• Continental Automotive Systems, Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Dec 5, 2023 · IPR2022-00972 · APJ David C Mckone · IPR · Final written decision

  Claims 1–10 are unpatentable because Speight anticipates them; the Board found Peisa anticipation and Peisa–Heo obviousness unproven for the challenged claims in those grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art “would have had a Bachelor of Science in electrical engineering, computer engineering, or an equivalent field, as well as three years of experience in wireless communication technology, or a master’s degree in electrical engineering, or other equivalent degree,” and that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 14 (citing Ex. 1004 ¶¶ 47–49). Patent Owner does not contest Petitioner’s contention or propose a level of skill. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9

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

    “agreement that this claim term should be read as reciting two mutually-exclusive alternatives with respect to the “third parameter.” Dec. 11. The parties do not challenge this construction in the Patent Owner Response, Reply, or Sur-reply. On the complete record, we construe “wherein resources are allocated for data of each channel having a second parameter above zero prior to another channel’s data for transmission having a third parameter less than or equal to zero” as reciting two mutually-exclusive alternatives with respect to the “third parameter.”” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. The Petition is required to identify “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Petitioner argued in the Petition that “as properly construed, the claimed ‘first parameter,’ ‘second parameter,’ ‘third parameter,’ and ‘fourth parameter’ are four different parameters.” Pet. 17–18. In the Institution Decision, Petitioner prevailed on that point and “we agree[d] with Petitioner that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels.” Dec. 14. Patent Owner “relie[d] on the Board’s construction ‘that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels,’” and proposed distinct parameters in the Specification that it alleges are examples of second and third parameters, albeit not the same two parameters proposed by Petitioner. PO Resp. 9, 29. Petitioner now proposes new constructions for the second and third parameters that would limit those parameters to the two examples it advanced in the Petition and improperly supports these new constructions with new expert testimony and an exhibit from the prosecution of a later patent. Reply 20–25; Ex. 1040 ¶¶ 20–29; Ex. 1038. See also Consolidated Trial Practice Guide (“TPG”)10 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”). As Patent Owner observes (Sur-reply 10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 21), it has no opportunity to introduce rebuttal evidence contesting the new constructions. See TPG 73–74 (Nov. 2019) (“The sur-reply may not be accompanied by new evidence other than deposition transcripts of the crossexamination of any reply witness. Sur-replies should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony.”). We agree with Patent Owner that it would be unfair to consider Petitioner’s new construction. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.”). Thus, Petitioner has forfeited its new claim construction arguments and they will not be considered. See TPG 74 (“While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”). Moreover, these arguments would be unpersuasive even if considered. Petitioner has, at most, cited description in the Specification to show that its identified second and third parameters are examples corresponding to the recited second and third parameters. Ex. 1005 ¶¶ 84–95. This description does not define the second and third parameters nor purport to exclude from the claims any parameter that would otherwise meet the language of the claims. The prosecution history to which Petitioner cites, that of a child application, took place after the prosecution of the ’466 patent and thus, does not constitute a definition or disclaimer of subject matter for claims of the ’466 patent. In any case, the brief argument in the cited response to office action, that “[i]n the algorithm, the first value is provided by the wireless network for each of a plurality of buffers where the buffer having the second value above a threshold transmits data first,” does not define the second and third parameters, disavow any values from those parameters, or even discuss the third parameter. Ex. 1038, 12. Petitioner’s extrinsic evidence, Dr. Akl’s testimony, does little more than repeat the arguments in the Reply and, thus, is of little value. Ex. 1040 ¶¶ 20–29. In sum, we maintain our construction that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels. Under this construction, RAAUq” and RAAUq’, respectively, could potentially be second and third parameters, as could RAAUq’ and RAAUq”, respectively, as long as they satisfy the rest of the pertinent language of the challenged claims.” slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “production, we still would find that a skilled artisan would not have been able to ascertain from the disclosure in the ’421 application that RAAUq’ could take values less than zero. Instead, even if we were to credit Dr. Lomp’s testimony, to conclude that RAAUq’ can take negative values, a skilled artisan would need to program computer software to simulate the ’421 application’s algorithm and correctly choose starting parameters and other context variables without guidance from the description in the ’421 application. This case is similar to that in New Railhead, where the written description was insufficient because “one of ordinary skill in the art must first make the patented invention before he can ascertain the claimed features of that invention.” 298 F.3d at 1295. This case also is similar to Los Angeles Biomedical Research Institute, in which an application’s written description was insufficient because assumptions and starting variables were not knowable from the disclosure in the application. 849 F.3d at 1058. Thus, even if we were to conclude that Patent Owner has met its burden of production, a preponderance of the evidence shows that the ’421 application does not provide written description support for Alternative A. In sum, we conclude that the ’421 application does not provide written description support for the challenged claims and that, therefore, Speight is prior art to the challenged claims.” slip op. at 41

  Patent outcomesUS 9,681,466 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 9,681,466
• 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
• Bose Corporation v. Koss CorporationAll claims unpatentable
  PTAB · May 31, 2022 · IPR2021-00297 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–14 are unpatentable: claims 1–14 as obvious over the listed combinations; the Pelland anticipation ground fails because the claims are entitled to the PCT filing date.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states that its proposal is “not far removed” from Petitioner’s. Neither party argues the level of ordinary skill as part of their arguments on the merits. We instituted trial on Petitioner’s proposed level of ordinary skill. We are not presented with any reason to change that determination and, given Patent Owner’s acquiescence, we maintain the level of skill proposed by Petitioner.” slip op. at 9

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

    “We are not persuaded that the extrinsic evidence Patent Owner relies on, in the form of dictionary definitions and conclusory expert testimony, supports any difference between “seamless handoff” and “transition automatically.” Extrinsic evidence is, in general, less reliable than intrinsic evidence in determining how to interpret the claim. Phillips, 415 F.3d at 1318 (listing reasons extrinsic evidence lacks the reliability of the patent and its prosecution history).” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

    “Drs. Williams and Casali both testify “Wilson’s stereo design would have been consistent with Nakagawa’s intended use and its depiction of a wireless headset having two earphones (Nakagawa, Fig. 1).” Id. (citing Ex. 1003 ¶ 236; Ex. 1005 ¶ 125). Dr. Casali testifies that a monaural design can include two earphones. See Ex. 1005 ¶ 47. Dr. Casali further explains that “diotic” is where “both earphones receiv[e] and output[] the same signal.” Id. (citing Ex. 1017, 1:22–23 (by the filing date of the ’155 patent one or two headphones were used for “monaural or stereo listening”)); contra Ex. 2023 ¶ 33 (two headphones are necessarily stereo). We credit the Casali Declaration and its discussion of Nakagawa that the sound input and output of two headphones is not necessarily stereo and can be monaural. Based on the preceding, we find that Nakagawa does not expressly” slip op. at 23

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

    “Based on the preceding, we find that Nakagawa does not expressly disclose stereo headphones and Wilson does. A person of ordinary skill would have had reason to add stereo output taught by Wilson to the headphones of Nakagawa. Pet. 61 (citing Ex. 1003 ¶ 236; Ex. 1005 ¶ 125; Ex. 1022 ¶¶ 3, 28). We credit the Williams Declaration and find that a person or ordinary skill would have understood that “wireless headsets (like Nakagawa’s) by 2008 were ‘often battery powered,’ ‘generally [by] rechargeable [batteries] so that the batteries can be re-used instead of being discarded after use.’” Ex. 1003 ¶ 237 (citing Ex. 1021, 1:5–13) (alterations in original). We further find that, although Nakagawa does not expressly disclose that its wireless headset is battery powered, power is needed for the electrical components and is suggested. See Pet. 62 (citing Ex. 1021, 1:5–13; Ex. 1003 ¶ 237); see also PO Resp. 23 (acknowledging a battery is needed to power common components of Wilson and Nakagawa). A person of ordinary skill would have reason to look to Wilson’s teaching of rechargeable batteries and a docking station for recharging wireless headsets. See Ex. 1003 ¶ 237.” slip op. at 23

  Patent outcomesUS 10,368,155 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,368,155
• U.D. Electronic Corp. v. Pulse Electronics, Inc.All claims unpatentable
  PTAB · Jul 22, 2020 · IPR2019-00511 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1, 3–9, and 11–16 are unpatentable; the motion to amend is denied for substitute claims 17, 20, and 21 as indefinite and granted for claims 18, 19, 22, and 23.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner states that a person of ordinary skill in the relevant art in of the ’302 Patent would have had a bachelor’s degree in electrical engineering, or mechanical engineering, with two or more years of experience designing connectors with EMI shielding. Pet. 24 (citing Ex. 1006 ¶¶ 55–58). Patent Owner’s definition of a person of ordinary skill in the relevant art is largely the same, urging a similar amount of education and experience, detailing “at least one year of experience with electrical connectors having internal electronic components, or at least two years’ experience with designing electrical connectors having internal electronic components.” Prelim. Resp. 18 (citing Ex. 2002 ¶ 27). We determined previously that the proffered definitions were largely the same and we determined them to be appropriate for the technology addressed by this proceeding. Inst. Dec. 7. Patent Owner subsequently agreed that “there are not meaningful differences between the parties’ definitions of a POSITA for purposes of this proceeding.” PO Resp. 9–10. We continue to adopt Petitioner’s definition for purposes of this decision.” slip op. at 10

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

    “After review of the proffered arguments, we remain persuaded that Petitioner’s construction is consistent with the plain and ordinary meaning in the context of the ’302 Patent. Patent Owner cites to multiple cases regarding the use of embodiments of the invention set forth in the specification to interpret limitations, despite claim language that could be interpreted more broadly. PO Resp. 16–18; PO Sur-reply 8–10 (citing Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1301–02 (Fed. Cir. 1999); Gen. Am. Transp. Corp. v. Cryo–Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996); Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1550–51 (Fed. Cir. 1996)). We determine that the portions of the specification cited by Patent Owner are not express or implied definitions of the term “effectively curved portion.” See Phillips at 1321 (the specification “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”). Patent Owner continues that “the only embodiments disclosed in the ’302 Patent have the substrates positioned substantially orthogonal and substantially vertical to the face of the housing,” and “the run of the conductors must make an approximately 90° change in direction to provide an electrical interconnection.” Id. at 18. Such arguments and case law would be pertinent if we interpreted claim 1, for example, as requiring substrates to not be orthogonal or if we required the “effectively curved portion” to not result in a 90° change in direction. We do not interpret claim 1 that way, so Patent Owner’s arguments are not persuasive. disclosure into a claim that does not recite such requirements. It is improper to add a limitation appearing in the specification and the drawings, but not appearing in the unambiguous language of a claim. See Gart v. Logitech, Inc., 254 F.3d 1334, 1343 (Fed. Cir. 2001). This is particularly true where the specification does not define the term at issue to include that additional limitation or otherwise include language requiring it. Claims 1–3, 7, 9, and 13–16 recite, in part, that the first conductors include an “effectively curved portion,” and each claim recites that limitation unambiguously. Although we acknowledge the varying embodiments disclosed in the ’302 Patent, we are persuaded that confining the “effectively curved portion” to be “approximately 90º” is overly narrow. We continue to determine that adopting Patent Owner’s construction would unduly limit the cited claims, i.e., claims 1–3, 7, 9, and 13–16, by importing limitations that are not part of the claims. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). As such, we continue to determine that “effectively curved portion” should be construed as any form of bend of the first conductors.” slip op. at 15

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

    “unpersuasive because the unfiltered connector of Hughes does not disclose an internal board, and that any combination of Kan with Hughes would result, at most, in the “second conductors,” but not the “first conductors,” being bent so that the internal conductors mate with the internal substrate. PO Resp. 43 (citing Ex. 2006 ¶¶ 124, 128). Patent Owner additionally asserts that the reorientation envisioned by the combination would add to material costs, reduce performance due to longer conductor runs, necessitate additional alterations, and provide no space savings or advantage. Id. at 43– 44 (citing Ex. 2006 ¶¶ 122, 129). Petitioner responds that the rationale for combining Kan and Hughes merely involves a design choice, and would apply a known technique to a known device to yield predictable results in an improved system. Pet. Reply 19–20 (citing KSR, 550 U.S. at 415–421). We agree with Petitioner. “The test for obviousness is not whether the features primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Any modification of a prior art device will result in changes thereto, as a matter of course; the question, rather, is whether there existed sufficient motivation for a person of ordinary skill to make the proposed modifications in light of the evidence of record. We find that Petitioner’s evidence of the benefits resulting from the combination, i.e., saving space for the connector assembly and reorienting the plug-receiving opening for insertion of a connector plug in accordance with the desired implementation based on where the housing is mounted, provide sufficient motivation to make these changes, and that Patent Owner’s arguments about the materials costs and possible reduced performance are insufficient to defeat the evidence of motivation to combine.” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Kan is the product of impermissible hindsight, and the combination would change the basic principles of operation of the connectors for which they were designed. PO Resp. 45–47. Patent Owner argues that “Hughes was designed to operate by mounting to an external circuit board, and Kan was designed to operate by engaging a circuit board inside of the housing,” and their combination would render Kan unfit for its intended purpose of supporting a compact size. Id. at 46–47. We do not agree. Mr. Baxter has acknowledged that Hughes and Kan are analogous technologies directed to the common problem in the art of incorporating a circuit board with a connector so that it may offer additional functions. See Ex. 2006, ¶¶ 145– 148. We disagree that the combination of Kan and Hughes would change combination of Kan and Hughes would not be the same as the individual connectors, and we are not persuaded that the size of Kan would need to be increased such that it would be unfit for its intended purposes. As such, we do not determine Patent Owner’s argument to be persuasive.” slip op. at 36

  Patent outcomesUS 6,773,302 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 6,773,302
• Volkswagen Group Of America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Jan 27, 2017 · IPR2015-01613 · APJ Stacey G White · IPR · Final written decision

  Claims 1–3, 7, 8, 11, 12, 14, 16, 17, 19, and 20 are unpatentable: claims 1, 2, 7, 8, 11, 12, 14, 16, 17, 19, and 20 over Ryoichi; claim 3 over Ryoichi and Mansell.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “in claim 12), 76:57–58 (claim 16). Thus, in each of the independent claims, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 15. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point. Petitioner contends that “truck access control device 64 is responsive to reprogramming signals from clearinghouse 66.” Id. at 17 (citing Ex. 1002, 8:61–67, Ex. 1006 ¶¶ 15). Petitioner, however, does not explain the import or impact of the signal sent from identification device 70. This is key because Kniffin states that “[i]n response to identification of the authorized user at the lock within the prescribed time period, a lock microprocessor CPU 30 instructs a lock mechanism 32 to unlock.” Ex. 1002, 3:64–66. In the fourth embodiment, access is based on the identity of a location and not that of an individual. See id. at 8:17–18 (“Each possible destination is assigned an identification number.”). Access is granted “[i]f the detected identification device corresponds to the first expected stop.” Id. at 8:30–31. Access is blocked if “the access control device . . . sense[s] either the absence of an identification device, or will sense an identification device that does not correspond to an authorized stop.” Id. at 8:39–45.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “In that 2007 filing, the term “signal” was defined as “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that this definition is instructive to understanding the proper scope of these claim terms. Thus, a first signal, for example, is an “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary and any such intermediary may append additional information to the received signals.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “in claim 12), 76:57–58 (claim 16). Thus, in each of the independent claims, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 15. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point. Petitioner contends that “truck access control device 64 is responsive to reprogramming signals from clearinghouse 66.” Id. at 17 (citing Ex. 1002, 8:61–67, Ex. 1006 ¶¶ 15). Petitioner, however, does not explain the import or impact of the signal sent from identification device 70. This is key because Kniffin states that “[i]n response to identification of the authorized user at the lock within the prescribed time period, a lock microprocessor CPU 30 instructs a lock mechanism 32 to unlock.” Ex. 1002, 3:64–66. In the fourth embodiment, access is based on the identity of a location and not that of an individual. See id. at 8:17–18 (“Each possible destination is assigned an identification number.”). Access is granted “[i]f the detected identification device corresponds to the first expected stop.” Id. at 8:30–31. Access is blocked if “the access control device . . . sense[s] either the absence of an identification device, or will sense an identification device that does not correspond to an authorized stop.” Id. at 8:39–45.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We, however, are not persuaded that Petitioner has put forth sufficient evidence to establish that the mere act of storing information in memory discloses the disputed limitation. The specification of the ’405 patent describes the “operational steps and/or sequence of operation of the apparatus and method of the present invention.” Ex. 1001, 32:10–11. In order “to prevent an unauthorized access” the system compares the received program command with “data which may be stored in apparatus program memory.” Id. at 32:40–48. Kniffin’s stored schedule of stops appears to be similar to the stored data described in the ’405 patent. The control device, however, is not responsive to the stored data, but rather it responds to the program code. See id. at 39:51–65. Thus, we are not persuaded that Kniffin’s disclosure of storing the schedule is sufficient to disclose the disputed limitation. Therefore, we are not persuaded that Petitioner has demonstrated that Kniffin discloses a first control device that is responsive to a second control signal. For the foregoing reasons we determine that Petitioner has not carried its burden to demonstrate by a preponderance of the evidence that independent claims 1, 12, and 16 are anticipated by Kniffin. By that same regard, we also are not persuaded that Petitioner has established the unpatentability of dependent claims 2, 3, 7, 8, 11, 14, 17, 19, and 20 as relates to the asserted grounds that include Kniffin. The various anticipation and obviousness grounds asserted for each of those claims relies upon the assertions and arguments discussed above in relation to Petitioner’s assertions regarding Kniffin’s disclosures as applied to the independent claims. Petitioner has not argued that the above discussed deficiency is remedied by arguments or evidence put forth in any of the other Kniffin-based grounds. Therefore, Petitioner has not satisfied its burden in relation to its assertions of unpatentability based on Kniffin as directed to claims 1– 3, 7, 8, 11, 12, 14, 16, 17, 19, and 20 of the ’405 patent. B. Analysis of Asserted Grounds Based on Ryoichi” slip op. at 14

  Patent outcomesUS 5,917,405 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 5,917,405
• Volkswagen Group Of America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Jan 27, 2017 · IPR2015-01610 · APJ Stacey G White · IPR · Final written decision

  Claims 3, 18, 65, 67, 68, 70, 73, 91, 94, 96, 103, 110, 116, 119, 120, and 205 are unpatentable, including as anticipated by Ryoichi and obvious over Ryoichi-based combinations.

  RulingsFinal written decision

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

    “For purposes of the Decision to Institute, we construed the term “control device.” Dec. 5–9. Neither party raised any concerns regarding this construction during trial. See PO Resp. 10–11; Reply 1. Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our construction for this claim term. For convenience, the claim construction is reproduced in the table below. Term Citations Construction Control Ex. 2002, 6 A device or a computer, or that part of a device or Device a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “In that 2007 filing, the term “signal” was defined as “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that this definition is instructive to understanding the proper scope of these claim terms. Thus, a first signal, for example, is an “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, 7 This information was modified by a Certificate of Correction issued July 1, 2003. See Ex. 1001, 95. information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device”; “second signal” to be “a signal sent by a second device”; and “third signal” to be “a signal sent by a third device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary and any such intermediary may append additional information to the received signals.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “generates the first signal and transmits the first signal in response to a second signal.” Ex. 1001, 106:51–54; see also id. 122:10–12 (similar language in claim 73), 141:38–40 (claim 205). Thus, in each of the independent claims, the first control device must respond to a signal from the second control device. Petitioner asserts that access control device 64 is the first control device and that clearinghouse 18 or 66 is the second control device. Pet. 12. Therefore, Petitioner must establish that Kniffin discloses that access control device 64 responds to a signal from the clearinghouse. We are not persuaded that Petitioner has a made a sufficient showing on this point. Petitioner alleges that “clearinghouse 66 transmits the schedule to the truck access control device 64 . . . where the schedule is stored in memory 68.” Id. at 14. Petitioner then makes the bare assertion that “Kniffin’s truck access control device 64 (the in-vehicle control device), located in the vehicle, is responsive to signals from clearinghouse 66 (the middle device), located remote from the vehicle.” Id. at 15. Petitioner also contends that “truck access control device 64 is responsive to signals from clearinghouse 66, as Kniffin discloses that truck access control device 64 may be reprogrammed by clearinghouse 66.” Id. at 15–16 (citing Ex. 1010, 8:61– 67, Ex. 1002 ¶¶ 11–13). Petitioner, however, does not explain why storing a schedule in memory or reprogramming a device discloses the recited device responsive to a second signal. Nor does Petitioner explain the import or impact of the signal sent from identification device 70. This is key because Kniffin states that “[i]n response to identification of the authorized user at the lock within the prescribed time period, a lock microprocessor CPU 30 instructs a lock mechanism 32 to unlock.” Ex. 1010, 3:64–66. In the fourth embodiment, access is based on the identity of a location and not that of an individual. See id. at 8:17–18 (“Each possible destination is assigned an identification number.”). Access is granted “[i]f the detected identification device corresponds to the first expected stop.” Id. at 8:30–31. Access is blocked if “the access control device . . . sense[s] either the absence of an identification device, or will sense an identification device that does not correspond to an authorized stop.” Id. at 8:39–45.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Patent Owner argues that one of ordinary skill in the art would not have modified Ryoichi to use the Internet because “conventional wisdom at the time of the effective filing date of the ‘076 Patent was that the Internet was not secure and there were also many impediments on the use of the Internet.” PO Resp. 37. In support of this position, Patent Owner cites a Morgan Stanley “Internet Report” from 1996 which noted concerns about security and potential limits to Internet access. Id. at 26 (citing Ex. 2007, 24). Petitioner responds by asserting that Patent Owner “admitted that, in March of 1996, a person of ordinary skill in the art as would have appreciated the Internet as an improved transmission system.” Reply 10 (citing Pet. 35–36). Specifically, Petitioner is directing us to Patent Owner’s Response to an Office Action in the reexamination of the ’363 patent. As mentioned above, the ’363 and ’076 patents are related patents that share common ancestors. See § II.B. There, Patent Owner asserted that one of ordinary skill in the art “would appreciate the infrastructure of the Internet and its improved signal transmission capabilities, as compared to the [RF] system used in Kniffin, as being a superior system for transmitting a signal or message from one location to another.” Ex. 1024, 11. Petitioner also asserts that the cited Morgan Stanley Internet Report does not represent the conventional wisdom of one of ordinary skill in the art because it was prepared to help investors ascertain risks and rewards related to the Internet and Patent Owner does not show that one of ordinary skill would have looked to such a document. Reply. 12 (citing Ex. 2007, 4). We are persuaded by Petitioner’s arguments. Patent Owner’s statements during reexamination of the ’363 patent as to the knowledge of one of ordinary skill are more directly related to the issues at hand than an investment report. We agree with Petitioner’s analysis of Ryoichi and the teachings of Spaur, Behr, or Kubler. Thus, we find that one of ordinary skill in the art would have been motivated to improve Ryoichi’s system with the known methods of transmitting information over the Internet. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1326–27 (Fed. Cir. 2008).” slip op. at 22

  Patent outcomesUS 6,542,076 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,542,076
• Apple Inc. v. Chestnut Hill Sound Inc.All claims unpatentable
  PTAB · Jan 10, 2017 · IPR2015-01465 · APJ David C Mckone · IPR · Final written decision

  Claims 1–5, 9–27, 31, and 35–58 are unpatentable as obvious over VDM alone or in combination with the specified references.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “1. Level of Skill in the Art Relying on Dr. Wigdor’s testimony, Patent Owner contends that a person of ordinary skill in the art “would have had at least a Bachelor of Science degree in electrical engineering or computer science and at least two years of experience in the design of networked multimedia systems.” PO Resp. 6 (citing Ex. 2109 ¶ 12). Petitioner does not propose a level of ordinary skill. Nevertheless, Petitioner’s expert, Dr. Mercer, testifies as to a level of skill in the art that is not substantially different from Patent Owner’s proposal. Ex. 1003 ¶ 19. On the complete record, we adopt Patent Owner’s statement of the level of skill in the art.” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerationsNot shown unpatentable

    “development from an award winning GeorgeTM system developed” by Patent Owner and that, when launched, the George system “quickly achieved critical acclaim, winning a Best of Show award at the Macworld tradeshow, a ‘Play of the Year’ award from Macworld Magazine, and PC Magazine’s Editor’s Choice Award.” PO Resp. 1. Patent Owner argues that the George system “was widely distributed through Petitioner’s stores and other retailers like Best Buy.” Id. Patent Owner relies on a two-page document purporting to be a press release, by Patent Owner, discussing the awards. Ex. 2101. However, Exhibit 2101, Patent Owner’s only cited evidence, offers almost no information about the details of the George system or the awards. Thus, Patent Owner’s evidence is insufficient for us to ascertain the relevance (if any) of the George system, and its alleged success, to the claims of the ’063 patent. Patent Owner further contends that, in related litigation, Patent Owner asserts that Petitioner used prelaunch meetings with Patent Owner to learn about the George system and copy the invention. PO Resp. 2. Patent Owner does not cite to evidence supporting this argument. Thus, we are unable to ascertain the relevance of alleged prelaunch meetings between Petitioner and Patent Owner to the obviousness allegations in this proceeding. On the complete record, Patent Owner has not met its burden of introducing sufficient evidence of objective indicia of nonobviousness. Nevertheless, we weigh what evidence Patent Owner has introduced and find that it does not evidence nonobviousness.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “media content control signal wirelessly. Pet. 23. Nevertheless, Petitioner argues that wireless transmission would have been obvious. Id. at 23–25. Petitioner argues that VDM itself suggests wireless transmission in its use of lightning bolts to represent connections among components in Figure 1. Id. at 23–24. Petitioner further lists several references that it argues show that “wireless networking techniques were well known and in widespread use in communications networks.” Id. at 25 (citing Exs. 1005, 1007, 1011– 12). According to Petitioner, a skilled artisan would have modified VDM to use wireless techniques “to provide users of the network with ‘increased mobility’ and ‘flexibility’ when accessing the network,” and “to lessen ‘the need for expensive wiring or rewiring’ in the generic network of [VDM].” Id. (quoting Ex. 1012, 2:3–9; Ex. 1013 ¶ 6). Patent Owner does not dispute these allegations. We are persuaded by Petitioner’s evidence and argument. On the complete record, we find that using wireless networking to send media content control signals would have been no more than combining prior art elements according to known methods to yield predictable results. See KSR Int’l co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 34

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

    “In sum, as explained above, VDM teaches each limitation of claim 1 except for sending a media content control signal “at least in part wirelessly.” Petitioner has introduced persuasive evidence that a skilled artisan would have had reasons to modify VDM to arrive at claim 1. We have weighed Petitioner’s evidence against the objective indicia of nonobviousness presented by Patent Owner. We do not find Patent Owner’s objective evidence of nonobviousness to be sufficient to overcome Petitioner’s strong prima facie case of obviousness. See Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). In sum, upon consideration of all the evidence, including the evidence in the Petition and Patent Owner’s Response, including objective indicia of nonobviousness, we conclude that Petitioner has proved by a preponderance of the evidence that claim 1 would have been obvious over VDM. Independent claims 22, 31, and 51 are substantially similar to claim 1. We note that claims 22 and 51 do not include displaying a “list of content” or transmitting a control signal “at least in part wirelessly,” as recited in claim 1 and discussed above. As noted above, Petitioner marshals the same evidence for independent claims 22, 31, and 51, referring back to its analysis of claim 1. Pet. 33–36. Likewise, as noted above, Patent Owner presents responsive evidence and argument primarily as to claim 22, incorporating that analysis for claims 1, 31, and 51. We have considered the parties’ respective evidence and argument, including Patent Owner’s objective indicia of nonobviousness. For the reasons given for claim 1, we conclude that Petitioner has proved by a preponderance of the evidence that claims 22, 31, and 51 would have been obvious over VDM.” slip op. at 37

  Patent outcomesUS 8,725,063 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,725,063
• Xilinx, Inc. v. PLL Technologies, Inc.All claims unpatentable
  PTAB · Apr 18, 2016 · IPR2015-00148 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–10, 12–14, and 16–20 are unpatentable, principally as obvious over the listed combinations of Nienaber, Young, and additional references.

  RulingsFinal written decision

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

    “We are not persuaded by Patent Owner that the claims of the ’122 patent should be limited to digital systems. We begin our analysis with the intrinsic evidence from the ’122 patent. See In re Translogic Tech., 504 F.3d at 1257. First, the language of the claims provides no basis, and Patent Owner directs us to none, for limiting the claims to uses in a digital system. Indeed, as Patent Owner conceded, the structural components of the circuit that are recited in the independent claims, i.e., the reference path, the feedback path, the oscillator, and the delay circuits, are not limited to digital applications. Tr. 42:21–44:9. As for the Specification, Patent Owner does not direct us to any criticism of non-digital systems or specific statements in the Specification that Patent Owner contends explicitly or implicitly limit a clock or the invention to digital systems. Instead, Patent Owner states that “the ʼ122 Patent does not describe or contemplate non-digital applications of its ‘clock.’” PO Resp. 20 (citing Ex. 2002 ¶ 46). However, the only support cited for this contention, i.e., Paragraph 46 of Dr. Hayes’s Declaration, states, without any citation: “The ’122 Patent does not describe or contemplate non-digital applications of its ‘clock’ and thus fully supports the fact that a ‘clock’ signal is for a digital system.” Ex. 2002 ¶ 46. We do not find this conclusory testimony, without any citation or explanation, to be entitled to any weight. 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.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”). Patent Owner also asserts that Dr. Alpert recognizes that the ’122 patent does not describe or contemplate non-digital applications of its clock. PO Resp. 20 (citing Ex. 1010 ¶¶ 27–29). However, we do not understand Dr. Alpert’s testimony as stating such a conclusion. Dr. Alpert describes certain problems in personal computers, and concludes that “[t]he ’122 patent aims to provide a solution to problems like that described above for controlling timing to transfer data between components.” Ex. 1010 ¶ 29. This testimony establishes one problem that the ’122 patent seeks to solve, but does not support Patent Owner’s conclusion that the ’122 patent does not contemplate any non-digital applications for its circuit. We have reviewed the ’122 patent and have been unable to locate any mention of the term “digital” or reference that the circuit is limited to only certain particular uses. The ’122 patent describes clocks broadly as periodic signals used for timing control. See, e.g., Ex. 1001, 1:19–35 (describing a clock synthesizer as generating an output clock based on an input clock, where both input and output clocks are periodic signals having “cycles”), 2:45–3:20 (discussing clock signals as periodic signals). Indeed, the Specification broadly states that “[t]he present invention enjoys particular advantages in applications where a predictable input-output phase relationship is desired, particularly where the output frequency is an integral or one-half an integral multiple of the input frequency.” Id. at 1:48–53. Thus, the Specification describes its potential uses very broadly. Such a broad discussion of potential uses supports Petitioner’s construction.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Means-Plus-Function Limitations Independent claim 7 recites several limitations that Petitioner contends should be interpreted as means-plus-function limitations subject to 35 U.S.C. § 112 ¶ 6.9 Pet. 11–13. In our Decision to Institute, we found certain functions and corresponding structure for those limitations. Dec. Inst. 9–10. Neither party disputes this determination. Based on a full record, we see no reason to alter our preliminary construction for these elements and adopt them for purposes of this Final Written Decision. Id.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “With respect to “programmable delay circuit,” as we have construed it, Petitioner admits that Nienaber does not disclose a delay circuit that is “capable of accepting data or instructions, or both, to alter the delay.” Tr. 14:3–25. Although Nienaber discloses “adjustable” delay circuits, it does not disclose delay circuits that can accept data or instructions, or both, to alter the delay, based on the correct construction of “programmable delay circuit.” Id. Thus, we determine that Petitioner has not shown by a preponderance of the evidence that Nienaber anticipates claim 1. Petitioner’s contentions that Nienaber anticipates claims 7–10 and 14 rely on the Nienaber’s disclosure of adjustable delay circuits that we found inadequate with respect to claim 1. Pet. 20–27. Thus, we are persuaded Petitioner has not shown by a preponderance of the evidence that claims 1, 7–10, and 14 of the ’122 patent are anticipated by Nienaber.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We do not agree with Patent Owner that the combination of Nienaber and Young would render Nienaber unsatisfactory for its intended purpose or that a person of ordinary skill would not have been motivated to combine Nienaber and Young. To begin with, we find that Patent Owner’s identification of the intended use of Nienaber is too narrow. We agree with Petitioner (Pet. Reply 22–23) that Nienaber discloses generally a “phase shifting means” for the purpose of “enabl[ing] video information to be shifted both up and down on a video display without undesirable side effects.” Ex. 1003, Abstract. Thus, we agree with Petitioner’s reasoning that, even incorporating Young without any of the modifications a person of ordinary skill would naturally make (discussed below), the combination would still be sufficient to accomplish Nienaber’s purpose. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.”). In addition, we determine that Patent Owner’s argument appears to be premised, at least in part, on an erroneous assumption that the delay elements of Young would be bodily incorporated into the circuit of Nienaber. However, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)); see also In re Mouttet, 686 F.3d at 1332 (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” (collecting cases)). Thus, we find Young’s teaching of “programmable” delay circuits is sufficient to suggest to a person of ordinary skill that “programmable” delay circuits could be substituted, not just the precise circuit disclosed in Young. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (noting that “[a] reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect” (quoting EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphases omitted)).” slip op. at 29

  Patent outcomesUS 6,356,122 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,356,122
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCAll claims unpatentable
  PTAB · Dec 9, 2015 · IPR2014-00921 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 23, 24, 60, and 61 are unpatentable as obvious over Robertson and Ungerboeck; claims 23 and 60 were not shown anticipated by Palicot.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “It is clear from the record evidence before us that, in the context of the ’783 patent, a connection between two components is not one that is considered properly as “direct” if there is an interleaver between those components. We understand that an “interleaver” is a structure that provides extensive reordering of data. For instance, record evidence characterizes a particular interleaver as a “pseudorandom block scrambler” that reads out data “in a specified permuted order.” Ex. 1009, 29. Indeed, the ’783 patent itself characterizes an interleaver as a “pseudo-random block scrambler” that operates to output data “in a specified (fixed) random order.” Ex. 1001, 5:57–61. In that respect, it is further understood from the ’783 patent that there are extensive considerations that go into the design of interleavers and the effect that a given interleaver has on the configuration, order, and characteristics of data. See id. at 9:53–13:54. Thus, the operations of an interleaver appear to constitute complex data reordering schemes where the “pseudorandom” scrambling of data is, at least in some cases, the desired goal. As noted above, in the context of an inter partes review, the Board construes claim terms based on their broadest reasonable construction that is consistent with the underlying specification. Here, with that guidance in mind, we do not discern that Intellectual Ventures’s position that the claim terms in question should be construed narrowly to prohibit any intervening structure that performs any type of operation that may be regarded as manipulating data or changing the order of data in some aspect, regardless of the nature or extent of the data reordering. To that end, while the reordering operations provided by an interleaver are not encompassed by “directly” connecting elements, we are not satisfied that Intellectual Ventures has provided a suitable evidentiary basis for its position that any intervening data reordering, of any kind, is the benchmark for evaluating whether structures are directly connected to one another. It also is clear from the Specification of the ’783 patent, and as we observed in our Decision instituting trial (Inst. Dec. 12–13), that a direct connection does not prohibit some intervening structures, such as the intervening presence of a switch. In considering the totality of the record before us, we do not discern that there is cause to deviate from the construction we initially adopted for “directly coupled”/“signal directly from” as a part of the Decision to institute trial. Accordingly, for purposes of this Final Written Decision, we maintain the understanding that components that are “directly” coupled to one another, or which receive signals “directly” from one another, excludes the presence of an interleaver between those components, but does not prohibit any and all intervening structures, such as a switch.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “Thus, the declarants are largely in agreement as to the level of ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “contends that Robertson discloses all the features of claims 23 and 60 (Pet. 49–54) with the exception of those features directed to “multilevel modulation” (id. at 53). In that regard, Ericsson contends that Robertson is directed to “binary modulation” rather than “multilevel modulation,” but points to Ungerboeck as disclosing multilevel modulation. Id. Referencing the declaration testimony of Mr. Mark Lanning (Ex. 1003), Ericsson contends the following: As noted by Mr. Lanning, it would have been obvious to one of ordinary skill in the art to combine Robertson and Ungerboeck to replace the binary modulation in Roberton’s coding system with multilevel modulation taught by Ungerboeck because it would yield the predictable result–that more data bits correspond to a modulated symbol, thereby enhancing bandwidth efficiency. Id. at 53–54. To that end, we understand that Ericsson proposes, and Mr. Lanning testifies (Ex. 1003 ¶ 230), that one of ordinary skill in the art would have had reason to substitute Ungerboeck’s multilevel 8-PSK modulator for Robertson’s binary modulator so as to enhance bandwidth efficiency.” slip op. at 18

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16

  Patent outcomesUS 6,023,783 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,023,783

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.