- Apple Inc. v. Corephotonics Ltd.All claims unpatentablePTAB · Dec 3, 2019 · IPR2018-01140 · APJ Marc S Hoff · IPR · Final written decision
Claims 1 and 13 are unpatentable as anticipated by Ogino; claims 14 and 15 are unpatentable as obvious over Ogino and Chen II.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“claims 1 and 13 of the ’032 Patent are anticipated by Ogino. Petitioner has also demonstrated, by a preponderance of the evidence, that claims 14 and 15 of the ’032 Patent are unpatentable over the combination of Ogino and Chen II. The chart below summarizes our conclusion. References Claims Claims Claims 35. Shown Not shown Challenged U.S.C. Unpatent- Unpatentable able Ogino 1 and 13 1 and 13 § 102 Ogino, Chen 14 and 15 14 and 15 § 103 II 1 and 13-15” slip op. at 40
- Skill levelSkill level board ownDecided for petitioner
“that Ogino and Chen II disclose substantially different lens systems. PO Resp. 36. As Petitioner points out, both Ogino and Chen II describe mobile phone camera systems with all lenses being aspheric; a first lens with a meniscus shape with positive refractive power; a second lens with negative refractive power; a third lens with a meniscus shape and with a negative refractive power; a fourth lens with a meniscus shape with positive refractive power; and a fifth lens with a meniscus shape and with a negative refractive power. Pet. Reply 22; Pet. 41–44. We agree with Petitioner that such a skilled artisan, possessing an applicable college degree, approximately three years experience in designing multi-lens optical systems, “experience in analyzing, tolerancing, adjusting, and optimizing multilens systems, and experience with lens design software such as CodeV, Oslo, or Zemax,” would have the appropriate knowledge to perform routine modifications to a lens design. Pet. Reply 24; Pet. 7; PO Resp. 12. Patent Owner’s expert Dr. Moore testified that such a skilled artisan “would be able to use the computer program [i.e. CodeV or Zemax] to optimize lens designs.” Pet. Reply 24; Ex. 1025, 29:25–30:9. Dr. Moore testified that the skilled artisan would “tell the [lens design] program that you want to vary certain parameters of a lens . . . . And then the program, through a fairly complicated algorithm, then actually goes through and varies them and determines how to make a better lens. You determine as a lens designer what you’re trying to improve.” Ex. 1025, 28:13–23.” slip op. at 38
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We are unpersuaded by Patent Owner’s argument that the skilled artisan would have understood that third, fourth, and fifth lenses also contribute to vignetting in Ogino. PO Resp. 38. We credit Petitioner’s argument that Dr. Moore’s conclusion regarding vignetting in the third, fourth, and fifth lenses is unreliable because it is based on assumptions not specified in Ogino. Pet. Reply 16; Ex. 1026 ¶ 11. For example, Ogino does not provide lens diameters or vignetting apertures for the lens assembly of Example 6 that would vignette the light beams on the third, fourth or fifth lens elements. Pet. Reply 17; Ex. 1026 ¶ 11. Additionally, Dr. Sasián testifies that vignetting is a result of the second lens. Pet. Reply 17–18; Pet. 54; Ex. 1003, 59.” slip op. at 36
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Effective Focal Length (EFL) Petitioner asserts that while the specification of the ’032 Patent does not offer an express definition for the term “effective focal length,” “its meaning is well known in the art, as exemplified in Li (Ex. 1007), which states that “[t]he focal length of a lens assembly [is] also referred to as the effective focal length [(]EFL).” Pet. 9–10 (internal parentheses omitted); Ex. 1007, 2:59–61. Patent Owner, in response, does not dispute Petitioner’s construction of “effective focal length,” stating that the Petition does not turn on the construction of the term. PO Resp. 20. Having reviewed the evidence of record, we agree with Petitioner that Li supports construing the term “effective focal length” as “the focal length of a lens assembly.” We adopt this construction.” slip op. at 10
Patent outcomesUS 9,402,032 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,402,032 - Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Rehearing deniedPTAB · Nov 26, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because § 315(a)(1) barred review after Petitioner filed and voluntarily dismissed a declaratory judgment action.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“institution of an inter partes review because Petitioner previously filed a declaratory judgment action challenging the validity of claims in the ’012 patent, notwithstanding Petitioner’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 5–8. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 6–8.” slip op. at 2
Discretionary denialPatents in suitUS 8,155,012 - Apple Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · Nov 18, 2019 · IPR2018-00884 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left intact the unpatentability of claims 1–17 and 23–25 under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“suggested by the Examiner to express more clearly the applicants’ intention to convey that the network entity is not the intended end recipient device. Final Dec. 11–12. As we explained, our interpretation that “a network entity intercepting a signaling message associated with a call between a sender device of the message and an intended recipient device of the message” means that the network entity receives the message and the network entity is not the intended end recipient device is supported by the prosecution history: [T]his interpretation is consistent with the prosecution history of the application resulting in the ’552 patent, which reveals that the patent examiner suggested using the word intercepting in the claims to further clarify the applicants’ intention to convey that “the independent claims involve a network entity receiving and filtering messages that are sent between two end users.” Ex. 1002, 364–65 (first emphasis added); see also id. at 367–68 (distinguishing an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message). Id. Thus, rather than ignoring the amendment “as if it had never happened” (Req. Reh’g 3), we explained our interpretation that the Examiner suggested using “intercepting” to more clearly convey that the recited network entity is not one of the intended end user devices between which the signaling message is sent. Although Patent Owner argues that the Decision “d[oes] not appear to apply the presumption that the applicant’s decision to narrow claim 1 by amendment gave rise to a general disclaimer of the territory between the original claim and the amended claim” (Req. Reh’g 4 (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740, (2002)), Patent Owner does not identify the alleged “disclaimer of the territory,” and thus fails to specifically identify how we allegedly erred. See 37 C.F.R. § 42.71(d). Nor are we apprised that we misapprehended or overlooked any matter by Patent Owner’s assertions regarding the applicants’ comments about the amendment. See Req. Reh’g 4. Patent Owner characterizes the comments as “distinguish[ing] ‘intercepting’ in this context from the disclosure in a cited reference2 directed to merely receiving a message at a network entity.” Id. This characterization is incomplete, as the reference describes a “service request [that] is sent from the service-used apparatus directly to the service-provider apparatus, not to some other apparatus.” Ex. 1002, 368 (emphasis added). As we explained in the Decision, the applicants “distinguish[ed] an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message.” Final Dec. 12 (citing Ex. 1002, 367–68).” slip op. at 4
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner’s declarant is entitled to little weight: Dr. Easttom’s declaration testimony interpreting “receiving” fails to consider the full disclosure and prosecution history of the ’552 patent, as explained above, and, thus is not entitled to substantial weight. See, e.g. Ex. 2001 ¶¶ 8–9; see also PO Resp. 6 (citing same). Additionally, Patent Owner hindered or prevented Petitioner from cross-examining Dr. Easttom, further undermining the weight given to Dr. Easttom’s testimony. See, e.g., Pet. Reply 2–6; Exs. 1011–24. Final Dec. 12 n.9.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for petitioner
“[t]he intercepting of call control server 112 at least includes seizing a message, which is not sent directly . . . from a client 104 to the server 112, 2 US 2003/0177363 (“Yokota”). and obstructing the message from progress while authentication processes are performed.” Req. Reh’g 5 (citing Paper 14, 4–5 (PO Sur-Reply)). Although Patent Owner cites to its Sur-Reply, we see no argument there regarding “seizing” and “obstruction.” As this was not an argument on which Patent Owner previously relied, it was not an argument that we could have misapprehended or overlooked. slip op. at 5
Claim constructionPatents in suitUS 8,539,552 - Zscaler, Inc. v. Symantec CorporationAll claims unpatentablePTAB · Nov 13, 2019 · IPR2018-00920 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Nortel, Nortel and Stone, Alles and Lin, or Alles, Lin, and Stone.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We credit Dr. Jakobsson’s testimony, which is supported by evidence cited above, and determine the Petition and supporting evidence show that a person of ordinary skill in the art would have understood Nortel’s processing rules comprise software instructions to perform specific functions, and that a person of ordinary skill would have considered software instructions to perform specific functions to be applications. We rely on Nortel’s teaching of a processor group configured with processing rules to provide service policies such as security functions, and Dr. Jakobsson’s testimony and his supporting evidence that a person of ordinary skill in the art would have understood that security functions are provided by software applications, to determine that Nortel and the knowledge of a person of ordinary skill in the art teaches “a plurality of application processing hardware modules, each configured with an application for processing data packets” as recited in claim 1 and the corresponding limitation of 13. Ex. 1004, 3:5–9, 23:1–29, Fig. 6A; Ex. 1003 ¶¶ 80–85 (citing Ex. 1004, 3:5–9, 9:12–14, 9:16–19, 14:28–15:2, 15:4–6, 23:3–6, Fig. 6A; Ex. 1012, 4, 6; Ex. 1013, 4).” slip op. at 12
- BurdenFwd all claims unpatentableUnpatentable
“For the reasons given above, we determine that the Petition and supporting evidence show, by a preponderance of the evidence, that Nortel in view of the knowledge of a person of ordinary skill in the art would have rendered claims 1 and 13 obvious.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“applications includes parallel transmitting of the identified data packets to each of the identified application processor modules.” Claim 14 recites a similar limitation. Petitioner, relying on testimony of Dr. Jakobsson, contends the cited art renders these limitations obvious because it would have been obvious to a person of ordinary skill in the art to apply Stone’s teaching of parallel transmission to Nortel’s ISN, such that the switch fabric transmits data packets in parallel to the packet service cards. Pet. 37–38 (citing Ex. 1004, 21:1–5, 22:31–32, 23:1–29, Figs. 4, 6A; Ex. 1005, 12:58– 13:18, Fig. 4; Ex. 1003 ¶¶ 160–162), 42. Petitioner, relying on testimony of Dr. Jakobsson, contends a person of ordinary skill in the art would have applied Stone’s parallel data transfer to the switch fabric of Nortel for the benefit of increasing the speed of transmitting a subscriber’s data packets to the appropriate service cards. Pet. 43–46 (citing Ex. 1005, 11:59–61; Ex. 1003 ¶¶ 192–199). Dr. Jakobsson testifies that a person of ordinary skill in the art would have been motivated to transfer data packets in parallel between Nortel’s switch fabric and packet service cards in order to increase the operating speed and efficiency of the system. Ex. 1003 ¶¶ 190–192 (citing Ex. 1012, 8; Ex. 1005, 11:59–61). We credit Dr. Jakobsson’s testimony and determine the Petition and supporting evidence articulates a reason with a rational underpinning that a person of ordinary skill in the art would have applied Stone’s teaching of transferring data packets in parallel, to transfer data packets in parallel between Nortel’s switch fabric and packet service cards, for the benefit of increasing speed as taught by Stone. We determine that the Petition and supporting evidence show by a preponderance of the evidence that the combination of Nortel and Stone would have rendered claims 2 and 14 obvious.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this decision, we determine no terms need an explicit construction to resolve a controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy). We address claim interpretation to the extent necessary within the unpatentability analysis.” slip op. at 7
Patent outcomesUS 9,525,696 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,525,696 - Kathrein USA, Inc. / T-Mobile US, Inc v. Fractus S.A.Institution deniedPTAB · Oct 25, 2019 · IPR2019-00953 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims because claim ambiguity prevented a reasonable likelihood determination on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any one of claims 1, 6, 7, 8, 11, 13, 14, 17, and 20 on any ground. Accordingly, the Petition is denied, and no inter partes review is instituted.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“2. The Term Juxtaposition As discussed above, the district court construed “juxtaposition” as “interleaving.” Ex. 1176, 24. The district court did so largely on the basis that, on the record before the district court, it had not been shown that “juxtaposition” has any well-known meaning in the relevant art and because the Specification of the ’256 patent appears to use the terms “juxtaposition” and “interleaving” interchangeably. Id. at 15–24. The record before us similarly demonstrates no well-known meaning for “juxtaposition” in the relevant art, and neither party makes such a contention. Further, we also read the Specification as using the terms “juxtaposition” and “interleaving” interchangeably. For instance, the ’256 patent states “[t]he array configuration is described on a basis of the juxtaposition or interleaving of various conventional single-band arrays operating in the different bands of interest.” Ex, 1101, 1:28–30 (emphasis added). We find no portions of the Specification that make a distinction between “juxtaposition” and “interleaving.” Therefore, we agree with the district court’s construction of “juxtaposition” as “interleaving.” Ex. 1176, 24.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“As noted above, we agree with the district court that the term “juxtaposition” means “interleaving.” The ’256 patent, however, does not define “interleave” or “interleaving.” We consult a technical dictionary, which defines “interleave” as follows: interleave (1) To arrange parts of one sequence of things or events so that they alternate with parts of one or more sequences of things or events and so that each sequence retains its identity; for example, to alternately perform the steps of two different tasks in order to achieve concurrent operation of the tasks. (C/C) [20], [85] (2) (software) To alternate the elements of one sequence with the elements of one or more other sequences so that each sequence retains its identity; for example, to alternatively perform the steps of two different tasks in order to achieve concurrent operation of tasks. (C) 610.12-1990. (3) To arrange parts of one sequence of things or events so that they alternate with parts of one or more sequences of the same nature such that each sequence retains its identity; [f]or example, to assign successive addresses to physically separated storage locations in such a way to reduce access time. (C) 610.10-1994w. IEEE 100: The Authoritative Dictionary of IEEE Standards Terms 577 (7th ed. 2000) (“IEEE Dictionary”) (Ex. 3002). The juxtaposition of two antenna arrays as shown in Figure 1 of the ’256 patent, i.e., columns 1a and 1b, which results in the positions of the elements in the multiband array shown in column 1c, however, is not consistent with the above-reproduced definition of “interleave.” In that regard, we again reproduce Figure 1 of the ’256 patent below:” slip op. at 14
- BurdenDenied
“C.F.R. § 42.104(b)(3), the Petition must identify how to construe each challenged claim. In this case, the Petition does not address the issues discussed above sufficiently to eliminate uncertainty and speculation as to whether the claims read on the prior art.” slip op. at 21
Claim constructioncites Phillips · GrahamPatents in suitUS 8,228,256 - Kathrein USA, Inc. / T-Mobile US, Inc v. Fractus S.A.Institution deniedPTAB · Oct 25, 2019 · IPR2019-00952 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims because ambiguous claim language left it unable to assess the asserted grounds without speculation.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“Because the claim language is ambiguous in numerous respects as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds of unpatentability. If the scope of the claims cannot be determined without undue speculation, as it is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013- 00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d at 862–63 and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63.” slip op. at 21
- Prior constructionPrior construction adoptedDecided for patent owner
“2. The Term Juxtaposition As discussed above, the district court construed “juxtaposition” as “interleaving.” Ex. 1076, 24. The district court did so largely on the basis that, on the record before the district court, it had not been shown that “juxtaposition” has any well-known meaning in the relevant art and because the Specification of the ’256 patent appears to use the terms “juxtaposition” and “interleaving” interchangeably. Id. at 15–24. The record before us similarly demonstrates no well-known meaning for “juxtaposition” in the relevant art, and neither party makes such a contention. Further, we also read the Specification as using the terms “juxtaposition” and “interleaving” interchangeably. For instance, the ’256 patent states “[t]he array configuration is described on a basis of the juxtaposition or interleaving of various conventional single-band arrays operating in the different bands of interest.” Ex, 1001, 1:28–30 (emphasis added). We find no portions of the Specification that make a distinction between “juxtaposition” and “interleaving.” Therefore, we agree with the district court’s construction of “juxtaposition” as “interleaving.” Ex. 1076, 24.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, we only need to address construction of the recited juxtaposition of antenna arrays and the term “juxtaposition” itself.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2 Petitioner asserts that the level of ordinary skill in the art corresponds to that of one who had (1) “an accredited Master’s degree in electrical engineering, applied physics, or any similar course of study, and a few years of experience related to the design and/or application of antennas,” or (2) “a doctorate in electrical engineering, applied physics, or any similar course of study, with knowledge of electromagnetic theory as applied to design and/or application of antennas.” Pet. 29. Patent Owner adopts for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). The Petition here was filed on April 9, 2019. Paper 3. So we apply the claim construction standard from Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (“the Phillips standard”). Claim terms are generally given their ordinary and customary meaning as would be understood by one with ordinary skill in the art in the context of the specification, the prosecution history, other claims, and even extrinsic evidence including expert and inventor testimony, dictionaries, and learned treatises, although extrinsic evidence is less significant than the intrinsic record. Phillips, 415 F.3d at 1312–1317. Usually, the specification is dispositive, and it is the single best guide to the meaning of a disputed term. Id. at 1315. The specification may reveal a special definition given to a claim term by the patentee, or the specification may reveal an intentional disclaimer or disavowal of claim scope by the inventor. Id. at 1316. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The disavowal, if any, can be effectuated by Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 14. On this record, we have no basis to question Petitioner’s articulation. Thus, we adopt the level of ordinary skill as articulated by Petitioner.” slip op. at 8
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,228,256 - Trustid, Inc. v. Next Caller, Inc.All claims unpatentablePTAB · Oct 24, 2019 · IPR2018-01066 · APJ Jean R Homere · IPR · Final written decision
Claims 1–20 are unpatentable as obvious under § 103(a) over Bushnell, Bala, and Pickering.
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) (internal quotation and citation omitted). In that regard, Petitioner’s Declarant, Leonard J. Forys, Ph.D., testifies that a person with ordinary skill in the art at the time of the invention would have had a B.S. degree in Computer Science, or Electrical Engineering, or similar engineering discipline with an emphasis in communications and at least three years of experience designing and/or developing contact center solutions, including network interconnection, computer-telephony integration, and customer and agent interfaces. Ex. 1032 ¶¶ 56–58. Further, Petitioner contends that the level of ordinary skill could have varied somewhat so as to allow industry experience and education to compensate for each other. Pet. 8. Patent Owner’s response does not address Petitioner’s proposed assessment of the level of the ordinary skill in the art. On this record, we observe that Petitioner’s undisputed assessment of a person of ordinary skill in the art appears to be consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt the Petitioner’s proposed level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“a. Centralized Caller profile System Patent Owner argues “Centralized Caller Profile System,” recited in the preamble of independent claims 1 and 11, is limiting and refers to caller profiles in a central location accessible and revisable by multiple parties. PO Resp. 8–9. According to Patent Owner, unlike caller profiles traditionally stored at a single location, the caller profiles are stored at a centralized database accessible and updatable by the user and authorized third parties (e.g., user’s agent, service provider). Id. at 9–10 (citing Ex. 2005 ¶¶ 40–44). Accordingly, Patent Owner submits that, as acknowledged by Petitioner, “Centralized Caller Profile System” encompasses not only caller profiles located at a single location, but also that which is accessible and revisable by multiple parties. Id. at 10–11 (citing Ex. 2005 ¶¶ 38, 44–54, Ex. 2004, 17:2– 18:7, 18:9–13, 21:7–14). Patent Owner therefore argues that Petitioner’s contention that the preamble is not limiting for lack of antecedent basis, and relates merely to a location (e.g. centralized or on the cloud) is not persuasive because it overlooks the ’612 patent’s description that the “Centralized Caller Profile System” permits multiple parties to access the database. Id. at 11–12, Sur-Reply 2–4. In response, Petitioner reasserts that the preamble is not limiting because it does not provide antecedent basis for and does not breathe meaning into the claims. Pet. Reply 3, Pet. 25. According to Petitioner, because the proposed construction of the preamble is already recited in the claim, namely “the Cloud Database is maintained [(meaning ‘accessible and revisable’)]” by each of a service provider, user, and third party, the reading of the preamble into the claim is duplicative and thereby non-limiting. Pet. Reply 3. We agree with Petitioner insofar as it is undisputed by the parties that the claim, as a whole, requires the Centralized Caller Profile System that comprises the Cloud Database including contents, which are maintained (i.e., accessible and revisable) by each of a user, a service provider, and a third party. Consequently, it is immaterial whether the preamble, which recites similar limitation, is limiting or not.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that, consistent with the cited disclosure of the ’612 patent, a POSITA would have understood that maintaining the “Cloud Database” relates to updating the “Content” thereof. PO Resp. 12– 13. As correctly noted by Patent Owner, the disclosure of the ’612 patent discusses in great detail updating the “Content” of the Cloud Database in connection with maintaining the Database, whereas Petitioner has not provided any references in the ’612 patent to support that maintaining the “Cloud Database” pertains also to updating the software and hardware thereof. Id., Sur-Reply 5–6. Accordingly, we construe “the Cloud Database is maintained” as being limited to updating or revising the “Content” of the caller information (e.g., profile or billing info) in the “Cloud Database”.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“5. Obviousness Analysis Petitioner provides explanations to account for all of the claim limitations required by claims 1–20, and reasons combining the teachings of Bushnell, Pickering, and Bala, citing Dr. Forys’s Declaration for support. Pet. 25–74, Ex. 1032. We begin our analysis with claim 1. We have reviewed the Petition, Patent Owner Response, Petitioner’s Reply, and Patent Owner’s Sur-Reply as well as the relevant evidence discussed in those papers and other record papers. We are persuaded that the record before us establishes Petitioner’s contentions for claims 1–20 by a preponderance of the evidence.” slip op. at 20
Patent outcomesUS 9,143,612 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,143,612 - Samsung Electronics Co., Ltd. v. M & K Holdings Inc.All claims unpatentablePTAB · Sep 11, 2019 · IPR2018-00697 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Budagavi, WD3-v1, and Sole; the motion to amend is granted, adding substitute claims 8–14.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“A. Principles of Law It is a petitioner’s burden to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said 2 Budagavi et al., U.S. Pub. No. 2011/0170594 A1 (July 14, 2011, filed Dec. 30, 2010) (Ex. 1005). 3 Sole et al., Unified Scans for the Significance Map and Coefficient level Coding in High Coding Efficiency, JCTVC-E335 (version 3) (uploaded Mar. 19, 2011) (Ex. 1006). 4 Thomas Wiegand et al., WD3: Working Draft 3 of High-Efficiency Video Coding, JCTVC-E603 (version 1) (uploaded March 30, 2011) (Ex. 1007). subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on the following underlying factual determinations: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations.5 Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the principles stated above in mind.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“1, which teaches using a single scan depending on a prediction mode, with teachings related to Figure 2, which teaches scanning subsets in a different direction than scanning coefficients within a subset (without teaching the two scans depend on the intra prediction mode). See Ex. 1006, 1–2, Figs. 1 and 2; Opp. 8–9 (citing Pet. 43–49; Ex. 1002 ¶¶ 134–135). In so doing, Petitioner improperly combines two teachings from separate embodiments without an adequate reason. As the main reason for the combination, Petitioner contends that Sole combines the teachings from the two embodiments. See Pet. 45 (arguing “Sole also discloses using a backward zigzag scan for scanning the quantized coefficients of each subset and the plurality of subsets, which is a modified version of the scan technique shown in Figure 2” (emphasis added)), 45–51 (relying on what Sole allegedly teaches and explaining why an artisan of ordinary skill would have looked to Sole). Dr. Kalva credibly testifies that Sole does not teach combining the teachings. See, e.g., Ex. 2025 ¶ 91 (“Sole repeatedly asserts that its aim is to apply the same scan pattern used for the significance map to the coefficient level coding (e.g., the quantized coefficients.)”), ¶ 94 (The conclusion that Sole does not teach or suggest scanning subsets using a scan pattern determined by the intra prediction mode is confirmed by Davies and Sole II.”), ¶ 95 (“[T]he subsets are not scanned, let alone scanned using a scan pattern determined by the intra prediction”).” slip op. at 103
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“algorithm implements a single scan direction without suggesting retaining the sub-block concept and without suggesting scanning sub-blocks according to an intra prediction mode. Therefore, Sole does not teach scanning a plurality of subsets according to an intra prediction mode as claim 8 requires. Accordingly, Petitioner fails to meet the burden of showing that a person of ordinary skill would have considered the combined teachings of Budagavi and Sole to meet the last limitation of proposed substitute claim 8. After reviewing the entire record, we determine Petitioner has not shown that the subject matter of proposed substitute claim 8 would have been obvious over Budagavi and Sole. We therefore grant Patent Owner’s Motion to Amend as to proposed substitute claim 8. 2. Patentability of Claims 9–14 Because the parties do present not separate arguments for proposed substitute claims 9–14, which depend from proposed substitute claim 8, they stand with claim 8. Accordingly, we further grant Patent Owner’s Motion to Amend as to these proposed substitute dependent claims. IV.” slip op. at 107
- ExcludeMotion to exclude, deniedDenied
“For the foregoing reasons, Patent Owner does not meet the burden on its Motion. In addition, even if we disregard statements by Mr. Bross in paragraphs 11 and 12 that we hold here fall under a hearsay exception or constitute non-hearsay, it would not alter the outcome, given other evidence, including (but not requiring) the evidence of a verbal act discussed above, and including other Exhibits discussed above collectively showing that interested artisans exercising reasonable diligence should have been able to visit the website and would have known it archived HEVC standards, lending a reason to visit it.” slip op. at 115
Patent outcomesUS 9,191,673 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,191,673 - Samsung Electronics Co., Ltd. v. M & K Holdings Inc.All claims unpatentablePTAB · Sep 4, 2019 · IPR2018-00696 · APJ Karl D Easthom · IPR · Final written decision
Claims 1, 2, 5, and 6 are unpatentable as anticipated by WD4-v3; claims 3 and 4 are unpatentable as obvious over WD4-v3, Park, and Zhou.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art We adopt Petitioner’s proposed level of ordinary skill in the art, which” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“Petitioner shows by a preponderance of evidence that WD4-v3 anticipates claims 1, 2, 5 and 6 of the ’163 patent under 35 U.S.C. § 102(a); and, the combination of WD4-v3, Park, and Zhou renders claims 3 and 4 obvious under 35 U.S.C. § 103(a).” slip op. at 100
- ExcludeMotion to exclude, deniedDenied
“For the foregoing reasons, Patent Owner does not meet the burden on its Motion. In addition, even if we disregard statements by Mr. Bross in paragraphs 11 and 12 that we hold here fall under a hearsay exception or constitute non-hearsay, it would not alter the outcome, given other evidence, including (but not requiring) the evidence of a verbal act discussed above, and including other Exhibits discussed above collectively showing that interested artisans exercising reasonable diligence should have been able to visit the website and would have known it archived HEVC standards, lending a reason to visit it.” slip op. at 100
Patent outcomesUS 9,113,163 unpatentable§ 103 obviousnessPatents in suitUS 9,113,163 - Apple Inc. v. Corephotonics, Ltd.Rehearing deniedPTAB · Aug 5, 2019 · IPR2018-01348 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because the petition did not show a sufficient motivation to combine Parulski and Christie.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“and Parulski’s teachings of zoom are combinable (id.) and Petitioner has not established that they are predictable variations of each other. Disparate embodiments in one reference can only be combined if they are a “predictable variation” of each other that does not “require a leap of inventiveness.” C.f. Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009); see e.g. Apple Inc. v. Valencell, Inc., Case IPR2017- 01704, slip op. at 10 (PTAB Mar. 27, 2018) (Paper 9) (acknowledging Boston Scientific stands for the proposition that combining two embodiments from the same reference requires an obviousness analysis); LG Display Co., LLC v. Innovative Display Techs LLC, Case IPR2014-01362, slip op. at 13 (PTAB Mar. 2, 2015) (Paper 12) (“The rationale . . . that a person of ordinary skill would ‘pick and choose’ features from various embodiments of Baur, simply because they are in the same patent, is insufficient to demonstrate a reasonable likelihood of prevailing on this challenge”). “Even when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“fused image.” Reh’g Req. 13. The Petition proposed that “fused image” should be construed as “an output image including information from two images.” We determined that construing that term was unnecessary to resolve any controversy. Inst. Dec. 7. We maintain that determination. Petitioner provides a construction for “fused image” but not for “without fusion continuous Zoom video mode output images of the object or scene.” Id. at 9–10. We properly considered the entire claim limitation in assessing whether Petitioner had shown a reasonable likelihood of prevailing in its obviousness challenge. slip op. at 12
- BurdenDecided for patent owner
“The burden of persuasion remains on a petitioner in inter partes review proceedings. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999). Petitioner appears to now argue that, in order to understand its contentions as to the “without fusion” limitation in Parulski, we were to mine the Petition for references to “switching between Wide sensor and Tele sensor” associated with Golan. We were not required to do so. Id. (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”); c.f. Fieldpiece Instruments, Inc. v. Twin Rivers Eng’g, Inc., Case IPR2017-00362, slip op. at 4 (PTAB Sept. 25, 2017) (Paper 16)(“the portions of the Petition cited in the Rehearing Request relate only to overviews of the references”)” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,185,291
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.