• Apple Inc. v. Corephotonics Ltd.All claims unpatentable
  PTAB · Apr 6, 2020 · IPR2019-00030 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Ogino and Beich; claims 1–4 are also unpatentable over Ogino alone, but claim 5 is not shown unpatentable on that ground.

  RulingsFinal written decision

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

    “We construe claim terms to the extent necessary. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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))).” slip op. at 7

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

    “supported by the cited evidence. We are persuaded, instead, that “the image plane and the sensor are taught by the ’568 patent to be coincident,” and “[t]hus, there is no ambiguity in the ’568 patent about where the image plane is located or that TTL is measured to the image plane,” as Petitioner argues in its Reply. Reply 13 (Ex. 1026 ¶ 5; Ex. 1003, 33–35). Patent Owner acknowledges as much, noting that “as these terms[, i.e., the image plane and the sensor,] are used in the specification of the ’568 patent, the image plane is the surface of the sensor.” Sur-reply 2. We find that the ’568 patent discloses that the electronic sensor corresponds to or is coincident with the image plane and thus, the TTL could be measured with respect to either the sensor (electronic or film) or the image plane and reach the same result. Based upon the complete trial record, we maintain our construction of TTL from the ’1140IPR and the ’1146IPR3, which encompasses “the length of the optical axis spacing between the object-side surface of the first lens element and one of: an electronic sensor, film, and an image plane corresponding to either the 3 The panel authorized, and the parties filed, supplemental briefing to address this construction before it was adopted in both the related ’1140IPR and ’1146IPR, and that the parties responded to this construction in the hearing in this proceeding (with citations to the transcript). See, e.g., Paper 28 (PO’s demonstratives), 5; ’1140IPR, Paper 31; ’1146IPR, Paper 30; see also Trial Practice Guide Update 13–14 (July 2019), https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-update3.pdf; Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018) (finding that the Board did not violate the Administrative Procedure Act when it adopted its own claim construction in the final decision because the parties had notice and an opportunity to be heard). electronic sensor or a film sensor.” See ’1140IPR, Paper 37, 18; ’1146IPR, Paper 37, 14.” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Even assuming, arguendo, we were to credit Patent Owner’s expert testimony as to the disjointed nature of optical lens assembly design experience and manufacturing experience, we are not persuaded that a person of ordinary skill in the art at the time of the invention having only design experience would be so completely unaware of manufacturing considerations so as to preclude taking into account the very general guidance of Beich. See Reply 24–25. Beich teaches that a lens designer should have a basic understanding of the manufacturing process, which would include the limits for fabricating lens elements in an optical lens assembly. Ex. 1020, 7. We are persuaded that the information conveyed in Beich would have been understood, known, and applied by the ordinarily skilled lens designer (see Reply 4–6 (citing Ex. 2014, 4, 9, 11, Fig. 9.2)), irrespective of whether such person had manufacturing experience. Stated differently, although an ordinarily skilled designer of an optical lens assembly may not have had any real-world manufacturing experience, we are persuaded that such person would still have taken into account manufacturing concerns. Although there are differences between the definitions proposed, our conclusions rendered in this decision do not turn on selecting a particular definition for the level of ordinary skill in the art, for the reasons discussed above. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’568 patent and the asserted prior art. We agree with Patent Owner’s proposal regarding the level of ordinary skill except for Patent Owner’s arguments about manufacturing discussed above. As such, we adopt Patent Owner’s proposal.” slip op. at 18

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

    “As noted by Petitioner, The Handbook of Optics discloses that “[i]n the case of both negative and positive lens elements, it is good policy to avoid element forms wherein the center-to-edge thickness ratio exceeds three for positive elements.” Ex. 1019 § 34.15. Thus, we are persuaded by Petitioner’s fourth reason that the cited disclosure provides evidence that the ordinarily skilled artisan would have selected a particular diameter for the first lens element disclosed in Ogino in conformance with manufacturing considerations known to the ordinarily skilled artisan. We are further persuaded that, from the selection of that particular diameter, a Z1 value for the object-side surface and a Z2 value for image-side surface at the minimum usable edge of the first lens element can be obtained and, in turn, circumferential edge thickness L1e can be obtained. Pet. 35–36 (citing Ex. 1003, 42; Ex. 1005, 15:1–3). We are further persuaded by Petitioner’s supporting reasoning that “a POSITA would understand the manufacturing benefits of maintaining the lowest possible center-to-edge thickness ratio since ‘the preferred shape of a molded element is one that has fairly uniform thickness.’” Id. at 42 (quoting Ex. 1018, 92) (citing Ex. 1003, 48). Based on our review of the complete record, we find that the record supports Petitioner’s contentions concerning claim 1. Petitioner demonstrates by a preponderance of the evidence that claim 1 is unpatentable as obvious over Ogino.” slip op. at 37

  Patent outcomesUS 9,857,568 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,857,568
• Apple Inc. v. Corephotonics Ltd.All claims unpatentable
  PTAB · Dec 3, 2019 · IPR2018-01140 · APJ Marc S Hoff · IPR · Final written decision

  Claims 1 and 13 are unpatentable as anticipated by Ogino; claims 14 and 15 are unpatentable as obvious over Ogino and Chen II.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “claims 1 and 13 of the ’032 Patent are anticipated by Ogino. Petitioner has also demonstrated, by a preponderance of the evidence, that claims 14 and 15 of the ’032 Patent are unpatentable over the combination of Ogino and Chen II. The chart below summarizes our conclusion. References Claims Claims Claims 35. Shown Not shown Challenged U.S.C. Unpatent- Unpatentable able Ogino 1 and 13 1 and 13 § 102 Ogino, Chen 14 and 15 14 and 15 § 103 II 1 and 13-15” slip op. at 40

  • Skill levelSkill level board ownDecided for petitioner

    “that Ogino and Chen II disclose substantially different lens systems. PO Resp. 36. As Petitioner points out, both Ogino and Chen II describe mobile phone camera systems with all lenses being aspheric; a first lens with a meniscus shape with positive refractive power; a second lens with negative refractive power; a third lens with a meniscus shape and with a negative refractive power; a fourth lens with a meniscus shape with positive refractive power; and a fifth lens with a meniscus shape and with a negative refractive power. Pet. Reply 22; Pet. 41–44. We agree with Petitioner that such a skilled artisan, possessing an applicable college degree, approximately three years experience in designing multi-lens optical systems, “experience in analyzing, tolerancing, adjusting, and optimizing multilens systems, and experience with lens design software such as CodeV, Oslo, or Zemax,” would have the appropriate knowledge to perform routine modifications to a lens design. Pet. Reply 24; Pet. 7; PO Resp. 12. Patent Owner’s expert Dr. Moore testified that such a skilled artisan “would be able to use the computer program [i.e. CodeV or Zemax] to optimize lens designs.” Pet. Reply 24; Ex. 1025, 29:25–30:9. Dr. Moore testified that the skilled artisan would “tell the [lens design] program that you want to vary certain parameters of a lens . . . . And then the program, through a fairly complicated algorithm, then actually goes through and varies them and determines how to make a better lens. You determine as a lens designer what you’re trying to improve.” Ex. 1025, 28:13–23.” slip op. at 38

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “We are unpersuaded by Patent Owner’s argument that the skilled artisan would have understood that third, fourth, and fifth lenses also contribute to vignetting in Ogino. PO Resp. 38. We credit Petitioner’s argument that Dr. Moore’s conclusion regarding vignetting in the third, fourth, and fifth lenses is unreliable because it is based on assumptions not specified in Ogino. Pet. Reply 16; Ex. 1026 ¶ 11. For example, Ogino does not provide lens diameters or vignetting apertures for the lens assembly of Example 6 that would vignette the light beams on the third, fourth or fifth lens elements. Pet. Reply 17; Ex. 1026 ¶ 11. Additionally, Dr. Sasián testifies that vignetting is a result of the second lens. Pet. Reply 17–18; Pet. 54; Ex. 1003, 59.” slip op. at 36

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

    “Effective Focal Length (EFL) Petitioner asserts that while the specification of the ’032 Patent does not offer an express definition for the term “effective focal length,” “its meaning is well known in the art, as exemplified in Li (Ex. 1007), which states that “[t]he focal length of a lens assembly [is] also referred to as the effective focal length [(]EFL).” Pet. 9–10 (internal parentheses omitted); Ex. 1007, 2:59–61. Patent Owner, in response, does not dispute Petitioner’s construction of “effective focal length,” stating that the Petition does not turn on the construction of the term. PO Resp. 20. Having reviewed the evidence of record, we agree with Petitioner that Li supports construing the term “effective focal length” as “the focal length of a lens assembly.” We adopt this construction.” slip op. at 10

  Patent outcomesUS 9,402,032 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,402,032
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01707 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable: claims 11, 12, and 16–20 as obvious over Payne, and claims 13 and 15 as obvious over Payne and Ackley.

  RulingsFinal written decision

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

    “guidance in resolving this disagreement. To that end, the relevant portion of independent claim 11 recites “at least one server operative to store one or more of: a) content, b) links to content.” As an initial matter, controlling precedent from our reviewing court instructs us that different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings.”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of . . . evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Accordingly, on a high level, each of the following express claim terms are presumed to have different meanings: “content”; and, “links to content.”” slip op. at 8

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

    “We disagree with Patent Owner because Patent Owner’s assertions are misplaced. Most prominently, were O’Neil the only factual support for Patent Owner’s position, it may be persuasive. Petitioner’s proposed modification, however, relies not only on O’Neil, but also on Payne and the Declaration of Dr. Greenspun. Pet. 48–49 (citing Ex. 1003 ¶¶ 240, 241; Ex. 1006, 6:9–42, 8:38–53, 9:64–10:1, 5:16–25, and Fig. 5); see also Ex. 1003 ¶ 272. In short, we are persuaded that the following findings in Payne asserted by Petitioner are accurate, and that it supports adequately Petitioner’s proposed modification. The system of Payne already includes functionality requiring a user to log on to an account, Ex. 1006 at 6:9–42, 8:38–53, so it would have been trivial to place the log in functionality directly on the digital advertising documents, which are web pages, see id. at 9:64–10:1, 5:16–25, Fig. 5. Ex. 1003 at ¶ 240. When a patent simply arranges old elements, each performing the same function it had been known to perform and together yielding no more than one would expect from such an arrangement, the combination is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Pet. 48; see also Reply 11–16. As counter-evidence, Patent Owner cites to paragraphs 46–48 of the Declaration of Dr. Papakonstantinou. Those paragraphs, however, suffer from the same logical flaw identified above.” slip op. at 23

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Insofar as Patent Owner is asserting that Payne and Ackley are non- analogous art, we disagree. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, Payne discloses that it relates to the field of “user-interactive network sales systems for implementing an open marketplace for goods or services over computer networks such as the Internet.” Ex. 1006, 1:14–17. Ackley discloses that it relates to the field “computer-based systems and methods that enable sales transactions between third parties through a communications network, such as internet auctions and classified systems.” Ex. 1008, 1:21–25. We see little daylight between these two fields, especially given that Ackley’s use of the word “such as” with “internet auctions” indicates that such “internet auctions” are a non-limiting example, and, thus, do not materially limit Ackley’s field of endeavor.” slip op. at 28

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,516,177
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01706 · APJ Michael W Kim · IPR · Final written decision

  Claims 11, 12, and 16–20 are unpatentable as obvious over MyLibrary.

  RulingsFinal written decision

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

    “In summary, we construe “content” as “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”5” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (Affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b).). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the Specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’”). For the purposes of this decision, and on this record, we determine that most claim terms do not need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy.).” slip op. at 5

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

    “7. Conclusion We are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 11, 12, and 16–20 are unpatentable as obvious in view of MyLibrary. In addition to findings we make above in connection with our analysis of claims 11, 12, and 16–20 as obvious in view MyLibrary, we also adopt as our findings Petitioner’s positions as to how MyLibrary discloses each of the limitations of claims 11, 12, and 16–20. We further adopt as our own Petitioner’s rationales for modifying MyLibrary, as referenced above.” slip op. at 32

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,516,177
• Sandisk Corp. v. Netlist, Inc.All claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01021 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 16, 17, 24, 30, and 31 are unpatentable as obvious over Takeda, JEDEC, and Connolly.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “Rank” In the Decision to Institute, we construed the term “rank” as “a block or area that is created using some or all of the memory chips on a memory module.” Dec. to Inst. 8–9. In their papers, neither party challenged our constructions of these claim terms. Thus, for the term “rank,” we see no reason to alter the construction of this claim term as set forth in the Decision to Institute as recited above, and we incorporate our previous analysis for purposes of this decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “2. All Other Claim Terms We determine that no explicit construction is necessary for any other terms in the challenged claims. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “would understand basic memory and data communication concepts, with a bachelor’s degree in any of electrical engineering, computer engineering, computer science, or related field. Course work for one of ordinary skill in the art would have included a course on computer organization, principles of digital design, or computer architecture. One of ordinary skill in the art would also have around one year of experience related to computer memory systems. For example, such experience may include experience in DRAM memory technology and related industry standards such as JEDEC standards for DRAM memories and memory modules. Ex. 1002 ¶ 53. Patent Owner’s Declarant, Carl Sechen, Ph.D. (“Dr. Sechen”), testifies that one of ordinary skill in the art at the time of the ’536 Patent would have had an undergraduate degree in electrical engineering or computer engineering, at least two years of professional experience in the design of memory systems, familiarity with the latest JEDEC standard specifications for memory devices and modules, and familiarity with the latest DRAM (dynamic random access memory) memory devices widely available in the market. Ex. 2001 ¶ 14. Dr. Sechen further testifies that a person of ordinary skill in the art would have design proficiency in memory modules comprising DDR memory technology, such as memory modules with JEDEC standard DDR SDRAM (synchronous DRAM) devices. Id. ¶ 15. Based on our review of the ’536 Patent and the types of problems and solutions described in the ’536 Patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’536 Patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that Dr. Jagannathan is qualified sufficiently to testify about memory systems and memory modules. E.” slip op. at 12

  Patent outcomesUS 8,081,536 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,081,536
• Mastercard International Inc. v. Leon StamblerAll claims unpatentable
  PTAB · Jul 6, 2016 · CBM2015-00044 · APJ Peter P Chen · CBM · Final written decision

  Claims 51 and 53 are unpatentable as anticipated by Davies; claims 51, 53, 55, and 56 are unpatentable as obvious over Davies and Meyer; claim 55 over Davies and Nechvatal; and claim 56 over Davies, …

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “F. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in computer programming and two years’ experience as a programmer or developer in the field of computer science, with a working understanding of cryptographic operations for transforming original input into a coded output using a known algorithm.” Pet. 14–15. Patent Owner has proposed similarly, that one of ordinary skill in the art would possess “(1) undergraduate education in mathematics, physics, computer science, electrical engineering or similar technical subject; and (2) either postgraduate education in networking, cryptography, or other discipline encompassing information theory, or equivalent experience with applications involving communication of financial, military, medical or similarly sensitive data over secure and non-secure networks.” Prelim. Resp. 30–31. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 16

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

    “1. “variable authentication number (VAN)” In the Decision to Institute, we construed the term “variable authentication number” or “VAN” as “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.” Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 8–9 (PTAB Oct. 31, 2014) (Paper 10). Patent Owner “does not challenge this construction.” PO Resp. 16–17. Patent Owner asserts additional construction of the term is necessary for CBM standing issues, but does not elaborate further. PO Resp. 1. Patent Owner also argues we incorrectly applied the broadest reasonable interpretation to the term in the Decision to Institute. PO Resp. 9. The Decision to Institute noted that our review of the claims of the expired ’302 patent is similar to that of a district court’s review, In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005), but inadvertently mentioned the broadest reasonable interpretation standard in construing this term. Dec. to Inst. 7–8. We reaffirm our agreement with Patent Owner that the Phillips framework is applied to the expired ’302 patent. Our construction of “VAN” is the same under either claim construction standard. We reject Patent Owner’s undeveloped argument regarding standing, and maintain the construction of VAN from the Decision to Institute, as the ordinary and customary meaning of the term: “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.”” slip op. at 10

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

    “2. Sequence of method steps: receiving, generating In the Decision to Institute, we agreed with Patent Owner and construed the sequence of method steps in independent claim 51 to mean that at least a portion of the receiving step must precede the generating step. Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 11–14 (PTAB Oct. 31, 2014) (Paper 10). We maintain that construction as the ordinary and customary meaning of the sequence of the receiving and generating method steps.” slip op. at 11

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

    “intended use of an invention is generally not treated as limiting the scope of the claim. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). However, “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) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). “The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). When the limitations in the body of the claim rely upon or derive essential structure from the preamble elements, e.g., the preamble serves as an antecedent basis for limitations in the claim, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). In this case, the preamble of independent claim 51 recites “a credential being previously issued,” and the limitations of the claim include “determining whether the at least a portion of the received funds transfer information is authentic by using the VAN and the credential information.” Ex. 1001, 33:18–19, 33:29–31. Thus, the preamble’s recitation of “a credential” is an antecedent basis for the recited “the credential information” in the “determining” step, and we determine that the preamble limits the scope of the challenged independent claim 51 and dependent claims 53, 55, and 56.” slip op. at 11

  Patent outcomesUS 5,793,302 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,793,302
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00226 · APJ Peter P Chen · IPR · Final written decision

  Claims 1–12, 14, 15, and 19–21 are unpatentable as obvious over the Harder-based grounds; the Kearney and ARC/INFO ground was not proven for claims 1–6 and 20–21.

  RulingsFinal written decision

  • BurdenFwd mixedUnpatentable

    “In summary, we agree with Petitioner’s contentions and find that Harder and Longley, once combined as proposed by Petitioner, teach or suggest the limitations of independent claim 1.” slip op. at 20

  • Skill levelSkill level board ownOther

    “C. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in geographic information science, survey engineering, geomatics, or similar education, and two years of experience in a relevant field (e.g., land or geographic information science), or six years of experience in the relevant field.” Ex. 1006 (Declaration of Michael Goodchild), ¶ 11. Patent Owner has proposed that one of ordinary skill in the art would possess a “a Bachelor’s degree or higher in, GIS engineering with at least 5 years of academic or industry experience in GIS database design..” Ex. 2005 (Declaration of William Huxhold), ¶ 14. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 11

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

    “The disclosure of Longley and the knowledge of one skilled in the art would have motivated such a person to modify Harder’s system given that Harder discloses parcel-based searching and display functionalities for a jurisdiction (e.g., Ex. 1003, 21-25) and for multiple states (id., 49-51), and discloses that databases in GIS environments could span multiple jurisdictions (id.,7, 49- 51), and that Longley discloses configuring such databases to include data relating to different states and also discloses parcel based systems. Moreover, one skilled in the art would have been motivated to look to Longley to supplement the features of the systems and processes of Harder given they both describe[] features of ESRI systems. Ex. 1015, 170, 172; Ex. 1003. Thus, modifying Harder’s database in such a way would have been a common sense and predictable modification that was within the realm of knowledge of one skilled in the art at the time of the alleged invention. See KSR, 550 U.S. at 417; Ex. 1006, ¶¶ 35- 39. Pet. 18–19. The Petition continues:” slip op. at 20

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

  Patent outcomesUS 7,499,946 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,499,946
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00222 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–23 are unpatentable: claims 9, 10, and 12–22 as obvious over Harder and Du; claims 1–8, 11, and 23 as obvious over Harder, Du, and MacDonald.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima, 261 F.3d at 1355 (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” (internal quotations omitted)); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In this case, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 14

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

    “We remain unpersuaded by BSI’s arguments. As we explained in the Institution Decision, although the ’352 patent describes assembling a national parcel-level map database from data provided by various sponsoring agencies, the claims themselves do not require assembling the multi-jurisdictional database using any specific method or obtaining the information in the database from any particular sources. Dec. 7 (citing Ex. 1001, 1:41–48, 4:8–11). Moreover, BSI’s reliance on the prosecution history of the ’957 patent does not support its position, as the claims at issue there did not recite a “multi-jurisdictional database.” See Ex. 2006, 132–37, 141, 193–200). For these reasons, we maintain our construction of “multi- jurisdictional database” as “a collection of data relating to two or more jurisdictions.”” slip op. at 8

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

    “success”9 in combining Harder and Du because Du would not be used to maintain data for jurisdictions with a large number of parcels, and the visibility of parcels would be diminished in a map with so many parcels. PO Resp. 38. We do not find this argument to be persuasive because, as CoreLogic notes, Du discloses that cells can correspond to different types of jurisdictions and that any geographic areas can be searched and displayed. See Reply 14 (citing Ex. 1018, Fig. 3, 3:21–32, 4:38–40, 6:31–38, 9:5–6, 9:16–44). BSI also argues that a county identified as a cell in Du would include a huge amount of parcel data, and data for the entire cell would be transmitted to a client computer in the system described in Du, thereby defeating a purpose of Du’s system—the speedy display of maps. PO Resp. 38–39. CoreLogic, however, relies on Du for teaching an index of 9 We understand BSI’s use of the phrase “reasonable likelihood of success” to be an argument that there would be no “reasonable expectation of success” in the combination of references, rather than a reference to the reasonable likelihood standard for instituting an inter partes review. jurisdictional identifiers used to search a portion of a multi-jurisdictional database, not the transmission of parcel data, and has shown sufficiently that a person of ordinary skill in the art would have combined Du’s teaching of an index with Harder’s system for retrieving and transmitting parcel boundary polygon map data. See Reply 15. We have reviewed the parties’ arguments and evidence on this issue, and we agree with and adopt CoreLogic’s reasoning for modifying Harder’s single-county example in view of Du to retrieve a jurisdictional identifier from an index and use it to search a portion of a multi-jurisdictional database for a selected parcel. In sum, we find that the combination of Harder and Du teaches or suggests the limitations of claim 9 and that CoreLogic has provided articulated reasoning supported by rational underpinnings for combining the references in the manner asserted. Therefore, we conclude CoreLogic has shown by a preponderance of the evidence that claim 9 would have been obvious over Harder and Du.” slip op. at 22

  • ExcludeMotion to exclude, deniedDenied

    “G. CoreLogic’s Motion to Exclude Evidence CoreLogic moves to exclude the redirect testimony of BSI’s expert, Mr. William Huxhold, on the ground that it was provided in response to leading questions. Mot. Excl. 1 (citing Ex. 1034, 150:6–153:8). The redirect testimony relates to a portion of Mr. Huxhold’s cross-examination testimony. Id. at 1–2 (citing Ex. 1034, 72:5–22). Because we do not rely on the cited redirect testimony or the cited cross-examination testimony, CoreLogic’s motion is dismissed as moot.” slip op. at 40

  Patent outcomesUS 8,065,352 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,065,352
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00228 · APJ Peter P Chen · IPR · Final written decision

  Claims 1–12, 14, 15, and 19 are unpatentable: claims 1–10, 12, 14, 15, and 19 as obvious over Harder and Longley, and claim 11 over Harder, Longley, and Roy.

  RulingsFinal written decision

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

    “In our Decision to Institute, we construed “numerical jurisdictional identifier” to mean “a number that identifies a jurisdiction.” Dec. to Inst. 7– 8. We based our construction on the only appearance of “jurisdictional identifier” in the written description of the ’957 patent: FIG. 3 illustrates a USA County Boundary Map (USACM). This is a public domain boundary file of each and every of the 3140 counties within the United States. Each of these polygons is 8 geocoded with its county name and FIPS number, a numerical jurisdictional identifier, as illustrated in the figure. Ex. 1001, 8:48–53 (emphasis added).1 Patent Owner does not challenge our construction of “jurisdictional identifier” in its Patent Owner Response, see PO Resp. 7, nor does Petitioner challenge the construction in its Reply, see Reply 7. For this Final Written Decision, after considering the complete record, we maintain our construction of “numerical jurisdictional identifier” as “a number that identifies a jurisdiction.”” slip op. at 8

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

    “Patent Owner also proposes a construction for “national parcel map database comprising multiple jurisdictional databases which have been normalized to a common data protocol.” PO Resp. 7–15. Patent Owner’s proposal is 60 words long, and reads, “a database covering more than one state including multiple jurisdictional databases, wherein a jurisdictional database is a collection of data representing the boundaries of parcels from the jurisdiction, each of the jurisdictional databases having been received from a jurisdiction, and modified, transformed, amended or converted by a common set of one or more processes applied to all data and updates.” PO Resp. 8. Patent Owner had in its Preliminary Response proposed a different construction (“the database of individual land parcels having been 1 According to the ’957 patent, the Federal Information Processing Standards (“FIPS”) number “is used nationally to numerically identify specific county jurisdictions.” Ex. 1001, 7:27–30. 9 transformed by a set of one or more automated and/or semiautomated processes applied to data and data updates supplied by sponsoring jurisdictions using a set of rules or procedures”) for nearly the identical phrase (“multiple jurisdictional databases which have been normalized to a common data protocol”). Prelim. Resp. 15–17. We did not adopt Patent Owner’s proposed construction in our Decision to Institute, and we do not adopt its revised (and lengthier) construction in this Final Written Decision, for the reasons argued by Petitioner in its Reply (Reply 2–5) and also because the Patent Owner’s prolix proposed construction does not add clarity to the term. We decline to provide an express construction for this term or for any other terms in the claims other than discussed above.” slip op. at 9

  • Skill levelSkill level board ownOther

    “C. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in geographic information science, survey engineering, geomatics, or similar education, and two years of experience in a relevant field (e.g., land or geographic information science), or six years of experience in the relevant field.” Ex. 1006 (Declaration of Michael Goodchild), ¶ 11. Patent Owner has proposed that one of ordinary skill in the art would possess a “a Bachelor’s degree or higher in, GIS engineering with at least 5 years of academic or industry experience in GIS database design.” Ex. 2004 (Declaration of William Huxhold), ¶ 13. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 11

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

    “universal spatial protocol using SHP files (shapefiles) (Ex. 1001, 7:31–41), and Harder’s description of how its system’s datasets are “stored in the industry-standard shapefile (.shp) format” and how the system “converts the data into shapefiles.” Pet. Reply 9–11; Ex. 1003, 24, 106. Petitioner also notes that Patent Owner’s declarant acknowledged that assembling databases according to a standard protocol was in the prior art. Pet. Reply 11; Ex. 1034, 29:15–32:17, 32:18–40:22. We agree with Petitioner and find that Harder teaches or suggests databases that have been normalized to a common data protocol. Second, Patent Owner argues about the lack of disclosure of multiple jurisdictional databases. PO Resp. 28–29. Petitioner contends multiple jurisdictional databases are taught by both Harder and Longley, which explicitly discloses a “STATES table” that is a multi-state database. Pet. Reply 13; Ex. 1015, 229, Fig. 11.2. We agree with Petitioner and find that Harder and Longley teach or suggest multiple jurisdictional databases.” slip op. at 17

  Patent outcomesUS 7,092,957 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,092,957
• Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.All claims unpatentable
  PTAB · Feb 22, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1 and 7 are unpatentable as obvious over He and Korodi; the Board did not reach the Gustafsson and He ground.

  RulingsFinal written decision

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

    “its claims, but instead, recited only “emits.” Patent Owner has not proffered any evidence or argument as to why “emits and dies” used in the ’279 Patent Specification, would have been abbreviated to “emits” in recitation of the claims. Nor is the term “emits” defined explicitly in the ’279 Patent Specification. Thus, we begin with the assumption that the term “emits” does not include “and dies,” as that comports with the plain and ordinary meaning of the word “emits” Thus, taking the plain and ordinary meaning at the time of the invention, we interpret “emits light in sequence” as “throws off or gives off or out light in a continuous or connected series” and interpret “emits in sequence” as “throws off or gives off or out, in a continuous or connected series” (see e.g., Merriam-Webster’s Collegiate Dictionary 377, 1065 (10th ed. 2000)). Patent Owner has not proffered sufficient evidence or argument that “emits light in sequence” and “emits in sequence” should be read more narrowly than the plain and ordinary meaning as suggested by Patent Owner. Specifically, Patent Owner’s assertion that the Specification supports the proposed interpretation of “emits light in sequence” as “emits and dies light in sequence” is misplaced. The Specification of the ’279 Patent does not explicitly define “emits light in sequence” as “emits and dies light in sequence.” Nor is any explicit definition provided for “emits light in sequence” or “emits in sequence.” Patent Owner would have us import limitations disclosed in several of the embodiments, including Embodiment 1, to interpret “emits” as “emits and dies light in sequence” or “emits and” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “Patent Owner additionally asserts “Patent Owner specifically disclaimed emission of light over the full length of the cable, but rather limited the patent to segment by segment illumination along the length of the cable,” thereby limiting the phrase “emits light in sequence” (PO Resp. 43). Patent Owner identified pages 9–10 of the Response to Office Action filed September 18, 2009 (Ex. 1002, 25–26), as providing this disclaimer (PO Resp. 48–49). However, we agree with Petitioner that the statements in the Response to Office Action do not disclaim subject matter, nor do these statements provide an explicit definition of “emits,” “emits light in sequence, and “emits in sequence.” Indeed, the discussion, limited to claim 7, discusses the object of the invention and distinguishes the invention as recited in claim 7 over the cited prior art, Baumberg et al. (US 5,869,930) (Resp. to OA 9–10). This discussion does not qualify as “clear and unmistakable” disavowing statements as required to meet the “demanding standard for finding a disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., No. 2015-1246, 2016 WL 363410, at *4 (Fed. Cir. Jan. 29, 2016). We, therefore, determine the term “emits light in sequence” and “emits in sequence” used in the claims, should not be interpreted as “emits and dies light of each electroluminescent cored bar or cord in succession, one after the other,” but instead, should be interpreted giving the terms their ordinary and customary meaning as understood by an ordinarily skilled artisan at the time of the invention, in light of the Specification.” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “(PO Resp. 37–40). A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Innovention Toys, LLC, v. MGA Entm’t, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Bigio, 381 F.3d at 1325 (citations omitted).” slip op. at 18

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

    “Nonetheless, we find Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings (Pet. 34–36; Ex. 1008 ¶¶ 98–104). Specifically, Petitioner contends an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi because “such a modification is both a predictable variation and an incremental improvement” (Pet. 35). According to Petitioner, an ordinarily skilled artisan would have found it obvious and “straight-forward” to replace the aluminum core wire in He with a power cord to create an improved illuminated cable using electroluminescent wires that light in sequence (id. at 36). Petitioner further asserts combining the teachings would “involve the merger of familiar elements according to their established functions, known methods, and predictable results” (id.). We agree with the Petitioner that an ordinarily skilled artisan would have been motivated to replace the core wire at the center of He’s cable with a power cord as taught by Korodi to create an improved illuminated cable. We find the combination of He and Korodi unites old elements with no change in their respective functions. Indeed, we agree that combining the teachings would be a merger of familiar elements, Korodi’s power cord and He’s electroluminescent cable, that perform their ordinary functions to predictably result in the recited cable which includes a main power cord and a plurality of electroluminescent cords which emit light in sequence when the main cord and the driver are live. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Additionally, as further support, we credit Petitioner’s Declarant’s, Dr. Mark Horenstein’s, testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results that an ordinarily skilled artisan would have found obvious (Ex. 1008 ¶¶ 99, 102, 103).” slip op. at 20

  Patent outcomesUS 7,671,279 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,671,279

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.