- NEC Corporation / Nokia Corporation et al. v. Neptune Subsea IP LimitedAll claims unpatentablePTAB · Nov 25, 2019 · IPR2018-01157 · APJ Jason W Melvin · IPR · Final written decision
Claims 13–20 are unpatentable as obvious over Yamamoto and Nishimoto; the Chowdhury and Webb grounds, with or without Tanaka162, do not establish unpatentability.
RulingsFinal written decision- BurdenFwd all claims unpatentableDecided for petitioner
“III. CONCLUSION For the foregoing reasons, we determine Petitioner has shown by a preponderance of the evidence that each of claims 13–20 is unpatentable.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties submit and we agree that there is no need to construe any term to resolve the issues in this decision. See Pet. 7–9; PO Resp. 6; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“e. Summary For the reasons described above, we find that a person of ordinary skill in the art at the time of invention would have had reason to combine Yamamoto’s and Nishimoto’s teachings as asserted by Petitioner and that the combination teaches all of claim 13’s limitations. Accordingly, Petitioner has shown by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Yamamoto and Nishimoto.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“tunable compensators is a contingent argument, applicable only if one reads claim 13 to require a certain transmission rate. PO Resp. 21–25. We do not read Petitioner’s argument as so constrained. Rather, we understand Petitioner to argue that a desire for higher transmission speeds would drive skilled artisans to use solutions such as Nishimoto’s tunable compensators, particularly in light of Nishimoto’s guidance regarding the ability to achieve high speeds with the system. See Pet. 21–23. In that regard, we agree with Petitioner that the increase in transmission rates from Yamamoto’s to Nishimoto’s disclosures would have given skilled artisans reason to consider Nishimoto’s teachings. Pet. Reply 16–18 (citing Ex. 1005 8:9–11; Ex. 1007, 12:37–39). As Petitioner points out, Nishimoto specifically discloses that higher-speed transmissions were more sensitive to dispersion. Pet. Reply 17 n.9. Thus, we find the desire for higher transmission speeds and the need for techniques such as taught by Nishimoto would have given skilled artisans reasons to combine Nishimoto’s disclosure regarding dispersion compensation with Yamamoto’s system to achieve Yamamoto’s goals regarding the dispersion maps for multiple channels. Further, Petitioner does not rest entirely on the desire for high-speed operation. Petitioner argues also that using Nishimoto’s adjustable compensators and feedback control would “yield an improved WDM system capable of automatic compensation for degradation of the optical signal waveform caused by both wavelength dispersion and polarization mode dispersion of the optical transmission path, resulting in further reduced size and cost.” Pet. 16 (citing Ex. 1003 ¶¶ 99, 101; Ex. 1007, 3:41–60, 4:3–58, Figs. 17, 20, 21), 29–30 (quoting Ex. 1007, Abstract, 3:37–40, 6:56–64, 7:53–56, 11:41–46, 17:53–55, 17:59–60; citing Ex. 1003 ¶¶ 114–115); accord id. at 14 (quoting Ex. 1007, 3:19–25). Patent Owner recognizes that basis for the combination but argues that the record lacks evidence to support Petitioner’s claim of reduced size and cost. PO Resp. 25–26. Patent Owner does not contest that the modification would give Yamamoto’s system the ability to automatically compensate for signal degradation from dispersion. Nishimoto discloses that as transmission speeds increase, “changes in wavelength dispersion characteristics due to temperature changes of optical fiber; and the influence by polarization mode dispersion” both “can not be neglected,” therefore requiring a system for automatically compensating for wavelength dispersion and polarization mode dispersion,” as taught by Nishimoto. Ex. 1007, 1:34–41. We find that a skilled artisan would have had reason to make the combination because the system would gain capability for automatic compensation. Regarding reduced size and cost resulting from the combination, Patent Owner does not provide any contrary evidence and we conclude that Nishimoto’s statements regarding the benefit of its invention also would have motivated skilled artisans to make the combination. See Ex. 1007, 3:17–26 (“to thereby provide a dispersion compensating apparatus of reduced sizes at a reduced cost”).” slip op. at 18
Patent outcomesUS 8,351,798 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,351,798 - Intel Corporation v. Hera Wireless S.A.Rehearing deniedPTAB · Nov 8, 2019 · IPR2018-01687 · APJ Jacqueline T Harlow · IPR · Rehearing
The Board denied Intel’s rehearing request, leaving institution denied for claims 1–6 because the proposed obviousness combinations relied on hindsight and lacked sufficient support.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony 5 of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 17–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,737,377 - Intel Corporation v. Hera Wireless S.A.Rehearing deniedPTAB · Nov 8, 2019 · IPR2018-01686 · APJ Jacqueline T Harlow · IPR · Rehearing
The Board denied Intel’s rehearing request, leaving in place the denial of institution on claims 1–6 because the obviousness combinations relied on hindsight and did not show a reasonable likelihood of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 5 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 18–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,737,377 - PTAB · Apr 30, 2019 · IPR2018-01737 · APJ Jacqueline T Harlow · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may be instituted if the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute trial as to any challenged claim or ground stated in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“’389 patent distinguishes between adaptive array reception and antenna selection. As described in the specification, in adaptive array processing, “an uplink signal from each user’s terminal antenna is received by an array antenna of a base station and extracted with reception directivity through an adaptive array process.” Ex. 1001, 1:45–49. Similarly, we agree with Patent Owner’s assertion that demodulation is not disclosed in the ’389 patent as a 10 “reception operation adapted to a transmission operation.” Prelim. Resp. 13. The specification consistently indicates a separation between the Demodulator Circuit and the DSP (Digital Signal Processor) analyzing the reception operation indication signal. Ex. 1001, 19:12–17, 19:41–51, 20:40– 51. For example, the ’389 specification teaches that demodulation at a receiver is separate from the claimed reception operation. See, e.g., Ex. 1001, Fig. 10. As is explained by Patent Owner, “Figure 10 shows an already demodulated signal from demodulator 16 provided to DSP 12 (comprising apparatuses 12a and 12b), which extracts a terminal reception operation indicating signal (bit), receives the analyzed result, and then ‘performs the reception operation based on the indication.’” Sur-Reply 2–3 (quoting Ex. 1001, 19:41–51). Patent Owner provides a similar example based on Figure 11, and as shown in both figures a demodulated signal is first required by DSPs 12 and 14, respectively, to perform the subsequent claimed reception operation. Id. at 3.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed supra, we agree with Patent Owner that in light of the ’389 patent specification a “reception operation” does not include modulation or demodulation. For at least that reason, we are not persuaded by Petitioner’s argument based on the modulation selection bit.” slip op. at 18
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We are not persuaded by Petitioner’s argument that the Short Preamble bit satisfies the claim 1 requirement for a “single bit indicating a reception operation adapted to a transmission operation of a radio base station apparatus” (Ex. 1001, 26:32–34). The 802.11-1999 and 802.11b standards themselves do not make a connection between preamble length and antenna selection, and Dr. Negus’s testimony on this issue is not persuasive. See Ex. 1002 ¶¶ 482–483. His testimony establishes only that the short preamble is intended to permit higher “throughput.” Id. at ¶ 482. He does not sufficiently connect the throughput increase with antenna selection or antenna diversity. He testifies: “A POSITA would understand, as known in the prior art at the time of the alleged invention of the ‘389 Patent, that this ‘Short Preamble option’ provides this ‘improved performance’ by ‘reducing the high overhead of the existing long (192μs) preamble’ such [that] this ‘short preamble will allow better throughput when the LAN does not need to contend with low rate PHYs. . . .” Id. (emphases omitted). We agree with Dr. Negus that a stated goal of providing short 19 preambles is to increase throughput. He provides insufficient support, however, for his conclusion that this meets the requirement of the claim that the preamble bit “indicat[e] a reception operation adapted to a transmission operation of a radio base station apparatus” (Ex. 1001, 26:32–34). His citation to paragraphs 330 and 338 of his declaration, quoting references other than 802.11-1999 and 802.11b, does not persuade us that this requirement is met. The citations relate generally to the advantages of using short preambles. Neither citation describes using 802.11b’s Short Preamble bit to indicate a reception operation adapted to a transmission operation of the base station.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,873,389 - Yamaha Golf Car Company v. Club Car, LLCNo claims unpatentablePTAB · Apr 2, 2019 · IPR2017-02143 · APJ Robert L Kinder · IPR · Final written decision
Petitioner did not prove claims 1–11 and 13–20 unpatentable on the asserted grounds; claim 12 was disclaimed.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“In the summon mode, pressing a button to summon the caddie of the ’388 patent triggers an autonomous mode but no specific driving commands are provided to the caddie by the golfer. See Ex. 2015 ¶ 195 (“As the robotic caddy cart is operating autonomously at that point, the user does not input these movement commands.”). We agree that the summon command could not be considered a driver command because “merely defining the destination does not generate any control actions.” Id. ¶ 160. Likewise, a summon command to follow a golfer would not be a driver command because the golfer has no direct control over the route taken, the speed of the caddie, or whether or not a caddie could drive into a restricted area –– the caddie’s system pilots itself to a point near the golfer by generating movement inputs on its own. The system detects that the golfer is in a limited access area and the golfer will not be able to summon the caddie into that area. This restriction is not a driver command being limited because the summon command simply activates internal logic to move the caddie near the golfer, not a driver command to move into a restricted area. Indeed, when operating in autonomous mode, the caddie can never enter such restricted areas. We thus agree with Patent Owner that the summon command cannot be overridden or limited in the ’388 patent because the caddie will always come as close as is allowable under the parameters of the caddie’s programming.” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Dec. 11. First, we note that the claim language itself focuses on limiting the ability of a “driver” to move the cart. For example, dependent claim 2 recites “an override of a driver input to the motor.” That the “driver input” needs to be overridden or otherwise restricted presumes that the golf cart is being driven by a person who has independent control of the cart and is susceptible to driving in an unruly manner, in other words, an onboard driver of the cart. This is especially true given the lack of any indication in the claims of remote or autonomous operation of the cart. Numerous other dependent claims include similar references to a driver of the cart, for example, “override of driver input” (claim 3), “driver interface unit” (claim 4), “limits the performance of driver commands” (claim 14), and “driver command” (claim 17).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner overemphasizes the ’053 Application’s use of the terms “golf cart” and “electric vehicle.” Nowhere does the ’053 Application support the disclosure of a rideable cart. Rather, it describes a golf cart that, when read in the context of the reference as a whole, is a riderless cart, or more specifically, a “caddie cart.” This is evidenced by the fact that the ’053 Application incorporates by reference a caddie cart, as discussed above, in which the only mechanism for actually operating the cart is a “grip lever,” which Petitioner’s own expert acknowledges is not something found in a rideable cart. See Ex. 2016, 94:16–95:11 (conceding “there is no such thing as a rideable golf cart, in [his] experience or in 2003, that has a grip lever”); see also 54:5–12 (essentially same testimony). Further evidence that the ’053 Application contemplates only a riderless caddie cart is its description of the golf cart as “moving the golf bag to a location that is convenient for the play by the golfer.” Ex. 1003 ¶ 2. Nowhere does it describe the cart as moving a golfer or caddy. Even Petitioner’s expert agrees that, while the ’053 Application “does describe a caddy cart,” it “does not describe putting the person in the seat.” Ex. 2016, 92:18–93:1; 88:11–15. And to the extent Petitioner’s expert qualifies that testimony by saying that the ’053 Application doesn’t exclude the possibility of a riding cart and doesn’t preclude putting a person in the seat, that qualification is irrelevant to our analysis of anticipation, which depends on what a reference actually discloses, not what possibilities it could have disclosed. Petitioner’s assertion is that each of independent claims 1 and 6 is anticipated by the ’053 Application – Petitioner has not put forth an obviousness ground for these claims based on the ’053 Application.” slip op. at 24
- Strike new argumentNew argument disregardedDecided for patent owner
“Alternatively, Petitioner argues that the ’053 Application’s disclosure of a golfer selecting a destination on an LCD display “inherently teaches” the ability of “overriding a driver command.” Pet. 29–30 (citing Ex. 1003 ¶ 37). We disagree. The ability to select a travel destination on an LCD display is not the same as the ability to “override” or “restrict” a previous command to travel to a certain destination. As argued by Patent Owner, “[t]he selection of a point on a map is just that—a selection to travel to a point on the map, not to take a particular route to that point.” PO Resp. 34 (citing Ex. 2015 ¶¶ 150–152). Nowhere does the ’053 Application say that the selected point on the display will be disregarded if it is within a prohibited area. Thus, we are not persuaded by Petitioner’s argument that the ’053 Application inherently teaches the ability to “override” a driver input. Reply 3, 23–24. In its Petition, however, Petitioner deliberately chose not to rely on the ’053 Application’s manned operating mode in arguing those particular limitations. See Pet. 28–29 (referencing repeatedly “unmanned mode operation” and showing ellipsis “. . .” where “manual traveling mode” would have been discussed in paragraph 34 of the ’053 Application). Petitioner cannot switch positions midstream and raise an entirely new argument in its reply that reasonably could have been made in the petition. See Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (“Blizzard, as petitioner, had an opportunity to present this argument in its petition, but chose not to.”). A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23(b). Indeed, in its patent owner response, Club Car carefully notes that the ’053 Application’s manned operating mode is “not relied upon by Petitioner.” PO Resp. 28. Because Petitioner’s assertion in its reply of the ’053 Application’s manned operating mode constitutes new argument outside the scope of a proper reply, we decline to consider it.” slip op. at 30
Patent outcomesUS 7,480,569 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,480,569 - Yamaha Golf Car Company v. Club Car, LLCNo claims unpatentablePTAB · Apr 2, 2019 · IPR2017-02144 · APJ Robert L Kinder · IPR · Final written decision
The Board found claims 11 and 17–19 not shown unpatentable: claim 11 was entitled to priority over the ’918 Publication, and the obviousness challenge to claims 17–19 was unsupported.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner
“slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“sufficiently how the ’918 Publication’s disclosure of a “signal . . . of the violation” (Ex. 1003 ¶ 68) also teaches or suggests the additional claim requirements of “the driver interface unit . . . operable to communicate an alarm to the base station of a controller limiting the performance of a driver command” as required by claim 17. Petitioner recognizes the distinction by arguing “that the system could also provide a message to the course personnel . . . of any remedial corrective measures taken in response.” Pet. 25 (emphasis added). Based on the evidence cited, the ’918 Publication does not provide any such notification. Petitioner cannot suggest that a reference could have a feature that it does not have without some rational basis as to why such a feature would have been suggested by the reference. Mr. Breen’s explanation mirrors Petitioner’s contention (Ex. 1001 ¶ 277) and likewise states “that the system could also provide a message to the course personnel” (emphasis added) but no further explanation is provided as to how this unsupported conclusion was reached. Petitioner has also failed to lay the necessary foundation to establish that “common sense” could fill the gap for the missing limitation, or provide a basis for modifying the ’918 Publication to teach the claim 17 limitation. We recognize that in certain instances “common sense” can be used to supply the missing claim limitation, but only if the art is “unusually simple and the [patented] technology particularly straightforward.” Arendi Sarl v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). In this proceeding, we have no testimony or evidence to establish either condition is met. Neither Petitioner nor Mr. Breen explain adequately why the limitations of claim 17” slip op. at 24
Patent outcomesUS 7,480,569 not shown unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 7,480,569 - Comcast Cable Communications, LLC v. Promptu Systems CorporationNo claims unpatentablePTAB · Mar 29, 2019 · IPR2018-00340 · APJ Alex S Yap · IPR · Final written decision
Claims 1–7, 17–24, and 33 were not shown unpatentable under any asserted § 103 ground because the petition failed to establish the claimed command function.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner that the definitions for a person of ordinary skill in the art involving unrelated patents in different proceedings need not be the same in each proceeding. Reply 2–4. Although the patents in each proceeding before us are issued to the same assignee and have some of the same inventors, the specific goal of each patent differ between proceedings. We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent discloses a system that includes voice recognition processing,” it discusses voice recognition technology only as a component part of the system, and expertise in voice recognition technology was not required to understand the ’538 Patent because it does not discuss any particular voice recognition techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr. Wechselberger that a practitioner would have understood how to implement existing voice recognition products in a cable television network without having special knowledge or experience with voice recognition algorithms. Id. ¶¶ 5–7. For the foregoing reasons, we credit the testimony of Mr. Wechselberger regarding the person of ordinary skill in the art and adopt, with modification (e.g., removing the words “at least” from Petitioner’s proposed definition), Petitioner’s definition of a person of ordinary skill in the art: (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and three years of work experience in the field of analog and digital television systems with exposure to interactive networks and associated control technologies; or (ii) a Master’s of Science degree (or equivalent) in electrical engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the same field. We further note that the prior art in the instant proceeding reflects the” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) applies§112(f) does not applyMixed
“specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). As the Federal Circuit has noted, “‘structure disclosed in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, ¶ 6.’” Saffran v. Johnson & Johnson, 712 F.3d 549, 562 (Fed. Cir. 2013) (quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). We are not persuaded that Petitioner has identified sufficient corresponding structure for this means-plus-function limitation. Here, Petitioner contends that the corresponding structure for performing the recited function is “‘a processor’ and equivalents.” Pet. 11. Petitioner’s expert further opines that “the patent identifies the Motorola DCT-2000 set-top box (’538 Patent[,] 3:51–52), and a person of ordinary skill in the art would have known that the DCT-2000 includes a processor that executes command functions from the cable head-end.” Ex. 1022 ¶ 138. However, for means-plus-function limitations,” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Not shown unpatentable
“[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015) (en banc) (“In cases . . . involving a claim limitation that is subject to § 112, para. 6 that must be implemented in a special purpose computer, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor[; it must] disclose an algorithm for performing the claimed function.”) (citations omitted); Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). We decline to adopt Petitioner’s proposed construction because Petitioner has not explained sufficiently that the recited function for this term (“responsive to receipt of the command functions for executing the command functions”) is a basic computer function that would not require a special purpose computer, nor has Petitioner directed us to any portion of the Specification sufficient to link a structure (i.e., an algorithm)4 to the recited function. The reference to “a processor” without specifying the algorithm is too generic to identify any specific structure. In Aristocrat, the Federal Circuit stated that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Id., emphasis added. As the Federal Circuit explained, “a general purpose computer programmed to carry out a particular algorithm creates a ‘new machine’ because a general purpose computer ‘in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.’” 521 F.3d at 1333 (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also WMS Gaming, Inc. v. Int’l Game Techs., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Consequently, the specification must disclose enough of a specific algorithm to provide the necessary structure under § 112, sixth paragraph. Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Allowing a computer programmed to perform a specialized function to be claimed without disclosure of the algorithm used for that programming would exhibit the same type of impermissible overbreadth of purely functional claims. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).” slip op. at 19
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“includes a set-top box compatible command function” because “while the references’ disclosures broadly indicate that their set-top boxes receive some information from a remote network location,” the information does not require a command to be sent for decoding or formatting. Ex. 2033 ¶ 43. Specifically, Mr. Tinsman testifies: Cable digital television content is typically transmitted as compressed data that must be decompressed by the set-top box for display on a television. Such content information is generally comprised of the compressed video data accompanied by metadata describing the content data to the set-top box, including, e.g., details of the data’s format. A POSITA would know that a set-top box does not need to receive specific instructions to perform a function every time it receives content data. Instead, the video decoder in the set top box automatically decodes the incoming data for display on a television without needing specific instructions to do so from the head-end unit. Id. We credit the above-quoted testimony of Mr. Tinsman, and find it to be persuasive. Patent Owner also points out that Mr. Wechselberger admitted that decoding and formatting information does not necessarily require a command to be sent. Resp. 29–30 (citing Ex. 2034, 50:20–24 (“Q Is it your opinion that decoding and formatting information necessarily requires a command to be sent from the head end to the set top box? A No.”)); see also Ex. 2034, 50:25–52:20. In contrast, we do not credit the conclusory testimony of Mr. Wechselberger that “[a] person of ordinary skill in the art would know that remote server 108 would send a ‘set-top-box-compatible command function’ to the communications box 104 (‘set-top box’) as a prerequisite to permit it to decode and format the video signal for display on display device 112.” Ex. 1022 ¶ 178. This conclusory statement is not supported by persuasive evidence, and is inconsistent with Mr. Wechselberger’s admission that decoding and formatting information does not necessarily require a command to be sent. See Ex. 2034, 50:20–24.” slip op. at 29
Patent outcomesUS 7,260,538 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,260,538 - Comcast Cable Communications, LLC v. Promptu Systems CorporationNo claims unpatentablePTAB · Mar 29, 2019 · IPR2018-00341 · APJ Alex S Yap · IPR · Final written decision
Claims 34, 35, 37, 40, and 41 were not shown unpatentable under any asserted obviousness ground because the prior art did not establish the claimed set-top-box-compatible instructions.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedSkill level board ownDecided for petitioner
“We agree with Petitioner that the definitions for a person of ordinary skill in the art involving unrelated patents in different proceedings need not be the same in each proceeding. Reply 2–4. Although the patents in each proceeding before us are issued to the same assignee and have some of the same inventors, the specific goal of each patent differ between proceedings. We also agree with Mr. Wechselberger that “[w]hile the ’538 Patent discloses a system that includes voice recognition processing,” it discusses voice recognition technology only as a component part of the system, and expertise in voice recognition technology was not required to understand the ’538 Patent because it does not discuss any particular voice recognition techniques or algorithms. Ex. 1032 ¶¶ 6–7. Therefore, we agree with Mr. Wechselberger that a practitioner would have understood how to implement existing voice recognition products in a cable television network without having special knowledge or experience with voice recognition algorithms. Id. ¶¶ 5–7. For the foregoing reasons, we credit the testimony of Mr. Wechselberger regarding the person of ordinary skill in the art and adopt, with modification (e.g., removing the words “at least” from Petitioner’s proposed definition), Petitioner’s definition of a person of ordinary skill in the art: (i) an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and three years of work experience in the field of analog and digital television systems with exposure to interactive networks and associated control technologies; or (ii) a Master’s of Science degree (or equivalent) in electrical engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the same field. We further note that the prior art in the instant proceeding reflects the” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“The use of the term “means” triggers a rebuttable presumption that § 112, ¶ 6 applies. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008). One way in which this presumption can be overcome is if “the claim recites sufficient structure for performing the described functions in their entirety.” Id. To determine if the claim recites sufficient structure, “it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359–60 (Fed. Cir. 2004). Here, for each limitation, the claim recites sufficient structure for performing the described functions. For example, a television remote control is sufficient structure “for directly and wirelessly controlling television sets and additionally receiving user voice input and wirelessly transmitting first output representative of the voice input to a television settop box means” (Ex. 1022 ¶ 139) and a television set-top box is sufficient structure for “receiving television input signals via cable television link and providing television output signals compatible with television sets, and responsive to receiving the first output from one of the television remote control means to transmit representative second output to a central processing station via the cable television link.” (id. ¶ 143). Therefore, based on our review of the record before us, we are persuaded by Petitioner that these terms do not invoke 35 U.S.C. § 112, ¶ 6.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner’s conclusory rationale for the combinations, however, is untethered to any claim limitations. See Pet. 35–38, 56–58 (citing to Ex. 1022 ¶¶ 226–229, 232–234; 299–300, 304–306). For example, when discussing the combination of the references for a particular limitation, Petitioner starts with a discussion of either Julia or Murdock, followed by a discussion of Houser, and then provides a conclusory assertion that the combination would disclose the limitation at issue. See, e.g., Pet. 24–25 (“Julia also discloses . . . . In addition, Houser discloses . . . . Thus, Julia alone or combined with Houser discloses . . .”), 26–27 (“As explained above, Julia discloses . . . . In addition, Houser also discloses . . . . Thus, Julia alone or combined with Houser discloses . . .”). These discussions do not articulate, with respect to any specific limitation, or for any claim as a whole, why or how Julia or Murdock can and should be combined with Houser. A determination of obviousness cannot be reached where the record lacks “explanation as to how or why the references would be combined to produce the claimed invention.” TriVascular, 812 F.3d at 1066. The Petitioner also states that “a skilled artisan would have been capable of combining the teaching[s] of [the prior art references because such] combination[s] would have been no more than combining prior art elements according to known methods to yield predictable results.” However, this discussion is similarly untethered to any claim element, or to the claim as a whole. Pet. 37–38, 58 (citing to Ex. 1022 ¶¶ 233, 306–307.) And, again, we are not informed what teaching of one reference is proposed to be combined with what teaching of the other reference, or why and how the combination would have been made. To the extent Petitioner’s position is that once it establishes that two prior art references are within the same field and are directed to solving the same problem, then all features within one reference can be used within the other, and vice versa, without need for further explanation, it cites no authority to support that broad position and we are aware of none. Therefore, we determine that Petitioner has not established, by a preponderance of the evidence, that claims 34, 35, 37, 40, and 41 would have been obvious over Julia in view of Houser or Murdock in view of Houser. 3.” slip op. at 20
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Id. We credit the above-quoted testimony of Mr. Tinsman, and find it to be persuasive. Patent Owner also points out that Mr. Wechselberger admitted that decoding and formatting information does not necessarily require an instruction to be sent.4 Resp. 31 (citing Ex. 2034, 50:20–24 (“Q Is it your opinion that decoding and formatting information necessarily requires a command to be sent from the head end to the set top box? A No.”)); see also Ex. 2034, 50:25–52:20. In contrast, we do not credit the conclusory testimony of Mr. Wechselberger that “[a] person of ordinary skill in the art would know that remote server 108 would send a ‘set-top-box-compatible instruction’ to the communications box 104 (‘set-top box’) as a prerequisite to permit it to decode and format the video signal for display on display device 112.” Ex. 1022 ¶ 176. This conclusory statement is not supported by persuasive evidence, and is inconsistent with Mr. Wechselberger’s admission that an instruction be sent. See Ex. 2034, 50:20–24.” slip op. at 23
Patent outcomesUS 7,260,538 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,260,538 - HTC Corporation / HTC America, Inc. v. Invt Spe LLCInstitution deniedPTAB · Mar 5, 2019 · IPR2018-01556 · APJ Thu A Dang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 4 was obvious over Padovani and Gils.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Principles of Law In an inter partes review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied on). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Although Petitioner contends “a POSITA would have been motivated to provide greater protection for the decimal integer portion (an error in which would be magnified versus an error in the decimal fraction portion)” in Padovani (Pet. 33), Petitioner does not identify any passage or combination of passages in Padovani that teaches or suggests providing, or even the need to provide, greater protection for one decimal portion than the other decimal portion, let alone by using “different coding schemes for the different parts.” Id. As Patent Owner asserts, “Padovani discloses using a single code to encode the DRC message[,]” and “does not teach using multiple codes to encode different portions of the DRC message.” Prelim. Resp. 14 (citing Ex. 1009, 45:20–22 (emphasis added)). We recognize that Petitioner’s Declarant, Dr. Min, testifies that, “by virtue of Padovani contemplating the use of an (n,k) coding scheme,” the POSITA “would have naturally sought out similar coding schemes [as those of Gils] to protect DRC messages.” See Pet. 41 (citing Ex. 1017 ¶ 156). Dr. Min further testifies that “a POSITA would have been motivated to provide greater protection for certain bits by selecting appropriate code words generated by one or more of the coding schemes contemplated by Gils,” and thus, use “different coding schemes for the different parts.” Ex. 1017 ¶ 132. Dr. Min’s testimony, however, does not address adequately why one of ordinary skill in the art would have used together different coding schemes from Gils, let alone a separate scheme for certain bits over the other bits. As Dr. Min testifies, “a single UEP coding scheme could also be used depending upon how a POSITA would have wanted to implement unequal error protection.” Ex. 1017 ¶ 132; see Pet. 33 (citing Ex. 1017 ¶ 132). As such, Dr. Min acknowledges that a single unequal error protection coding scheme could be used as well as applying different coding schemes to different parts of a message. Here, Dr. Min’s testimony that a single unequal error protection coding scheme could be used further undermines Petitioner’s position that one of ordinary skill in the art would have used the different coding schemes for different parts as set forth in Gils. Thus, Dr. Min’s testimony does not adequately explain why one of ordinary skill in the art would have applied different coding schemes from Gils to the DRC message of Padovani, much less in the manner proposed by Petitioner, of providing greater protection for the decimal integer portion than the decimal fraction portion, especially when Padovani discloses “using a single code to encode the DRC message.” See Prelim. Resp. 14 (citing Ex. 1009, 45:20–22).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Min’s declaration testimony to support its contention that one of ordinary skill in the art would have used Gils’s techniques to encode Padovani’s DRC message in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Petitioner also has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Moreover, Dr. Min’s contention that “[t]he nature of binary numbers (or other base-x number systems) means that the leftmost bit of any binary number is the most significant bit” (Ex. 1017 ¶ 154) is conclusory. As Patent Owner points out, “Dr Min’s declaration, however, merely repeats the allegations of the Petition without any explanation or citation to any supporting or corroborating evidence.” Prelim. Resp. 20 (citing Ex. 1017 ¶ 154). That is, “[t]here is no proffered evidence that it was well understood by a POSITA at the time that the leftmost bit in binary numbers, and specifically in the DRC message of Padovani, is the ‘most significant bit.’” Prelim. Resp. 20. For that reason, we give little weight to Dr. Min’s uncorroborated testimony that “the leftmost bit of any binary number is the most significant bit.” 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations[.]”).” slip op. at 15
§ 103 obviousnesscites KSRPatents in suitUS 7,206,587 - Apple Inc. / Zte(Usa) Inc. v. Invt Spe LLCInstitution deniedPTAB · Mar 5, 2019 · IPR2018-01474 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claim 4 because Petitioner did not show a reasonable likelihood that Bender and Piret rendered it obvious; claim 3 had been statutorily disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“For the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 4 would have been obvious over Bender and Piret. See 35 U.S.C. § 316(e) (To prevail in an inter partes review that has been instituted, “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’587 patent challenged in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’587 patent, and no trial is instituted.” slip op. at 17
- Adverse judgmentAdverse judgmentOther
“We agree with Patent Owner. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An inter partes review cannot be instituted on claims that have been disclaimed and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). This conclusion is consistent with other panel decisions addressing this issue. See, e.g., Intuitive Surgical, Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7, 2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015, Paper 9, 12–14 (PTAB Nov. 14, 2018). Accordingly, we treat claim 3 as having never been part of the ’587 patent, and do not institute inter partes review on this claim. As discussed above, we regard claim 4 as the only challenged claim. See Sections I.A and I.E.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Accordingly, a plain reading of the reference does not support a finding that Bender teaches or suggests that the FEC scheme is used to encode the SNR itself. Therefore, we are not persuaded that Bender’s FEC description would have provided reason to look to Piret’s encoding techniques for encoding Bender’s “quality” information. That is, although we agree with the Petitioner that Piret teaches and suggests a method of encoding less significant bits differently from the more significant bits of each data word, wherein the most significant bit of the plurality of bits is encoded to be less susceptible to errors (Ex. 1005, 1:20–33), that alone is insufficient to support a conclusion of obviousness of providing an encoder that encodes Bender’s SNR “quality” information, as required by claim 4. That Piret discloses encoding transmitted information does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, the Petitioner’s obviousness position does not explain why a person of ordinary skill in the art would have encoded the SNR value in Bender, which may not even be transmitted, using Piret’s encoding method. Indeed, Petitioner does not direct us to persuasive evidence that encoding the SNR value would have been expected to provide any advantage, outside the teachings of the ’587 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Singer’s declaration testimony to support its contention that one of ordinary skill in the art would have used Piret’s techniques to encode Bender’s SNR values in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. In that regard, Petitioner’s Declarant, Dr. Singer, testifies that a person of ordinary skill in the art at the time of the ʼ587 Patent’s invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with wireless communication systems or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 6; Ex. 1003 ¶ 39. At this juncture, Patent Owner does not dispute Dr. Singer’s assessment on the level of ordinary skill in the art. See generally Prelim. Resp. Based on the current record, we apply Dr. Singer’s assessment for purposes of this Decision. We also note that the prior art of record currently in the instant proceeding is consistent with this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,206,587
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.