- Renesas Electronics Corporation v. Broadcom CorporationAll claims unpatentablePTAB · Nov 12, 2020 · IPR2019-01040 · APJ Norman H Beamer · IPR · Final written decision
Claims 1 and 9–14 are unpatentable as obvious; the motion to amend is denied for substitute claim 15 and granted for substitute claims 16–19.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we instituted an inter partes review of claims 1 and 9–14. Paper 9 (“Institution Dec.”). In the Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would prevail as to the challenged claims, and we instituted trial on all challenged claims and all grounds in the Petition. Institution Dec. 35.” slip op. at 2
- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner contends that “a person of ordinary skill in the art” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Accordingly, we construe “configurable” in this context to mean” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, based on our review of the record and the parties’ submissions, we determine that the record establishes that each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as claimed, and that Fandrianto ’459 would have taught the second limitation of claim 1. d) Claim 1 Summary In sum, based on our review of the record and the parties’ submissions, we determine that the record establishes that RISC microprocessor 220 disclosed in Fandrianto ’459 is a “processor,” as required by claim 1, and each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as required by that claim. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that claim 1 of the ’844 patent would have been obvious in light of Fandrianto ’459.” slip op. at 33
Patent outcomesUS 8,284,844 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 8,284,844 - Tripadvisor, LLC v. Mimzi, LLCAll claims unpatentablePTAB · Nov 12, 2020 · IPR2019-01080 · APJ Nabeel U Khan · IPR · Final written decision
Claims 1–4 and 7–18 are unpatentable over Roth and Ng; claims 1, 2, and 4, 7–18 are unpatentable over Roth and Fortescue; claim 3 and claims 1, 10, and 16 are not shown unpatentable on …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention, “would have (i) had a bachelor’s degree in Computer Science, Electrical Engineering, Computer Engineering, or a closely related field, and about 1–2 years of practical experience in that field; or (ii) had a master’s degree in Computer Science, Electrical Engineering, Computer Engineering or a closely related field.” Pet. 12 (citing Ex. 1004 ¶ 55). Patent Owner argues “POSITA must have some familiarity with social network databases (the technology at issue) in addition to Petitioner’s proposed general experience in Computer Science, Electrical Engineering, or Computer Engineering.” PO Resp. 15. On this record, we agree with Petitioner’s proposed definition of person of ordinary skill in the art, and adopt it for purposes of this Decision. Although the claims of the ʼ981 Patent recite searching a social network database, we find the fields of Computer Science, Electrical Engineering, and Computer Engineering would provide knowledge related to social networks and database search at a level commensurate with the disclosure of the ʼ981 Patent, and, thus, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art. We note, however, that our analysis below” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Having considered the parties’ arguments and the fully developed trial record, we do not agree with Patent Owner’s proposed construction. The ʼ981 Patent describes metadata as data that includes “date data, time data, name data or location data.” Ex. 1001, 2:31–32. Figures 1 and 2 of the ʼ981 Patent list several examples of metadata, including, “Date of call, dictation or message,” “Start time,” “End Time,” Duration,” “Phone #,” “Phone # other party,” “Name,” “Name of other party,” “Date of Synopsis,” “Start time of Synopsis,” “End time of Synopsis,” “Duration of Synopsis,” “Location start,” “Location time 1,” “Location at end,” “Loc. Start synopsis,” and “Loc. End synopsis.” As can be seen, the ʼ981 Patent describes metadata broadly as encompassing a variety of data associated with various uses of the mobile device, such as calls, texts, dictation, photos, and the like. Patent Owner does not provide sufficient evidence that the word “associated” means “attached” in the context of the claim. The ʼ981 Patent does not use the term “attached” anywhere to describe the metadata associated with the spoken request, nor has Patent Owner identified the use of the term anywhere in the intrinsic evidence. Patent Owner cites Figures 1 and 2 of the ʼ981 Patent as supporting its construction but Figures 1 and 2 show that a time offset and location may be added to the transcript for each the time and location information. The claim, however, recites that metadata be associated with the spoken request, not that it be added to the transcript. Ultimately, we fail to see how these embodiments show that time and location are attached to the spoken request. In light of the parties’ arguments regarding unpatentability, we determine that we need not further construe the term “metadata associated with the spoken request.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Having considered the parties’ arguments and evidence and the fully developed trial record, we do not agree with Patent Owner’s construction. The ʼ981 Patent states that it discloses “[a] system and method for providing social-network (Centralized Community Search database)—provided outputs to a mobile-electronic-device user in response to the user’s spoken request.” Ex. 1001, Abstract. The ʼ981 Patent explains that a user may wish to transmit their “text messages, photos, videos, call and voice annotations or synopsis (with speech-recognized text and location data), to a Centralized Community Search database” and that the user may designate this content to be public and “be shared with anyone via the Internet.” Ex. 1001, 14:64– 15:6. The ʼ981 Patent calls the public sharing of information as “Location Blogging.” See Ex. 1001, 15:1–6. The ʼ981 Patent explains that the publicly shared content contributed to the Centralized Community Search database may include information such as “a review of a restaurant or business.” Ex. 1001, 15:7–15. The Centralized Community Search database “may be searched or mined based on social network or type of information, restaurant location.” Ex. 1001, 15:22–26. Although the ʼ981 Patent describes information being stored in a centralized community search database, it does not restrict the community in any way nor does it describe the database as storing interpersonal relationships between community members. We find insufficient support in the ʼ981 Patent for such a limitation. Moreover, we find no support for Patent Owner’s argument that a social network database has a specific structure with relational tables and links between tables and between individuals, nor any support for the database being dynamic and two-way. We therefore decline to import such limitations into the claim. For purposes of this Decision, we do not consider whether the term “social network” should be given patentable weight. As explained below, even if we give the term patentable weight, when properly construed, the relied upon references teach a social network database. The ʼ981 Patent describes a centralized database that stores information, such as text messages, photos, videos, road warnings and restaurant reviews, accessible by anyone on the Internet, without disclosing or requiring the storage of interpersonal relationships. In light of the parties’ arguments regarding unpatentability, we need not further construe the term “social network database.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find Petitioner has demonstrated that one of ordinary skill in the art would have been motivated to combine Roth with Fortescue. Both references relate to performing internet searches and both discuss searching for restaurants. On this record, we are persuaded by Petitioner that a person of ordinary skill would have considered adding Fortescue’s social network elements and the ability to rank based on various factors to benefit Roth’s that a skilled artisan would have been motivated to modify Fortescue to add Roth’s speech to text feature for additional convenience for the user.” slip op. at 29
Patent outcomesUS 9,128,981 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,128,981 - Google LLC v. Uniloc 2017, LLCRehearing deniedPTAB · Oct 16, 2020 · IPR2019-01584 · APJ Kevin F Turner · IPR · Rehearing
The Board denied Google’s rehearing request, finding no abuse of discretion in denying institution of review of claims 1–3, 5, 6, 8, 39, and 41 under its General Plastic analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was 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) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “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.” Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“petitions are only relevant if Petitioner was a party to the prior proceedings, or had a relationship with the prior petitioners. Reh’g Req. 7. But a review of the cited precedential decision does not reflect Petitioner’s suggestion. See General Plastic, Paper No. 19 at 15−19 (“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account.”). General Plastic does not proscribe panels of the Board from considering whether a subsequent petitioner knew of the prior art cited in the subsequent petition at the time of filing of the first petition, per the second factor. Similarly, we are not barred, under General Plastic, from considering the length of time that elapsed between when a petitioner learned of the art and when the petition, based on that art, was filed, or whether petitioner provides an adequate explanation for the time elapsed between the filings of multiple petitions, per the fourth and fifth factors. Additionally, we are not persuaded that the factors enumerated in General Plastic, as viewed through the lens of Valve Corp., must all be limited by any possible relationship between the multiple petitioners. Although the discussion of the first factor in Valve Corp. makes clear that “any relationship between those petitioners when weighing the General Plastic factors” must be considered, the remaining factors take into account the knowledge of the second petitioner irrespective of a specific relationship. See Valve Corp., Paper 11 at 9−15. As such, the relationship between the different petitioners certainly has some bearing on what the second petitioner knew, when they knew it, and when they acted upon it, but the consideration of the second through seventh factors does not require a showing of a specific relationship between the petitioners to consider those factors.” slip op. at 5
Discretionary denialPatents in suitUS 6,519,005 - Samsung Electronics Co., Ltd v. Uusi, LLC D/B/A NartronSome claims unpatentablePTAB · Sep 17, 2020 · IPR2016-00908 · APJ Kamran Jivani · IPR · Remand
Claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 are unpatentable as obvious; claims 37–39 were not shown unpatentable.
RulingsRemand decision- RemandOther
“Appeals for the Federal Circuit, which vacated our Decision and remanded the matter to us. Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed. Cir. 2019). As to the earlier instituted claims, the Court instructed that we should consider “whether Samsung has shown that there would have been a reasonable expectation of success in combining the teaching of Gerpheide with the teachings of Ingraham [I]/Caldwell to arrive at the claimed invention.” Id. at 697. The Court further instructed us to “consider the patentability of claims 37, 38, and 39” (id.) because, on April 24, 2018, the Supreme Court of the United States held that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). Pursuant to the Federal Circuit’s instruction in this case and in light of SAS Inst., Inc., we modified our Decision on Institution to institute review of claims 37–39 of the ’183 patent as obvious over Ingraham I, Caldwell, and Gerpheide. Paper 40. We further held a teleconference on August 15, 2019, with respective counsel for the parties, to hear their proposals on how to proceed with this trial. Paper 41, 2. Having considered the parties’ proposals, we authorized the parties to submit concurrent briefs and subsequent responses addressing the following issues (id. at 6):” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person having ordinary skill in the art at the time of the invention would have had a minimum of: (1) a bachelor’s degree in electrical engineering, or equivalent thereof; and (2) “two to three years of experience in the relevant field, which includes touch systems technology.” Pet. 3 (citing Ex. 1002 ¶ 19). Patent Owner’s witness, Dr. Cairns, opines that a person of ordinary skill “in the art of capacitive touch sensors would have had at least a bachelor’s degree in physics or electrical engineering or equivalent industry experience in the field.” Ex. 2002 ¶ 14. In our Final Written Decision, we noted that the levels of ordinary skill proposed by the parties do not differ significantly, but adopted Petitioner’s proposed definition as more representative, indicating that our analysis would be the same under either definition. Paper 35, 9–10. On remand, neither party disputes the definition adopted in the Final Written Decision. Furthermore, no argument presented by the parties on remand would be affected by adopting one of the proposed definitions over the other. We maintain here the definition adopted in the Final Written Decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“transition term[s]” should be considered in determining the meaning of a claim term, but asserts without further support that the presence of a semicolon after “supply voltage” and the use of the transition term “wherein” do not compel the preliminary construction. Id. As we addressed in denying Petitioner’s Request for Rehearing, claim 37 employs the open-ended transition term “comprising” followed by a colon to indicate that a list elements follows, and employs semicolons to separate the elements of that list. Paper 17, 5. The first element of the list, element 37a, describes an oscillator and includes the supply voltage limitation preceded by a comma and the transition term “wherein.” Id. Element 37a then ends with a semicolon and the claim proceeds to element 37b, which recites a microcontroller. Id. Petitioner thus nominally acknowledges consideration of punctuation, but advances a construction that asks us to disregard punctuation affirmatively recited in the claim. To do so would be “inconsistent with the punctuation [patentee] chose for this claim.” In re Pelz, 379 F. App’x 975, 978 (Fed. Cir. 2010). Likewise, as to Petitioner’s assertion that we read an additional limitation into the claim (Pet. Br. 10), we observe that, if the claim is limited to a particular exemplary embodiment, such a limitation results from the claim being drafted to cover only that embodiment. While we confirmed in the Decision on Institution that the use of the term supply voltage is consistent with its use in the Specification (Dec. on Inst. 9), the limitation of the claim to the oscillator is based on the language of the claim, not on definition or disavowal. Therefore, even accepting, for the sake of argument, that there is no disavowal or definition in the Specification of “supply voltage,” the term refers in independent claim 37 to supply voltage of the oscillator.” slip op. at 18
- Expert testimonyOther
“We disagree with Patent Owner’s arguments because they are not responsive to the combination of teachings at issue in the references before us. Patent Owner focuses on particular features of Gerpheide that it alleges either “would not work . . . in the proposed Caldwell-Ingraham system” or “can only work” in the presence of a component Patent Owner argues that “neither Ingraham nor Caldwell uses.” PO Br. 1–2, 12–13. These arguments are based on a mistaken premise that one or more components or physical configurations of Gerpheide must be incorporated into the combination of Ingraham I and Caldwell in order to show a reasonable likelihood of success. Under the Federal Circuit’s construction of the “selectively providing” limitation, the combination of Ingraham I, Caldwell, and Gerpheide need not incorporate the specific features of Gerpheide identified by Patent Owner. Petitioner asserts, supported by evidence from Dr. Subramanian, that the Ingraham I-Caldwell combination would have been modified based on Gerpheide “to provide features that adjust[] the oscillator signal frequency provided to the input portions 13 to negate the effect of interference on the input portions 13 and touch sensing circuits.” Pet. 26–27. This modification would not require any of the particular components or configurations of Gerpheide highlighted by Patent Owner. Thus, even if one or more of Patent Owner’s arguments as to the infeasibility of incorporating particular aspects of Gerpheide were correct, Patent Owner’s arguments do not address Gerpheide’s particular teaching of adjusting oscillator signal frequency to negate the effect of interference, and therefore, Patent Owner’s arguments are not responsive to the proposed combination and evidence relied upon by Petitioner. In view of the above, we find that Petitioner has shown that the skilled artisan would have combined Gerpheide with Ingraham/Caldwell as proposed with a reasonable expectation of success in achieving the claimed subject matter.” slip op. at 26
Patent outcomesUS 5,796,183 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,796,183 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot reached
“Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00260 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the Patent Owner’s rehearing requests, leaving institution in place for claims 1–7, 11, 15–18, 20–22, 32, and 47.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Strike new argumentNew argument disregardedOther
“Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelOther
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523 - Ericsson Inc. v. Uniloc 2017, LLCRehearing deniedPTAB · Sep 9, 2020 · IPR2020-00420 · APJ Jameson Lee · IPR · Rehearing
The Board denied Ericsson’s rehearing request and left in place the discretionary denial of institution for claims 1–5, 7, and 17 under General Plastic.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was 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) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “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.” Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“considered whether Petitioner knew of prior art which disclosed the same material as what the allegedly recently discovered references disclose. Decision 10–11. The additional consideration was prompted by the Petition’s characterization of Alamouti as merely disclosing an “implementation detail” omitted by the Merakos and Kay. Pet. 28–29. Petitioner argues that the additional consideration of the criticality of the disclosure contained in the allegedly recently discovered prior art applies a new standard that is inconsistent with General Plastic. Reh’g Req. 11. We disagree. First, there is no inconsistency because General Plastic does not prohibit the consideration. Second, the consideration is not a new standard, because, in our view, it already is implicit in General Plastic. Typically, there is nothing to trigger it and an assumption is usually made that absence of the recently discovered reference is what kept Petitioner from filing the petition earlier. Here, the circumstance is different, because Alamouti, and Ling evidently as well, are used by Petitioner only to provide relatively less significant implementation details compared to what Merakos and Kay disclose. Third, Petitioner does not point to anything in General Plastic which approves a hypothetical petitioner’s possibly substituting a reference it has known for a long time with a recently obtained reference that discloses the same, to justify a delay in filing a petition. Thus, it is not” slip op. at 6
- BurdenDecided for patent owner
“every single document in the related litigation. It was incumbent upon Petitioner to submit and identify material to support its assertions. Although we were willing to inspect the Complaint and any Amended Complaint, we were not willing to go further. It matters not whether a plaintiff asserting patent infringement is required to identify all asserted claims in the its assertion, and we need not even have looked in the Complaint.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s accounting must begin from when it first learned that Patent Owner had filed suit accusing products designed and manufactured by Petitioner of infringing claims of the ’079 patent.” Decision 12. Rather than accounting for the entire 10 month period from March 26, 2019 to January 17, 2020, the Petition only addressed 4 months. Pet. 73. Now, in the Request for Rehearing, Petitioner provides for consideration an explanation that purportedly covers the entire 10 month period. Reh’g Req. 7–10. The discussion and change of focus from 4 months to 10 months arguments after the original arguments are rejected. Accordingly, we decline to consider the new explanation that purportedly accounts for the full 10 month period. C. slip op. at 5
Discretionary denialPatents in suitUS 6,868,079 - Unified Patents Inc. v. Portal Communications, LLCAll claims unpatentablePTAB · Jul 22, 2020 · IPR2019-00513 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Junqua and Julia; the motion to amend is denied because proposed substitute claim 31 is unpatentable over the prior art.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner, relying on testimony of Mr. McNair, contends that a person of ordinary skill in the art would have been motivated to implement the database of Junqua using the well-known query language of SQL as taught by Julia, for the benefit of providing “a standard interactive and programming language for getting information from and updating a database” as taught by Julia. Pet. 20 (citing Ex. 1005, 8:56–64, 9:2–18; Ex. 1003 ¶¶ 28, 74). We determine for the reasons given that converting the text in searchable form to a database query as taught by Junqua, where the database query is written in the well-known query language of SQL as taught by Julia, does no more than yield the predictable result of getting information from a database using the standard programming language of (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Ordinary Skill in the Art Claim 31 depends from claim 21. The Petition has demonstrated, by a preponderance of the evidence, that claim 21 would have been obvious over the combination of Junqua and Julia, as discussed in our analysis above. Claim 31 recites “wherein the location/proximity module consists of a radio frequency identification reader.” Petitioner, relying on testimony of Mr. McNair, contends Amitay teaches this limitation. Opp. 12 (citing Ex. 1018, 6:17–19, 6:37–41; Ex. 1022 ¶ 58). Amitay discloses a location sensor which may be an RF reader. Ex. 1018, 6:17–19, 6:37–41. For the reasons given, we determine that Amitay teaches this limitation. Claim 31 recites “the location/proximity device consists of an art museum exhibit equipped with a radio frequency identification tag.” Petitioner contends that Amitay combined with the knowledge of a person of ordinary skill teaches this limitation. Opp. 12–14 (citing Ex. 1018, 6:27– 32, 7:32–33; Ex. 1027; Ex. 1022 ¶¶ 34, 58). Patent Owner contends that Amitay does not teach tagging art exhibits with RFID tags. Mot. 18. We disagree with Patent Owner’s contention that Amitay alone does not teach this limitation, because, as Petitioner demonstrates, Amitay combined with the knowledge of a person of ordinary skill teaches this limitation. Amitay discloses tagging an item with an RFID tag. Ex. 1018, 7:31–33. Mr. McNair testifies that tagging an art museum exhibit with an RFID tag was within the knowledge of a person of ordinary skill in the art. Ex. 1022 ¶ 34 (citing Ex. 1026). Mr. McNair also testifies that using an” slip op. at 21
- Skill levelOther
“We disagree with Patent Owner’s contention that Amitay alone does not teach this limitation, because, as Petitioner demonstrates, Amitay combined with the knowledge of a person of ordinary skill teaches this limitation. Amitay discloses tagging an item with an RFID tag. Ex. 1018, 7:31–33. Mr. McNair testifies that tagging an art museum exhibit with an RFID tag was within the knowledge of a person of ordinary skill in the art. Ex. 1022 ¶ 34 (citing Ex. 1026). Mr. McNair also testifies that using an guests about art museum exhibits was known in the art. Id. (citing Ex. 1027, 78–79, 84–87). Mr. McNair testifies that using the device of Junqua, Julia, and Amitay to provide information about art exhibits to museum guests yields the known benefit of reducing museum costs by providing virtual docents instead of human ones. Id. (citing Ex. 1027, 86). We rely on the testimony and supporting evidence of Mr. McNair to determine that Amitay combined with the knowledge of a person of ordinary skill teaches this limitation.” slip op. at 21
Patent outcomesUS 7,376,645 unpatentable§ 103 obviousnesscites KSRPatents in suitUS 7,376,645 - Square, Inc. v. 4361423 Canada Inc.Rehearing deniedPTAB · Jul 17, 2020 · IPR2019-01651 · APJ Jameson Lee · IPR · Rehearing
The Board denied Square’s rehearing request; all claims remain in trial on all asserted grounds, including obviousness of claims 1 and 4 over Bear and Vrotsos.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“At this stage of the proceeding, whether our statement was correct is of no moment, because we instituted review of all challenged claims on all asserted grounds of unpatentability. Dec. 38. As explained in the Decision,” slip op. at 2
NonePatents in suitUS 9,443,239 - Google LLC v. Uniloc 2017, LLCRehearing deniedPTAB · Jul 7, 2020 · IPR2019-01541 · APJ Jameson Lee · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place the denial of institution for claims 1, 2, 4, and 9 because Google did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was 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) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “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.” Id.” slip op. at 2
NonePatents in suitUS 7,016,676
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.