• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Mar 19, 2024 · IPR2022-01352 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 11, 13, and 14 are unpatentable as obvious over Vaios, Menard, and Schnell; the Board did not reach the Klein-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Petitioner and Patent Owner that the two proposed levels of ordinary skill in the art are similar and any differences are immaterial to the outcome of this case. Id.; Ex. 2011, 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 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownPlain and ordinary meaningOther

    “device that locks a door of a home or office (Ex. 1001, 6:44–46, Fig. 1 [116], 18:36–38, Fig. 6 [2114]); and (2) a device included in the DVMS module that enables it to be installed securely wherever holstered (id. at 8:7– 13, Fig. 2 [28]). Claim 13 is the only challenged claim that recites a “locking mechanism.” Id. at 20:40. In light of the specification’s treatment of a device that enables secure installment of one member to another as a locking mechanism, we find no fault with Petitioner reading “locking mechanism” to encompass both a deadbolt as well as structures that render the wireless module capable of secure installment. Claim 13 does not require any particular structure or configuration for the “locking mechanism.” Nor does claim 13 require any particular level of performance or effectiveness for the “locking mechanism.” Patent Owner does not offer any contrary construction or identify any disavowal that would narrow the scope of “locking mechanism” in claim 13 to encompass only one of the two devices identified in the specification (i.e., the deadbolt and the device enabling the DVMS module to be installed securely wherever holstered). Besides “locking mechanism,” Patent Owner does not identify what other claim terms Petitioner has allegedly misconstrued such that we could take cognizance of a dispute regarding the meaning of those terms to be applied in this decision. As such, there are no remaining claim construction disputes that we need to resolve. We apply the plain and ordinary meaning to the remainder of the claim terms. D.” slip op. at 16

  • Strike new argumentNew argument consideredDecided for petitioner

    “Petitioner’s Expert Testimony Patent Owner contends that “Petitioner violates 37 C.F.R. § 42.6(a)(3) by [citing Dr. Hochwald’s declaration], which includes pages of arguments and evidence that are not in the Petition.” Resp. 30. Patent Owner further argues that “all facts . . . that are not specifically discussed in the Petition should be disregarded by the Board.” Id. Patent Owner does not identify what arguments, evidence, or facts it alleges to have been incorporated by reference improperly from Dr. Hochwald’s declaration into the Petition. Consequently, 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. In other words, Patent Owner’s arguments are conclusory because they do not cite to underlying evidence. Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017). F.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “An obviousness determination generally requires a finding that ‘all claimed limitations are disclosed in the prior art.’” Univ. of Strathclyde v. Clear-Vu Lighting LLC, 17 F.4th 155, 160 (citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014); Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337–38 (Fed. Cir. 2020)). Petitioner concedes that Vaios does not disclose a speaker and that this ground cannot stand. Tr. 7:3–11. Petitioner does not rely on Schnell to teach or suggest the claimed speaker. Consequently, Petitioner fails to show by a preponderance of the evidence unpatentability under § 103 of any of the claims challenged in this ground. G. slip op. at 18

  Patent outcomesUS 8,154,581 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,154,581
• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,154,581
• Juniper Networks, Inc. v. Smart Path Connections, LLCAll claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00240 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Cohen, Cao, and Malis; the Board did not find claims 1–20 unpatentable over Choi, Lewin, and Zelig.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “level of ordinary skill in the art. Prelim. Resp. 16–17. In the Decision to Institute, we adopted Petitioner’s articulation of the level of ordinary skill in the art, and reasoned that Petitioner’s assertion is supported by the testimony of Dr. Lavian and appears consistent with the content of the applied prior art references, citing Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Post institution, neither party objected to or disputed our adopted level of ordinary skill in the art. See generally Reply; PO Resp. 16. That level is consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d at 1354–55. Consequently, we adhere to the level of ordinary skill in the art as adopted in the Decision to Institute, i.e., Petitioner’s statement of the level of ordinary skill in the art. C.” slip op. at 10

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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))). Petitioner has not proposed a specific construction for any claim term, and states that no express construction is needed. Pet. 7. Further, Petitioner states that it understands each claim term according to its ordinary and customary meaning. Id. Patent Owner states: “Patent Owner does not propose any claim term [to] depart from its ordinary and customary meaning.” PO Resp. 8. We determine that no express claim construction of any claim term is necessary for this Decision.” slip op. at 11

  • BurdenDecided for patent owner

    “limitation [1.2]. First, Petitioner has shown that there are separate inputs for synchronous data and non-synchronous data, not that there is any means or step within Choi’s integrated communication system to determine whether the data it receives is synchronous or non-synchronous. Second, as we discussed above, the antecedent basis for “the data” is the payload carried by the time-division-multiplexed (“TDM”) input signal of limitation [1.1]. The payload data in that input route does not go through Ethernet Media Access Controller 202 or Ethernet Controller 504. Thus, the non-synchronous Ethernet data Petitioner refers to in Choi is not a part of “the data” relied on by Petitioner to meet limitation [1.1]. Third, with respect to the text from Choi quoted by Petitioner (Pet. 70), “data is separated into PDH/SDH/SONET data and Ethernet data” (Ex. 1008 ¶ 17), Petitioner’s reliance is misplaced, because there is no indication that the identified description relates to the TDM data received at PDH/SDH/SONET Line Interface Unit 201. Rather, the description relates to data received from the optical fiber at the other end of the integrated communication system, where synchronous and non-synchronous data have already been combined into one data stream. For instance, Choi states: “[T]he combined PDH/SDH/SONET and Ethernet data stream received from the optical fiber are demultiplexed within the integrated communication system and send to the PBX (508) and server (507) respectively.” Ex. 1008 ¶ 22.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Where there is a separate input for non-synchronous data, as in Choi, Petitioner provides no reasonable basis for one with ordinary skill in the art to expect to find any non-synchronous data in the TDM SONET input received at line interface unit 201 for which the only described input is synchronous voice data. That is so notwithstanding that SONET frames are capable of carrying non-synchronous data. We find that no reasonable motivation is provided by Petitioner for one with ordinary skill in the art to provide or add a determining step that acts on the TDM SONET input received at line interface unit 201. Further, we are not persuaded by Petitioner’s assertion that it would have been obvious to one with ordinary skill in the art, in light of Choi and Lewin, to determine whether the data includes synchronous or non-synchronous data. Pet. 71. First, as presented by Petitioner, Choi discloses separate inputs for Ethernet data, which is nonsynchronous, sent through Ethernet Media Access Controller 202, and for synchronous data supplied to PDH/SDH/SONET Line Interface Unit 201. Id. at 68. Thus, Choi’s system is not comparable with or similar to Lewin’s system which has a common input providing both synchronous voice data and nonsynchronous packet data. Second, in Lewin’s system it is necessary to separate the voice data from the packet data so that the voice data can be routed to a PBX and the identified by Petitioner in Choi is the opposite. Id. (annotating Choi’s Figure 2). Through the separate inputs identified by Petitioner, id., Choi seeks to combine synchronous data and nonsynchronous data to send to a network over optical fiber. Ex. 1008 ¶¶ 16, 18. The splitting function of Lewin has no reasonable application at the input locations identified by Petitioner. (4) Conclusion For reasons discussed above, we are not persuaded by Petitioner that Choi discloses or reasonably would have suggested limitation [1.2]. We also are not persuaded by Petitioner that Choi in combination with Lewin satisfies or accounts for the requirement of limitation [1.2].” slip op. at 31

  Patent outcomesUS 7,961,755 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,961,755
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Cellect, LLCAll claims unpatentable
  PTAB · Aug 17, 2021 · IPR2020-00512 · APJ John R Kenny · IPR · Final written decision

  Claim 2 is unpatentable as obvious over Swift, Ricquier, and Suzuki; the Board did not reach the alternative ground involving Larson.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Neither party identifies any material differences between a skill level corresponding to approximately two years of professional experience in the field of imaging devices and approximately three years of professional experience in the field of visible optical imaging devices, or any difference in the field of imaging devices and the field of visible optical imaging devices. On this record, there is none. We determine that the level of ordinary skill in the art is at the level of one who would have had a Bachelor’s degree in Electrical Engineering, Physics, or a related field, and approximately two to three years of professional experience in the field of visible optical imaging devices.6 This definition is consistent with the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 6 We do not adopt Petitioner’s inclusion of the qualifier “minimum,” to keep the specified level of skill more definite.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We also are guided by the principle that we only construe claim terms if, and to the extent that, it is necessary for this proceeding. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party requests the construction of any claim term. Pet. 13; PO Resp. 12. Further, we do not find that any claim term requires express construction. III.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Dr. Neikirk’s testimony is rational, and we credit his testimony over the testimony of Patent Owner’s inventor, who provides no explanation as to why it was purportedly unexpected that, as compared to CCD devices, a CMOS imager with remotely located processing circuitry requires no RFI shielding. For the foregoing reasons, Patent Owner has not established that the alleged unexpected result would have been unexpected to an ordinarily skilled artisan. Further, even assuming the alleged unexpected result truly would have been unexpected to an ordinarily skilled artisan, Patent Owner has not shown sufficient nexus between the unexpected result and the claimed invention.” slip op. at 20

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable

    “Accordingly, there is no presumption of nexus, and Patent Owner has not separately proved the required nexus for the alleged licensing and commercial success. Thus, there is not a legally and factually sufficient connection between the evidence of licensing and the patented invention.” slip op. at 14

  Patent outcomesUS 9,186,052 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,186,052
• Marvell Semiconductor, Inc. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Feb 1, 2021 · IPR2019-01349 · APJ Jameson Lee · IPR · Final written decision

  Claims 1 and 2 are unpatentable over Shellhammer; claim 5’s patentability could not be reached because its scope is ambiguous.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for patent owner

    “Further, even assuming that the Patent Owner successfully shows that the Examiner erred in not accepting the applicant’s foreign priority claim, that does not mean Patent Owner, in this proceeding, is automatically entitled to the filing date of the foreign application. If Patent Owner wished to challenge the prior art status of a reference, after Petitioner satisfied its initial burden of production by arguing the reference is prior art, Patent Owner would then have to demonstrate, in this proceeding, that the challenged claims indeed do satisfy the requirements of 35 U.S.C. § 119 with respect to the foreign application the priority of which it claims.5 Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). Dynamic Drinkware states that because the USPTO does not examine priority claims unless necessary, the Board has no basis to presume that a patent is necessarily entitled to the filing date of its provisional application. Id. at 1380. Under the reasoning of Dynamic Drinkware, the same would be true for a foreign application, the priority of which has been claimed. Patent Owner has made no substantive showing in this proceeding of actual entitlement to the filing date of the German Application, by satisfaction of all pertinent requirements of 35 U.S.C. § 119. 5 “[I]f the effective filing date of what is claimed in a United States application is at issue, to preserve symmetry of treatment between sections 120 and 119, the foreign priority application must be examined to ascertain if it supports, within the meaning of section 112, ¶ 1, what is claimed in the United States application.” In re Gosteli, 872 F.2d 1008, 1011 (Fed. Cir. 1989). Accordingly, the effective filing date of the ’676 patent is August 8, 2001, not the earlier filing date of German Application No. 100 39 532.5.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we have no reason to disagree with Petitioner’s articulation of the level of ordinary skill, which is supported by the testimony of Dr. Roy (Ex. 1003 ¶¶ 62–63), except to note that the open-ended qualifier “or more” as applied to years of experience expands the level to encompass that of an expert, which is inappropriate for the level of 7 Patent Owner has not presented any objective evidence of nonobviousness or any argument in that regard. “ordinary skill.” Petitioner’s articulation without the expansive qualifier appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Therefore, we adopt the Petitioner’s articulation of the level of ordinary skill, but without the expansive qualifier “or more” as applied to the amount of experience. C.” slip op. at 13

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

    “stations which operate in accordance with a first radio interface standard and/or a second radio interface standard” Claim 1 recites: “stations which operate in accordance with a first radio interface standard and/or a second radio interface standard.” Ex. 1001, 6:24–26. Although Petitioner asserts that no construction is necessary for this phrase and that the plain and ordinary meaning applies, Petitioner nonetheless proposes that the phrase, according to its plain and ordinary meaning, means “stations, each of which operates in accordance with a first radio interface standard, a second radio interface standard, or both.” Pet. 14. Patent Owner asserts that no construction is necessary. PO Resp. 14. Regarding Petitioner’s articulation of the plain and ordinary meaning of the phrase, Patent Owner has not refuted it in any way, and it appears consistent with what the phrase ostensibly indicates. Thus, on the record before us, we accept and adopt Petitioner’s articulation of the plain and ordinary meaning for this phrase. slip op. at 15

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

    “renders the frequency band available for access by the stations working in accordance with the second radio interface standard if stations working in accordance with the first radio interface standard do not request access to the frequency band” Claim 1 recites: “renders the frequency band available for access by the stations working in accordance with the second radio interface standard if stations working in accordance with the first radio interface standard do not request access to the frequency band.” Ex. 1001, 6:32–36. For this phrase, Petitioner asserts that “claim construction is not necessary.”8 Pet. 15. Patent Owner, likewise, “submits that the Board need not construe this claim term.” PO Resp. 14. We agree with the parties that express claim construction of this claim term or phrase is not necessary. Although no additional discussion is necessary, we point out certain inaccuracies in the Patent Owner Response, to avoid potential confusion. slip op. at 16

  Patent outcomesUS 7,016,676 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,016,676
• Smart Microwave Sensors GmbH v. Wavetronix LLCAll claims unpatentable
  PTAB · Jul 17, 2017 · IPR2016-00488 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 9, 10, 12, 13, 22, 23, and 25 are unpatentable, including as anticipated by Boles or Farmer and obvious over combinations including Boles, Farmer, Herman, and others.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedGranted

    “1. Exhibits 1002, 1008, 1009, and 1012 Patent Owner argues the date printed on each of Exhibits 1002, 1008, 1009, and 1012, is inadmissible hearsay under FRE 801 and 802 as out of court statement offered to prove that truth of the matter asserted—that each document was a printed publication as of the date printed on that document (i.e., that it was sufficiently publicly accessible). Paper 45, 2–3 (citing Standard Innovation Corp. v. Lelo, Inc., Case IPR2014-00148, Paper 41 (PTAB April 23, 2015)). As discussed supra, we agree with Patent Owner that the dates printed on these Exhibits are hearsay with no applicable exception. Thus, we grant Patent Owner’s motion requesting that we exclude the copyright notice date from each of Exhibits 1008, 1009, and 1012, and exclude the date of the EuMC conference on Exhibit 1002. However, we note that the documents per se are not excluded from the record as hearsay—only the date imprinted on each as proof of the printed publication status of each document. The underlying documents of these Exhibits are offered not to prove the publication dates thereof but, instead, are statements offered to demonstrate the knowledge of persons of ordinary skill in the art. Petitioner may rely on other evidence to establish the date of public accessibility of each of these documents, the analysis of which we have set forth supra. See Section II.B.1–4.” slip op. at 54

  • Skill levelNot reached
  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream. Ex. 1036, 98:21–99:13. In light of that testimony, we determine that Patent Owner’s expert testimony in support of their assertion is not credible.” slip op. at 14

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

    “Id. at 49:19–50:10. Given, at best, significant ambiguity as to whether the Specification and other evidence requires that “traffic data” must refer to “all or substantially all vehicles,” we are persuaded that such a requirement would not be proper under a broadest reasonable construction. Regarding Patent Owner’s assertion that “traffic data” is limited to data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream.” slip op. at 14

  Patent outcomesUS 6,693,557 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,693,557
• Vmware, Inc. v. Clouding CorporationAll claims unpatentable
  PTAB · Jan 7, 2016 · IPR2014-01305 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–3 are unpatentable as anticipated by Aziz, and claims 11–18 are unpatentable as obvious over Aziz and Sanchez-Frank; Patterson anticipation was not shown.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “to the benefit of the filing date of a provisional application. Id. at 1378–82. Specifically, in an inter partes review, the petitioner has the ultimate burden of persuasion to prove “unpatentability by a preponderance of the evidence,” and this burden never shifts to the patent owner. Id. at 1378–79 (citing 35 U.S.C. § 316(e); Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). Also, the petitioner has the initial burden of production—a burden of going forward with evidence. Id. at 1379–80. Further, the Federal Circuit clarified that there is no presumption that a reference patent is necessarily entitled to the benefit of the filing date of a provisional application, or an earlier-filed nonprovisional application if the reference patent was issued from a continuation-in-part application. Id. at 1380 (“[B]ecause the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (“When neither the PTO nor the board has previously considered priority, there is simply no reason to presume that claims in a [continuationin-part] application are entitled to the effective filing date of an earlier filed application.”). “A reference patent is only entitled [under § 119(e)(1)] to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at 1381 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)) (emphasis” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “A reference patent is only entitled [under § 119(e)(1)] to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at 1381 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)) (emphasis 12 added). Also, a reference patent is entitled under § 120 to the benefit of the filing date of an earlier-filed nonprovisional application if the disclosure of that application provides adequate written description for the claims in the reference patent in compliance with § 112, ¶ 1. Wertheim, 646 F.2d at 537. slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior art

    “§ 102(e)(2) because the Patterson provisional application provides adequate written description support for the disclosures of the Patterson patent. Pet. 17–18 (citing Ex. 1006 ¶¶ 52–55); Reply 17–19. To support its contention, VMware explains how the Aziz patent and the Patterson provisional application, which incorporates the Aziz nonprovisional application by reference, disclose the subject matter recited in the claims of the ’708 patent. See, e.g., Pet. 17–18, 30–34; Reply 17–22. VMware, however, does not explain how the Patterson provisional application or the Aziz nonprovisional application provides adequate written description support for the claims of the Patterson patent in compliance with § 112, ¶ 1. See generally Pet.; Reply. Therefore, VMware fails to demonstrate that the Patterson patent is entitled to the benefit of the filing date of the Patterson provisional application or the Aziz nonprovisional application. Consequently, VMware has not established that the Patterson patent is prior art to the ’708 patent.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We are not persuaded by Clouding’s arguments, as they narrowly focus on an optional feature and fail to consider Aziz’s disclosure as a whole. Clouding acknowledges that Aziz discloses a server separated from the Control Plane, and that server provides a set of web pages, enabling users to create a customized VSF by specifying the computing elements, hardware, and software for the VSF. PO Resp. 4–5; Ex. 1002, 15:31–51 (“a set of Web pages are served by the Control Plane machine, or by a separate server”). There is no dispute that the users enter their specifications for a VSF using the web pages on this user-interface web server. PO Resp. 4–5; Ex. 1002, 15:31–51 (“The Web pages enable a customer to create a custom VSF, by specifying a number of tiers, the number of computing elements . . . .”). Therefore, VMware has shown by a preponderance of the evidence that Aziz’s disclosure of a user-interface web server describes a “configuration/access” server, as required by the claims at issue. Additionally, as VMware points out, Aziz’s Control Plane comprises one or more servers that are interconnected in a network or by other means. Pet. 25–26; Ex. 1002, 4:64–67. In response to receiving a user specification for a customized VSF, the Control Plane allocates the computing elements and other resources to execute and implement the VSF. Ex. 1002, 3:28–32 18 (“By physically constructing the computing grid once, and securely and dynamically allocating portions of the computing grid to various organizations on demand, economies of scale are achieved that are difficult to achieve when doing a custom build of each site”); 9:15–10:15 (“Assume that the Control Plane is asked to construct a VSF l . . . . In response, the Control Plane assigns or allocates CPU . . .”). Accordingly, VMware has shown by a preponderance of the evidence that Aziz’s disclosure of a Control Plane describes an “infrastructure server,” as required by the claims. As VMware explains also, the user-interface web server must communicate the user specification to the Control Plane because the Control Plane is the server that constructs the requested VSFs from those specifications. Pet. 25; Ex. 1002, 5:9–20, 5:29–38; 10:16–24. Contrary to Clouding’s assertion that human managers “are in place to examine any requested orders and approve same before they are passed to the control plane for implementation” (PO Resp. 6), the sentence relied upon by Clouding describes merely an optional feature—“Orders may be reviewed by human managers to ensure that they are appropriate.” Ex. 1002, 15:54– 55. It does not necessarily imply that the user-interface web server is a standalone server without any communication with the Control Plane, as alleged by Clouding. In fact, the sentence before the passage relied upon by Clouding explicitly states that “[a]fter the customer or user enters such provisioning information, the Control Plane parses and evaluates the order and queues it for execution.” Id. at 15:52–54 (emphasis added). In order for the Control Plane to accomplish those specific tasks, the user specification” slip op. at 18

  Patent outcomesUS 7,272,708 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,272,708
• Vmware, Inc. v. Clouding CorporationAll claims unpatentable
  PTAB · Jan 7, 2016 · IPR2014-01304 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–4 and 6–9 are unpatentable as obvious over Aziz and Sanchez-Frank; VMware did not show those claims anticipated by Patterson.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Specifically, in an inter partes review, the petitioner has the ultimate burden of persuasion to prove “unpatentability by a preponderance of the evidence,” and this burden never shifts to the patent owner. Id. at 1378–79 (citing 35 U.S.C. § 316(e); Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). Also, the petitioner has the initial burden of production—a burden of going forward with evidence. Id. at 1379–80. Further, the Federal Circuit clarified that there is no presumption that a reference patent is necessarily entitled to the benefit of the filing date of a provisional application, or an earlier-filed nonprovisional application if the reference patent was issued from a continuation-in-part application. Id. at 1380 (“[B]ecause the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (“When neither the PTO nor the board has previously considered priority, there is simply no reason to presume that claims in a [continuation-in-part] application are entitled to the effective filing date of an earlier filed application.”). “A reference patent is only entitled [under § 119(e)(1)] to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at 1381 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)) (emphasis added). Also, a reference patent is entitled under § 120 to the benefit of the” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable

    “A reference patent is only entitled [under § 119(e)(1)] to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at 1381 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)) (emphasis added). Also, a reference patent is entitled under § 120 to the benefit of the 11 filing date of an earlier-filed nonprovisional application if the disclosure of that application provides adequate written description for the claims in the reference patent in compliance with § 112, ¶ 1. Wertheim, 646 F.2d at 537. slip op. at 11

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

    “are not persuaded by Clouding’s arguments. In an obviousness analysis, we must consider the combination of references, as a whole, in light of the general knowledge of an ordinarily skilled artisan. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). At the outset, we observe that the claims at issue do not require a user interface that enables the user to create a copy of a device configuration, as is evidently alleged by Clouding. Rather, the claim language requires a user interface that is configured to enable “the user to request a copy [of] a device configuration.” Ex. 1001, 7:66–67 (emphasis added). The claim language also does not require the user to make or save the copy of the device configuration, as alleged by Clouding, but instead requires that “the system is configured to make the copy of the device configuration and save [it] in storage.” Id. at 8:1–3 (emphasis added).” slip op. at 19

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

    “At the outset, we observe that the claims at issue do not require a user interface that enables the user to create a copy of a device configuration, as is evidently alleged by Clouding. Rather, the claim language requires a user interface that is configured to enable “the user to request a copy [of] a device configuration.” Ex. 1001, 7:66–67 (emphasis added). The claim language also does not require the user to make or save the copy of the device configuration, as alleged by Clouding, but instead requires that “the system is configured to make the copy of the device configuration and save [it] in storage.” Id. at 8:1–3 (emphasis added). As Dr. Fortes explains, Aziz discloses situations in which a user requests a copy of a device configuration and the system makes a copy of 19 that configuration and saves it to storage. Ex. 1016 ¶ 12. For instance, Aziz discloses a user interface (a set of web pages) that allows users to create and modify a customized VSF, “by specifying . . . the hardware and software platform used for each element, and things such as what kind of Web server, application server, or database server software should be preconfigured on these computing elements.” Ex. 1002, 15:31–16:22. As Clouding acknowledges, “Aziz teaches a solution in which a user is permitted to select from a set of pre-defined logical blueprints in order to assign various computing elements of a VSF different roles (e.g., Web server, application server, database server, etc.).” PO Resp. 6; Ex. 1002, 8:1–12. There is no dispute that Aziz’s system is configured to make and save a copy of the customized VSF, which includes a copy of the pre-defined logical blueprint selected by the user, because Aziz’s system allows the user subsequently to change the parameters of the customized VSF, by adding or removing a processor or other computing elements. Id. at 9:15–10:37, 16:1–11, Figs 5A–6; see also id. at 10:21–24 (“[T]he organization that owns or operates the VSF wants another server, and has added it through an administrative mechanism, such as a privileged web page which allows it to add more servers to its VSF.”); 16:12–15 (“Through the privileged access mechanism the customer can . . . adjust the characteristics of a VSF based on the real-time information.”). Also, Dr. Fortes testifies that one with ordinary skill in the art would have understood that “at least some of the blueprints used to boot computing elements may be created by users,” and those” slip op. at 19

  Patent outcomesUS 7,065,637 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,065,637

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