the cross product of the centrifugal force vector and the rotation vector.” We adopt the definition set forth in the ’174 specification because we determine patentee acted as its own lexicographer. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”). We agree with Petitioner that the words “while a vehicle is turning” would be superfluous in the construction, because the step of “detecting a movement vector during the turn” already recites that the vehicle is turning. Apple, Inc. v. Ameranth, 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”)” slip op. at 16

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

    “We decline to adopt Patent Owner’s construction because it improperly reads into claim 5 a requirement that the specification and claim language do not support. The specification passages relied on by Patent Owner do not expressly state that a vehicle independent state must be determined while the device is inside a vehicle, and contrary to Patent Owner’s argument, they also do not necessarily imply that. For example, the descriptions of “vehicle independent movement” and “vehicle independent event” in the specification (see Ex. 1001, 1:16, 42) refer to “phone falling to the ground.” “Falling to the ground” implies that the phone may be outside a vehicle, not inside. Further, the specification’s reference to detecting a vehicle dependent state “while also” recognizing a vehicle independent event does not necessarily imply that the vehicle dependent state and vehicle independent event are being detected simultaneously, as Patent Owner argues. In the language of claim 5, a “vehicle independent state” is recited in the determining step (step c), and the requirement that the portable device is located “inside a vehicle” relates to creation of an operation indicator, as part of the detecting step (step b). Patent Owner does not dispute this, and agrees that a portable device “not in the vehicle” can satisfy the determining step (step c). Tr. 73:5–8. Patent Owner, however, argues step c’s recitation that a “vehicle independent state” is based on step b’s “predetermined criteria” creates a link between “vehicle independent state” and step b, and thus an “express requirement” in step c that the device is located inside the vehicle. See Tr. 73:8–26, 76:1–3. We decline to read this requirement into the claim language. Although the claim language states that determining a “vehicle independent state” is based on “predetermined criteria,” and step b describes comparing “predetermined criteria” to an “operation indicator” that is created when the device is inside a vehicle, it does not limit the step of determining a vehicle independent state to a time when the portable device is inside a vehicle. Accordingly, we construe “vehicle independent state” to mean a state triggered when the portable device is moved independently of the movement of the vehicle.” slip op. at 23

  Patent outcomesUS 9,846,174 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,846,174
• Sunspec Alliance v. Tigo Energy, Inc.Some claims unpatentable
  PTAB · Jan 26, 2023 · IPR2021-01287 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 12–13 are unpatentable; claims 14–16 are not shown unpatentable because the asserted grounds fail to establish the required predetermined number of heartbeat skips or sensor-triggered skips.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contention that a person of ordinary skill in the art “would have had a bachelor’s degree or similar degree in electrical engineering and one year of experience in the design of solar power systems, power control systems, and/or power safety systems” or “could have also obtained similar knowledge and experience through other means.” Dec. 6. Patent Owner does not appear to dispute this definition. See generally PO Resp; see also id. at 51 (employing Petitioner’s definition of a person of ordinary skill in the art in discussing Mr. Dunton’s testimony). In its Reply, Petitioner argues that “Patent Owner does not challenge but adopts Petitioner’s proposed level of skill for a POSITA for the relevant time period.” Reply 1 (citing Ex. 2003 ¶ 28; Ex. 1030, 119:25–120:14). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Accordingly, we adopt Petitioner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9

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

    “We interpret the term “heartbeat signals” as “periodic signals.” The term “heartbeat” appears only once in the in the specification outside of the claims: “the ‘heartbeats’ of the ping are set at a high rate, such as 100 or even 1000 per second.” Ex. 1001, 18:7–13. The disclosure of “the heartbeats” having a “rate” defined in “per second” terms indicates that they are periodic, as is generally recognized for heartbeats, i.e. human heartbeats. The term “heartbeat signals” appears in the challenged claims in conjunction with the detection of an anomaly (claim 12, “wherein the controller detects an anomaly in heartbeat signals from the remote unit”) and in conjunction with “skips” (claim 13, “wherein the anomaly includes skips of heartbeat signals”; claim 14, “when the anomaly includes a predetermined number of skips of the heartbeat signals”; claim 15, “when skips of the heartbeat signals are less than the predetermined number”). Accordingly, the heartbeat signals allow for the detection of an anomaly therein, indicating that they are typically predictable, and for the detection of skips of heartbeat signals, indicating that they are periodic. In view of the specification and the claims, and the parties’ arguments, we find that the plain and ordinary meaning of “heartbeat signals” is “periodic signals.”” slip op. at 12

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

    “Because patentee has acted as its own lexicographer, and because the ’321 patent specification is incorporated by reference into the ’770 patent specification (Ex. 1001, 1:7–37; Tr. 9:10–22), we adopt the construction: “Skips refers to the event of missing a communication or pulse.” Ex. 2005, 9:36–37. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts as its own lexicographer, that definition governs.”).” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We agree with Patent Owner that the preamble of claim 12 is limiting. The body of claim 12 recites “photovoltaic panel” and thus refers back to the preamble, and other challenged claims use the term “photovoltaic panel” in the non-preamble portions of the claims. See, e.g., Ex. 1001, 20:51, 20:58, 20:67, 21:5, 21:10. Aside from the preamble issue, the parties do not dispute the meaning of “photovoltaic panel.” Accordingly, we need not expressly construe the term “photovoltaic panel” for the purposes of this Decision.” slip op. at 14

  Patent outcomesUS 10,256,770 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,256,770
• Shenzen Chic Electrics Co., Ltd. v. Pilot, Inc.Some claims unpatentable
  PTAB · Jan 9, 2023 · IPR2021-01232 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1 and 4–20 are unpatentable as obvious; claim 3 was not shown unpatentable because Petitioner presented no evidence under the adopted construction.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of battery charging systems.” Pet. 8. Patent Owner states that it adopts this definition for purposes of its Response. PO Resp. 4. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’653 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’653 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). It is also consistent with the level of skill in the art adopted in the 777 IPR, which also involves the ’653 patent. IPR2021-00777, Paper 7 at 6–7.” slip op. at 9

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

    “construction “contradicts the technical disclosure of the ’653 patent” and that “[t]he proper construction of this term is ‘switching circuit under control of the microcontroller that selectively conducts power supply or power outage for the load.’” Pet. Suppl. Br. 3.10 In particular, Petitioner contends that claim 3, through claim 1, only recites one connection between the microcontroller and the first battery, such that the connections in claim 3 do not allow the power supply from the first battery to pass through the microcontroller to the load. Pet. Suppl. Br. 4–5. Claim 1, however, recites “an automobile charger, comprising . . .” which is an open-ended term, meaning that claim 1 is not limited to only the connections expressly recited therein. Petitioner’s arguments do not address this open-ended aspect of the plain language of the claims. Petitioner also argues that the language of claim 3 is consistent with its construction because claim 3 “places the switching circuit between the second pole of the first battery . . . and the second lead of the load.” Pet. Suppl. Br. 5. Although Petitioner’s interpretation may be consistent with the language in claim 3, we discern nothing in claim 3 that expressly limits the placement of the switching circuit, especially considering the open-ended “comprising” language used in claims 1 and 3.” slip op. at 11

  • Strike new argumentNew argument consideredDecided for petitioner

    “Specifically, Dr. Kirtley testifies that a person of ordinary skill in the art would have understood that connections between components depicted as single lines in Yu’s figures “may comprise multiple connections, such as multiple signal connections, and common power and ground connections for sensors and microprocessors.” Ex. 1020 ¶ 84 (citing Ex. 1021 (US 7,973,534 B2)). We credit Dr. Kirtley’s testimony, as Patent Owner does not dispute the substance of Dr. Kirtley’s testimony or the supporting exhibit. Instead, Patent Owner argues that Petitioner is attempting to “sneak in new evidence that is improper in a reply” and create a new ground. Sur-reply 13–15. We disagree, as Petitioner and Dr. Kirtley offer this evidence to demonstrate what a person of ordinary skill in the art would have understood in considering Yu—not as a new ground. Moreover, Petitioner properly offered this exhibit and Dr. Kirtley’s testimony in response to Patent Owner’s arguments that claim 1 requires negative side switching, which Yu does not disclose. In its Reply, Petitioner is entitled to “respond to arguments raised in the corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). A party also may submit rebuttal evidence in support of its reply. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015).” slip op. at 26

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

    “After considering the parties’ arguments and evidence, we find Petitioner has established, by a preponderance of the evidence, that claim 4 is unpatentable as obvious in view of Yu and Thomason. As discussed above, we disagree with Patent Owner’s arguments regarding negative pole switching, and find that Petitioner presents persuasive evidence that Yu teaches or suggests the limitations of claim 1. Petitioner also presents undisputed evidence that Yu and Thomason teach or suggest the additional limitations in claim 4. Pet. 52–54. Additionally, Petitioner directs us to a disclosure in Thomason itself regarding a protection mechanism to prevent the jump starter from self-destructing, and presents testimony from Dr. Kirtley that a person of ordinary skill in the art would have considered Thomason’s teaching in order to avoid damage to Yu’s internal battery, and would have been able to implement Thomason’s teachings. Pet. 52–54; Reply 20–21; Ex. 1004 ¶¶ 189–192. Patent Owner and Mr. McAlexander do not challenge or otherwise refute this testimony. PO Resp. 9–10. Thus, contrary to Patent Owner’s assertions, Petitioner does direct us to evidence in the asserted prior-art references themselves that provide a reason to combine their teachings, and does not rely solely on conclusory statements regarding the similarities of Yu and Thomason to support its obviousness challenge. In view of Petitioner’s persuasive evidence demonstrating where the prior-art references teach or suggest each limitation in the challenged claims, and explaining why a person of ordinary skill in the art would have had reason to combine the prior-art references with a reasonable expectation of success, we find Petitioner has established, by a preponderance of the evidence, that claim 4 is unpatentable as obvious in view of Yu and Thomason.” slip op. at 33

  Patent outcomesUS 10,046,653 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,046,653
• Nanofiber Solutions, LLC v. Acera Surgical, Inc.Some claims unpatentable
  PTAB · Dec 13, 2022 · IPR2021-01016 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 2, 4–7, and 13 are unpatentable: claims 1, 2, 4, 5, and 13 as anticipated by Johnson, and claims 6 and 7 as obvious over Johnson and Johnson–Liu, respectively.

  RulingsFinal written decision

  • Skill levelOther

    “Petitioner contends that: A person of ordinary skill in the art (“POSITA”) at the time of filing the ‘228 Patent would have been a person having a bachelor's degree in science or engineering, for example in the fields of chemistry, chemical engineering, or biomedical engineering, with undergraduate research experience, coupled with at least three years of industry experience, that linked the fabrication of fibrous polymeric materials to performance requirements for scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues. Pet. 11–12 (citing Ex. 1002 ¶¶ 112–116). In response, Patent Owner notes that all challenged claims recite electrospun fibers but that Petitioner’s proposed level of skill “requires (1) no coursework, training or experience with electrospinning and (2) improperly focuses on scaffolds for the promotion of proliferation of biological cells and the growth and/or reconstruction of biological tissues.” PO Resp. 7 (citing Ex. 2001, ¶¶ 38–39). But Patent Owner then concedes that this “difference is immaterial to deciding the issues raised by the Petition.” Id. at 8.” slip op. at 9

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

    “construe claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Furthermore, we expressly construe the claims only to the extent necessary to resolve the parties’ dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). The parties agree that the terms of the challenged claims should be given their “plain and ordinary meaning” and that no express claim construction is necessary to address Petitioner’s challenges. Pet. 12; PO Resp. 6. We agree that no claim terms require express construction for purposes of resolving the dispute between the parties.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Upon review, we are unpersuaded that Petitioner has improperly mixed and matched disclosures from Johnson to arrive at an anticipatory reference. Patent Owner is correct that Petitioner primarily relies on Example 1 as evidence for the method by which its scaffold is made. But the disclosure found in paragraph 98 is not a “distinct” teaching of the type described in Net MoneyIN; rather, it is a general description of the structures that may be created by Johnson’s method: “A scaffold may comprise any number of layers, including about 1 layer, about 2 layers, about 3 layers, about 4 layers, about 5 layers, and so on.” Ex. 1009 ¶ 98. Patent Owner has not directed us to anything in the disclosure of Johnson that indicates that this is a “distinct” teaching or embodiment, instead of a general description of the types of scaffolds that Johnson encompasses. We see no reason why the general disclosures regarding Johnson’s scaffolds should be limited to specific embodiments, or precluded from applying to the method of Example 1.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableNot shown unpatentable

    “We are unconvinced by Petitioner’s arguments and evidence. While we recognize that the range of claim 3 is very broad, and it is possible that scaffolds having fiber diameters as set forth in Johnson could have a mean pore size falling within the range, inherency “may not be established by probabilities or possibilities.” Par Pharm., Inc. v. Twi Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). Nor does Petitioner sufficiently explain why a person of ordinary skill in the art would have understood the process of Example 1 to necessarily result in the claimed mean pore size. We are also persuaded by Patent Owner’s argument that Boland 2005’s disclosure of a fiber diameter similar to Johnson’s that nevertheless falls outside the claimed mean pore size range. We note that Petitioner never addresses Boland 2005 in its Reply. 4. Conclusion as to Anticipation For these reasons, we find that Petitioner has met its burden of showing that claims 1, 2, 4, 5, and 13 are anticipated by Johnson, but has failed to meet its burden as to claim 3.” slip op. at 18

  Patent outcomesUS 10,632,228 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,632,228
• The Noco Company, Inc. v. Pilot, Inc.Some claims unpatentable
  PTAB · Oct 3, 2022 · IPR2021-00777 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1, 4–9, 11–18, and 20 are unpatentable; claim 3 was not shown unpatentable, because the adopted construction foreclosed the asserted obviousness ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had an undergraduate degree in electrical engineering (or equivalent subject) together with two or three years of experience in [the] automotive electrical systems industry.” Pet. 11–12 (citing Ex. 1008 ¶ 13). Patent Owner does not challenge Petitioner’s definition or offer its own. Mr. McAlexander indicated that he adopted Petitioner’s definition for purposes of his declaration. Ex. 2005 ¶ 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’653 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’653 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9

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

    “After considering the parties’ arguments and evidence, we adopt Petitioner’s proposed construction of the phrase “the switching circuit conducts power supply or power outage for the load through the microcontroller.” Petitioner’s construction is consistent with the plain language of the claim, and comports with the Federal Circuit’s decision in Chef America. Ex. 1001, 6:13–14; Chef Am., 358 F.3d at 1373–74 (holding that courts may not redraft claims to make them operable or sustain their validity, and construing the claims “based on the patentee’s version of the claim as he himself drafted it”). Additionally, the Specification of the ’653 patent states that “the automobile start control module conducts the power supply or power outage for the load module through the microcontroller.” Ex. 1001, 1:61–65. Furthermore, Patent Owner does not challenge Petitioner’s arguments or evidence, or present a competing construction. In view of this, we construe the phrase “the switching circuit conducts power supply or power outage for the load through the microcontroller” to mean “[t]he power for charging the load passes through the microcontroller.” Pet. 15; Reply 3–6.” slip op. at 11

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

    “We determine that we do not need to expressly construe any other terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Ex. 1008 ¶ 12 (under the heading “Basis for My Opinion”). In addition to this general statement, Dr. Kattamis also cites to exhibits in specific paragraphs of the Kattamis Declaration to support the statements made therein. See, e.g., Ex. 1008 ¶ 18 (citing Ex. 1013), ¶ 22 (citing Ex. 1014), ¶¶ 63–68 (citing Krieger and Richardson), ¶¶ 70–74 (citing Baxter and Krieger), ¶¶ 76–79 (citing Richardson and George). In view of this, we consider Dr. Kattamis to have provided a sufficient disclosure regarding the basis for his opinions to at least avoid a determination that the Kattamis Declaration, in its entirety, is entitled to little or no weight. The fact that Dr. Kattamis, in preparing the Kattamis Declaration, re- used material he had previously written for an earlier proceeding involving a different patent does not justify a different outcome. To the extent Dr. Kattamis used previously prepared material in the Kattamis Declaration, he indicates that he “reviewed all of these passages in detail and confirmed that they were all still accurate and suitable for inclusion in his declaration in the current proceeding.” Reply 8; Ex. 1016 ¶ 6. Additionally, as Patent Owner demonstrates, Dr. Kattamis supplemented the re-used material by adding, where appropriate and necessary, language directed to the facts of this proceeding and specific citations to exhibits in this proceeding. See PO Resp. 8–9 (showing in redline the additions Dr. Kattamis included in the Kattamis Declaration).” slip op. at 17

  Patent outcomesUS 10,046,653 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,046,653
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.Some claims unpatentable
  PTAB · Sep 10, 2018 · IPR2017-00934 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1, 4–11, and 14–24 are unpatentable as obvious; claims 2, 3, 12, and 13 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “shows the relation between the content being display and the current time, Petitioner shows that a person of ordinary skill in the art would have been motivated to incorporate Vallone’s teachings to improve the interface by making it visually intuitive and interactive. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. Dr. Rhyne’s testimony is credible and persuasively supported by the teachings of the underlying references. See Ex. 1011 ¶¶ 158, 159, 171, 177, 178; Ex. 1002 ¶¶ 6, 7, 88, 142; Ex. 1003, Fig. 26, 1:44–49, 1:53–57, 18:32– 44, 19:1–3, 20:19–22. For example, as stated above, Vallone expressly discloses applying its interactive trick play bar more broadly to any device in which physical position in the material is readily ascertainable, such as a VCR. Ex. 1003, 20:19–22. In addition, Vallone describes the known problem of multimedia devices lacking interactivity and intuitive devices. Ex. 1003, 1:11–49. One of ordinary skill in the art would have been aware of this problem and motivated to improve Wood’s digital VCR accordingly. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. In addition, as Dr. Rhyne explains, an ordinarily skilled artisan would have been motivated to combine the teachings of the references to provide a single consistent interface for the” slip op. at 22

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

    “shows the relation between the content being display and the current time, Petitioner shows that a person of ordinary skill in the art would have been motivated to incorporate Vallone’s teachings to improve the interface by making it visually intuitive and interactive. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. Dr. Rhyne’s testimony is credible and persuasively supported by the teachings of the underlying references. See Ex. 1011 ¶¶ 158, 159, 171, 177, 178; Ex. 1002 ¶¶ 6, 7, 88, 142; Ex. 1003, Fig. 26, 1:44–49, 1:53–57, 18:32– 44, 19:1–3, 20:19–22. For example, as stated above, Vallone expressly discloses applying its interactive trick play bar more broadly to any device in which physical position in the material is readily ascertainable, such as a VCR. Ex. 1003, 20:19–22. In addition, Vallone describes the known problem of multimedia devices lacking interactivity and intuitive devices. Ex. 1003, 1:11–49. One of ordinary skill in the art would have been aware of this problem and motivated to improve Wood’s digital VCR accordingly. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. In addition, as Dr. Rhyne explains, an ordinarily skilled artisan would have been motivated to combine the teachings of the references to provide a single consistent interface for the” slip op. at 22

  Patent outcomesUS 8,768,147 mixed
  § 103 obviousnesscites Graham
  Patents in suitUS 8,768,147
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 15, 2016 · IPR2015-01222 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–11 and 13–15 are unpatentable as obvious over Strubbe and Rae; claims 12 and 16–20 were not shown unpatentable because the petition did not tie the connection-fee limitation to those references.

  RulingsFinal written decision

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

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between American Securities and Petitioner 9 were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9. Third, we found ambiguous and unreliable statements made by a non- lawyer CEO during settlement negotiations covering “ongoing intellectual property disputes” (see Discovery Motion 1) failed to demonstrate that American Securities funded and controlled the instant proceeding. Discovery Order 9; see Exs. 2006, 2011.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “Similarly to the posture of Petitioner’s First Motion to Exclude, the current situation does not require us to assess the merits of Petitioner’s Second Motion to Exclude. See Discovery Order, 13 (indicating that Patent Owner’s evidence was insufficient, “even without excluding Patent Owner’s supporting evidence”). According to Petitioner, the two declarations filed by Patent Owner in support of its Motion for Additional Discovery allegedly recount statements made by Petitioner’s CEO during settlement discussions between Patent Owner and GTL. Mot. Exc. 2nd, 1–2.” slip op. at 12

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

    “We agree with Petitioner. One portion of the Specification cited by Patent Owner details: “[t]he list of items displayed for the inmate may be selected based upon data stored in the inmate's profile on JAMS database 115.” Ex. 1001, 3:61–63 (emphasis added). The conditional nature of the selection need not be incorporated into claim 8. In addition, the instant claim language would also read on a display of all items, with indications of 18 availability with each item for the inmate, such that all items would be displayed instead of Patent Owner’s truncated listing. As such, we conclude that Patent Owner’s proposed construction of the language of claim 8 is overly narrow and is not adopted in the analysis that follows.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Leonard J. Forys, testifies that one of ordinary skill in the art “would have a bachelor’s degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 2–3 years of academic or industry experience in a call center technology particularly computer telephony integration and in telephone networks in general.” Ex. 1003 ¶ 30; see Pet. 10 (citing Ex. 1003 ¶¶ 29–30). Patent Owner’s declarant, Mr. Ivan Zatkovich, proposes that Petitioner’s definition be adopted. Ex. 2012 ¶ 31. As such, we adopt Dr. Forys’ definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 21

  Patent outcomesUS 8,750,486 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,750,486
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01225 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–4 and 6–8 are unpatentable as obvious over the instituted combinations; claim 5 was not shown unpatentable over Magee, Nussbaum, and Juang.

  RulingsFinal written decision

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

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10; Inst. Dec. 18. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8; Inst. Dec. 18. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8; Inst. Dec. 18.” slip op. at 15

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

    “In the Decision to Institute, after considering constructions of SCF rating proffered by Petitioner and Patent Owner, we determined that the ’663 patent did not provide the requisite clarity, deliberateness, and precision necessary to define the term SCF rating, and we declined to read the limitation from the preferred embodiment into claim 1. Inst. Dec. 10–14 (citing Paulsen, 30 F.3d at 1480; Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); Am. Academy of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004); Van Geuns, 988 F.2d at 1184). We credited the testimony of Petitioner’s declarant, Homayoon Beigi, D. Eng’g Sci., that “[t]here is no definition of ‘Suspicious Call Finder (SCF) rating’ that would be immediately known to a person of ordinary skill in the art.” Inst. Dec. 14 (quoting Ex. 1003 ¶ 45).” slip op. at 24

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownOther

    “data from said selected portion of speech.” In the Decision to Institute, we determined that “prosody” needed express construction, although neither party had proffered an express construction for the term. Inst. Dec. 15–16. We identified an express definition of “prosody” in the Specification: The word “prosody” (defined at Princeton University as ‘the patterns of stress and intonation in a language’) is often used in the field of affective computing (computing relating to emotion) to refer to emotion-indicating characteristics of speech.” Ex. 1001, 6:36–40; see Inst. Dec. 15 (quoting Ex. 1001, 6:36–40). Based on that definition, we preliminarily construed “prosody data” to mean “data reflecting emotion-indicating characteristics of speech” in our Decision to Institute and further determined that, on the partially-developed, pre-institution record, that the prosody construction was consistent with the plain language of claim 8. Inst. Dec. 15.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Beigi, testifies that one of ordinary skill in the art “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent or related field (or comparable industry experience), as well as at least 1–3 years of academic or industry experience in speech processing.” Ex. 1003 ¶ 23; see Pet. 9–10 (citing Ex. 1003 ¶ 32) (asserting level of ordinary skill in the art). Patent Owner adopts Petitioner’s definition without contesting it. PO Resp. 10. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1007–1011), we also adopt the level of ordinary skill in the art employed by both Petitioner and Patent Owner.” slip op. at 30

  Patent outcomesUS 8,886,663 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,886,663
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 7, 2016 · PGR2015-00013 · APJ Kevin F Turner · PGR · Final written decision

  Claims 1–4, 7–19 were held unpatentable as obvious; claims 5, 6, and 20 were not shown unpatentable over Reinhold, Walters, and Dudovich.

  RulingsFinal written decision

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

    “We found Patent Owner’s arguments and evidence to be insufficient to show a real party-in-interest issue. Discovery Order 8–10; Dec. 8. First, we found the mere existence of the relationship between Petitioner and a parent company (American Securities) to be insufficient to demonstrate a real party-in-interest issue. Discovery Order 8. In addition, we determined the evidence did not show that American Securities and Petitioner have “corporate boundaries that were inextricably intertwined.” Discovery Order 8. Second, we found the existence of common directors or employees between American Securities and Petitioner to be insufficient to show a real party-in-interest issue, unless the directors controlled or participated in the filing of the proceedings. Discovery Order 9. We found insufficient evidence that common officers between the American Securities and Petitioner were involved in the filing of the present proceedings or had the ability to direct the filing of the present proceedings. Discovery Order 9. Nor did we find persuasive evidence that American Securities provided any prior art to Petitioner in the instant proceedings. Discovery Order 9.” slip op. at 11

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s motion to exclude Exhibits 1013, 1014 and 1015 is denied. As Patent Owner points out, 37 C.F.R. § 42.6(a)(3) indicates that “[a]rguments must not be incorporated by reference from one document into another document.” We are not persuaded, however, that Petitioner is attempting to incorporate by reference; Exhibits 1013, 1014, and 1015 are cited by Petitioner’s declarant, not incorporated by reference. If Petitioner’s declarant or the cited exhibits contained arguments not made in a paper, we would likely ignore such arguments. In this instance, Petitioner is making of record the documents cited, which is generally laudatory, so that a reader can determine for herself that cited facts are supported. We are not persuaded that the cited exhibits are “irrelevant.” Additionally, we find no support for Patent Owner’s contention that exhibits must be cited by “papers,” and not other exhibits. Many exhibits, such as declarations, prior art references, and deposition transcripts, cite to other exhibits in normal trial practice. Accordingly, Patent Owner’s Motion to Exclude Exhibits 1013, 1014, and 1015 is denied.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Mr. Frank Koperda, testifies that one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least 2–5 years of academic or industry experience in the telecommunications industry. Ex. 1002 ¶ 19; see Pet. 5 (asserting level of ordinary skill in the art). Patent Owner’s declarant, Mr. Stuart J. Lipoff, largely adopts Mr. Koperda’s level of ordinary skill in the art, adding that such artisans should have experience “in the generation of billing statements or cost accounting reports.” Ex. 2012 ¶ 33. We are not persuaded that such billing or accounting experience is necessary “to fully understand the ’280 patent disclosure.” Id. Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1003, 1007, 1006, 1008), we also adopt the level of ordinary skill in the art employed by Petitioner’s declarant, where Patent Owner’s declarant acknowledges that his analysis would be the same under Mr. Koperda’s level of ordinary skill in the art. Ex. 2012 ¶ 34.” slip op. at 23

  Patent outcomesUS 8,855,280 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,855,280
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01220 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–5 and 12–17 are unpatentable as obvious; claims 7, 9–11, and 18–26 were not shown unpatentable on the asserted combinations.

  RulingsFinal written decision

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

    “Thus, Patent Owner has not introduced evidence reasonably bringing into question Petitioner’s identification of the real party-in-interest in this proceeding. Accordingly, the evidence of record does not support a determination that American Securities had a role in funding or controlling this proceeding, or could have exercised control over this proceeding. 11 For these reasons, we determine that a preponderance of the evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. As such, we determine that Petitioner’s real party-in-interest identification at the time of filing the Petition remains valid.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “For these additional reasons, we determine that, even without excluding Exhibits 2006 and 2011, the preponderance of evidence does not show that American Securities is an unnamed real party-in-interest in this proceeding. Accordingly, Petitioner’s Second Motion to Exclude Exhibits 2006 and 2011 is dismissed as moot.” slip op. at 15

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

    “construed also undermine Petitioner’s position. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). On the other hand, a preamble, however, “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Id. at 809. The only limitations in the body of independent claim 22—the two biometric sensors—are not structurally complete in themselves. Rather, the telephone handset is required to describe a structurally complete invention that includes two biometric sensors. Without the telephone handset as an element, the claim merely recites two unconnected biometric sensors without any structure—a structurally incomplete invention. Furthermore, the telephone handset recited in the preamble does not duplicate the biosensor limitations in the body of the claim. Thus, we conclude that the telephone handset is essential structure and is necessary to give life, meaning, and vitality to the claim. This weighs toward a determination that independent claim 22 requires a telephone handset. See Catalina Mktg. Int’l, 389 F.3d at 808–09.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner, however, does not acknowledge that both Dr. Beigi and Dr. Caloyannides include electrical engineering as a field of study in the respective level of ordinary skill. Thus, we do not agree with Patent Owner’s statement that Dr. Beigi’s proposed “academic requirements do not provide this background. See Ex. 1003 ¶ 34 (Dr. Beigi opining that “one of ordinary skill in the art (a “POSA”) would have a Bachelor of Science (B.S.) degree in electrical engineering, computer science, or an equivalent or related field”). Because both experts specify electrical engineering as an academic field of study but only Dr. Beigi specifies computer science, we understand the disagreement of the parties to be whether computer science is a relevant academic field of study. We do not agree with Patent Owner’s contention that “bachelor’s level degree in electrical engineering or physics is necessary to understand both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric systems.” See PO Resp. 7. Contrary to Patent Owner’s contention, the invention as claimed recites elements and functions using a high-level of abstraction with little, if any, technical detail regarding “the data/network communication aspects of the claimed invention.” For example, independent claims 1 and 12 recite methods that include broad functional steps of authorizing, continuously monitoring, verifying, and monitoring a biometric training with 30 little, if any, technical detail. Similarly, the call processing system recited in independent claim 13 and the biometric telephone handset recited in independent claim 22 recite elements that perform broad functions with little, if any, technical detail. Thus, the plain language of the claims undermines Patent Owner’s contention that an understanding of “both the various data/network communication aspects of the claimed invention as well as the mathematics underlying biometric system” necessitate an electrical engineering or physics academic degree.” slip op. at 30

  Patent outcomesUS 7,494,061 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,494,061

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.