- Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentablePTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
- 101 substituteMixed
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
Patent outcomesUS 7,134,087 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · EnfishPatents in suitUS 7,134,087 - Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · Nov 27, 2019 · IPR2019-01125 · APJ Jameson Lee · IPR · Institution
The Board denied institution on claim 5 because its ambiguous scope prevented a reliable merits assessment and made trial resource intensive.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Id. at 2:29–42. Thus, within the context of both the claim and the Specification, a radio system and a station are not the same. It is unclear what is referred to by the reference in claim 5 to “radio systems in accordance with the first radio interface standard.”” slip op. at 14
- Other 314aInstitution denied discretionary otherDenied
“Because the claim language is ambiguous as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds 5 We recognize that in limited circumstances, clear errors in claims can be corrected. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). The deficiency in the claim language here clearly does not meet that standard. What the Applicant for patent intended by the language used is subject to much speculation and conjecture. of unpatentability. If the scope of the claims cannot be determined without undue speculation, as is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63. Furthermore, given that any trial instituted here would address a single claim that we regard to be ambiguous, that issue would likely become the sole focus of that trial. That seems problematic given that Petitioner may not request to cancel any claim based on an assertion of indefiniteness. See 35 U.S.C. § 311(b). See 35 U.S.C. § 311(b).” slip op. at 16
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,016,676 - Procon Analytics, LLC v. Spireon, Inc.Institution deniedPTAB · Nov 22, 2019 · PGR2019-00051 · APJ John P Pinkerton · PGR · Institution
The Board denied institution of PGR on claims 1–14 because the Petition did not show it was more likely than not that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’” (citation omitted)).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17
- Expert testimonyPetitioner expert discountedDecided for patent owner
“is conclusory and not supported by the evidence. Prelim. Resp. 32, 37–40. Petitioner’s argument relies on Dr. Wilhelm’s testimony, Jefferies, and the knowledge of a person of ordinary skill in the art. See Pet. 28. Dr. Wilhelm testifies that “[c]onventional vehicle inventory management systems associate information with a particular identifier; the systems are agnostic as to whether that identifier represents a financial institution or dealer.” Ex. 1029 ¶ 73. Based on this testimony, Petitioner argues “it does not matter whether that identifier represents a bank or dealer.” Pet. 28. Petitioner then argues Jefferies teaches that a location device may be marked as “available/in inventory” to be associated with a vehicle. Id. Finally, Petitioner argues that, in view of these teachings, a person of ordinary skill “would have sought to manage various types of vehicle inventories for several types of owners, including dealers.” Id. As stated, we agree with Patent Owner that Petitioner’s argument that the “ownership” requirement would have been obvious is conclusory and not supported by the evidence of record. Initially, we note that Dr. Wilhelm’s testimony concerning conventional vehicle inventory management systems is conclusory and unsupported by factual evidence. Thus, we give little, if any, weight to Dr. Wilhelm’s opinion testimony that such systems are “agnostic” to whether equipment identifiers are associated with lending institutions or auto dealers. See 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.”); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (noting that “the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations”). In any event, Dr. Wilhelm’s testimony adds nothing in this regard because, as discussed supra, Boling discloses equipment identifiers, such as UINs, are associated with the ID number of banks and auto dealers. See Ex. 1005, 6:22–26; 6:29–33.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,089,598 - PTAB · Nov 22, 2019 · IPR2019-01111 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on claims 20 and 69 because the petition was time-barred under § 315(b), finding Amazon was in privity with at least one petitioner.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“(b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b).” Worlds Inc. v. Bungie, the context of a real party in interest analysis); see also Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 4−5 (PTAB Jan. 24, 2019) (precedential) (placing “the burden on IPR petitioners to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a privy more than a year before a petition is filed”). “The Board’s decision under § 315(b) is whether to institute or not. The condition precedent for this decision is whether a time-barred party (a party that has been served with a complaint alleging infringement of the patent more than one year before the IPR was filed) is the petitioner, real party in interest, or privy of the petitioner.” Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306, 1314 (Fed. Cir. 2019) (emphases added). In the Federal Circuit’s view, the language of the statute makes privity and real parties in interest relationships that may arise “before institution relevant to the § 315(b) time-bar analysis.” Id. at 1315 (emphasis added).” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“More importantly, upon consideration of the parties’ contentions and evidence before us, we similarly determine that Amazon is a privy of several Petitioner Entities under the Taylor framework. See Taylor, 553 U.S. at 894−95. Here, at least the second, third, and fifth categories of Taylor support our determination that these Petitioner Entities are in privity with Amazon, a time-barred party. Second Taylor Category As to the second Taylor category, the record shows a pre-existing substantive legal relationship between Amazon and several Petitioner Entities—namely, PayPal, Strava, Valassis, Upwork Global, and RetailMeNot. The evidence of record shows that the relationship between Amazon and these Petitioner Entities went beyond typical transactions between supplier and buyer because there exists a substantive legal relationship between them that is defined by legal obligations and a sufficient degree of commonality of interest.” slip op. at 20
Discretionary denialPatents in suitUS 7,802,310 - PTAB · Nov 21, 2019 · IPR2019-01093 · APJ Denise M Pothier · IPR · Institution
The Board denied institution for challenged claims 46, 48, 52, and 55 because Amazon was a privy of at least one petitioner and its 2011 service made the petition time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“B. Principles of Law Section 315(b) of Title 35 of the United States Code provides: (b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioner entities “bear[] the ultimate burden of persuasion to show that [their] petitions are not time-barred under § 315(b) based on a complaint served on an alleged [privy of Petitioner entities] more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). “[S]ervice of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b).” GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 at 6 (PTAB Aug. 23, 2019) (precedential); id. at 24. This one-year trigger under 35 U.S.C. § 315(b) also applies to Petitioner entities’ privies or real parties in interest. See id. at 14 (“[T]he text of § 315(b) clearly and unmistakably considers only the date on which the petitioner, its privy, or a real party in interest was properly served with a complaint.”) (quoting Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1332 (Fed. Cir. 2018) (en banc in part)).” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“We recognize that the mere existence of an indemnity agreement might not be enough to find privity. See, e.g., WesternGeco, 889 F.3d at 1321. However, as is clear from the MDL record (summarized above), Amazon performed pursuant to the indemnity agreement and secured summary judgment related to infringement of the ’544 patent in favor of several of Petitioner entities. See, e.g., Ex. 2012, 3 (including the ’544 patent as part of the infringement action), 9 (listing “Category 3” infringement), 14 (“As to the effect of the indemnification agreement, it is undisputed that: . . . (2) sometime following PersonalWeb’s filing of complaints in the customer cases, Amazon agreed to indemnify its customers”), 16 (“Amazon assumed the indemnification of its customers prior to the consolidation of the MDL, and Amazon has not turned away any customer who has asked for indemnification”), 23 (finding that claim preclusion applied because, inter alia, the 2011 Amazon case involved the same parties or privies as the MDL proceeding), 26 (granting the DJ action “with respect to the Category 3 allegations involving use of . . . S3”). Thus, unlike in WesternGeco, in which the existence of an obligation to indemnify was ambiguous and undefined and, therefore, insufficient, 889 F.3d at 1321, Amazon actually assumed control of the lawsuits involving its customers, defended them, and secured relief on their behalf. We find this to be much stronger evidence of a pre-existing legal relationship than that shown in WesternGeco.” slip op. at 18
Discretionary denialPatents in suitUS 7,945,544 - Kathrein USA, Inc. / T-Mobile US, Inc v. Fractus S.A.Institution deniedPTAB · Oct 25, 2019 · IPR2019-00953 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims because claim ambiguity prevented a reasonable likelihood determination on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“To institute an inter partes review, we must determine that the information presented in the Petition 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(a). For the reasons discussed below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any one of claims 1, 6, 7, 8, 11, 13, 14, 17, and 20 on any ground. Accordingly, the Petition is denied, and no inter partes review is instituted.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“2. The Term Juxtaposition As discussed above, the district court construed “juxtaposition” as “interleaving.” Ex. 1176, 24. The district court did so largely on the basis that, on the record before the district court, it had not been shown that “juxtaposition” has any well-known meaning in the relevant art and because the Specification of the ’256 patent appears to use the terms “juxtaposition” and “interleaving” interchangeably. Id. at 15–24. The record before us similarly demonstrates no well-known meaning for “juxtaposition” in the relevant art, and neither party makes such a contention. Further, we also read the Specification as using the terms “juxtaposition” and “interleaving” interchangeably. For instance, the ’256 patent states “[t]he array configuration is described on a basis of the juxtaposition or interleaving of various conventional single-band arrays operating in the different bands of interest.” Ex, 1101, 1:28–30 (emphasis added). We find no portions of the Specification that make a distinction between “juxtaposition” and “interleaving.” Therefore, we agree with the district court’s construction of “juxtaposition” as “interleaving.” Ex. 1176, 24.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“As noted above, we agree with the district court that the term “juxtaposition” means “interleaving.” The ’256 patent, however, does not define “interleave” or “interleaving.” We consult a technical dictionary, which defines “interleave” as follows: interleave (1) To arrange parts of one sequence of things or events so that they alternate with parts of one or more sequences of things or events and so that each sequence retains its identity; for example, to alternately perform the steps of two different tasks in order to achieve concurrent operation of the tasks. (C/C) [20], [85] (2) (software) To alternate the elements of one sequence with the elements of one or more other sequences so that each sequence retains its identity; for example, to alternatively perform the steps of two different tasks in order to achieve concurrent operation of tasks. (C) 610.12-1990. (3) To arrange parts of one sequence of things or events so that they alternate with parts of one or more sequences of the same nature such that each sequence retains its identity; [f]or example, to assign successive addresses to physically separated storage locations in such a way to reduce access time. (C) 610.10-1994w. IEEE 100: The Authoritative Dictionary of IEEE Standards Terms 577 (7th ed. 2000) (“IEEE Dictionary”) (Ex. 3002). The juxtaposition of two antenna arrays as shown in Figure 1 of the ’256 patent, i.e., columns 1a and 1b, which results in the positions of the elements in the multiband array shown in column 1c, however, is not consistent with the above-reproduced definition of “interleave.” In that regard, we again reproduce Figure 1 of the ’256 patent below:” slip op. at 14
- BurdenDenied
“C.F.R. § 42.104(b)(3), the Petition must identify how to construe each challenged claim. In this case, the Petition does not address the issues discussed above sufficiently to eliminate uncertainty and speculation as to whether the claims read on the prior art.” slip op. at 21
Claim constructioncites Phillips · GrahamPatents in suitUS 8,228,256 - Kathrein USA, Inc. / T-Mobile US, Inc v. Fractus S.A.Institution deniedPTAB · Oct 25, 2019 · IPR2019-00952 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims because ambiguous claim language left it unable to assess the asserted grounds without speculation.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“Because the claim language is ambiguous in numerous respects as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds of unpatentability. If the scope of the claims cannot be determined without undue speculation, as it is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013- 00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d at 862–63 and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63.” slip op. at 21
- Prior constructionPrior construction adoptedDecided for patent owner
“2. The Term Juxtaposition As discussed above, the district court construed “juxtaposition” as “interleaving.” Ex. 1076, 24. The district court did so largely on the basis that, on the record before the district court, it had not been shown that “juxtaposition” has any well-known meaning in the relevant art and because the Specification of the ’256 patent appears to use the terms “juxtaposition” and “interleaving” interchangeably. Id. at 15–24. The record before us similarly demonstrates no well-known meaning for “juxtaposition” in the relevant art, and neither party makes such a contention. Further, we also read the Specification as using the terms “juxtaposition” and “interleaving” interchangeably. For instance, the ’256 patent states “[t]he array configuration is described on a basis of the juxtaposition or interleaving of various conventional single-band arrays operating in the different bands of interest.” Ex, 1001, 1:28–30 (emphasis added). We find no portions of the Specification that make a distinction between “juxtaposition” and “interleaving.” Therefore, we agree with the district court’s construction of “juxtaposition” as “interleaving.” Ex. 1076, 24.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, we only need to address construction of the recited juxtaposition of antenna arrays and the term “juxtaposition” itself.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2 Petitioner asserts that the level of ordinary skill in the art corresponds to that of one who had (1) “an accredited Master’s degree in electrical engineering, applied physics, or any similar course of study, and a few years of experience related to the design and/or application of antennas,” or (2) “a doctorate in electrical engineering, applied physics, or any similar course of study, with knowledge of electromagnetic theory as applied to design and/or application of antennas.” Pet. 29. Patent Owner adopts for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). The Petition here was filed on April 9, 2019. Paper 3. So we apply the claim construction standard from Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (“the Phillips standard”). Claim terms are generally given their ordinary and customary meaning as would be understood by one with ordinary skill in the art in the context of the specification, the prosecution history, other claims, and even extrinsic evidence including expert and inventor testimony, dictionaries, and learned treatises, although extrinsic evidence is less significant than the intrinsic record. Phillips, 415 F.3d at 1312–1317. Usually, the specification is dispositive, and it is the single best guide to the meaning of a disputed term. Id. at 1315. The specification may reveal a special definition given to a claim term by the patentee, or the specification may reveal an intentional disclaimer or disavowal of claim scope by the inventor. Id. at 1316. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The disavowal, if any, can be effectuated by Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 14. On this record, we have no basis to question Petitioner’s articulation. Thus, we adopt the level of ordinary skill as articulated by Petitioner.” slip op. at 8
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,228,256 - Micron Technology, Inc. v. North Star Innovations Inc.All claims unpatentablePTAB · Oct 24, 2019 · IPR2018-01004 · APJ Garth D Baer · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1–3, 5, 7, 9, 10, and 14 as obvious over Callison; claims 4, 6, 8, 11–13 as obvious over Callison with the respective secondary reference.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that a person of ordinary skill in the art at the time of the ’526 patent would have had “at least a Bachelor of Science or Engineering degree in computer science, computer engineering, electrical engineering, or a closely related field, along with at least 5 years of experience in the field of computer systems and computer memory.” Pet. 20. In addition, according to Petitioner, “[a]n individual with an advanced degree in the above fields would require less (e.g., by 1 to 2 years) experience in the field of computer systems and computer memory.” Id. (citing Ex. 1003 ¶¶ 31–33). Patent Owner does not provide its own formulation of a person of ordinary skill or contest Petitioner’s assertion. PO Resp. 35. We agree with and adopt Petitioner’s proposal because it is consistent with the ’526 patent, as well as the problems and solutions in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2. “memory controller bus operating independent of the system bus” Claim 1 requires a “memory controller bus operating independent of the system bus.” Petitioner proposes we construe this term to mean “a bus for transferring data between two or more memory controllers where said data transfer does not use the system bus.” Pet. 20. As Petitioner explains, the specification and claims support Petitioner’s construction. See id. at 19 (citing Ex. 1001, [57], 2:29–33, 11:42–47). Patent Owner does not challenge Petitioner’s construction. For the reasons stated in the Petition, we agree with Petitioner and construe “memory controller bus operating independent of the system bus” as “a bus for transferring data between two or more memory controllers where said data transfer does not use the system bus.” See Pet. 19–20.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“120 . . . arbitrates requests for the DRAM 116 from the various possible requestors in the DRAM interface 118.” Ex. 1005, 6:28–30; see PO Resp. 26 (quoting Ex. 1005, 6:28–30); id. at 40 (same); id. at 48 (same); Sur-reply 4 (same); id. at 5 (same); id. at 6 (same). But the requests and data that access Callison’s DRAM 116 (second memory) do not originate within DRAM interface 118 (second memory controller). Rather, they originate from host computer 101 (system bus master) and SCSI controllers 112A–E (first memory controllers), as the disputed limitation requires. See Ex. 1005, 2:32–34, 5:35–37, 4:36–51, 6:59–67, 10:4–20; see also Ex. 1040 ¶ 30. In other words, Callison’s host computer 101 and SCSI controllers 112A–E access DRAM 116 even if they use intermediary components in the process to do so. Patent Owner does not dispute Callison teaches host computer 101 (system bus master) initiates write operations to DRAM 116 (second memory) in which data from host computer 101 (system bus master) is written to DRAM 116 (second memory). See PO Resp. 42–43, 44; Sur-reply 8–10; Tr. 30:22–23. Patent Owner also does not dispute Callison discloses moving data from SCSI controllers 112A–E (first memory controllers) to DRAM 116 (second memory). See PO Resp. 46; Sur-reply 12–13. Because Callison further teaches “the DRAM arbiter 120 [arbitration logic] controls all requests to the DRAM 116 [second memory],” Ex. 1005, 6:52–53, we agree with Petitioner that Callison discloses “arbitration logic for arbitrating between the system bus master and the first memory controller for access to the second memory.” See Ex. 1040 ¶¶ 28–30.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“2. Obviousness of Claim 4 Based on Callison and Dipert Petitioner contends claim 4 would have been obvious over Callison and Dipert, in view of a skilled artisan’s knowledge. Pet. 58–61. Claim 4 depends from claim 3 and recites “wherein the first memory type comprises NAND Flash memory.” Petitioner explains that, while Callison does not disclose using NAND Flash memory as the first memory, Dipert “discloses NAND Flash memory and describes its advantages over hard disk drives.” Id. at 58. Petitioner explains, with relevant support from the prior art and its expert, that it would have been obvious to adapt Callison’s data processing system to use Dipert’s NAND Flash memory “because NAND Flash memory was known to have multiple advantages over hard disk drives, such as, for example, lower power consumption, faster read speed, and longer battery life.” Id. at 59 (citing Ex. 1011, 21, 43, 44; Ex. 1003 ¶¶ 122–124). Other than its argument addressing the arbitration logic for claim 1, addressed above, Patent Owner does not separately contest Callison’s and Dipert’s teachings related to claim 4. We agree with Petitioner that Dipert teaches the recited NAND Flash memory. In addition, Petitioner has articulated persuasive reasoning with rational underpinning to support the legal conclusion that its asserted combination of Callison and Dipert would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 3. Obviousness of Claim 6 Based on Callison and Prince Petitioner contends claim 6 would have been obvious over Callison and Prince, in view of a skilled artisan’s knowledge. Pet. 61–64. Claim 6 depends from claim 5 and recites “wherein the second memory type comprises synchronous dynamic random access memory.” Petitioner explains that, although Callison does not disclose using SDRAM as the second memory type, Prince teaches using SDRAM, which “is an improved alternative to, and offers multiple advantages over, conventional DRAM.” Id. at 62. Petitioner explains, with relevant support from the prior art and its expert, that it would have been obvious to modify Callison’s DRAM to use Prince’s SDRAM because “SDRAM was developed as a solution to address the problem of mismatch in speed between asynchronous DRAM and microprocessors,” and offers improved performance over DRAM “by freeing up the processor to do other tasks while the SDRAM is processing requests.” Id. at 62–63 (citing Ex. 1012, 12, 14; Ex. 1003 ¶¶ 137–142). Patent Owner does not separately contest Callison’s and Prince’s teachings related to claim 6. We agree with Petitioner that Prince teaches the recited “the second memory type comprises synchronous dynamic random access memory.” In addition, Petitioner has articulated persuasive reasoning with rational underpinning to support the legal conclusion that its proffered combination of Callison and Prince would have been obvious to one of ordinary skill in the art. See KSR, 550 U.S. at 418. 4. Obviousness of Claim 8 Based on Callison and Yun Petitioner contends claim 8 would have been obvious over Callison and Yun, in view of a skilled artisan’s knowledge. Pet. 64–71. Claim 8 depends from claim 1 and recites “wherein the first memory controller comprises a counter for counting a number of data portions transferred between the first memory and the second memory.” Petitioner explains that, although Callison does not expressly disclose the counter recited in claim 8, Yun “discloses a design of a SCSI controller that includes a transfer counter for counting data transferred through the SCSI controller.” Id. at 65. Petitioner explains, with relevant support from the prior art and its expert, that it would have been obvious to adapt Callison’s SCSI controllers 112A– E to include Yun’s counter because “Yun provides a new design of SCSI controller, which is compatible with a commercial SCSI controller and improves the performance of conventional SCSI controllers.” Id. at 68 (Ex. 1013, 1; Ex. 1003 ¶¶ 149, 150). Specifically, Petitioner notes, “Yun describes that the transfer counter, as part of the control circuit in the SCSI controller, is used to control and facilitate data transfers through the SCSI controller” by “signal[ing] the start and completion of a data transfer operation.” Id. at 70. Patent Owner does not separately contest Callison’s and Yun’s teachings related to claim 8. We agree with Petitioner that Yun teaches the recited “the first memory controller comprises a counter for counting a number of data portions transferred between the first memory and the second memory.” In addition, Petitioner has articulated persuasive reasoning with rational underpinning to support the legal conclusion that its proffered combination of Callison and Yun would have been obvious to one of ordinary skill in the art. See KSR, 550 U.S. at 418.” slip op. at 24
Patent outcomesUS 7,171,526 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,171,526 - Micron Technology, Inc. v. North Star Innovations Inc.All claims unpatentablePTAB · Oct 24, 2019 · IPR2018-01005 · APJ Garth D Baer · IPR · Final written decision
Claims 15–19 are unpatentable: claims 15, 17, and 18 as obvious over Callison, and claims 16 and 19 as obvious over Callison and Shanley.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’526 patent would have had “at least a Bachelor of Science or Engineering degree in computer science, computer engineering, electrical engineering, or a closely related field, along with at least 5 years of experience in the field of computer systems and computer memory.” Pet. 19. In addition, according to Petitioner, “[a]n individual with an advanced degree in the above fields would require less (e.g., by 1 to 2 years) experience in the field of computer systems and computer memory.” Id. (citing Ex. 1003 ¶¶ 31–33). Patent Owner does not provide its own formulation of a person of ordinary skill or contest Petitioner’s assertion. PO Resp. 34. We agree with and adopt Petitioner’s proposal because it is consistent with the ’526 patent, as well as the problems and solutions in the prior art of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“operating independent of the system bus.” Petitioner proposes we construe this term to mean “a bus for transferring data between two or more memory controllers where said data transfer does not use the system bus.” Pet. 19. As Petitioner explains, the specification and claims support Petitioner’s construction. See id. at 18 (citing Ex. 1001, [57], 2:29–33, 11:42–47). Patent Owner does not challenge Petitioner’s construction. For the reasons stated in the Petition, we agree with Petitioner and construe “memory controller bus operating independent of the system bus” as “a bus for 4 A recent amendment to this rule does not apply here because the Petition was filed before November 13, 2018. See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R. pt. 42 (2019)) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018). transferring data between two or more memory controllers where said data transfer does not use the system bus.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner asserts that it would have been obvious to one skilled in the art to include Shanley’s DMA circuitry coupled to the system bus because “Callison . . . does not provide extensive detail on how to implement an EISA bus and associated components,” whereas “Shanley provides that detailed information, that is, the architecture of an EISA system that includes an EISA bus and other associated components in a computer system.” Id. at 55. Petitioner explains further that one skilled in the art would also have been motivated to use Shanley’s EISA system (including DMA circuitry) for Callison’s host computer to achieve the benefits Shanley describes, including “parallel processing,” which is “extremely efficient” and “a low-cost alternative to intelligent bus master cards.” Id. at 56 (quoting Ex. 1007, 22, 29). Patent Owner does not separately contest Callison’s and Shanley’s teachings related to claim 16. We agree with Petitioner that Shanley teaches both “direct memory access (DMA) circuitry coupled to the system bus” and “a processor coupled to the system bus.” In addition, Petitioner has articulated persuasive reasoning with rational underpinning that supports the legal conclusion that its proffered combination—i.e., adapting Callison’s host computer in view of Shanley’s teachings on EISA systems—would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“120 . . . arbitrates requests for the DRAM 116 from the various possible requestors in the DRAM interface 118.” Ex. 1005, 6:28–30; see PO Resp. 25 (quoting Ex. 1005, 6:28–30); id. at 38 (same); id. at 46 (same); Sur-reply 2 (same); id. at 6 (same); id. at 7 (same). But the requests and data that access Callison’s DRAM 116 (second memory) do not originate within DRAM interface 118 (second memory controller). Rather, they originate from host computer 101 (system bus master) and SCSI controllers 112A–E (first memory controllers), as the disputed limitation requires. See Ex. 1005, 2:32–34, 5:35–37, 4:36–51, 6:59–67, 10:4–20. In other words, Callison’s host computer 101 and SCSI controllers 112A–E access DRAM 116 even if they use intermediary components in the process to do so. Patent Owner does not dispute Callison teaches host computer 101 (system bus master) initiates write operations to DRAM 116 (second memory) in which data is written from host computer 101 (system bus master) to DRAM 116 (second memory). See PO Resp. 40–41, 42; Sur-reply 9–10; Tr. 30:22–23. Patent Owner also does not dispute Callison discloses moving data from SCSI controllers 112A–E (first memory controllers) to DRAM 116 (second memory). See PO Resp. 44; Sur-reply 13–14. Because Callison further teaches “the DRAM arbiter 120 [arbitration logic] controls all requests to the DRAM 116 [second memory],” Ex. 1005, 6:52–53, we agree with Petitioner that Callison discloses “arbitration logic, coupled to the second memory controller, said arbitration logic arbitrating between the system bus master and the first memory controller for access to the second memory.”” slip op. at 16
Patent outcomesUS 7,171,526 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,171,526 - Red Hat, Inc. / Dell Inc. et al. v. Electronics & Telecommunications Research InstituteRehearing deniedPTAB · Oct 16, 2019 · IPR2019-00465 · APJ Jameson Lee · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1–14 because Petitioner did not show an abuse of discretion in the claim construction underlying the merits decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“including tables. Step “b)” of claims 1 and 11 reads as follows: “b) generating the metadata including information of the logical volume and the disk partitions forming the logical volume and storing the metadata to the disk partitions forming the logical volume.” Ex. 1001, 12:22–25, 14:32– 35 (emphasis added). Claim 8 essentially recites the same. See id. at 13:36– 39. Each of claims 1, 8, and 11 further recites: “wherein the metadata includes a disk partition table . . . ; a logical volume table . . . ; an extent allocation table . . . ; and a mapping table . . . .” Id. at 12:35–47, 13:49–61, 14:46–67. The antecedent basis for “the metadata” is that metadata which has been generated and stored in the disk partitions forming the logical volume.” slip op. at 3
Claim constructioncites PhillipsPatents in suitUS 6,718,436
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.