- PTAB · Dec 15, 2023 · IPR2023-00941 · APJ Jameson Lee · IPR · Institution
The Board instituted inter partes review of claims 1–18 on the asserted §103 ground over Kimura, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“j) Conclusion For reasons discussed above, Petitioner has shown a reasonable likelihood that it would prevail in establishing obviousness of claim 7 over Kimura. 4. Dependent Claims 9–12 Claims 9–12 each depend, directly or indirectly, from claim 7. Ex. 1001, 9:59–10:19. Petitioner specifically addresses all of them in detail. Pet. 56–62. Petitioner’s assertions are supported by the cited evidence, and Patent Owner does not present any argument additional to those it presents for claim 7. Petitioner has shown a reasonable likelihood that it would prevail in establishing obviousness of each of claims 9–12 over Kimura.” slip op. at 45
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“In particular, we are persuaded preliminarily that an ordinarily skilled artisan would have known to implement a version of the pixel circuit shown in Figures 33A–33E of Kimura with all pMOS transistors. Notwithstanding Patent Owner’s arguments to the contrary, discussed below, we are sufficiently persuaded that there is general interchangeability of nMOS and pMOS transistors used as switching transistors. Thus, we are sufficiently persuaded, for institution purposes, that it would have been obvious to one of ordinary skill in the art to make a modification of Kimura’s embodiment shown in Figures 33A–33E to use pMOS type transistors for all switching transistors in the pixel circuit, which leads to an all pMOS version of Kimura’s Figure 33 embodiment.6” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“one of the first or fourth transistor to pMOS type transistor is, if anything, a teaching away from using only pMOS transistors in the embodiment shown in Kimura’s Figures 33A–33E. Prelim. Resp. 28–29. We disagree. That Kimura describes a benefit for making the first and fourth transistor of different polarity types does not constitute a teaching away from having them both being of the same polarity type. A reference teaches away from a claimed invention if it criticizes, discredits, or otherwise discourages modifying the reference to arrive at the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Court of Appeals for the Federal Circuit has stated: “[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away . . . because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” Fulton, 391 F.3d at 1201. Accordingly, in order for there to be teaching away, the statement in Kimura must rise above merely assessing the advantages and disadvantages among viable alternatives. It does not. The Federal Circuit explained that “[c]hoosing one alternative necessarily means rejecting the other,” and that “[t]his interpretation of our case law [treating the choosing of one alternative as a teaching away from the other alternative] fails.” Fulton, 391 F.3d at 1201. Thus, we do not find that Kimura teaches away from making the first and the fourth transistor of the same polarity type.” slip op. at 25
- Expert testimonyPetitioner expert creditedDecided for petitioner
“If the design need is for a transistor to be used as a simple on/off switch, then either an nMOS transistor or a pMOS transistor can be chosen – since, as shown in the figure from Kang and Leblebici 2003 [Ex. 1011] above [in ¶ 56 of the same Declaration], each can function as a simple on-off switch. As the primary operational difference between nMOS and pMOS (when a simple switch is desired) is that the on/off characteristics are the opposite of each other – and the on-off signals to be applied must be altered (i.e., reversed as it were) to account for this. In particular, as described in Section VII.A.1, nMOS devices turn on in response to a “high” voltage on the gate terminal and turn off when a “low” voltage is applied. This is known in the art as “active-high” signaling. pMOS transistors are just the opposite – they turn on when a “low” voltage is applied to the gate terminal and turn off in response to a “high” voltage on the gate. This is known in the art as “active-low” signaling. Changing the polarity of a switching transistor (from nMOS to pMOS or vice versa) would require changing the polarity of the gate signal to achieve the same functionality, but doing so was easy and well-known to a POSITA. Id. ¶ 57 (the reference to Kang and Leblebici 2003 identifies a figure which illustrates a CMOS inverter having an nMOS switch and a pMOS switch). The above-quoted testimony of Dr. Foty is not merely conclusory. Rather, it relies on the disclosures of Kang, Leblevici 2003, and Kimura. It also relies on the level of ordinary skill in the art and explains specifically how the change form nMOS to pMOS switching transistor, and vice versa, would be done. Also, notably, Patent Owner does not assert that implementing a switching transistor by a pMOS transistor exceeds the level of ordinary skill in the art. We also preliminarily credit the testimony of Dr. Foty because it currently stands unrebutted.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,414,599 - Samsung Electronics Co., Ltd. / Apple Inc. et al. v. Smart Mobile Technologies LLCNo claims unpatentablePTAB · Nov 30, 2023 · IPR2022-01002 · APJ Nathan A Engels · IPR · Final written decision
Claims 1–9 and 12–20 were not shown unpatentable under § 103 over Paulraj and Heath because the combination did not teach or suggest the claimed plurality of antennas.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Although we do not understand the claims to require both transmission and reception “via all antennas” all of the time, we determine the claims require a set of antennas in which at least some of the antennas are for both transmitting and receiving. We disagree with Petitioner that two separate sets of antennas—one set of transmitting antennas and a separate, nonoverlapping set of receiving antennas—fall within the scope of the challenged claims.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although we do not understand the claims to require both transmission and reception “via all antennas” all of the time, we determine the claims require a set of antennas in which at least some of the antennas are for both transmitting and receiving. We disagree with Petitioner that two separate sets of antennas—one set of transmitting antennas and a separate, nonoverlapping set of receiving antennas—fall within the scope of the challenged claims.” slip op. at 13
- Strike new argumentNew argument disregardedDecided for patent owner
“We determine these arguments are not grounded in or supported by the Petition or within the scope of reasonable reply arguments. Nothing in the Petition maps any limitations of the challenged claims to alleged teachings in Paulraj of antennas that perform both transmission and reception. Thus, we agree with Patent Owner (Sur-Reply, 7) that this argument in Petitioner’s Reply would improperly recast Petitioner’s reliance on Paulraj and is therefore untimely. Moreover, we agree with Dr. Cooklev (Ex. 2004 ¶ 37) that Paulraj is consistent in describing separate transmit units and receive units throughout its disclosure, and without an appropriate mapping of Paulraj’s alleged teachings of transmit/receive antennas to the challenged claims in the Petition, Petitioner has not carried its burden to show unpatentability under such a theory, even if it were timely.” slip op. at 16
Patent outcomesUS 9,191,083 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,191,083 - Akin Gump Strauss Hauer & Feld LLP v. Xcential Corp.Institution deniedPTAB · Nov 28, 2023 · DER2022-00004 · APJ Justin T Arbes · DER · Institution
The Board denied institution because Petitioner did not show that Respondent’s claims 1–5 were the same or substantially the same as the allegedly disclosed invention.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has not shown sufficiently that claims 1–5 of Respondent’s ’233 application are the same or substantially the same as the invention allegedly disclosed to Respondent. Consequently, Petitioner has not made a sufficient showing of derivation as to Respondent’s claims 1–5 to warrant institution of this proceeding. See 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(b)(3)(i). III. CONCLUSION Based on the arguments and evidence presented by Petitioner, substantial evidence, unrebutted, does not support a conclusion that the claims of Respondent’s ’233 application constitute derived inventions. Therefore, we do not institute a derivation proceeding.” slip op. at 29
- BurdenDenied
“same or substantially the same as (i.e., patentably indistinct from) the invention allegedly disclosed to Respondent. As an initial matter, we note that the Petition does not specifically compare the allegedly disclosed invention as a whole to Respondent’s claim 1 and explain “why” they are the same or substantially the same. See 37 C.F.R. § 42.405(b)(3)(i). Rather, Petitioner argues that Mr. Agnello conceived and communicated certain general concepts, then cites certain groups of claim limitations for each concept (without tying such arguments to the particular language of claim 1). See Pet. 34–39 (addressing the preamble of claim 1), 39–41 (grouping limitations [a] and [b] under the general concept of “creating a ‘snapshot document’ including at ‘least one provision of law to be changed’”), 42–46 (grouping limitations [c]–[f] as “known concepts of ‘receiving changes to the snapshot document’ and ‘creating an updated snapshot document’”), 46–50 (grouping limitations [i]–[l] as “known concepts of ‘analyzing the updated snapshot document’”), 50–56 (grouping limitations [n]–[q] under the general concept of “analyzing the XML changes document to generate a bill representation”).5 Petitioner, in its supplemental paper, also ambiguously identifies 37 pages of the Petition as showing where it articulated the invention allegedly disclosed to Respondent. See Supp. 1–2 (citing Pet. 1, 2, 6, 9–13, 17–20, 28, 29, 33–47, 49–55, 58). To determine whether Petitioner has satisfied the requirement of 37 C.F.R. § 42.405(b)(3)(i), we consider the differences between Respondent’s claim 1 and the invention allegedly disclosed to Respondent, and then assess the arguments in the Petition, including those at the cited pages, to determine whether, notwithstanding those differences, Petitioner has shown sufficiently that the two are patentably indistinct.6” slip op. at 19
NonePatents in suitUS 11,989,794 - Apple Inc. / Samsung Electronics Co., Ltd. et al. v. Smart Mobile Technologies LLCAll claims unpatentablePTAB · Nov 28, 2023 · IPR2022-00979 · APJ Paul J Korniczky · IPR · Final written decision
Claims 1, 2, 4, 5, 15, and 20 are unpatentable as obvious over the instituted grounds involving Rautiola, Regnier, Sainton, and, for claim 4, Wilson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a 3 Patent Owner has not directed us to any objective evidence of non-obviousness. See PO Resp. hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, 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. Petitioner states a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of networking and wireless devices. Lack of work experience can be remedied by additional education, and vice versa.” Pet. 9 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute Petitioner’s proffered level of skill discussed by Petitioner’s declarant. See PO Resp. We adopt Petitioner’s definition of the level of ordinary skill for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 11
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“To qualify as prior art for an obviousness analysis, a reference must qualify as “analogous art,” i.e., it must satisfy one of the following conditions: (1) the reference must be from the same field of the inventor’s endeavor; or (2) the reference must be reasonably pertinent to the particular problem with which the inventor is involved. K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree. Rautiola teaches that its server can distribute various voice, e-mail, and data services to client computers, such as laptop 9. Ex. 1005, Fig. 2, 4:31–34, 1:31–36; Ex. 1003 ¶¶ 148, 202. And, as Petitioner explains, Regnier’s technique of a server that (i) downloads, to a client device, client-side portions of application services and (ii) dynamically controls whether the client device can use and/or access the service, discloses a server that enables converting a client between a plurality of functions (e.g., office telephone, database, e-mail). Pet. 54 (citing Ex. 1003 ¶¶ 156–159, 202). Thus, Petitioner demonstrates that it would have been obvious to a person of ordinary skill in the art “to combine Rautiola’s singular server that provides services, such as database, phone calls, data, fax, e-mail and voice mail services, with the implementation details of Regnier describing that a server provides services to a laptop by downloading client-side portions (‘providing a plurality of functions to the mobile device’).” Pet. 48–49 (citing Ex. 1003 ¶¶ 149–150). We determine that Petitioner has proven, by a preponderance of the evidence, that Rautiola and Regnier teach limitations 1.9 and 20.9.” slip op. at 30
Patent outcomesUS 9,049,119 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,049,119 - Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentablePTAB · Nov 14, 2023 · IPR2022-00813 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–13 and 16–20 are unpatentable, principally as obvious over the cited combinations; the Board did not reach the Vaios and Naidoo-068 anticipation grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner that its proposal for the level of ordinary skill should be applied in this Petition, particularly in the absence of any counter proposal from Patent Owner. Petitioner’s expert used the correct factors to arrive at its proposed level of skill in the art, and we agree with Petitioner that its proposal is also consistent with the prior art cited in the Petition. Reply 2; accord Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We also find the proposed level of skill in the art consistent with the amount of detail and explanation of the technology that is given in the ’614 patent itself. Accordingly, we apply Petitioner’s proposal for the level of ordinary skill in the art in this decision. D.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner argues that Petitioner’s expert provided no support for these statements. Resp. 41. Petitioner disagrees, contending that Dr. Hochwald adequately supports these statements with evidence. Reply 15 (citing Ex. 1002 ¶¶ 117–120; Ex. 1051 ¶¶ 34–37, 41–42). As support, Dr. Hochwald states that implementing wireless transmission and reception into cameras was well known, and such cameras were commercially available. Ex. 1051 ¶¶ 34–35; Ex. 1004, 20:2–22, 21:1– 22:15; Ex. 1038 (embedded Bluetooth CCD camera); Ex. 1045 (press release for AXCESS wireless security camera with streaming video). Dr. Hochwald further states that the basic architecture of the combined system would not change merely because the communication protocol between the camera and the local computer system is wireless instead of wired. Ex. 1051 ¶ 36. We agree with Dr. Hochwald and find Dr. Hochwald’s statements are not merely ipse dixit, but are adequately supported with underlying facts and data. See 37 C.F.R. § 42.65(a). Patent Owner further argues that Petitioner’s expert never did an analysis identifying the “changes in interface, complexity, cost, or methodology” for modifying the architecture and system in Vaios, and that this dooms the challenge ground because Vaios requires the solution to be “inexpensive.” Resp. 41 (citing Ex. 1003, 1:60–63). Dr. Hochwald’s statement, however, indicates that changing the interface from wired to wireless was “simple” and not prohibitively costly, and thus did not require the detailed analysis that Patent Owner seeks.” slip op. at 32
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In sum, Petitioner contends that no claim construction is necessary. Patent Owner argues that it disputes Petitioner’s claim constructions that it allegedly made for its anticipation and obviousness arguments. However, Patent Owner does not identify what those allegedly disputed claim terms are nor what meanings should be ascribed to them. As no specific controversy over claim language has been identified to us, we decline to construe any claim term explicitly and instead will apply the ordinary and customary meaning as understood by a person of ordinary skill in the art in this decision. See supra Nidec; Wellman; Vivid Techs. E.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Accordingly, “there [were] apparent reason[s] to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. j) Reasons for Combining Vaios and Saylor Patent Owner alleges that Petitioner has not explained how or why Saylor and Vaios would be combined. Resp. 52. Patent Owner argues that Saylor teaches “[h]ome security systems offer limited services . . . The industry itself has remained stagnant and inflexible.” Id. (citing Ex. 1008, 1:54–57) (second alteration in original). Patent Owner asserts [n]othing in the Petition or expert declaration explains how or why one would combine the apparently incompatible limitations of Vaios (e.g., local computer, camera, network requirements) and Saylor (e.g., need for long battery life, wireless connection, and reduced alarm notifications). Id. Patent Owner’s arguments do not address Petitioner’s reasons to combine Vaios and Saylor. Pet. 14. Petitioner stated that the combination incorporates known elements (e.g., associating respective individuals with specific devices via a database/address book as taught in Saylor) into Vaios’ system (e.g., local computer system 12) in a known manner to yield predictable results, and had a reasonable expectation of success. Id. Petitioner further stated that the proposed combination offered advantages that would have motivated a person of ordinary skill in the art to make the combination, such as providing notifications and data to specific, desired individuals per user preferences and assigning a notification priority that conserves system resources and speeds alarm response by contacting” slip op. at 35
Patent outcomesUS 8,164,614 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,164,614 - Apple Inc. / Samsung Electronics Co., Ltd. et al. v. Smart Mobile Technologies LLCNo claims unpatentablePTAB · Nov 7, 2023 · IPR2022-00981 · APJ Jameson Lee · IPR · Final written decision
The Board held claims 1, 8–11, 13, 15, 17, and 19 not unpatentable because neither asserted obviousness ground accounted for the required dynamic configuration without user intervention.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“declaration (Ex. 2031) and asserts that Dr. Cooklev’s declaration should be accorded little to no weight. Reply 13–14. For reasons discussed below, we are unpersuaded that Dr. Cooklev’s declaration should be accorded little to no weight. First, Petitioner asserts: “Dr. Cooklev’s declaration merely repeats the same arguments of Patent Owner’s Preliminary Response. Indeed, Dr. Cooklev even testified in deposition: ‘ultimately counsel formulated my opinions.’” Reply 13 (quoting Ex. 1065, 14:1–3). We are not persuaded that the testimony of Dr. Cooklev does not reflect the opinion of Dr. Cooklev such that it constitutes mere attorney argument. With respect to the above-noted testimony, Dr. Cooklev explained: THE WITNESS: Well, maybe I misspoke. To begin with, these are my opinions. And I also testified, I believe, that I had communicated my opinions to counsel. Ultimately, counsel helped format those opinions, I mean put them in a format that is appropriate. So maybe that is the – that’s how I would clarify my – the answer that I gave earlier in the morning. Ex. 1065, 96:5–14. Dr. Cooklev further explained: “These opinions do not come from counsel. They come from me.” Id. at 96:20–21.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[a] Person of Ordinary Skill in The Art (“POSITA”) in December of 1996 would have a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of networking and wireless devices. Lack of work experience can be remedied by additional education, and vice versa. Pet. 10 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute Petition’s definition of level of ordinary skill. See generally PO Resp. We adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. This level of ordinary skill in the art is supported by the testimony of Dr. Kotzin (Ex. 1003 ¶¶ 20–22) and is consistent with the level reflected in the ’936 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed patent owner constructionDecided for patent owner
“As Patent Owner has noted (PO Resp. 16), the Specification of the ’936 patent repeatedly and consistently states that the mobile device is able to “switch itself” or “switches itself.” Ex. 1001, 5:1–4, 8:9–12, 8:36–39. The Specification of the ’936 patent also describes that the device “can decide the preferred mode to be in.” Id. at 4:8–9 (emphasis added). The Specification of the ’936 patent further states that the device “is dynamically software reconfigurable for the various environments.” Id. at 2:35–36 (emphasis added). In contrast, there is not any description, none, in the Specification of the ’936 patent of the user of the device issuing a command to the device at the time of making a functional switch to cause the device to switch function.11 In light of such disclosures, we agree with Patent Owner that a fundamental aspect of the invention of the ’936 patent is that dynamic configuration occurs without user intervention, i.e., without user command at the time of the change in configuration. PO Resp. 13. In our view, it is not consistent with the Specification of the ’936 patent to read “dynamically configurable” as encompassing manual reconfiguration by user intervention, i.e., user command at the time of reconfiguring. Reading “dynamically configurable” as encompassing manual reconfiguration by user intervention, i.e., user command at the time of reconfiguring, is also contrary to the prosecution history of the ’936 patent.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We have construed “dynamically configurable” as “configurable when and as needed and in real time, without the need for user intervention,” and explained that “without the need for user intervention” means absent user command at the time of dynamic configuring. See Section II.C.2., supra. Based on that construction, we are not persuaded by Petitioner that Regnier dynamically configures its device from a first function to a second function, as Petitioner asserts. As explained by Petitioner, Regnier’s device reconfigures its functionality in response to user selection of the desired application program, to provide the functionality corresponding to the user selected application program. Pet. 51–52. Patent Owner notes that Petitioner’s rationale “relies on manual, user- initiated conversions.” PO Resp. 36. Patent Owner explains: Petitioners argue that Rautiola in view of Regnier “describes that the client device dynamically converts between functions by downloading a client portion of an application and converting between different application services that are allowed by a server on a dynamic basis and chosen dynamically by a user.” Pet. 48. These allegations combine two distinct parts: (1) providing a client portion of an application for download; and (2) determining whether to allow the client device to use a different application service each time the client requests converting from a first to second application. Ex. 2031, ¶74. According to Petitioners’ own arguments, both parts depend on manual user requests. For providing a client portion, the Petition states that “Regnier teaches that “client portion 291” 130 upon a request from the user.” Pet. 49 (quoting Ex. 1006, 5:52-5:54) (emphasis added). The Petition also repeatedly acknowledges that a user request initiates Regnier’s process to determine whether to allow a client device to use an application. Id., 49 (alleging that Regnier’s server maintains user profiles that determines whether users can execute applications), id., 51-52 (alleging that “Regnier further explains that each time a user selects an application . . . ”); id., 53 (alleging the server’s resource manager allows “users to choose dynamically among shared resources”). PO Resp. 36–37. Patent Owner further notes that Petitioner also cites to passages from Regnier that describe updating menu items in a spreadsheet for use by an application. Id. at 37 (citing Pet. 51). In that regard, Patent Owner explains:” slip op. at 33
Patent outcomesUS 8,472,936 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,472,936 - Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentablePTAB · Nov 3, 2023 · IPR2022-00811 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–13 and 16–21 are unpatentable, principally as obvious over the cited combinations of Vaios, Menard, Saylor, and other references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’184 patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner also argues that “Dr. Hochwald’s declaration offers no technical support or evidence for his statements.” PO Resp. 21. Patent Owner fails to provide a single example to support this argument. See id. The Hochwald Declaration cites to or reproduces record evidence, or provides reasoned analysis, throughout, including at the complained about portion of the Petition. See, e.g., Ex. 1002 ¶¶ 127–141 (relying on citations to Vaios and Saylor (cited at Pet. 13–15)); PO Resp. 20 (citing Pet. 15 as allegedly deficient). Based on the foregoing discussion, Petitioner does not improperly avoid word limits, and there is insufficient reason identified by Patent Owner on this record to dismiss the Petition or discount the weight of the Hochwald Declaration.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Pet. 6. Patent Owner “does not take a position regarding the need for claim construction at this time.” However, Patent Owner contends “Petitioner . . . improperly construe[s] certain terms,” which “[t]he Board should disregard, . . . particularly without the required showing of necessity.” PO Resp. 2. Patent Owner fails to point to any specific term in this trial that Patent Owner regards as an “improper construction,” and the Board is unable to find one. construe any claim terms, because any construction would not impact the analysis of Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Resp. 27–40), largely rest on an improper requirement for bodily incorporation of the two video surveillance systems to show obviousness, and fail to undermine Petitioner’s showing that implementing Vaios’s camera as a wireless camera would have been obvious based on Menard’s wireless camera teachings. An artisan of ordinary skill is not an automaton, blindly and bodily incorporating features of one teaching into those of another without any consideration of cost or other trade-offs. Moreover, Vaios indicates that its inexpensive systems eliminate expensive cables, further at least suggesting a wireless solution, as discussed above and as noted in the Institution Decision. See Ex. 1001, 1:46–63; Inst. Dec. 23 (citing Ex. 1001, 1:46–63); Ex. 1051 ¶¶ 33–34 (testifying that the combination would “facilitate easier camera installation and maintenance” and “the process of including wireless transmission and reception, and was much easier to install and maintain wireless devices that did not require one to run wires throughout a building or access those wires in the event of a communication problem with the system”); Ex. 1002 ¶¶ 107–120 (providing similar analysis as to known wireless functionality). There is not adequate evidentiary support for the argument that implementing Vaios’s camera wirelessly would require substantial changes or prohibitively high cost, or produce an inoperable system, where Vaios at least discloses using “wireless” “communications devices” and systems (Ex. 1003, 2:26–30, 4:7–11) and systems Fig. 2 (“INTERNET,” “WIRE/WIRELESS”) and eliminating “expensive” cables (id. at 1:46–59), and Menard discloses wireless video capability, without describing much detail, similar to the ’184 patent, thereby signifying that skilled artisans understood that “wireless” video for a camera would have been a readily available feature relatively simple to implement. See Ex. 1051 ¶ 35 (testifying that “the successful implementation of wireless transceivers into cameras w[as] already well documented, going back almost a full century” and “by 2002, it was well known how to build and implement cameras capable of wirelessly transmitting video, audio, and sensor data”). Even if providing wireless functionality to Vaios’s video camera results in eliminating hardware and software in Vaios’s computer system, this does not destroy the functionality or purpose of Vaios’s system, it simply results at most in rearranging hardware and software in the combined system. See Ex. 1051 ¶¶ 34–36 (testifying, inter alia, that “the combination of Vaios and Menard . . . would not have destroyed any aspects of Vaios”). Vaios supports this testimony, indicating that rearranging components and their functionality to function with systems at different locations does not destroy” slip op. at 22
Patent outcomesUS 8,144,184 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,144,184 - Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentablePTAB · Oct 30, 2023 · IPR2022-00812 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–10, 12, and 15–20 are unpatentable, principally as obvious over Vaios and Menard; the Board did not reach the Klein-based grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“in the art are similar and any differences are immaterial to the outcome of this case. Id.; Ex. 1031, 13:4–10; 14:14–21. We apply Patent Owner’s proposal, however, because it includes an upper limit of four years of experience, and also provides that graduate education could substitute for professional experience or significant experience in the field could substitute for formal education in addition to similar qualifications as Petitioner proposes. In addition, we find that Patent Owner’s statement of the level of ordinary skill in the art is consistent with the content of the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Patent Owner’s proposal for the level of ordinary skill in the art in this decision. C.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner has not demonstrated that Petitioner committed the violation it asserts, nor has Patent Owner shown that the circumstances here warrant imposing the severe consequence of disregarding Petitioner’s expert’s declaration. Attorney argument alone is not evidence that could support such an assertion. Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017). F.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner argues that it disputes Petitioner’s claim constructions that it allegedly made for its anticipation and obviousness arguments. However, Patent Owner does not identify what those allegedly disputed claim terms are nor what meanings should be ascribed to them. As no specific controversy over claim language has been identified to us, we decline to construe any claim term and instead will apply the ordinary and customary meaning as understood by a person of ordinary skill in the art in this decision. See Nidec, Wellman, Vivid Techs., supra. D.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
Patent outcomesUS 8,154,581 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,154,581 - Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentablePTAB · Oct 19, 2023 · IPR2022-00810 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–10 and 13–21 are unpatentable: Vaios anticipates some claims, and the listed Vaios, Klein, and Naidoo-068 combinations render the remaining claims obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 8 (citing Ex. 1002 ¶¶ 21–24). Patent Owner responds that “Petitioner and its expert rely on conclusory statements regarding a person of ordinary skill in the art” such that Dr. “Hochwald’s conclusory opinion should be given no weight.” PO Resp. 4–5 (citing Ex. 1002 ¶¶ 21–24). Notwithstanding Patent Owner’s arguments, Dr. Hochwald declares that “[a]ll of the opinions contained in this declaration are based on the documents I have reviewed and my professional judgment, as well as my education, experience, and professional knowledge.” Ex. 1002 ¶ 17. Such documents include the “’098 patent (EX1001), the prosecution history of the ’098 patent (EX1017), the prior art references cited herein, and other Hochwald bases his proposed level of ordinary skill on the relevant documents. Moreover, Patent Owner does not offer a proposed level of ordinary skill in the art or even argue that a different level would result in a different analysis by Dr. Hochwald or any other declarant. See id. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’098 patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“Phillips. See Pet. 7–8. The parties disagree over whether the preamble is limiting. Compare PO Resp. 2–3 (arguing the preamble is limiting), with Reply 2–3 (arguing that “‘for receiving a person at an entrance’ clearly states an intended purpose of the invention”). As the analysis of the grounds art renders the claims unpatentable.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In any event, even if we generally adopt what Patent Owner refers to as an agreed upon plain and ordinary meaning and construe “detecting a person at the entrance” as limited to “detecting a person at an exterior,” and further construe “exterior” as referring to the exterior of an area defined by some type of a “demarcation line” according to the ’098 patent’s description of Figure 1 (see Ex. 1001, 6:40–50), the Petitioner persuasively shows that the prior art teaches the limitation (including when the “demarcation line” defines the exterior of a building), as discussed further below. Accordingly, it is not necessary to explicitly construe the limitation any further or to construe any other claim terms, because any construction would not impact the analysis of Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“shows that the ’384 provisional does not contemplate transmitting “video of the person at the entrance” to a “remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance,” using “a graphic user interface,” as claim step 1c requires. Disclosure in the ’384 provisional of a generic laptop or other remote peripheral device that may be capable of viewing video in isolation is not possession of the claimed invention. In other words, as Petitioner persuasively shows, “[c]ommunication of actual video to the remote peripheral device was not countenanced in the provisional, and [Patent Owner] fails to identify evidence to the contrary.” Id. at 9. That is, as Petitioner also argues, “[w]ritten description support is not established simply by identifying peripheral devices such as PDAs and laptop[s] in the provisional and arguing that such devices were ‘capable of’ displaying video, nor by the provisional’s disclosure of ‘communications’ between the central computer and said peripheral devices.” Id. at 8–9 (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1331–32 (Fed. Cir. 2008)). Under the rationale and holding of Tech. Licensing Corp., even if “a person skilled in the art might conclude” that the ’384 provisional’s disclosed system is capable of performing the same function of viewing the particular video at a remote peripheral device, this is not enough to show adequate written description. See id. at 1334 (“This evidence persuaded the trial court that a person skilled in the art might conclude that R21 and R26 establishing a level shifted signal [as recited in the ’250 patent claims at issue], but that was all,” and that evidence is insufficient to satisfy written description for a level shifted signal), 1333–34 (“The pertinent question is not whether a person skilled in the art could look at both Figure 3 [from the earlier-filed ’323 application] and Figure 16 [from the ’250 patent at issue] and determine that the resistors in the former perform a similar function to the resistors in the latter. Rather, the issue is whether a person skilled in the art would understand from the earlier application alone, without consulting the new matter in the ’250 patent, that the inventor had possession of the claimed ‘other circuit’ in 1992 when the ′323 application was filed.”). Even if there is a disclosure in the ’384 provisional of a system that merely is capable of providing for the viewing of live streaming or recorded video at the remote peripheral device of “the person at the entrance,” this still is not sufficient written description for claim 1, step 1c. Rather, claim 1 requires “a graphic user interface” (which facilitates and controls the viewing) at “the remote peripheral device,” because it requires “providing a [GUI] to a remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance.”14 There is no disclosure in the ’384 provisional for providing a GUI to a remote peripheral device. See Inst. Dec. 9 (indicating a lack of showing as to the claimed” slip op. at 19
Patent outcomesUS 8,139,098 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,139,098 - Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentablePTAB · Oct 16, 2023 · IPR2022-00814 · APJ Jameson Lee · IPR · Final written decision
Claims 1–6 and 9–21 are unpatentable because Vivint proved each challenged claim unpatentable by a preponderance of the evidence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and its expert rely on conclusory statements regarding a person of ordinary skill in the art. Petitioner cites exclusively to its expert (Petition at 5), and Petitioner’s expert merely lists a handful of factors in stating that he has taken those factors “into account.” Hochwald Decl. ¶¶ 21–24. This is a wholly conclusory opinion that is devoid of any analysis or even explanation for how the expert’s opinion was reached. Hochwald lists five factors but fails to provide any analysis of those factors with which the Board can determine whether his opinion “is based on sufficient facts or data; . . . is the product of reliable principles and methods; and . . . reliably applied the principles and methods to the facts of the case.” Fed. R. Evid. 702. Accordingly, Hochwald’s conclusory opinion should be given no weight. One World Tech. Inc. v. Chevron Ltd., IPR2020-00885, 2020 WL 6542022, Paper 21 at 29 (P.T.A.B. Nov. 6, 2020) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner and its expert rely on conclusory statements regarding a person of ordinary skill in the art. Petitioner cites exclusively to its expert (Petition at 5), and Petitioner’s expert merely lists a handful of factors in stating that he has taken those factors “into account.” Hochwald Decl. ¶¶ 21–24. This is a wholly conclusory opinion that is devoid of any analysis or even explanation for how the expert’s opinion was reached. Hochwald lists five factors but fails to provide any analysis of those factors with which the Board can determine whether his opinion “is based on sufficient facts or data; . . . is the product of reliable principles and methods; and . . . reliably applied the principles and methods to the facts of the case.” Fed. R. Evid. 702. Accordingly, Hochwald’s conclusory opinion should be given no weight. One World Tech. Inc. v. Chevron Ltd., IPR2020-00885, 2020 WL 6542022, Paper 21 at 29 (P.T.A.B. Nov. 6, 2020) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Kahn, 441 F.3d at 988.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for petitioner
“more than merely a conclusion that one with ordinary skill in the art would have combined the teachings of Menard and Vaios. Rather, Petitioner provides multiple reasons and explains why one of ordinary skill in the art would have done so, i.e., (1) improved aesthetics; (2) ease of implementation and modification of a graphical user interface; (3) lack of reliance on expensive specialized control hardware; and (4) consistent and convenient control and direction of a surveillance system irrespective of the location of the user. Id. It is misplaced for Patent Owner not to recognize these stated reasoning of Petitioner, particularly where, as here, Patent Owner does not dispute that they all do yield advantages for combining Menard and Vaios the way Petitioner proposes.” slip op. at 39
Patent outcomesUS 8,144,183 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,144,183
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.