- Microsoft Corporation v. Daedalus Blue, LLCAll claims unpatentablePTAB · Oct 27, 2022 · IPR2021-00830 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–15 are unpatentable as obvious over Keagy, Miller, and the knowledge of an ordinary skilled artisan.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“‘Autonomic’ refers to an ability for a cloud computing environment to manage its own operations with little or no governance by hand from any user or system administer. ‘Autonomic scaling’ therefore refers to an ability of a cloud computing environment to manage its own scaling operations with little or no governance by hand from any user or system administer. This paper describes autonomic scaling in the sense of adding and removing instances of virtual machines and their data processing applications as data processing workload increases and decreases with a cloud computing environment. Ex. 1001, 2:35–45.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“iii. Other terms After reviewing the evidence and arguments presented by the parties, we determine that it is not necessary to our decision to construe any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that an ordinary skilled artisan “would have had a bachelor’s degree in computer science, computer engineering, or a related discipline and three years of experience in the relevant technical field— cloud computing, computer networks and systems—or the equivalent.” Pet. 18 (citing Ex. 1003 ¶ 48). Petitioner further states that “[a] POSITA also would have been aware of and generally knowledgeable about the structure 4 The parties have not introduced any evidence concerning secondary considerations. levels of education may substitute for less experience, and vice versa.” Id. at 18–19. Patent Owner applies Petitioner’s proposed level of ordinary skill in the art. See PO Resp. 8. We apply Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’612 patent and the prior art of record.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“For the following reasons, we determine that Petitioner persuasively shows that an ordinary skilled artisan would have combined Keagy and Miller in the manner proposed, and Patent Owner’s contentions are unavailing. We look to Dr. White’s testimony in connection with analyzing Patent Owner’s contentions. With respect to deploying additional instances of a VM, Dr. White points to page 37 of the Petition where Petitioner argues that “Keagy contains a similar disclosure [to Miller]” of up-scaling VM resources. Ex. 2011 ¶ 105. Dr. White, however, specifically states his disagreement that Keagy discloses deploying an additional instance of a VM. Id. ¶ 106. Patent Owner also disputes that Keagy discloses deploying that Miller discloses deploying an additional instance of a VM. Id. at 28. As explained below in connection with limitation 1.C, Patent Owner’s argument that Miller does not disclose deploying an additional instance of VM is based on its claim construction that “deploying” requires “creating a new instance of a VM” that we did not adopt for the reasons stated in Section II.C. Id. Dr. White’s quibbles with Miller in this regard are also based on the same claim construction that we do not adopt. Ex. 2011 ¶ 107 (“Miller does not create any new instances of a VM”). As further explained in our analysis of limitation 1.C, assuming Patent Owner is correct concerning Keagy’s lack of disclosure of adding additional instances of a VM, Miller discloses deploying additional instances of a VM under the proper claim construction. Consequently, modifying Keagy with Miller’s disclosure of deploying additional instances of a VM does not entail adding a feature to Keagy that it already possesses. Pet. 69; Ex. 1003 ¶¶ 204–206. Dr. White’s testimony with respect to removing entire instances of a VM takes a similar tack. Dr. White points to page 70 of the Petition that “Keagy already discloses the termination and deletion of entire VMs.” Ex. 2011 ¶ 108 (citing Pet. 70). Dr. White specifically states his disagreement that Keagy has such a disclosure. Id. Petitioner relies on Dr. Jakobsson’s testimony at paragraphs 203 and 208. Pet. 70. In paragraph 208, Dr. Jakobsson directs us to his testimony in connection with, inter alia, limitation 1.D. In connection with limitation 1.D, Dr. Jakobsson testifies that “Keagy teaches the termination and deletion of entire VMs outside of the autonomic scaling context.” Ex. 1003 ¶ 128. Consequently, modifying Keagy with Miller to terminate entire VM instances in the context of to Keagy that it already possesses.” slip op. at 35
Patent outcomesUS 8,572,612 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,572,612 - Microsoft Corporation v. Daedalus Blue, LLCAll claims unpatentablePTAB · Oct 21, 2022 · IPR2021-00831 · APJ Sally C Medley · IPR · Final written decision
Claims 15–25 were shown unpatentable: claims 15–21 and 23–25 as obvious over Gelb and Tivoli, and claim 22 as obvious over Gelb, Tivoli, and Callaghan.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We begin with the language of the independent challenged claims. Claim 15 recites “[a] method for handling files within a policy-based data management system, the method comprising.” Ex. 1001, 16:21–22. Claim 23 recites “[a] storage device storing computer code executable by a processor to carry out a method comprising.” Id. at 16:61–62. The remaining limitations of the independent claims are the same and directed to (1) providing a policy set with at least one service class rule; (2) receiving one or more attributes of a file from one of a plurality of clients, the clients comprising at least two different computing platforms; (3) applying the service class rule to the file to assign a service class to the file; and (4) conducting operations on the file in a manner according to the service class. Id. at 16:23–31, 16:63–17:4. The involved claims do not recite a “distributed storage system,” a “storage area network system,” or a “networked, distributed system [environment].” Thus, even if Patent Owner were correct that an invention that involves a networked, distributed system environment dictates that the plurality of clients also be in the networked environment, the claims themselves don’t require a networked, distributed system environment. Indeed, the preamble of claim 23 recites “a storage device,” and the preamble of claim 15 recites a “data management system,” terms that are much broader than those the Patent Owner uses to describe “the invention.” PO Resp. 8–10. Although Patent Owner never explains what “clients in a networked environment” means, Dr. White testifies that “a person of ordinary skill in the art would have understood the ‘plurality of clients’ to refer to clients in a networked distributed systems environment, such that each challenged claim requires a networked environment where clients communicate through a network.” Ex. 2024 ¶ 50. But, again, there is nothing in the claims that recites a “networked distributed systems environment,” a “networked environment,” or “clients communicating through a network.” The method claims are directed to performing certain steps to a file from one of a plurality of clients. No networking or clients communicating through a network is claimed or even shown to be relevant to what is claimed. Indeed, in urging us to narrowly construe the term “plurality of clients,” Patent Owner does not discuss the claim language at all. PO Resp. 8–10. But, the name of the game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Here, Patent Owner fails to direct us to anything in the claim language itself that would support Patent Owner’s construction of “plurality of clients,” and we find nothing that supports the argument.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“two different computing platforms.” Patent Owner contends that the limitation “computing platforms” should be construed to mean “operating systems.” PO Resp. 10–12. Petitioner disagrees and argues that “computing platforms” should be construed to mean “the combination of computer hardware and an operating system.” Pet. Reply 4–6. We understand that resolution of this issue is relevant only to Petitioner’s challenge based on Devarakonda. PO Resp. 2–3, 38–39 (arguing that Gelb alone fails to teach a plurality of clients but not addressing Gelb in combination with Tivoli), 55– 59 (arguing that Devarakonda fails to disclose clients that comprise at least two different operating systems); Pet. Reply 15–16; Tr. 5:16–22, 7:24–8:3, 25:22–26:23. For reasons explained below, we need not decide Petitioner’s challenge based on Devarakonda. Accordingly, for purposes of our Decision, we need not construe “computing platforms.” Other Terms We need not otherwise construe any other terms in the claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 15–21 and 23–25 over Gelb and Tivoli” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner, relying on the declaration testimony of Dr. Christopher Jules White, argues that a POSITA would have had “at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar discipline, along with two years of experience in the design, operation, or control of networked data management systems, and/or distributed systems.” PO Resp. 6 (citing Ex. 2024 ¶ 47). Patent Owner further argues that “Dr. White’s opinions and the arguments in this paper apply under either proposed level of ordinary skill in the art.” Id. at 7 (citing Ex. 2024 ¶ 49). We adopt Petitioner’s definition of the level of skill except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level of qualifications, the outcome would remain the same.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“construction for “plurality of clients” to mean “clients in a networked environment.” Thus, we disagree with Patent Owner that the claims reflect that the ’132 patent’s field of endeavor is distributed storage systems. During oral argument, Patent Owner represented that its “analogous art argument depends on the construction of clients in a networked environment . . . for the first prong.” Tr. 39:20–40:11; see also Sur-Reply 7–8 (“[t]he lack of clients in a networked environment takes Gelb’s single-machine mainframe out of the ’132 Patent’s field of endeavor of distributed storage systems, which involves networked computers”). Accordingly, we determine that Patent Owner has failed to show that Gelb is not relevant to the obviousness analysis and agree with Petitioner that “Gelb’s teachings align closely to the subject matter of the ’132 Patent and therefore are analogous.” Pet. Reply 6.9” slip op. at 20
Patent outcomesUS 8,671,132 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,671,132 - Momentum Dynamics Corporation v. Witricity CorporationAll claims unpatentablePTAB · Oct 12, 2022 · IPR2021-01127 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–8 are unpatentable because Kanno anticipates them and renders them obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address the level of skill in the art. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’635 patent and prior art of record. We adopt Petitioner’s definition of the level of skill, except that we delete the phrase “at least” to avoid including an expert in the definition of the level of skill.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“We agree with Petitioner. The plain language of claim 1 is expansive, requiring only that the partially cancelled first magnetic field is “outside a spatial region through which power is transferred from the first source magnetic resonator to the device magnetic resonator.” The claim does not refer to a specific type of radiation, let alone far field radiation. The claim drafter deliberately chose the broader term “first magnetic field” rather than specifying “far field radiation.” We find nothing in the claim that points to a more restrictive interpretation of “first magnetic field.” The specification does not limit the partially canceled first magnetic field to far field radiation either, as it expressly contemplates that “the fields that need to be minimized or reduced can be either the far-field, or the near field (if the wavelength is much larger than the distance between the wireless power transfer system to the point of interest).” Ex. 1001, 51:33–37 (emphasis added). The specification could not be any plainer than this— referring explicitly to reducing the far field “or the near field.” Id.5” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Patent Owner’s arguments rely on a claim construction that we have not adopted. And Kanno discloses at least near-field cancellation by disclosing, for example, that angles “within the range of 90 to 180 degrees . . . minimized leakage of electromagnetic waves into the surrounding space effectively.” Ex. 1005, 28:36–41; Ex. 1003 ¶¶ 56 (citing, e.g., Ex. 1005, 28:18–42), 107 (similar), 111 (similar). Patent Owner does not dispute that Kanno teaches near-field cancellation. See, e.g., PO Resp. 9 (“reducing ‘near field strength’ as described in Kanno”). Thus, under the correct construction of this limitation as encompassing near-field radiation, far-field radiation, or both, we agree that Kanno teaches it. Not only that, but Patent Owner does not dispute Petitioner’s Reply argument that Kanno also discloses the same far-field cancellation as the ’635 patent, as Patent Owner neither filed a sur-reply nor addressed Petitioner’s Reply argument at the oral hearing. See Tr. 14:20–21 (resting on the briefs). And we agree with Petitioner’s argument, as supported by the unrebutted testimony of Dr. Arnold, that even under Patent Owner’s incorrect construction, Kanno teaches this limitation. Reply 6–7 (citing, e.g., Ex. 1003 ¶¶ 114–15). Dr. Arnold asserts that “[a] reduction in the strength of the electromagnetic near field generally corresponds with a reduction in the strength of the electromagnetic far field.” See Ex. 1003 ¶ 114. Dr. Arnold explains in detail how these near and far fields relate to one another as follows: The term “near field” is a technical term that refers to the electromagnetic near field of an antenna, as opposed to the radiative “far field”. The near field for an electromagnetically short antenna is defined as a region within one electromagnetic wavelength of the antenna. The electrical frequency used in the real-world implementation of the power generator is 3 MHz. Id. 27:44-48. A frequency of 3 MHz corresponds to an electromagnetic wavelength of 100 meters. Here, the measurement distance of 5 meters is well within the near field range of 100 meters, and constitutes a near field measurement. A reduction in the strength of the electromagnetic near field generally corresponds with a reduction in the strength of the electromagnetic far field Id. ¶ 114. In other words, if a field closer to an antenna is reduced, then the field farther from the antenna will be reduced too. This fact is unremarkable, as Dr. Arnold explains, “[t]he principles behind magnetic resonators to wirelessly transfer power have been known for over a century.” Id. ¶ 24.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Even in light of Patent Owner’s arguments, which we address below, we agree with Petitioner. We find that one of ordinary skill in the art would have combined Kanno’s Example 1 with its fundamental arrangement because the specific details in Example 1 and test data would have indicated to the skilled artisan the desirability of combining these portions of Kanno. As Dr. Arnold persuasively testifies, “a POSA would have been motivated to look to Example 1 because it provides those specific implementation details for circuit component types and values, as well as test data showing that the power generator achieves high power transfer efficiency while minimizing electromagnetic field leakage.” Ex. 1003 ¶ 150. He further testifies, “given that Kanno describes ‘Example 1’ as a real-world implementation, a POSA would have had a reasonable expectation of success that the power generator using those implementation details would work.” Id. We agree and credit this unrebutted testimony in support of Petitioner’s motivation to combine separate portions of Kanno.” slip op. at 31
Patent outcomesUS 9,306,635 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,306,635 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Aug 11, 2022 · IPR2021-00470 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1–10 and 16–19 are unpatentable as obvious under § 103, principally over Bohbot and Gundlach, with additional grounds for claims 4, 8, 9, 17, and 18.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“According to Petitioner, “no express constructions are required to institute review and find the Challenged Claims unpatentable.” Pet. 4. Patent Owner argues that it “has assigned the claim terms their plain and ordinary meanings as a POSITA would have understood them in the context of the ‘020 patent, unless otherwise noted herein.” PO Resp. 8. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“discloses that this is “due to [its] size.” Ex. 1004, 2:9–13 (emphasis added). More relevant to Petitioner’s proposed combination of Bohbot and Gundlach are Patent Owner’s arguments concerning the ease or lack of ease of detachment of the headset from a primary module having a recess as taught by Gundlach. We determine that a POSITA would have balanced concerns about the combination lacking ease of detachment against the need for effectively securing the headset to the primary module. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (stating that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349, n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Additionally, an obviousness determination does not turn on whether the proposed combination is the preferred or most desirable combination. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004); PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014). Further, even if Bohbot teaches a “suitable mechanism” of securing its headset via magnetic coupling as Patent Owner argues (see PO Resp. 12–13 (citing Ex. 2001 ¶ 95)), we determine that Bohbot would not have dissuaded a POSITA from more effectively securing its headset using the recess cited in Gundlach. See Pet. Reply 11 (“Gundlach provides a suitable option for semi-enclosed protection in the form of a contoured recess, and Bohbot does not teach away from the use of a contoured recess.”) (citing Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); Ex. 1089 ¶ 28). Responsive to Patent Owner’s arguments, Dr. Cooperstock testifies that “Bohbot nowhere describes its headset as being easy and quick to detach ‘with one hand,’ and thereby being ‘readily available for use.’” Ex. 1089 ¶ 26. As Petitioner points out, “Bohbot’s magnetic attachments ‘make attachment and detachment easy’ but also ‘are powerful enough to make an effective attachment possible, thus avoiding a detachment that is so easy it could easily be removed by a person with malicious intentions, or an untimely detachment that would lead to loss of the headset.’” Pet. Reply 10 (quoting Ex. 1004, 3:26–4:5) (citing PO Resp. 14). We are persuaded by Petitioner’s contention and Dr. Cooperstock’s testimony that “[t]he miniature communication device (with attached headset) is likely to be hit by other objects, dropped, etc., making the semi-enclosed protection provided by [Gundlach’s] contoured recess further advantageous and complementary to Bohbot’s stated goal.” Ex. 1003 ¶ 35 (citing Ex. 1004, 4:3–5); see Pet. Reply 11 (citing Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1328 (Fed. Cir. 2017) (quoting PAR Pharm., 773 F.3d at 1197–98)) (“obviousness ‘does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away’”).” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Further, even if Bohbot teaches a “suitable mechanism” of securing its headset via magnetic coupling as Patent Owner argues (see PO Resp. 12–13 (citing Ex. 2001 ¶ 95)), we determine that Bohbot would not have dissuaded a POSITA from more effectively securing its headset using the recess cited in Gundlach. See Pet. Reply 11 (“Gundlach provides a suitable option for semi-enclosed protection in the form of a contoured recess, and Bohbot does not teach away from the use of a contoured recess.”) (citing Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); Ex. 1089 ¶ 28). Responsive to Patent Owner’s arguments, Dr. Cooperstock testifies that “Bohbot nowhere describes its headset as being easy and quick to detach ‘with one hand,’ and thereby being ‘readily available for use.’” Ex. 1089 ¶ 26. As Petitioner points out, “Bohbot’s magnetic attachments ‘make attachment and detachment easy’ but also ‘are powerful enough to make an effective attachment possible, thus avoiding a detachment that is so easy it could easily be removed by a person with malicious intentions, or an untimely detachment that would lead to loss of the headset.’” Pet. Reply 10 (quoting Ex. 1004, 3:26–4:5) (citing PO Resp. 14). We are persuaded by Petitioner’s contention and Dr. Cooperstock’s testimony that “[t]he miniature communication device (with attached headset) is likely to be hit by other objects, dropped, etc., making the semi-enclosed protection provided by [Gundlach’s] contoured recess further advantageous and complementary to Bohbot’s stated goal.” Ex. 1003 ¶ 35 (citing Ex. 1004, 4:3–5); see Pet. Reply 11 (citing Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1328 (Fed. Cir. 2017) (quoting PAR Pharm., 773 F.3d at 1197–98)) (“obviousness ‘does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away’”). For the foregoing reasons, Patent Owner’s arguments do not undermine Petitioner’s showing. We determine that Petitioner’s rationale for combining Bohbot and Gundlach is persuasive for the reasons set forth above and is supported by sufficient rational underpinning in the record evidence and we adopt it as our own.” slip op. at 32
Patent outcomesUS 10,259,020 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,259,020 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Jul 26, 2022 · IPR2021-00471 · APJ Sally C Medley · IPR · Final written decision
Claims 1, 2, 4–10, 12, 14–17, and 19 are unpatentable as obvious under § 103 over the combinations of prior art listed in the decision.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Jeremy Cooperstock, who testifies that a person having ordinary skill in the art “would have had at least a Bachelor’s degree in an academic area emphasizing electronical engineering, mechanical engineering, or a similar discipline, and at least two years of experience in the field working with electronic devices” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Pet. 7–8 (citing Ex. 1003 ¶ 20). Patent Owner relies on the declaration testimony of Dr. Hamid Toliyat, who applies a similar definition and testifies that a person having 8 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 5 (citing Ex. 2022 ¶ 31). Dr. Toliyat further testifies that “Dr. Cooperstock’s definition of a POSITA9 is somewhat different than mine; however, my opinions in this declaration would be the same regardless of whether or not my description or Dr. Cooperstock’s description of a POSITA is used.” Ex. 2022 ¶ 33. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level of qualifications, the outcome would remain the same.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“concerning its conductive charging” and that “conductive charging of a consumer device such as a headset would be a relatively simple and straightforward process for a POSITA” such that there would be no need to look beyond Gundlach’s teachings. PO Resp. 9 (citing Ex. 2022 ¶ 8810), id. at 1–2. Dr. Toliyat, who testifies the same, does not support his conclusions with a sufficient factual basis. Ex. 2022 ¶¶ 88–89. For example, Dr. Toliyat does not explain how Gundlach provides ample disclosure concerning its conductive charging and we find that Gundlach does not. Rather, Gundlach describes that the case may contain “charging circuitry,” but does not describe what the circuitry contains. Ex. 1005 ¶ 80. Dr. Cooperstock’s testimony is entitled to substantial weight that “[w]hile robust on structural aspects of the wireless headset and storage solutions, Gundlach provides significantly less guidance and implementation details on the subject of charging” because his testimony is supported by Gundlach itself. Ex. 1003 ¶ 35 (citing Ex. 1005 ¶¶ 69, 73, 79, 80). Moreover, Dr. Toliyat does not provide sufficient evidence to support his conclusion that, at the time of the invention, conductive charging for a wireless headset would have been simple and straightforward. Ex. 2022 ¶ 88. Thus, his testimony does not undermine Dr. Cooperstock’s sufficient explanation that a “POSITA considering Gundlach, and noting its limited disclosure on charging, would have seen a need for elaboration and description of design options to implement the charging functionality,” which would have led the POSITA to Lee, also directed to wireless headsets.” slip op. at 17
- BurdenUnpatentable
“case, or card. Pet. 14 (citing Ex. 1005 ¶ 55). Petitioner further contends, and we find, that although Gundlach generally describes that the case may contain charging circuitry and electrical contacts, Gundlach does not expressly describe the manner in which the headset’s charging circuitry responds when placed in the cradle for charging. Id.; Ex. 1005 ¶ 56. Petitioner argues, and we agree, that “[a] POSITA considering Gundlach, and noting its limited disclosure on charging, would have seen a need for elaboration and description of design options.” Pet. 14 (citing Ex. 1003 ¶ 35). According to Petitioner, a person of ordinary skill in the art “seeking a supplement to Gundlach, . . . would have encountered Lee’s disclosure on charging in the familiar context of wireless headsets.” Id. at 14–15 (citing Ex. 1003 ¶ 35). Petitioner argues, and we agree, that a person of ordinary skill in the art would have been motivated to exchange Gundlach’s conductive charging components with Lee’s more thoroughly explained inductive charging components. Id. at 15 (citing Ex. 1003 ¶ 37). We also agree with Petitioner’s contentions that the person of ordinary skill in the art would have recognized that inductive charging is a suitable alternative to conductive charging and would have appreciated benefits of inductive charging, such as enhanced reliability. Id. at 16–17 (citing Ex. 1003 ¶¶ 40– 43; Exs. 1020–1022; Ex. 1006, 1:62–2:2). Petitioner further contends, and we agree, that employing Lee’s inductive charging solution in Gundlach’s device would result in a more compact form factor and interoperability absent the added bulk of a standardized connection. Id. at 17–18 (citing Ex. 1003 ¶¶ 44–45; Ex. 1005 ¶¶ 56–57, 66; Ex. 1006, 2:62–66, 4:55–57, Figs. 12, 16, 18, 19; Ex. 1029).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“case, or card. Pet. 14 (citing Ex. 1005 ¶ 55). Petitioner further contends, and we find, that although Gundlach generally describes that the case may contain charging circuitry and electrical contacts, Gundlach does not expressly describe the manner in which the headset’s charging circuitry responds when placed in the cradle for charging. Id.; Ex. 1005 ¶ 56. Petitioner argues, and we agree, that “[a] POSITA considering Gundlach, and noting its limited disclosure on charging, would have seen a need for elaboration and description of design options.” Pet. 14 (citing Ex. 1003 ¶ 35). According to Petitioner, a person of ordinary skill in the art “seeking a supplement to Gundlach, . . . would have encountered Lee’s disclosure on charging in the familiar context of wireless headsets.” Id. at 14–15 (citing Ex. 1003 ¶ 35). Petitioner argues, and we agree, that a person of ordinary skill in the art would have been motivated to exchange Gundlach’s conductive charging components with Lee’s more thoroughly explained inductive charging components. Id. at 15 (citing Ex. 1003 ¶ 37). We also agree with Petitioner’s contentions that the person of ordinary skill in the art would have recognized that inductive charging is a suitable alternative to conductive charging and would have appreciated benefits of inductive charging, such as enhanced reliability. Id. at 16–17 (citing Ex. 1003 ¶¶ 40– 43; Exs. 1020–1022; Ex. 1006, 1:62–2:2). Petitioner further contends, and we agree, that employing Lee’s inductive charging solution in Gundlach’s device would result in a more compact form factor and interoperability absent the added bulk of a standardized connection. Id. at 17–18 (citing Ex. 1003 ¶¶ 44–45; Ex. 1005 ¶¶ 56–57, 66; Ex. 1006, 2:62–66, 4:55–57, Figs. 12, 16, 18, 19; Ex. 1029).” slip op. at 16
Patent outcomesUS 10,259,021 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,259,021 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Jun 29, 2022 · IPR2021-00335 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–9, 11–15, and 19 as obvious over Kim; claim 10 over Kim and Koh; claims 16–17 over Kim and Lee; and claim 18 over Kim and Jiang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 16–17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would be someone with either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 6 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA7 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See 37 C.F.R. § 42.100(b) (2019); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” PO Reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.8 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42–44. Dr. Horenstein, however, fails to explain sufficiently why that is so and we find his testimony lacking and inconsistent with what Kim describes. Thus, we do not give his testimony substantial weight. Dr. Kiaei’s testimony on the matter, however, is deserving of 8 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. substantial weight, because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 81–85.” slip op. at 22
- Strike new argumentNew argument consideredDecided for petitioner
“immediately above are new and too late. PO Reply 8–9. We disagree. Petitioners are not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide (“Consolidated Practice Guide”)10 at 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–26. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein admits” is permissively responsive to Patent Owner’s arguments, which are based on a myopic view of the Petition and Kim. Patent Owner did not 10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. request to submit new testimony in support of its Sur-reply to rebut Dr. Horenstein’s testimony. For all of the above reasons, we determine that Patent Owner has not been prejudiced or denied due process, and that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 27
Patent outcomesUS 10,259,020 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,259,020 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Jun 22, 2022 · IPR2021-00338 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–13 are unpatentable as obvious: claims 1–8 over Kim, claim 11 over Kim and Koh, and claims 9, 10, 12, and 13 over Kim and Lee.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In the Institution Decision, we considered the subject matter of the ’320 patent, the background technical field, and the prior art, and we agreed with Petitioner’s proposed qualifications. Dec. 8–9. Accordingly, we determined that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and one year of experience in consumer electronics product design, and could have obtained similar knowledge and experience through other means. In view of the relevant technology and claims of the ’320 patent, as well as the technology of the asserted prior art, we adopt the same qualifications as those identified in the Institution Decision. We note that even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no express claim construction is required in order to assess the grounds presented and the ordinary and customary meanings of the terms should be used. Pet. 17; see generally Pet. Reply. Patent Owner similarly states that no express construction is required, and the ordinary meaning of the terms may be used. PO Resp. 4; see generally PO Sur-Reply. In the Institution Decision, we determined that it was not necessary to provide express interpretations of any claim terms. Dec. 9–10. On the full record, we likewise determine that it is not necessary to provide an express interpretation of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Additionally, Patent Owner asserts that Petitioner “conflates Kim’s disclosure of coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” PO Sur-Reply 5. We do not agree with this assertion. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” discloses what Petitioner contends it does, that is, that the sub-device may be coupled to either side of the second body. Although Dr. Horenstein testifies that the sub-device can only be coupled to the top of the second body in a closed position, his explanation is not sufficient as to why that is so, particularly in view of Kim’s disclosures. See Ex. 2004 ¶¶ 42–44. For instance, Dr. Horenstein testifies that certain portions of Kim, such as those describing Figure 15B, show the coupling of sub-device on top of the second body, but this testimony is overly limited and inconsistent with other of Kim’s disclosures because it fails to account for other disclosures, as discussed above. Id. ¶ 44. Thus, we do not afford his testimony substantial weight. Instead, we credit Dr. Kiaei’s testimony on the issue because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 83–87.” slip op. at 23
- Strike new argumentNew argument consideredDecided for petitioner
“A petitioner may rely on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with this issue in the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–25. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein admits” is responsive to Patent Owner’s arguments, which are based on an overly limited view of the Petition and Kim.9 For the above reasons, we 9 We note that Patent Owner did not request to submit new testimony in support of its Sur-Reply to rebut Dr. Horenstein’s testimony. determine that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 28
Patent outcomesUS 10,589,320 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,589,320 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Jun 22, 2022 · IPR2021-00337 · APJ Sally C Medley · IPR · Final written decision
Claims 1–13 are unpatentable: claims 1–8 as obvious over Kim, claim 11 over Kim and Koh, and claims 9, 10, 12, and 13 over Kim and Lee.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, 7 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 5 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA8 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless of whether or not my description or Dr. Kiaei’s description of a POSITA is used.” Ex. 2004 ¶ 25. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” Sur-reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.9 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42– 44. Dr. Horenstein, however, fails to explain sufficiently why that is so and we find his testimony lacking and inconsistent with what Kim describes. Thus, we do not give his testimony substantial weight. Dr. Kiaei’s testimony on the matter, however, is deserving of substantial weight, 9 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 81–85.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“advocating a Figure A solution that did not allow the cover of the watch-type device to properly close due to sandwiching sub-device 300.” PO Resp. 8 (citing Ex. 2004 ¶ 48). Patent Owner also argues that such a configuration as shown in Figure A would be unattractive, large, and ill-suited for its purpose. Id. at 8–9. Patent Owner’s arguments are premised on an overly limited view of the Figure A embodiment as it would be interpreted in the view of one of ordinary skill in the art. Kim broadly states that its embodiments “may be used singly and/or by being combined together.” Ex. 1010 ¶ 179. Consideration of the combination depicted in representative Figure A would reasonably have to “account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016). For the reasons discussed above, Kim discloses not only general combination of embodiments, but, more specifically, describes that first and second bodies are coupled and that the sub-device may be on either side of the second body, which supports the depiction of representative Figure A. Representative Figure A Would Have Been Obvious In addition to Kim’s description of representative Figure A, Petitioner also provides a showing, which we agree with, that the representative Figure A embodiment would have been obvious. Pet. 23–26. Specifically, Petitioner contends that, to the extent that Patent Owner argues that Kim does not disclose Figure A, such an embodiment would have been obvious to a POSITA in view of Kim’s folder-type embodiments (Figure 11B) which are similar and closely related to the watch-type embodiment (Figure 15A). Id. at 23–24 (citing Ex. 1010, Figs. 11B, 15A; Ex. 1002 ¶¶ 87–95). Petitioner explains how in both embodiments (folder-type and watch-type) the main device comprises a first body and a second body connected to each other by a hinge so that the two bodies can open or close in a folding manner, and that with respect to both embodiments, Kim also describes using coupling members 510 (such as magnets) to detachably couple the sub-device to the main device. Id. at 23–25 (citing Ex. 1002 ¶¶ 88–90; Ex. 1010 ¶¶ 212, 218, 220, 261). Petitioner contends that a “POSITA would have recognized that because of the similarities between Kim’s folder-type and watch-type embodiments, Kim’s disclosure with respect to Figure 11B could have been adapted and applied to detachably couple sub-device 300 to the second body 100b of the watch-type embodiment in the manner shown in Figure A.” Id. at 25 (citing Ex. 1002 ¶ 90). Petitioner further contends that doing so is suggested by Kim itself, because Kim states that the embodiments “may be used singly and/or by being combined together.” Id. (citing Ex. 1010 ¶ 179). Petitioner argues that a POSITA having reviewed Kim’s Figure 11B embodiment would have recognized the feasibility and desirability of modifying the embodiment of Kim’s Figure 15 to detachably couple sub-device 300 to the second body 100b using coupling members 510. Id. (citing Ex. 1002 ¶¶ 90–95). Petitioner further provides reasons for making the modification. Id. at 25–26 (citing Ex. 1002 ¶¶ 93–95). Patent Owner makes several arguments why Petitioner’s Figure A “is not obvious.” PO Resp. 9–35. For the reasons that follow, we determine that such arguments do not undermine Petitioner’s persuasive showing.” slip op. at 23
Patent outcomesUS 10,562,077 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,562,077 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Gui Global Products, Ltd., D/B/A GweeAll claims unpatentablePTAB · Jun 22, 2022 · IPR2021-00336 · APJ Sally C Medley · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–9, 11–15, and 19 as obvious over Kim; claim 10 over Kim and Koh; claims 16–17 over Kim and Lee; and claim 18 over Kim and Jiang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Sayfe Kiaei, who testifies that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer science, 8 Patent Owner does not present any objective evidence of nonobviousness as to the challenged claims. or a similar field and one year of experience in consumer electronics product design” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 17 (citing Ex. 1002 ¶¶ 21–22). Patent Owner relies on the declaration testimony of Dr. Mark Horenstein, who applies a similar definition and testifies that a person having ordinary skill in the art “would have been someone having either a bachelor’s degree in electrical engineering, computer science, or mechanical engineering with some level of post-baccalaureate electronic device or system design experience, or someone with an equivalent level of experience and training through other means.” PO Resp. 6 n.2 (citing Ex. 2004 ¶ 25). Dr. Horenstein further testifies that “Dr. Kiaei’s definition of a POSITA9 is somewhat different than mine, nevertheless my opinions in This Declaration would be the same regardless of whether or not my description or Dr. Kiaei’s description of a POSITA is used.” Ex. 2004 ¶ 25. We adopt Petitioner’s definition of the level of skill for purposes of this Decision, except that we delete the phrase “at least” to avoid ambiguity in the definition of the level of skill. Patent Owner’s proposed level overlaps substantially with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“coupling member 510 on ‘at least one side’ of the second body with Petitioner’s unsupported suggestion of coupling the sub-device to either side of the second body.” Sur-reply 5. We disagree that Petitioner’s position represents a conflation of the disclosure. Kim’s description that the coupling member for fixing the sub-device “is provided on at least one side of the second body” means precisely what Petitioner contends—that the sub-device may be coupled to either side of the second body. Patent Owner and Dr. Horenstein read Kim too narrowly or imprecisely.10 Indeed, Dr. Horenstein concludes that from the disputed Kim passage, the sub-device can only be coupled to the top of the second body in a closed position. Ex. 2004 ¶¶ 42– 44. Dr. Horenstein, however, fails to explain sufficiently why that may be so and we find his testimony lacking factual support and inconsistent with what Kim describes. See 37 C.F.R. § 42.65 (expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight). Thus, we do not give his testimony substantial 10 During the hearing, counsel for Patent Owner confirmed that it is Patent Owner’s position that Kim does not even contemplate coupling the sub-device to the first body, even though Kim explicitly describes as much. Tr. 42:23–43:14; Ex. 1010 ¶ 260. weight. Dr. Kiaei’s testimony on the matter, however, is deserving of substantial weight, because his testimony is consistent with what Kim describes. Ex. 1002 ¶¶ 83–87.” slip op. at 22
- Strike new argumentNew argument consideredDecided for petitioner
“immediately above are new and too late. Sur-reply 8–9. We disagree. A petitioner is not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Consolidated Trial Practice Guide (“Consolidated Practice Guide”)12 at 73. Here, we determine that Petitioner’s arguments and accompanying evidence (e.g., Ex. 1031) in connection with the Petitioner Reply are responsive to Patent Owner’s arguments. In particular, Petitioner could not have anticipated that Patent Owner would argue for such a narrow view of Petitioner’s Figure A representation. As explained above, the Petition does not limit the hinge in the Figure A representation in any way. Pet. 23–25. Rather, the Figure A representation is based on what is described in Kim, which also does not limit the hinge in any way. Id.; Ex. 1010 ¶ 256 (broadly describing that “[t]he second body may be configured to be connected by a hinge 100d to one side of the first body to be open or closed”), ¶ 260 (describing coupling a third body to one of the first and second bodies in a state that the first and second bodies are coupled). Thus, we determine that Petitioner’s argument that “[t]here is nothing in Kim that would suggest to a POSITA, much less require, that the folding watch-type embodiment of Figure A must have a hinge exactly as depicted in Figure 15A” and that “a POSITA would have been able to use routine design skills to select the appropriate hinge, as Dr. Horenstein 12 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. admits” is permissively responsive to Patent Owner’s arguments, which are based on a myopic view of the Petition and Kim. Patent Owner did not request to submit new testimony in support of its Sur-reply to rebut Dr. Horenstein’s testimony. For all of the above reasons, we determine that Patent Owner has not been prejudiced or denied due process, and that we may consider the reply arguments and Dr. Horenstein’s testimony in support of the arguments, which we find persuasive.” slip op. at 27
Patent outcomesUS 10,259,021 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,259,021 - Gain Capital Holdings, Inc. v. Oanda CorporationAll claims unpatentablePTAB · Mar 16, 2022 · CBM2020-00023 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–12 are unpatentable under § 101; proposed substitute claim 13 is unpatentable under §§ 101 and 103 over Pictet, and the revised motion to amend is denied.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“all directed to “time-based trade analysis” “improperly describes the claims at too high a level of abstraction, as warned against in” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 1337 (Fed. Cir. 2016). PO Resp. 5–6. We disagree. Petitioner’s articulation of the abstract idea to which claim 1 is allegedly directed is appropriately focused and tied to the specific language of the limitations of the claim. Petitioner explains how the recited “price data” and “current system position information” are the key inputs for time-based trade analysis and how calculating a trade recommendation using sub-models based on different times of day constitutes such analysis. See Pet. 31–34. Further, “time-based trade analysis” is not a general field, but rather a particular practice, namely the analysis of potential trades based on time. That type of analysis is reflected expressly in claim 1 via the use of a plurality of sub-models where each is based on “a different time of day.” Petitioner’s analysis is persuasive, as it is consistent with the language of claim 1 and supported by the testimony of Mr. Donefer, which we credit.6 Based on the full record developed during trial, we are persuaded that claim 1 recites time-based trade analysis. Doing so is a fundamental economic practice, which is one of the certain methods of organizing human activity identified in the Guidance, and, thus, an abstract idea.” slip op. at 21
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We disagree. Claim 1 does not recite a distributed system architecture, sub-model calculations executed concurrently in parallel, or real-time operation for a large number of users, all of which Patent Owner relies on to show a patent-eligible application of the alleged abstract idea. See Reply 6, 8; Ex. 1038 ¶¶ 22, 25–26. Claim 1 broadly recites “calculating trade recommendation information from each of a plurality of trading sub-models,” each “based on a different time of day,” and “calculating a trade recommendation . . . based on said trade recommendation information from each of said trading sub-models.” The claim does not specify how, when, or by what component the calculations are performed. Thus, Patent Owner’s contention that steps (d) and (e) do not represent well-understood, routine, and conventional activity is not commensurate with the language of the claim. With respect to what is actually recited in the claim, we are persuaded based on the full trial record that the calculations are the abstract idea itself (i.e., the fundamental economic practice of “time-based trade analysis”), rather than additional elements that could transform the claim into a patent-eligible application of an abstract idea. See supra Section II.F.1.b; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[A] claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). Regardless, though, Petitioner also has provided persuasive evidence regarding the conventionality of steps (d) and (e), particularly given the broad manner in which they are recited in the claim. See, e.g., Ex. 1004 ¶¶ 69–84; Ex. 1021, 115 (“It is widely documented that return volatility varies systematically over the trading day and that this pattern is highly correlated with the intraday variation of trading volume and bid-ask spreads.”); Ex. 1019, 13 (“Trading models offer a real-time analysis of foreign exchange movements and generate explicit trading recommendations. These models are based on the continuous collection and treatment of foreign exchange quotes by market makers around the clock at the tick-by-tick frequency level.”); Ex. 1031, 728–732 (describing modeling that accounts for time periods of different levels of activity, such as when particular FX markets are open, and using time intervals of “hours, days, weeks or years”). Petitioner also has provided a detailed explanation citing persuasive evidence that, even if claim 1 did require distributed parallel processing and real-time trading model calculations, both were well-understood, routine, and conventional at the time of the ’534 patent. See Reply 9–11, 15–17; Ex. 1038 ¶¶ 23 (citing, for example, Ex. 1031, 228–232), 29–35 (citing, for example, Ex. 1031, 718). We credit Mr. Donefer’s testimony, which is supported by evidence in the record and unrebutted—Patent Owner did not address the evidence discussed in the Petition and Mr. Donefer’s initial declaration in its Response, did not file a Sur-Reply addressing Mr. Donefer’s reply declaration and cited evidence, and did not provide any contrary evidence in the record. See Reply 1, 3.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony of Mr. Donefer, for why a person of ordinary skill in the art would have had reason to combine Pictet’s teachings and arrive at the method of proposed substitute claim 13. Id. at 24–25 (citing Ex. 1031, 716–723; Ex. 1038 ¶¶ 52–58, 75–77). Petitioner argues that a person of ordinary skill in the art “would have recognized that Pictet’s data collection and storage steps (i.e., steps (a)-(c)) provide inputs for the subsequent calculations (i.e., steps (d)-[(e)]),” “would have understood Pictet as teaching that the distributed parallel processing . . . applies to the implementation of the trading models performing those calculations,” and would have had “reason to use at least five of the parameters discussed [in Pictet] when configuring the rules governing the ‘grand’ model.” Id. at 24. Petitioner further contends that numerous types of parameters were routinely used when designing and evaluating trade models, and Pictet’s moving average . . . is no different. Moreover, Pictet describes two categories of threshold values (i.e., trend and overbought/oversold) and expressly teaches using “several threshold values of both types,” which at a minimum suggests four such parameters. The voting scheme is also an integral part of the weighted moving average Pictet describes. A [person of ordinary skill in the art] also had reason to incorporate a time parameter setting the amount of time in the past that is considered, since a [person of ordinary skill in the art] would have understood that price data from the distant past is less 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that “the Board need not address issues that are not necessary to the resolution of the proceeding”). relevant to a moving average. Pictet also teaches using stop-loss and stop-profit parameters as part of its model implementation. Id. at 24–25 (citations omitted). We have reviewed Petitioner’s analysis and find it persuasive. Petitioner’s reasoning is consistent with the disclosure of Pictet and supported by the testimony of Mr. Donefer, which we credit. For the reasons stated by Petitioner and Mr. Donefer, we find that a person of ordinary skill in the art would have had reason to combine the cited teachings of Pictet in the manner asserted with a reasonable expectation of success.” slip op. at 53
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“3. Patentability Pursuant to 37 C.F.R. § 42.221(d)(2), Petitioner “bears the burden of persuasion to show, by a preponderance of the evidence,” that proposed substitute claim 13 is unpatentable. Petitioner argues that proposed substitute claim 13 fails to recite patent-eligible subject matter under 35 U.S.C. § 101, is indefinite under 35 U.S.C. § 112, second paragraph, and would have been obvious under 35 U.S.C. § 103(a). Opp. 3–25. For the reasons explained below, we determine that Petitioner has met its burden to show, by a preponderance of the evidence, that claim 13 is unpatentable as claiming patent-ineligible subject matter under 35 U.S.C. § 101 and obvious under 35 U.S.C. § 103(a), and need not reach Petitioner’s arguments regarding definiteness under 35 U.S.C. § 112, second paragraph.” slip op. at 39
Patent outcomesUS 7,496,534 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSR · GrahamPatents in suitUS 7,496,534
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.