- Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentablePTAB · Sep 19, 2022 · IPR2022-00084 · APJ Minn Chung · IPR · Final written decision
Claims 1–3, 5–13, and 15–19 were not shown unpatentable under § 103 over Gleichauf, Ovadia, and Lewis because the petitioner did not sufficiently explain why a skilled artisan would have combined Gleichauf and Lewis as …
RulingsFinal written decision- Expert testimonyPetitioner expert discountedOther
“Dr. Reddy additionally testifies that “URL redirection is a well-known concept in HTTP traffic” (Ex. 1003 ¶ 24) and that “[a person of ordinary skill in the art] would have been familiar with URL redirection, which was a common technique used to forcibly provide an alternative response to a client’s request for a web page” (id. at ¶ 134). During the oral hearing, Petitioner also stated, citing the Reddy Declaration, that “it was well known to redirect traffic to a separate server.” Tr. 17:8–12 (citing Ex. 1003 ¶ 134). This, however, does not provide a sufficient explanation why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis. This rationale and all of the other reasons for the proposed combination proffered by Petitioner establish, at most, that Gleichauf and Lewis could have been combined to meet limitations [1.8] and [1.9], rather than a person of ordinary skill in the art would have been motivated to make the proposed combination. This is insufficient. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness 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”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). We find, therefore, that Petitioner does not provide a sufficient reasoning to support obviousness of claim 1 based on the proposed combination.7 See Kinetic Concepts, 688 F.3d at 1366–67 (holding that “some kind of motivation must be shown from some source, so that the [trier of fact] can understand why a person of ordinary skill would have thought of either combining two or more references or modifying one to achieve the patented [invention]”)); InTouch Techs., 751 F.3d at 1348–49 (Fed. Cir. 2014) (“[The expert witness’s] testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”).” slip op. at 36
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, 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) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34
Patent outcomesUS 8,234,705 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,234,705 - Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentablePTAB · Sep 19, 2022 · IPR2022-00081 · APJ Minn Chung · IPR · Final written decision
Claims 1–3, 5–13, and 15–19 were not shown unpatentable under § 103 because Petitioner did not sufficiently explain why a skilled artisan would combine Gleichauf and Lewis.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of professional experience in the field of network communications, and more specifically, network security.” Pet. 10 (citing Ex. 1003 ¶ 18). Petitioner asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. (citing Ex. 1003 ¶ 18). Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, 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) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34
Patent outcomesUS 8,234,705 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,234,705 - Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentablePTAB · Sep 19, 2022 · IPR2021-00593 · APJ Minn Chung · IPR · Final written decision
Claims 1–3, 5–13, and 15–19 were not shown unpatentable because Petitioner did not sufficiently explain why a skilled artisan would combine Gleichauf and Lewis as proposed.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of professional experience in the field of network communications, and more specifically, network security.” Pet. 10 (citing Ex. 1003 ¶ 18). Petitioner asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. (citing Ex. 1003 ¶ 18). Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, 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) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34
Patent outcomesUS 8,234,705 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,234,705 - ROKU, Inc. v. Universal Electronics, Inc.No claims unpatentablePTAB · Aug 11, 2022 · IPR2021-00455 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–9 were not shown unpatentable over Chardon and HDMI 1.3a because the combination does not disclose data that itself identifies a controllable function.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“As Patent Owner observes, the two proposals differ “in terms of the level of experience specifically with home theater systems.” Id. at 10. Because all of the challenged claims make specific reference to a “home theater device,” Petitioner’s proposal is reasonable on the current record, and is additionally supported by the testimony of Dr. Russ. See Ex. 1003 ¶¶ 15– 19. Patent Owner notes that its expert, Dr. Turnbull, agrees with Patent Owner’s proposed articulation, but that Dr. Turnbull’s “conclusions resulting from his analysis did not change when reviewing the cited references from the perspective of the level of ordinary skill in the art as proposed by the Petition.” PO Resp. 10–11 (citing Ex. 2003, 31–41). We adopt Petitioner’s articulation of the level of ordinary skill for purposes of this Decision. We note, however, that we would reach the same ultimate conclusion were we to adopt Patent Owner’s proposal.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“phrase creates a degree of ambiguity, we are mindful that “the claims themselves provide substantial guidance as to the meaning of particular claim terms” and that “the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314. In this instance, the related phrasing that appears in the “automatically adding” and “causing” limitations of issued independent claim 1 is illuminating. Both of those limitations refer to “the controllable function of the controllable appliance that was identified by the data received from the controllable appliance.” Ex. 1001, 17:11–14, 17:21–24 (emphasis added). There is no question that the only antecedent for “the data” in these limitations is the “data that functions to identify a controllable function of the controllable appliance” recited in the “receiving” limitation. See id. at 17:8–9. And there is no apparent room in the language “that was identified by the data” for the introduction or consideration of such “other information” that Petitioner would like to use “in connection with” the recited “data” to identify the controllable function. See Reply 2.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner reasons that a person of ordinary skill in the art would have combined such teachings from HDMI 1.3a with Chardon’s system because HDMI 1.3a “is a technical guide for the interoperability of the HDMI standard and how HDMI enabled devices operate,” and that “Chardon relies on HDMI capabilities to facilitate communication and monitoring-device state changes in its system.” Pet. 30–31 (citing Ex. 1005, 4:18–21; Ex. 1010, 17; Ex. 1003 ¶¶ 130–131). According to Petitioner, “[a] person of ordinary skill in the art would have therefore turned to at least one of the versions of the HDMI Specification to fill in any details in Chardon with respect to how HDMI-capable devices, such as those of Chardon and the ’486 patent operate, and would have had a reasonable expectation of success in doing so.” Id. at 31. Petitioner supports this reasoning with testimony by Dr. Russ that it is a “well-known industry practice” to rely on HDMI 1.3a as “specification of an industry standard” when “designing and building devices that implement the HDMI standard, incorporating all of the capabilities it offers.” Ex. 1003 ¶ 133. Patent Owner disputes the sufficiency of Petitioner’s showing. In” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“The difficulty with Petitioner’s and Dr. Russ’s position is that it is inconsistent with our adopted claim construction that the data itself identify a controllable function of the controllable appliance from which the data is received. See supra § II.C. As Patent Owner asserts, HDMI 1.3a “does not contemplate the exchange of any information that itself functions to identify a controllable function of a playback device.” PO Resp. 24 (emphasis added). All that the “Deck Status” message indicates in the example of Figure 17 is that the current status of the playback device is “Stop.” We also are not persuaded by Petitioner’s and Dr. Russ’s argument that HDMI 1.3a’s Tables 13 and 26 disclose that “Deck Info” information is returned with the “Deck Status” message, and that such “a deck status message includ[es] the features that the device can provide (e.g., play, pause, stop, etc.).” Pet. 41; Ex. 1003 ¶ 117. Reliance on such “Deck Info” information is problematic at least because it is “other information” that would be used in combination with the “Deck Status” to determine controllable functions of the controllable device, which is precluded by our adopted claim construction.” slip op. at 36
Patent outcomesUS 10,325,486 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,325,486 - Apple, Inc. v. Corephotonics Ltd.No claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00906 · APJ John F Horvath · IPR · Final written decision
Claims 19–22 were not shown unpatentable because Petitioner did not establish that Ogata’s lens could be scaled for Parulski’s camera with a reasonable expectation of success.
RulingsFinal written decision- Expert testimonyDecided for patent owner
“first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner. The Petition contends that a person of ordinary skill in the art would have known that Ogata’s lens (using glass lens elements) could have been scaled to focus an image onto a 1/2.5” image sensor for use in Parulski’s camera. See Pet. 24–30; Ex. 1021, 36. Petitioner’s reply evidence and argument is not introduced to support that contention but a different contention—that a person of ordinary skill in the art would have known that Ogata’s lens could have been redesigned using aspheric plastic lens elements to focus an image onto a 1/3” image sensor. See n.11, supra. This is a new contention that does not support Petitioner’s 11 We note that Dr. Sasián’s analysis discloses how Kawamura’s lens can be modified by replacing the spherical glass lens elements with aspherical plastic lens elements, moving the aperture stop to the first lens element, changing the F number to 2.8, and reducing the effective focal length to focus an image onto a 1/3” image sensor rather than a 1/2.5” image sensor. See Ex. 1039 ¶¶ 25–30; App’x, 17–18. Dr. Sasián also opines that although this analysis illustrates how Kawamura’s lens could have been modified, a person skilled in the art “would have recognized that Ogata could have been similarly adjusted to yield a miniaturized form-factor.” Id. ¶ 25. because it is a new and untimely contention, we do not consider it further. See Consolidated Trial Practice Guide (Nov. 2019)12 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.”); see also Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015) (“The Board must make judgments about . . . when a Reply contention crosses the line from the responsive to the new.”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d at 1359, 1369–70 (Fed. Cir. 2016) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale to explain why one of skill in the art would have been motivated to combine” prior art references); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale” for why a claim would have been obvious).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableReasonable expectation not foundNot shown unpatentable
“first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15
Patent outcomesUS 10,225,479 not shown unpatentable§ 103 obviousnessPatents in suitUS 10,225,479 - Apple, Inc. v. Corephotonics Ltd.No claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00905 · APJ John F Horvath · IPR · Final written decision
Claims 1–16, 18, 23–38, and 40 were not shown unpatentable because the asserted obviousness combinations did not establish a fused image with both Wide perspective and position POV.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In a dual-aperture camera image plane, as seen by each sub-camera (and respective image sensor), a given object will be shifted and have different perspective (shape). This is referred to as point-of-view (POV). The system output image can have the shape and position of either sub-camera image or the shape or position of a combination thereof. If the output image retains the Wide image shape then it has the Wide perspective POV. If it retains the Wide camera position then it has the Wide position POV. The same applies for Tele images position and perspective. As used in this description, the perspective POV may be of the Wide or Tele sub-cameras, while the position POV may shift continuously between the Wide and Tele sub-cameras. In fused images, it is possible to register Tele image pixels to a matching pixel set within the Wide image pixels, in which case the output image will retain the Wide POV ("Wide fusion"). Ex. 1001, 5:10–26.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find Petitioner sets forth sufficient reasoning with rational underpinning to combine the teachings of Parulski and Konno. Parulski lenses, but fails to give lens prescription data for the two camera lenses. Konno discloses lens prescription data for a dual-lens camera utilizing two thin lenses. The combination, therefore, is one of familiar elements according to known methods to obtain predictable results or a substitution of one element for another known in the field to obtain a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23. Accordingly, for the reasons discussed above, Petitioner has failed to demonstrate by a preponderance of evidence that claims 1 and 23 are unpatentable as obvious over the combination of Parulski and Konno.” slip op. at 21
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Patent Owner argues that Petitioner and Dr. Durand have failed to demonstrate that Parulski teaches “the ‘fused image with a point of view (POV) of the Wide camera’ limitation” because their “sole argument that Parulski meets this limitation is based on the output [image] having the ‘wide image’s field of view.’” PO Resp. 29 (citing Ex. 1003 ¶ 51). Patent Owner further argues that “[n]othing in Parulski suggests that whatever image data from the tele image that might be ‘fused’ into the output would be modified to have the shapes and positions from the wide image POV” and “nothing in Dr. Durand’s declaration even attempts to establish [that] this admitted during his deposition that he had not provided an opinion about whether Parulski generates a fused image having both a Wide perspective POV and a Wide position POV. See PO Sur-Reply 5 (citing Ex. 2041, 52:25–54:20). We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23.” slip op. at 20
Patent outcomesUS 10,225,479 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,225,479 - ROKU, Inc. v. Universal Electronics, Inc.No claims unpatentablePTAB · Apr 13, 2021 · IPR2019-01615 · APJ Sharon Fenick · IPR · Final written decision
Claims 1, 3, 5, and 7 were not shown unpatentable because the evidence did not establish that Chardon’s command-code database teaches the claimed listing of communication methods.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that one of ordinary skill in the art would have had general knowledge of home theater systems, control of devices within the home theater systems, and remote control devices as of October 28, 2011. Further, a POSA would have had: (1) at least a bachelor’s degree in an electrical engineering, computer engineering, or equivalent coursework, and (2) at least one year of experience researching or developing structure and operating principles of common digital content reproduction and related appliances, contemporary television and home theater standards, and specifications of consumer digital reproducing devices of the time. Pet. 13. Patent Owner proposes a different standard: [A person of ordinary skill in the art] would have had a bachelor’s degree which involved software design and development coursework, for example, electrical engineering, computer engineering, computer science, cognitive science, industrial engineering, information systems, information studies, or a similar degree, and at least one year of work experience in software programming, development, or design of consumer applications. Additional education might substitute for some of the experience, and substantial experience might substitute for some of the educational background. PO Resp. 4–5 (internal citations omitted). The ’853 patent specifically relates to remote control devices, so we adopt Petitioner’s standard that includes general knowledge consistent with the field of the invention, and, additionally, is consistent with the prior art presented. See Ex. 1001, 1:63– 2:3; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes only one claim construction, for limitation [1.4], which specifies that the first and second communication methods are “for use in controlling each of at least a first functional operation and a second functional operation of the intended target appliance.” Pet. 14–17. In our Decision on Institution, we found that no specific construction was necessary. Dec. 17. Post-institution, the parties’ arguments did not involve the construction of this term, and no express construction is necessary for us to reach our conclusion. See PO Resp. 10 (Patent Owner stating that no construction is required). We determine that no specific construction is required to resolve the controversy before us, and thus decline to construe this limitation. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 11
- BurdenNot shown unpatentable
“by a preponderance of the evidence that Chardon teaches or suggests a database (the “listing” of claim 1) that is “comprised of at least a first communication method and a second communication method different than the first communication method,” which methods are “used to transmit to the intended target appliance a command for controlling” a functional operation of a target appliance, as required by claim 1. We find that Petitioner has not sufficiently adduced that a database “comprised of” CEC and IR command codes would teach or suggest claim 1’s listing.” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“by a preponderance of the evidence that Chardon teaches or suggests a database (the “listing” of claim 1) that is “comprised of at least a first communication method and a second communication method different than the first communication method,” which methods are “used to transmit to the intended target appliance a command for controlling” a functional operation of a target appliance, as required by claim 1. We find that Petitioner has not sufficiently adduced that a database “comprised of” CEC and IR command codes would teach or suggest claim 1’s listing.” slip op. at 20
Patent outcomesUS 9,716,853 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,716,853 - Intel Corporation v. VLSI Technology LLCNo claims unpatentablePTAB · Feb 12, 2020 · IPR2018-01040 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–4, 10, 12, and 13 were not shown unpatentable because the prior art did not teach or support adding the separately claimed third voltage reference.
RulingsFinal written decision- Adverse judgmentDenied
“We agree with Patent Owner that we should not address the patentability of claim 9 in this Decision. See PO Resp. 63–64. Rather, following Federal Circuit case law, we treat claim 9 as if it never existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). Consistent with other Board decisions in which some, but not all, challenged claims have been disclaimed after institution, we address the patentability only of the remaining claims. See LG Elecs., Inc. v. Wi-LAN Inc., IPR2018-00673, Paper 48 at 3 (PTAB Sept. 5, 2019) (Final Written Decision); Yamaha Golf Car, Paper 63 at 3; Baker Hughes, Paper 74 at 6, 11–12. We also agree with Patent Owner that we should not enter adverse judgment as to claim 9. See PO Sur-reply 26–27. Arthrex, the case relied on by Petitioner, does not mandate a different outcome. By its terms, 37 C.F.R. § 42.73(b)(2) permits disclaimer to be construed as a request for adverse action when there are “no remaining claim[s] in the trial.” That was the situation in Arthrex. 880 F.3d at 1347 (“Arthrex, Inc. disclaimed all claims that were the subject of the petition.”). Here, in contrast, several claims remain in the trial. Furthermore, Arthrex does not support Petitioner’s patent are disclaimed.” Pet. Reply 27. The Arthrex language quoted by Petitioner compares disclaimer of an “entire patent” under § 42.73(b)(1) with disclaimer of “some of the claims” of the patent (i.e., fewer than all claims in the patent but all challenged claims so there are no remaining claims in the trial) under § 42.73(b)(2). 880 F.3d at 1350. Neither situation is present here when only one claim (claim 9) has been disclaimed and several challenged claims (claims 1–4, 10, 12, and 13) remain in the trial.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention of the ’207 patent “would have had at least a[n] M.S. degree in electrical engineering and would have at least two years of experience with circuit design.” Pet. 17 (citing Ex. 1002 ¶ 32). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the asserted prior art and adopted Petitioner’s position, which Patent Owner did not oppose in the Preliminary Response. Inst. Dec. 14 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Neither Patent Owner, in its Response, nor Dr. Ipek, in his declaration, proposes a level of ordinary skill in the art. Dr. Ipek, however, states that “[f]or purposes of the subject IPR proceedings, I have been asked to employ [Petitioner’s proposed] standard of a person of ordinary skill, but I do not offer the opinion that it is the correct standard.” Ex. 2011 ¶ 19. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary determination is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one least an M.S. degree in electrical engineering and at least two years of experience with circuit design. See Inst. Dec. 14; Pet. 17.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the complete record developed during this inter partes review, we again conclude that the “third voltage reference” must be separate from the “second voltage reference.” We begin with the language of claim 1, which recites a first voltage reference, a second voltage reference, and a third voltage reference as separate elements.7 “Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citation omitted). The terms “first,” “second,” and “third” are terms used to distinguish separate elements of a claim. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1373 (Fed. Cir. 2005); see also 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1373 (Fed. Cir. 2005) (“The use of the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish between repeated instances of an element or limitation.”). Although Gillette and 3M address whether such terms impose a numerical or serial limitation, they nevertheless support Patent Owner’s position that enumerated elements typically are not construed to be the same element. See Sur-reply 11–12. Other cases cited by Patent Owner also support its position. See id. at 12 (citing Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935–39 (Fed. Cir. 2013) (construing “first” and “second” disks as separate and discrete disks); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1405) (Fed. Cir. 1996)” slip op. at 21
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“ordinary skill in the art would have sought to reduce power consumption in Takahashi to address the well-known problem of current leakage, and that providing a separate voltage reference for transistor 223 in Takahashi’s Figure 15 (i.e., a third voltage reference) would have achieved that goal. Pet. 34–35 (citing Ex. 1002 ¶ 88). But the only evidence Petitioner relies on for adding the proposed third voltage reference is the testimony of Dr. Stojanovic. Id. (citing Ex. 1002 ¶ 88). Without any additional supporting evidence, Dr. Stojanovic’s testimony is insufficient to supply the missing “third voltage reference,” which is a key limitation of claim 1. See K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014); Patent Trial and Appeal Board Consolidated Trial Practice Guide 36 (Nov. 2019)9 (“[I]n an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. . . . In other words, expert testimony may explain ‘patents and publications,’ but is not a substitute for disclosure in a prior art reference itself.” (citing K/S Himpp, 751 F.3d at 1365)); see also Inst. Dec. 30–31 (reaching the same conclusion on the preliminary record). Furthermore, we agree with Patent Owner that Petitioner’s proposed” slip op. at 37
Patent outcomesUS 7,706,207 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,706,207 - NVIDIA Corporation v. Polaris Innovations LimitedNo claims unpatentablePTAB · Nov 20, 2018 · IPR2017-01781 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–5, 8–12, 14, 16–23, 26–31, 43–45, and 48–51 were not shown unpatentable because the asserted references failed to establish data arrangement alteration or a sufficient motivation to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art as of the time of the ’344 patent (POSITA) would have had a Bachelor’s degree in Electrical Engineering and at least 2 years of experience working in the field of semiconductor logic design.” Ex. 1019 ¶ 13. Neither Patent Owner, nor its declarant, Dr. Przybylski, offers a different assessment of the level of ordinary skill in the art. See Ex. 2003 ¶ 36 (“I am applying the definition of the level of experience of a person of ordinary skill in the art that has been put forward by Dr. Tredennick in his declaration. I do not necessarily agree with the definition offered there, but I do not presently believe that the exact level of experience of a person of ordinary skill impacts my opinions offered herein.”). Based on the evidence of record, we adopt Dr. Tredennick’s statement of the level of ordinary skill in the art with the exception of the language “at least.” Thus, we determine that the skill level of a person of ordinary skill in the art would have been that of a person with a bachelor’s degree in electrical engineering and two years of experience working in the field of semiconductor logic design.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Even if so, the arrangement of the data must be altered to give full effect to the claim language. The portions of the specification of the ’344 patent cited by Petitioner confirm this. In one instance, the ’344 patent states: In the first error coding path 120, the first data arrangement alteration device 122 is adapted to create a second data block on the basis of the first data block, which comprises the given number of data in a second arrangement, and to output it to the first error coder 124. Ex. 1001, 3:63–67 (emphasis added), cited in Paper 47, 2. Another passage states: The data arrangement alteration device 222 is adapted to receive, at the input 222E or 102, a first data block comprising a given number of data in the first arrangement, and to generate, on the basis of the first data block, a second data block comprising the given number of data in a second arrangement . . . . Ex. 1001, 6:14–18 (emphasis added), cited in Paper 47, 2. These passages show that data arrangement alteration takes data and puts those data into a different arrangement. Petitioner also cites the ’344 patent’s disclosure of a deserializer changing the “representation” of data. Paper 47, 2–3 (citing Ex. 1001, 8:58–62, 9:2–7). But, in this operation, “the second data block 440 . . . comprises the same data, namely the 72 bits of the first data block 435 in a second arrangement which is different from the first arrangement of the first data block.” Ex. 1001, 9:32–35 (emphasis added). Petitioner also cites an example in the ’344 patent in which the burst length is halved from eight time pulses to four time pulses. Ex. 1001, 11:52–61, cited in Paper 47, 4. The ’344 patent describes that, in this scenario, only half of the bits (36 out of 72) “will be occupied with processable data.” Ex. 1001, 11:59–60. Petitioner contends that this describes an output of 72 bits that is larger and different than the input of only 36 bits. Paper 47, 4. The ’344 patent, however, describes providing “a further subarea of the matrix 420 for this mode, and to control the multiplexer 430, via the mode register 110, such that this subarea will be read out, so that, for example, only 36 of the 72 bits will be occupied with processable data.” Ex. 1001, 11:56–60 (emphasis added). Thus, it is the subarea having the 36 bits of processable data that is read out. But even if Petitioner is correct that the output is larger than the input in this example, data arrangement alteration still requires an alteration of the arrangement of the input data, even if the output contains additional data. In all of the examples in the specification of the ’344 patent, therefore,” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner
“a data arrangement alteration algorithm’ is described in the ’344 patent as a ‘data arrangement alteration device,’ which is part of the ‘one or more devices’ of the first means of claim 19. Thus, the corresponding structure is ‘a data arrangement alteration device.’” Pet. 10 (citing Ex. 1001, 6:14–25, 6:42–65, 7:10–24; Ex. 1019 ¶ 32). In the Decision on Institution, we addressed Petitioner’s proposed construction for “means for performing a data arrangement alteration algorithm,” but we did not adopt it. Dec. on Inst. 11–12. Rather, we set out the following construction of this term: Limitation Function and Structure Claim 19: means for performing a Function: performing a data data arrangement alteration arrangement alteration algorithm algorithm Structure: data arrangement alteration devices 122, 132, and 222 and equivalents. See id. at 3:27–34, 5:65–6:25, 6:42–65, 8:55–57, 10:34–45, Figs. 1–4. During the trial in this proceeding, neither party further disputed this interpretation. Having considered the entire record developed during trial, we determine that this is the proper interpretation for “means for performing a data arrangement alteration algorithm.” Thus, we apply this interpretation in our analysis below.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As discussed above in the section addressing claim interpretation, “data arrangement alteration” requires alteration of the arrangement of data, not merely alteration of data. Petitioner’s allegation that Yoon’s data bus inversion alters some portion of the data is insufficient to show that Yoon describes altering the arrangement of data, as required by the claims. For the same reasons, we are not persuaded that Yoon’s data bus inversion devices describe the same or equivalent structure as that set forth in the specification of the ’344 patent, namely data arrangement alteration devices 122, 132, and 222, as set forth in our claim interpretation discussion above. Because Petitioner has not shown Yoon describes the “data arrangement alteration” limitations of independent claims 1, 16, 19, and 43, Petitioner has not proven, by a preponderance of the evidence, that Yoon anticipated these claims. Dependent claims 8–12, 14, 26–31, and 48–51 incorporate the “data arrangement alteration” limitations by virtue of their dependency from their respective independent claims, and, therefore, Petitioner has not proven, by a preponderance of the evidence, that Yoon anticipated these claims.” slip op. at 16
Patent outcomesUS 8,161,344 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,161,344 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision
The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5
Patent outcomesUS 8,823,732 not shown unpatentable§ 102 anticipationPatents in suitUS 8,823,732
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.