• R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V.No claims unpatentable
  PTAB · Dec 19, 2017 · IPR2016-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 2 and 3 were not shown unpatentable as obvious over Hon ’043 and Whittemore because the petitioner did not establish a sufficient motivation to combine them.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “ordinary skill in the art. Pet. 11; PO Resp. 7–8. In light of the evidence before us, we find that the references themselves represent the level of ordinary skill in the art, and that we need not explicate it further. See Okajima v. Bourdeau, 261 F.3d 12350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art usually is evidenced by the references themselves); In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 2016, 61:8–19. Petitioner, however, does not provide adequate explanation as to why a person having ordinary skill in the art would think that to be the case. In reaching that determination, we credit Mr. Meyst’s testimony over that of Dr. Sturges.” slip op. at 14

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

    “Ex. 2015 ¶ 98 (internal citations omitted). Dr. Sturges, however, stated at his deposition that he did not do any calculations to determine how factors such as the speed and pressure of the airstream, and the rate of change of the pressure of the airstream as it travels through the ejection holes and into the atomization chamber, would affect the dispersion of the droplets ejected from the ejection holes towards the heating wire in Hon ’043. Ex. 2016, 64:5–66:4. In light of the variables that can affect how the droplets could disperse upon ejection from the ejection holes, Petitioner has not explained adequately why a person having ordinary skill in the art would understand that only a small amount of droplets would contact Hon ’043’s heating wire and that the atomization described in Hon ’043 is inefficient.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented with only the references, and who is normally guided by then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983); see also Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, 512 F.3d at 1374 n.3 (“We must still be careful not to allow hindsight reconstruction of the references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”)). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s proposed rationale relies upon general and conclusory statements from Dr. Sturges regarding thermal dynamics that are not sufficiently supported in the record, and instead appear to be based on impermissible use of hindsight after review of the ’742 patent, rather than on a supported reason to modify the heating configuration in Hon ’043’s atomizer. See KSR, 550 U.S. at 421 (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). In order to establish a motivation to combine the references, Petitioner needed to explain sufficiently what would have led a person of ordinary skill in the art at the time of the invention to consider modifying the Hon ’043 atomizer to include a “heating wire wound on a part of the porous component” as recited in claims 2 and 3. Petitioner failed to provide such an explanation.” slip op. at 16

  Patent outcomesUS 8,365,742 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 8,365,742
• Riverbed Technology, Inc. / Dell Inc. et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · Oct 30, 2017 · IPR2016-00978 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1–4, 6, 10–16, 18–20, and 22 are unpatentable as obvious over Wang, Matsubara, and Franaszek under § 103(a).

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioners’ Declarant, Dr. Creusere, opines that a person of ordinary skill in the art relevant to the ’513 patent, and in the time period around 2001, would have been a person with “at least a bachelor’s degree in computer science, computer engineering, electrical and computer engineering, electrical engineering, or electronics and at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” Ex. 1013 ¶ 25. Patent Owner does not offer any alternative explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’513 patent. Based on our review of the ’513 patent, the types of problems and solutions described in the ’513 patent and cited prior art, and the testimony of Petitioners’ Declarant, we adopt and apply Dr. Creusere’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. We also note that, in this case, the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “We are not persuaded by Patent Owner’s arguments. The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Under the correct [obviousness] analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). “[A]n analysis of obviousness . . . may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). Here, Wang teaches that if a file format is not identified or recognized, then the file is compressed with a default lossless compression algorithm. Pet. 19 (citing Ex. 1009, 4). Dr. Zeger, Patent Owner’s Declarant, agreed that a file format potentially could refer to a data type. Pet. Reply 13 (citing Ex. 1014, 87–88). With respect to Patent Owner’s argument that Wang never fails to recognize any data types, Franaszek recognizes the issue and teaches the use of a default compression algorithm if a data type is not recognized. Pet. 22 (citing Ex. 1011, 5:49–54). This is consistent with the holding in KSR, that any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed by” slip op. at 23

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

    “We think Patent Owner’s argument and its reliance on In re Schweickert is misplaced here. First, as discussed supra, Petitioner combines Matsubara with Wang to address an automatic recognition issue and combines Franaszek with Wang to address a known issue when there is a lack of recognition. These are distinct issues with different reasons for their combination. In particular, Petitioner’s rationale for combining Matsubara and Wang is based on incorporating Matsubara’s construction of histograms using a file’s byte pattern, and then analyzing the pattern to determine the data type as the method for Wang to “automatically” determine the data type of a file. Pet. 22–24. Petitioner relies on Franaszek’s techniques for using a default compression algorithm to compress data types that may not be recognized or identified by Wang. Id. at 24–26. Second, in In re Schweickert, the Board affirmed the Examiner’s conclusion of obviousness, relying on a combination of two prior art references, with the bare assertion that “modifying [the references] would have been a predictable use of prior art elements according to their established functions—an obvious improvement.” In re Schweickert at 993. The Court found that there was no sufficient justification in the opinion by the Board why the combination would provide the asserted “obvious improvement.” Id. at 994. Moreover, the Court noted that it was apparent that substitution would “defeat[] the purpose” of the prior art the Board contended would be obvious to modify. Id. The Court found that even if the technology of the second prior art reference were “readily applicable” to the first prior art reference, there still needed to be an explanation as to “why a skilled artisan would still have a reason to combine [the references] to achieve the claimed invention,” which the Board did not do. Id. at 995. Here, unlike in Schweickert, Petitioner provided evidentiary support for modifying Wang’s method for automatically compressing files using an identification technique (Matsubara) since Wang teaches automatically recognizing the data type in the file, (Ex. 1013 ¶ 77) and using Franaszek’s default lossless compression algorithm when a file’s data type is not recognized because Wang teaches to use a default lossless compression algorithm when a file format is not identified or recognized (id. ¶ 86). Thus, Petitioner has articulated sufficient reasoning why a POSITA would have combined the teachings of Wang and Matsubara, as well as reasons why a POSITA would have also combined the teachings of Wang and Franaszek addressing a distinct issue, and how those combinations achieve the claimed invention. Accordingly, we are persuaded by Petitioner’s evidence and arguments that a person of ordinary skill in the art would have had reason to combine (1) Wang’s teaching to use a default lossless compression algorithm, such as LZW, when the file format is not recognized with Franaszek’s teaching of using a default compression method when the data type is not recognized; and (2) Wang’s method for automatically compressing computer files with Franaszek’s techniques for using a default compression algorithm to compress data types that are not recognized or identified. See Pet. 24–26, 30–42. Petitioner’s rationale for combining Wang and Matsubara is based on using Matsubara’s data analysis technique in Wang’s step of automatic data recognition, whereas Petitioner’s rationale for combining Wang and Franaszek is directed to both references suggesting default compression methods for unrecognized data. See Pet. 22–24, 30–42. Thus, each of the aspects that would be used from Matsubara and Franaszek with Wang are different. Therefore, we are persuaded by Petitioner’s evidence and arguments that one of ordinary skill in the art would have been led to combine the teachings of Wang, Matsubara, and Franaszek in the manner articulated by Petitioner.” slip op. at 28

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

    “We agree with Patent Owner’s position that the file extension names and control information in Wang appear to be “descriptors” of a data block. Nevertheless, we are persuaded by Petitioner that the combination of Wang, Matsubara, and Franaszek teaches the recited analysis steps. Specifically, we are persuaded that Wang recognizes the format of a file by the extension name of the file and determines whether the file is a simple file or a compound file, then teaches automatically recognizing the type of data contained in the file and automatically compressing the data using a compression algorithm suitable for the type of data identified. Pet. 32 (citing Ex. 1009, 4; Ex. 1013 ¶ 115). In addition, we are persuaded Matsubara teaches determining a file’s data type based on an analysis of its byte patterns (i.e., something other than a descriptor) (Ex. 1011, 3:61–67), while Franaszek teaches analysis of a sample taken from uncompressed data appended to a data block and compressing a data block with a default compression algorithm when the data type is not identified (Ex. 1011, 4:30– 35, 5:18–21, 5:53–54, Fig. 2). Furthermore, based on the testimony of Dr. Creusere (Ex. 1013 ¶ 116), histograms of byte patterns of a file in Matsubara function as an analysis of a data block and not merely as a descriptor of the data block. Accordingly, we find the combination of Wang, Matsubara, and Franaszek teaches the recited analysis steps as limited by the “wherein” clauses of independent claims 1 and 15.” slip op. at 31

  Patent outcomesUS 8,643,513 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,643,513
• Arris International PLC / Arris Global Ltd. et al. v. Sony CorporationAll claims unpatentable
  PTAB · Sep 25, 2017 · IPR2016-00835 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1–4 are unpatentable as obvious over Wasilewski, Rosenberger, and Ishikawa, and independently over Wasilewski and Ejima.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed patent owner constructionDecided for patent owner

    “The parties appear to agree, at least for purposes of this proceeding, on the broadest reasonable construction of the control means limitation. First, there is no dispute that the “control means” limitation is subject to means-plus-function treatment pursuant to 35 U.S.C. § 112 ¶ 6.6 Pet. 18–19; PO Resp. 1. Second, there is no dispute that the function of this term is coextensive with the language of the claim—“controlling the transmission signal receiving means to receive the transmission signal of a channel indicated by the channel number being displayed when the command received by the command receiving means is broken.” Pet. 18; PO Resp. 16. Third, in post-institution briefing, the parties appear to agree that, for purposes of this proceeding, the corresponding structure disclosed in the ’643 patent is “a CPU implementing the algorithmic structure described in the specification at least at 7:58-8:10; and 9:15-30, and equivalents thereof.” See, e.g., Reply 3; Sur-Reply 2; Tr. 4:10–19, 23:3–16.” slip op. at 7

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

    “claim 1, wherein the channel number display control means switches the channels in the order of magnitude of the channel numbers.” Ex. 1001, 10:31–33 (emphasis added). In the interest of clarity, we address the broadest reasonable construction of this term, which was briefly discussed at the oral hearing. In the context of the claim language, we are persuaded that the broadest reasonable construction of “order of magnitude of the channel numbers” includes the “sequential order” of the channel number. See Tr. 9:1–15 (Petitioner’s counsel agreeing with this construction), 24:7–12 (Patent Owner’s counsel declining to give an opinion on the issue). The specification does not explicitly define the term, but is consistent with a construction that includes an arrangement of items by relative size. See, e.g., Ex. 1001, 1:61–63 (“The channel number display control means may switch the channels in the magnitude order of the channel numbers.”); 8:54–57 (“[T]he service_ids are stored in the order of the magnitude thereof, and incrementing the pointer by one and acquiring the service_id in the area indicated by the pointer can acquire a second larger service_id.” (emphasis added)). Accordingly, we adopt a broadest reasonable construction of “order of magnitude of the channel numbers” that includes the “sequential order” of the channel number.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “set forth by Dr. Samuel H. Russ. Pet. 8. Dr. Russ states that such a person would have had “at least a bachelor’s degree in digital electronics, electrical engineering, computer engineering, computer science, or a related technical degree with several years (e.g., 2–5 years) of post-degree experience in a similar field” or, alternatively, “an advanced degree, such as a Master’s Degree, in digital electronics, electrical engineering, computer engineering, computer science, or a related technical degree.” Ex. 1003 ¶ 36. Patent Owner does not address this issue. See PO Resp.; Sur-Reply. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art raised in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art itself may reflect an appropriate level of ordinary skill in the art). Accordingly, we adopt Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “been motivated to combine the teachings of Wasilewski, Rosenberger, and Ishikawa. See Pet. 34–36. Specifically, at the time of the invention, a person of ordinary skill would have recognized that the time required to change and tune channels in a digital system was noticeably longer than that for analog channels. Ex. 1001, 1:28–36; Ex. 1007, 3; Ex. 1015, 2:59–65, 3:48–56; Ex. 1017, 1:16–20. Such artisan would have been motivated to simplify and quicken this process, especially given the proliferation of channels and services throughout the industry. Ex. 1003 ¶ 202. Because a skilled artisan would have known about both analog and digital systems, it would have been obvious to look to Rosenberger’s analog solution to this problem and apply the same technique to the digital receiver of Wasilewski. Id. ¶¶ 203–204. We credit Dr. Russ’s unrebutted testimony that such combination would be “very simple from a technical standpoint,” requiring “essentially . . . a change in software to prevent the system from tuning a new channel while a channel-change button is being held down.” Id. ¶¶ 205–207. A preponderance of the evidence, therefore, shows that this combination is nothing more than “the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).” slip op. at 31

  Patent outcomesUS 6,084,643 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,084,643
• NXP USA, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00684 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 13–15, 18–20, 23–25, 36, 37, 40, 42, 43, and 46 are unpatentable under § 103 over Ritter combined with either version of the RFID Handbook.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 2–5). Under the broadest reasonable construction standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony 12 Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The case for not reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 2–5). Under the broadest reasonable construction standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony 12 Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The case for not reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “three to five years of industrial or academic experience in working with wireless communication technology, including radio frequency identification (RFID) devices and systems. Pet. 12–13 (citing Ex. 1303 ¶¶ 28-30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 24). We see no compelling reason to apply a different level of skill than that accepted by both parties, and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 16

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “unsupported. For example, NFCT identifies Dr. Mihran’s testimony that Ritter’s device “simulates a CIC transponder” as conclusory. Id. at 21–22 (citing Ex. 1303 ¶¶ 44, 46). To the contrary, Dr. Mihran provides sufficient explanation for his opinion and identifies enough supporting evidence. Dr. Mihran explains that Ritter describes an operating mode where a mobile 27 device is “inductively fed” by another mobile device, which indicates that the second device “generates the magnetic field that powers” the first device. Ex. 1303 ¶¶ 46–47 (citing Ex. 1304A, 11, 13). He further explains that Ritter discloses this operating mode may be used to “exchange data inductively” between the devices, indicating that the second device generating the magnetic field is operating as a “reader” that powers the first device, which operates as a “transponder.” Id. ¶ 47 (citing Ex. 1304A, 13). Further, Dr. Mihran identifies specific disclosures in Ritter, as well as similar disclosures in the RFID Handbook, regarding both “passive” and “active” load modulation. See id. ¶¶ 47, 50–54, 74. In Dr. Mihran’s expert7 opinion, a person of ordinary skill in the art consequently would have understood Ritter to teach that the mobile device acts as a transponder and transmits data via load modulation, i.e., by disturbing the magnetic field generated by the device acting as a reader. See id. Upon review, we disagree with NFCT that Dr. Mihran’s testimony is “conclusory, unsupported, and inconsistent with the cited references.” See PO Resp. 20– 21. To the contrary, we find Dr. Mihran’s expert testimony to be credible and persuasive.” slip op. at 27

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. Inside Secure And NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00683 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–3, 6–8, 10, 11, 28–31, 34, and 35 are unpatentable under § 103 over Ritter and the RFID Handbook, with Bashan added for claims 10, 28–31, 34, and 35.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “conclude that the broadest reasonable construction of “contactless integrated circuit reader” is simply “device configured to read data from a contactless integrated circuit.” NFCT appears to concede that this construction represents the plain meaning of the term (see PO Resp. 6), and we agree with NXP that the record evidence does not support reading the language “sent by load modulation” into that plain meaning (Pet. Reply 1–5). Under the broadest reasonable construction standard, claim terms generally are 12 given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The United States Court of Appeals for the Federal Circuit has “recognized ‘only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.’” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, NFCT does not persuasively advance a disavowal or lexicography theory, which always requires exacting standards of clarity. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). Absent lexicography or disavowal, the plain meaning of the term governs. See Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The case for not 13 reading “sent by load modulation” into the claims is particularly strong here, where, as NXP points out, certain claims of the ’770 patent reciting a contactless integrated circuit reader additionally recite load modulation, while others do not. Pet. Reply 2; see also SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including radio frequency identification (RFID) devices and systems. Pet. 13 (citing Ex. 1203 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 24). 16 We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 16

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “unsupported. For example, NFCT identifies Dr. Mihran’s testimony that Ritter’s device “simulates a CIC transponder” as conclusory. Id. at 21–22 (citing Ex. 1203 ¶¶ 44, 46). To the contrary, Dr. Mihran provides sufficient explanation for his opinion and identifies enough supporting evidence. Dr. Mihran explains that Ritter describes an operating mode where a mobile 28 device is “inductively fed” by another mobile device, which indicates that the second device “generates the magnetic field that powers” the first device. Ex. 1203 ¶¶ 46–47 (citing Ex. 1204A, 11, 13). He further explains that Ritter discloses this operating mode may be used to “exchange data inductively” between the devices, indicating that the second device generating the magnetic field is operating as a “reader” that powers the first device, which operates as a “transponder.” Id. ¶ 47 (citing Ex. 1204A, 13). Further, Dr. Mihran identifies specific disclosures in Ritter, as well as similar disclosures in the RFID Handbook, regarding both “passive” and “active” load modulation. See id. ¶¶ 47, 50–54, 76. In Dr. Mihran’s expert7 opinion, a person of ordinary skill in the art consequently would have understood Ritter to teach that the mobile device acts as a transponder and transmits data via load modulation, i.e., by disturbing the magnetic field generated by the device acting as a reader. See id. Upon review, we disagree with NFCT that Dr. Mihran’s testimony is “conclusory, unsupported, and inconsistent with the cited references.” See PO Resp. 20– 21. To the contrary, we find Dr. Mihran’s expert testimony to be credible and persuasive.” slip op. at 28

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

    “NXP also articulates sufficient reasoning with a rational underpinning why a person of ordinary skill would have been led to combine the relevant teachings of these references. Pet. 22; see KSR, 550 U.S. at 418. Supported by the testimony of Dr. Mihran, NXP contends a person of ordinary skill would have understood Ritter to teach an RFID system for communication via inductive coupling and that the RFID Handbook is “a compendium 27 describing the fundamentals and applications” of such systems. Pet. 22 (citing Ex. 1203 ¶¶ 44–49, 101) (internal quotation marks omitted). NXP asserts that the RFID Handbook describes the advantages of the elements of inductively coupled RFID systems and that those advantages would have motivated a person of ordinary skill to combine its teachings with the Ritter system. Id. Further, the evidence of record supports a finding that a person of ordinary skill would have found implementing such a combination to be “routine” and “straightforward,” recognizing that it would have yielded expected, predictable results. See id. (citing Ex. 1203 ¶ 101).” slip op. at 27

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. Inside Secure And NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00682 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 13–15, 18–20, 23–25, 36, 37, 40, 42, 43, and 46 are unpatentable as obvious over Gunnarsson combined with either RH-E or RH-G.

  RulingsFinal written decision

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

    “In light of the fully developed record before us, including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 30–33) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1116 ¶¶ 7–21) cited by NXP, we continue to agree with NFCT that the broadest reasonable construction of “antenna circuit” requires a coil. Nonetheless, for the reasons discussed above, we remain unpersuaded that it would be necessary or proper additionally to include “for radiating and/or receiving a magnetic field” in the construction of “antenna circuit.” Thus, we determine that the broadest reasonable construction of 12 “an antenna circuit,” as recited in the challenged claims, is “a circuit, including a coil.”” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including RFID devices and systems. Pet. 13–14 (citing Ex. 1103 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 4–5 (citing Ex. 2004 ¶ 26). 22 We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 22

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Regardless whether Gunnarsson describes a single method of performing backscatter or two separate methods, we are persuaded by NXP’s argument, supported by Dr. Mihran’s testimony, that Gunnarsson’s disclosure of “varying the impedance . . . in accordance with a pattern that corresponds to [a] transmitted data stream . . . by switching on and off [a] modulation circuit[] . . . intended to modulate the carrier wave for writing data into the transponder” teaches data-carrying or data representative pulses of an alternating signal, as recited in claims 14 and 24, or an excitation signal, as recited in claims 37 and 43. We credit, in particular, Dr. Mihran’s testimony, cited in the Petition, that a person of ordinary skill in the art would have understood Gunnarsson’s teaching of switching on and off its modulator to mean that it alternately applies and does not apply a carrier signal to the antenna—i.e., produces pulses or bursts of the excitation signal—and that a person of ordinary skill would have understood that this method applies data representative pulses of the excitation signal to the antenna circuit in the same way as the “pseudo active load modulation” method of the ’770 patent. Ex. 1103 ¶ 117 (cited at Pet. 34–35). Further, as explained in the above discussion of claim 1, we are persuaded that the 59 combination of Gunnarsson and the RFID Handbook would have rendered obvious implementing Gunnarsson’s reader using inductive coupling. We additionally credit Dr. Mihran’s testimony that it would have been routine for a person of ordinary skill in the art, in such an implementation, to use the RFID Handbook’s teaching of using a “subcarrier” to carry encoded data in implementing this method, as well as that “it would have been clear to a person of ordinary skill in the art that such a combination would work and provide the expected functionality.” Ex. 1103 ¶ 120 (cited at Pet. 35).” slip op. at 59

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “NFCT’s argument and Dr. Apsel’s opinion that Gunnarsson is not from the same field of endeavor both rest on an overly narrow definition of the field of the invention as “inductive coupling” systems. PO Resp. 59; Ex. 2004 ¶¶ 110–115. Although the specification and independent claims 13, 23, 36, and 42 of the ’770 patent recite inductive coupling, we remain persuaded by NXP’s evidence that the microwave-based communication system described by Gunnarsson is within the same field of endeavor as the inductive coupling system of the ’770 patent, namely, “contactless ID” or “RFID” systems. We also remain persuaded by that evidence that a person of ordinary skill in the RFID art would have regarded the selection of one technology over the other merely as being guided by the principles set forth in the cited prior art, such as based on a system’s desired communication range. See, e.g., Ex. 1106, 11–13, 21–22 (providing an overview of RFID systems, and explaining that systems with write and read ranges of up to 1 m “are based upon an inductive (magnetic) coupling between reader and transponder,” whereas systems “for ranges typically between 1 m and 10 m . . . operate using electromagnetic waves in the microwave range”); Ex. 1108A, 8, 11–14, 21 (same). As we previously explained (Dec. on Inst. 33), Bigio does not limit the field of endeavor to only what is recited in the claims. In that case, in spite of the claims at issue being explicitly limited to a “hair brush,” the court held that the Board had correctly concluded that “Flemming’s toothbrush was in Bigio’s field of endeavor because ‘the structural similarities between toothbrushes and small brushes for hair would have led 43 one of ordinary skill in the art working in the specific field of hairbrushes to consider all similar brushes including toothbrushes.’” Bigio, 381 F.2d at 1323, 1326; see also Wyers v. Master Lock, 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly . . . .”). Similarly, we conclude that the similarities between inductive coupling and microwave-based RFID systems would have led one of ordinary skill in the art working with inductive coupling systems to consider microwave-based prior-art systems as being in the same field of endeavor. Although NFCT has pointed out differences between those systems, we are persuaded that the identified distinctions are such that one of ordinary skill working with one system still would have considered the other system. Having determined that Gunnarsson is analogous art under the first” slip op. at 43

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00681 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–3, 6–8, 10, 11, 28–31, 34, and 35 are unpatentable under § 103 over Gunnarsson and the RFID Handbook, with Bashan added for claims 10, 28–31, 34, and 35.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “previously presented by NFCT in its Preliminary Response filed in this case (Paper 10, 7–9), we explained that we agreed with NFCT and the District Court that, in view of the inventors’ statements during prosecution, the inventors disclaimed devices having antenna circuits that do not include a coil, but that that point did not appear to be in dispute on the record before us, and we determined that there was no need to construe further the term “antenna circuit” at that stage of the proceeding. Dec. on Inst. 13 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”)). We further explained that, because challenged independent claims 1 and 28 already explicitly recite “an antenna circuit to generate a magnetic field” and “an antenna circuit that generates a magnetic field,” respectively (Ex. 1001, 12:29, 15:22), NFCT’s proposed inclusion of 12 “for radiating . . . a magnetic field” would not add meaningfully to the broadest reasonable interpretation of the term “antenna circuit.” Dec. on Inst. 13. Finally, we explained that although the specification of the ’770 patent describes an embodiment in which a magnetic field sent by a CIC reader appears by induction in the antenna circuit of another CIC reader (see, e.g., Ex. 1001, 9:10–13), we were not persuaded on the record then before us that the broadest reasonable interpretation of the term “antenna circuit” requires the language “for . . . receiving a magnetic field.” Dec. on Inst. 13– 14. In light of the fully developed record before us, including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 30–33) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1016 ¶¶ 7–21) cited by NXP, we continue to agree with NFCT that the broadest reasonable construction of “antenna circuit” requires a coil. Nonetheless, for the reasons discussed above, we remain unpersuaded that it would be necessary or proper additionally to include “for radiating and/or receiving a magnetic field” in the construction of “antenna circuit.” Thus, we determine that the broadest reasonable construction of “an antenna circuit,” as recited in the challenged claims, is “a circuit, including a coil.”” slip op. at 12

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

    “In light of the fully developed record now before us, particularly including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 34–47) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1016 ¶¶ 22–35) cited by NXP, as well as further consideration of the claim differentiation arguments presented in connection with claims 29 and 30, we are persuaded that “load modulation signal” is a term of art in the context of RFID systems, specifically referring to a signal that transmits data by disturbing the magnetic field of another device in an inductive coupling system, and that NFCT’s proposed construction, accordingly, is the broadest reasonable construction of that term. We also agree with NFCT that this construction does not conflict with the presumption that a limitation added by a dependent claim is not found in its base claim. See Liebel-Flarsheim, 358 F.3d at 910. Claim 29 depends from claim 28 and adds the limitation “wherein the reader is configured to apply a load modulation signal with two states to the antenna circuit when the reader operates in the second operating mode and when data is to be transmitted to the other reader.” Ex. 1001, 15:36–40. The consequence of applying NFCT’s construction to that claim, thus, is that the reader must be configured to apply a signal that transmits data by disturbing the magnetic field of another, unspecified device. Claim 30, however, additionally requires the reader to be configured to apply to the antenna circuit not merely such a “signal that transmits data by disturbing the magnetic field of 20 another,” but more specifically a signal “comprising pulses of an alternating signal, the duration of each pulse being longer than the period of the alternating signal” and that is “configured to disturb the magnetic field generated by the second reader and being configured to be detected by the second reader as if [it] were a load modulation signal applied to an antenna load modulation switch of a contactless integrated circuit.” Id. at 15:41–50. Because NFCT’s proposed construction does not simply read narrowing limitations from claim 30 into claim 29, we disagree with NXP’s contention that the claims of the ’770 patent do not support NFCT’s construction. Pet. Reply 3. Thus, we determine that the broadest reasonable construction of “load modulation signal,” as recited in challenged claims 1–3, 6, 8, and 29–31, is a “signal that transmits data by disturbing the magnetic field of another device.”” slip op. at 20

  • PTAB / AIA Trials › Real party in interest / privityOther

    “Semiconductors Netherlands B.V. as real parties in interest with itself for this proceeding. Paper 20, 1. NFCT identifies France Brevets, S.A.S., as a real party in interest with itself for this proceeding. Paper 8, 2; see supra note 2. evidence to support these assertions, namely documents that purport to be license agreements between NFCT and Inside Secure. See Ex. 2001; Ex. 2002. In light of NFCT’s representations, we have treated NFCT as Patent Owner throughout this proceeding and continue to do so for purposes of this Decision, as reflected by the caption.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including RFID devices and systems. Pet. 14 (citing Ex. 1003 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 26). We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 23

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. Inside Secure And NFC Technology, LLCNo claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00692 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3, 7, 11, 12, 14, 18, and 22 not shown unpatentable over either § 103 combination because Petitioner failed to establish key routing-table and header-field limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contends that a person of ordinary skill in the art at the time of the claimed invention would have “a minimum of a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field, and approximately two years of professional experience with data communications and routing, including in the context of wireless communications as applied to RFID systems, or other relevant industry experience.” Pet. 13 (citing Ex. 1003 ¶ 30). Patent Owner does not dispute” slip op. at 11

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

    “Although the Federal Circuit has endorsed application of the broadest reasonable interpretation in construing claims during postgrant proceedings before the Board, it has cautioned that such endorsement “is not to say, however, that the Board may construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). “Rather, ‘claims should always be read in light of the specification and teachings in the underlying patent.’” Id. (quoting Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)). In addition, “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Id. (citing Tempo Lighting Inc. v. Tivoli LLC, 742 F.3d 973, 978 (Fed. Cir. 2014)). The Federal Circuit has emphasized that, even under the broadest reasonable interpretation, “the Board’s construction ‘cannot be divorced from the specification and record evidence,’” id. (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)), and “‘must be consistent with the one that those skilled in the art would reach,’” Id. (quoting In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). With these principles in mind, we determine that Patent Owner’s proposed construction conforms with the broadest reasonable interpretation of “header field,” which excludes the “routing parameters” that are saved in the “routing table.” At the oral hearing, Patent Owner conceded that “if you look at the term header field in a vacuum without any context, it could mean” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “unpatentability, we determine that there are multiple deficiencies with Petitioner’s showing with respect to the proposed combination as related to specifically recited claim limitations. See 35 U.S.C. § 316(e); 35 U.S.C. § 312(a) (requiring the petition to identify “in writing and with particularity . . . the grounds on which the challenge to each claim is based”); see also 37 C.F.R. § 42.104(b) (requiring “a statement of the precise relief request”). Because we find that even the combination, if effected in the manner proposed by Petitioner, does not meet all limitations recited in the challenged claims, we do not reach the issue of whether Petitioner articulates sufficient reasoning with rational underpinning to effect the combination. See Pet. 21–28; PO Resp. 21–47. First, we agree with Patent Owner that Petitioner insufficiently shows that the combination it proposes teaches or suggests “using the routing channel number as an index to select the destination point to which the 7 Although we rely on illustrations of Petitioner’s proposed combination as set forth in the Reply because they are more clear, we find those illustrations consistent with the position taken by Petitioner in the Petition. See Pet. 24– 27. controller subsequently sends the data.” PO Resp. 59–61. This limitation is recited in both independent claims 1 and 12 in the context of searching for a destination point of the data in the routing table. Ex. 1001, col. 19, ll. 6–9, col. 20, ll. 40–43. In articulating how it draws a correspondence between elements recited in the claims and entries of its proposed routing table, Petitioner makes the following identifications: (1) the recited “routing channel number” corresponds to the channel identifier in the inbound VCI allocated to a first data path defined by the card access module and router; (2) the recited “source point” corresponds to “an identifier of the SAP associated with a smart card application on the contact smart card . . . in the inbound ‘VPI’; and (3) the recited “destination point” corresponds to “an identifier of an SAP associated with software . . . in the outbound VPI.” Pet. 36. With these correspondences, we agree with Patent Owner that the channel identifier in the inbound VCI cannot function as an “index to select the destination point” as the claims require because there is no unique association of the outbound VPI with the inbound VCI.8 PO Resp. 59. This is evident from the table provided in the Reply, and reproduced above, in 8 Although we agree with Petitioner, as explained above in Section II.C.3, that a construction of “routing table” does not require a “one-to-one correspondence between the routing channel number and each corresponding routing parameter,” see PO Resp. 57 (emphasis added), the nature of an “index” nevertheless requires a unique association of the index with what it indexes. That is, an “index to select the destination point” must uniquely identify the selected destination point, even if the same destination point can be selected by multiple indexes. A “one-to-one” correspondence would additionally require that each destination point be selected only by a single index. which the same VCIin value of “Chin 1” is associated with different values of VPIout, namely “CPU SAP 1” in the first row and “RF SAP 1” in the third row.” slip op. at 29

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner also contends that “even under [Patent Owner’s] improper interpretation, it would have been an obvious implementation choice to use unique channel numbers as discussed in §V.B [of the Reply], such that the destination point is selected only with the channel number.” Reply 27–28 (citing Ex. 1024 ¶ 123). We do not consider this argument because it goes beyond the scope of argument made in the Petition. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’ [as required by 35 U.S.C. § 312(a)(3)].”).” slip op. at 31

  Patent outcomesUS 7,905,419 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,905,419
• Whatsapp Inc. v. Triplay, Inc.No claims unpatentable
  PTAB · Aug 28, 2017 · IPR2016-00718 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 6, 7, and 15 were not shown unpatentable under § 103 over Coulombe, Bellordre, and Friedman because the petitioner did not adequately explain its motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not perceive any meaningful difference between the parties’ definitions of the technical field of the required experience. For example, both experts testify that the level of ordinary skill entails a bachelor’s degree in electrical engineering or computer science, and at least two years of experience in designing and implementing messaging systems. Ex. 1102 ¶ 16; Ex. 2102 ¶ 31. Based on the complete record, including our review of the ’677 patent and the types of problems and solutions described in the ’677 patent and cited prior art, we agree with both parties’ assessments of the level of ordinary skill in the art and our analysis would be the same using either definition. As noted, we have also considered the cited references as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “While Mr. Klausner makes broad statements that it would be “self- evident” to a skilled artisan or layperson to add Bellordre’s video messaging to Coulombe’s message adaptation system, we, nonetheless, observe that Mr. Klausner’s conclusion does not rest upon any reasoning or explanation in his declaration to support this position. Thus, we weigh Mr. Klausner’s testimony accordingly. See In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 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.”). Moreover, we disagree with Mr. Klausner’s testimony that requiring additional explanation would “ignore common sense.” See Ex. 1102 ¶ 34. Although “common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not,” Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007), the determination is made not after observing what the inventor actually did, but in light of the state of the art before the invention was made, see Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1298 (Fed. Cir. 2012). Here, on this record, Mr. Klausner does not address why it would have been “self-evident,” or, more importantly, common sense for a skilled artisan to modify Coulombe’s message adaptation system with Bellordre’s video content. Further, Mr. Klausner’s appeal to the “layperson” is also unavailing as Mr. Klausner does not direct us to any support in the record that a layperson would have this understanding of messaging systems. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360–61 (Fed.Cir.2011) (providing that the inquiry under § 103 is not whether the claimed invention is “sufficiently simple to appear obvious to judges after the discovery is finally made”). We recognize that the Board has subject matter expertise, but the Board cannot accept general conclusions about what is “self-evident” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability. See K/S Himpp v. Hear- Wear Technologies, LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014); In re Zurko, 258 F.3d 1379, 1385–86 (Fed. Cir. 2001).” slip op. at 19

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

    “Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references that were already on the record, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications. KSR, at 415–22. However, in relying upon common sense, our reviewing court has cautioned “that references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (2016) (emphasis added). Based on the complete record before us, we determine that Petitioner has not provided the necessary reasoned analysis and evidentiary support for the assertion that the incorporation of a video object for adaptation and delivery by Coulombe’s system would have been “common sense.” Neither the Petition nor Mr. Klausner’s declaration testimony explains how the asserted combination of Bellordre and Coulombe would be “self-evident,” either to a person of ordinary skill in the art or, alternatively, to a “lay person” as Mr. Klausner asserts. Further, Petitioner has not explained with reasoning or supporting evidence why a person of ordinary skill in the art, or a layperson, would consider video to be “more powerful” than text or still photos. Rather, Petitioner (and Mr. Klausner) concludes this to be true without providing any explanation as to why video is “more powerful,” or at a minimum, what “more powerful” means in the context of the field of technology and art at issue.” slip op. at 17

  Patent outcomesUS 8,874,677 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,874,677
• Whatsapp Inc. v. Triplay, Inc.No claims unpatentable
  PTAB · Aug 28, 2017 · IPR2016-00717 · APJ Frances L Ippolito · IPR · Final written decision

  Petitioner did not prove claims 1, 2, 11, 13, 14, 16, 17, 20, and 21 unpatentable as obvious over Coulombe, Bellordre, and Friedman.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We do not perceive any meaningful difference between the parties’ definitions of the technical field of the required experience. For example, both experts testify that the level of ordinary skill entails a bachelor’s degree in electrical engineering or computer science, and at least two years of experience in designing and implementing messaging systems. Ex. 1002 ¶ 16; Ex. 2002 ¶ 32. Based on the complete record, including our review of the ’677 patent and the types of problems and solutions described in the ’677 patent and cited prior art, we agree with both parties’ assessments of the level of ordinary skill in the art and our analysis would be the same using either definition. As noted, we have also considered the cited references as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “While Mr. Klausner makes broad statements that it would be “self- evident” to a skilled artisan or layperson to add Bellordre’s video messaging to Coulombe’s message adaptation system, we, nonetheless, observe that Mr. Klausner’s conclusion does not rest upon any reasoning or explanation in his declaration to support this position. Thus, we weigh Mr. Klausner’s testimony accordingly. See In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); see also 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.”). Moreover, we disagree with Mr. Klausner’s testimony that requiring additional explanation would “ignore common sense.” Although “common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not,” Leapfrog Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007), the determination is made not after observing what the inventor actually did, but in light of the state of the art before the invention was made, see Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1298 (Fed. Cir. 2012). Here, on this record, Mr. Klausner does not address why it would have been “self-evident,” or, more importantly, common sense for a skilled artisan to modify Coulombe’s message adaptation system with Bellordre’s video content. Further, Mr. Klausner’s appeal to the “layperson” is also unavailing as Mr. Klausner does not direct us to any support in the record that a layperson would have this understanding of messaging systems. See Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360–61 (Fed.Cir.2011) (providing that the inquiry under § 103 is not whether the claimed invention is “sufficiently simple to appear obvious to judges after the discovery is finally made”). We recognize that the Board has subject matter expertise, but the Board cannot accept general conclusions about what is “self-evident” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability. See K/S Himpp v. Hear- Wear Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014); In re Zurko, 258 F.3d 1379, 1385–86 (Fed. Cir. 2001).” slip op. at 19

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

    “Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references that were already on the record, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications. KSR, at 415–22. However, in relying upon common sense, our reviewing court has cautioned “that references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (2016) (emphasis added). Based on the complete record before us, we determine that Petitioner has not provided the necessary reasoned analysis and evidentiary support for the assertion that the incorporation of a video object for adaptation and delivery by Coulombe’s system would have been “common sense.” Neither the Petition nor Mr. Klausner declaration testimony explains how the asserted combination of Bellordre and Coulombe would be “self-evident,” either to a person of ordinary skill in the art or, alternatively, to a “lay person” as Mr. Klausner asserts. Further, Petitioner has not explained with reasoning or supporting evidence why a person of ordinary skill in the art, or a layperson, would consider video to be “more powerful” than text or still photos. Rather, Petitioner (and Mr. Klausner) concludes this to be true without providing any explanation as to why video is “more powerful,” or at a minimum, what “more powerful” means in the context of the field of technology and art at issue. Additionally, even assuming Petitioner’s general proposition to be true—that it is “self-evident” television is more powerful than text or photos, it bears mentioning that Petitioner has not explained how this sentiment demonstrates the “common sense” or “common knowledge” that a skilled artisan would have considered because Petitioner’s assertions are too general and fail to take into consideration the specific references, field of technology, and art at issue, which are directed to the design and implementation of systems for sending and receiving messages over a communications network, such as the Internet. In this context, Petitioner provides no reasoning beyond the bare statement that the asserted combination is “self-evident.” Moreover, Petitioner presumes that which is “self-evident” need not be explained. However, this is not the standard by which obviousness is shown. Indeed, “assumptions about common sense cannot substitute for evidence thereof.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).” slip op. at 17

  • Strike new argumentOther

    “We first observe that Petitioner does not rely on the MIME or SIMPLE standards for its obviousness challenge in the Petition. As a general matter, a reply is not an opportunity to supplement reasoning or evidence that is absent from the Petition. Nevertheless, even considering Petitioner’s arguments in its Reply, we are not persuaded these arguments are sufficient to demonstrate by a preponderance of the evidence that the challenged claims are unpatentable. Based on the complete record here, Petitioner’s arguments that the references are analogous and the asserted combination is technically trivial, essentially “say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention.” Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017). While the references need not explicitly provide a reason for the asserted substitution, Petitioner must, nevertheless, explain why a person of ordinary skill in the art would have made the combination. See Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 23

  Patent outcomesUS 8,874,677 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,874,677

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.