• Intel Corporation v. Parkervision, Inc.No claims unpatentable
  PTAB · Jan 21, 2022 · IPR2020-01302 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1, 3, 4, 7, and 9–11 were not determined unpatentable because the asserted Larson and Larson–Butler grounds did not teach sampling.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Neither party contends that the differences in proposals affect the outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art from the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’474 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include the specifics from option (b) of Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 11

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

    “Because the parties agree that the claims remaining in the trial require “sampling” and also agree that the prior art asserted in this case does not teach “sampling” (as discussed further below), we need not construe these terms expressly to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803. sampling Although claim 1 does not recite “sampling” expressly, the post- institution briefs make clear that the parties agree that claim 1 and its dependent claims require sampling. In particular, Patent Owner contends, (1) “the ’474 patent pertains to a technique called sampling, which involves the use of a ‘switch’” (PO Resp. 2); (2) “all of the challenged claims are directed to a sampling system and, in particular, an energy sampling system (also known as an energy transfer system)” (id.); and (3) “[t]he challenged claims only cover energy sampling and the use of switches” (id. at 20). In its Reply, although Petitioner disagrees with Patent Owner’s interpretation of the claims as limited to energy sampling (i.e., energy transfer systems) (Pet. Reply 3–7), Petitioner contends that based on its “subsequent analysis of [Patent Owner’s] foundational ’551 patent—one of the multiple patents which the ’474 patent incorporates by reference—[Petitioner] now agrees with [Patent Owner] that the claims cover only systems that down-convert by sampling.” Pet. Reply 2. Thus, at a minimum, the parties agree that the claims at issue in this proceeding require sampling.” slip op. at 13

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

    “Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19

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

    “Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19

  Patent outcomesUS 7,539,474 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,539,474
• Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Aug 13, 2021 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–3, 5, 6, 10–12, 14, and 15 were not shown unpatentable under the three § 103 grounds because the combinations did not establish the encrypted-frame limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” Pet. 14 (citing Ex. 1003 ¶¶ 65–67). Patent Owner does not address, expressly, the level of ordinary skill in the art in its Response. See generally PO Resp. Dr. Nielson, however, applies Petitioner’s proposed level of ordinary skill in his Declaration (Ex. 2009 ¶ 34) and does not indicate that he does otherwise in his Second Declaration (see generally Ex. 2024). In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” See Inst. Dec. 9–10 (finding the same).” slip op. at 11

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

    “Petitioner contends that “the challenged claims are invalid under their plain and ordinary (‘P&O’) meaning.” Pet. 15 (citing Ex. 1003 ¶ 99). In the Preliminary Response, Patent Owner raised the meaning of two claim terms—“user encryption key” and “content encryption key.” Prelim. Resp. 40–44, 46–48. In the Institution Decision, we addressed each term to the extent necessary to resolve the controversy presented, and we found, in each instance, that Petitioner’s mapping of the prior art to these limitations of the claims was sufficient on the record presented at the time. See Inst. Dec. 12– 15 (discussing the construction of the terms), 22–28 (discussing limitation 1[a], which includes “user encryption key”), 28–31 (discussing limitation 1[b], which includes “content encryption key”). In particular, on the preliminary record, we found that “Chen’s master key Kw teaches the recited ‘user encryption key’” (id. at 28) and “Chen’s work key Kw teaches the recited ‘content encryption key’” (id. at 30). In the Response, Patent Owner does not propose a construction for any claim term or contest our preliminary findings regarding limitations 1[a] and 1[b]. See generally PO Resp. Accordingly, we maintain and reaffirm our preliminary determinations regarding the meaning of the recited “user encryption key” and “content encryption key.” Dec. 12–15. Additionally, we need not construe other claim terms to resolve the present controversy before us.6” slip op. at 13

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

    “techniques, and standards in the industry regarding the same in an attempt to explain how one of ordinary skill in the art would have understood Chen at the time of the ’920 patent. As discussed herein, the weight of the evidence is very closely balanced. Fundamentally, however, it is Petitioner’s burden to establish how one of ordinary skill in the art would have understood Chen and the combined teachings of Chen and Grab-333. And, as we find herein based on the full record developed during trial, Petitioner does not establish that the combined teachings of Chen and Grab-333 would have met limitation 1[c]. Below, we walk through the parties’ arguments and evidence, starting with the Petition, and then we discuss our findings regarding Chen in light of the full trial record.” slip op. at 24

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “To begin, 37 C.F.R. § 42.23(b) specifies, in relevant part, that “[a] sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.” 37 C.F.R. § 42.23(b). The Consolidated TPG repeats the above-quoted language of the rule and also explains that [s]ur-replies should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony. As noted above, a sur-reply may address the institution decision if necessary to respond to the petitioner’s reply. This sur-reply practice essentially replaces the previous practice of filing observations on cross-examination testimony. Consolidated TPG at 73–74. Accordingly, Rule 42.23(b) provides a blanket prohibition on a patentee filing exhibits with a sur-reply, as Patent Owner has done here.” slip op. at 54

  Patent outcomesUS 9,184,920 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,184,920
• Unified Patents Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Feb 8, 2021 · IPR2019-01379 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1 and 17 were not shown unpatentable over Kim and Huang because Petitioner did not establish an adequate motivation to combine their teachings.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and two to three years of work experience in image and/or video processing.” Pet. 15–16 (citing Ex. 1005 ¶ 42). Patent Owner neither comments on that proposal, nor proposes an alternative level of ordinary skill in the art. See generally PO Resp. 5 The burden of showing something by a preponderance of the evidence requires the trier of fact to believe that the existence of a fact is more probable than its nonexistence. Concrete Pipe & Prods. of Cal., Inc. v. Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993). Because Petitioner’s proposed definition is consistent with the cited prior art, we apply it for purposes of this Decision. In our view, moreover, the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that prior art itself can reflect an appropriate level of skill in the art at the time of the invention).” slip op. at 9

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

    “00052, which also involves the ’651 patent, the Board construed the term “level of detail” as “level of change of visual elements across adjacent pixels,” and that the same construction should apply here. PO Resp. 58–60 (citing IPR2020-00052, Paper 42). Petitioner does not propose a construction for that term, but argues that “the combined Kim and Huang teachings would determine the level of detail for adjacent pixels under Patent Owner’s ‘adjacent pixels’ construction.” Pet. Reply 5–11. Because our ultimate decision does not rest on the construction of that claim term, we do not construe the term in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); 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). As part of our obviousness analysis, we address additional claim construction arguments regarding the “determining” limitation. See infra § III.E.1.a.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Patent Owner that these exhibits represent expressions of opinion of unnamed users that Patent Owner relies on to show cotemporaneous praise existed. These exhibits are cited in the Hanson Declaration only as evidence of industry praise, i.e., to support testimony based on his personal knowledge. See Ex. 2045 ¶ 51. And although Mr. Hanson quotes statements from these exhibits in his declaration, their relevance lies in that they allegedly reflect praise for DivX’s deblocking method. For example, the statement by user “temperance”—that Petitioner objects to as being relied on for the truth of the matter asserted (Paper 46, 1– 2)—is offered to show that “[t]here was plenty of healthy debate on the boards about the quality of the new version of the codec,” and “many commenters specifically praised the deblocking.” See Ex. 2045 ¶ 46. Moreover, it is clear that these are merely opinions of online users, not factual assertions. See id. (quoting temperance: “IMHO, DivX 6 deblocking is better (for metrics and eyes) than xvid’s”) (emphasis added); see Sonos, slip op. at 7 (separating admissible expressions of opinions that constitute praise from bare factual assertions). Other statements that Petitioner objects to (Paper 46, 2) are similarly opinions of online users, not factual assertions that Patent Owner relies upon for the truth of the matter stated therein. We are therefore not persuaded that Exhibits 2018–2030 and 2032–2033 contain inadmissible hearsay.11 See Cisco Sys., Paper 41 at 50–51 (allowing exhibits cited only as evidence of industry praise); Quanergy Sys., Inc. v. Velodyne Lidar, Inc., IPR2018-00255, 2020 WL 2595492, at *2 (PTAB May 21, 2020) (citing Asetek Danmark A/S v. CMI USA, Inc., 13-CV-00457-JST, 2014 WL 12644295, at *2 (N.D. Cal. Nov. 19, 2014)).” slip op. at 55

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that the Petition does not detail Petitioner’s newly proposed interpretation of this claim limitation. See Pet. 29–36 (arguing only that a person of ordinary skill in the art would have recognized that Kim determines the level of detail for a region comprising an 8 x 8 block of pixels of a reconstructed video frame). On the contrary, the Petition argued: [T]he prior art cited in this Petition teaches and suggests exactly what is claimed and what allegedly distinguished the claims from Kim II: determining the level of detail of a region that includes pixels from multiple rows and multiple columns that encompass pixels immediately adjacent to at least two sides of the block boundary, and selecting a filter to apply.” Pet. 18 (emphasis added).6 Under these circumstances, we consider Petitioner’s new argument waived. See 37 C.F.R. § 42.23(b); see also Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ 6 Petitioner refers to a different prior art reference, U.S. Patent No. 6,983,079, cited by the examiner during the prosecution of the ’651 patent, as Kim II. the ‘evidence that supports the grounds for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)).” slip op. at 23

  Patent outcomesUS 8,139,651 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,139,651
• Intel Corporation v. VLSI Technology LLCNo claims unpatentable
  PTAB · Feb 26, 2020 · IPR2018-01661 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–5, 15, and 16 were not shown unpatentable because the asserted combinations failed to establish the claimed power gain and power loss relationship used to determine whether to power down.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “B. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Raghunathan, Petitioner proposes that a person of ordinary skill in the art at the time of the alleged invention of the ’014 patent “would have had at least an M.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience), and would have three years of experience with computer hardware and software power management design techniques.” Pet. 24 (citing Ex. 1102 ¶¶ 57–58). In our Institution Decision, we adopted Petitioner’s proposal with a modification to the level of education based on Patent Owner’s proposal in its Preliminary Response. Inst. Dec. 7 (citing Prelim. Resp. 5). Specifically, we determined that “a person of ordinary skill in the art would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and three years of experience with computer hardware and software power management design techniques.” Id. Neither party argues during trial that our definition of the level of ordinary skill in the art was incorrect. See PO Resp. 2–3. See generally Pet. Reply. 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 a person of ordinary skill in the art would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and three years of experience with computer hardware and software power management design techniques.” slip op. at 8

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

    “We need only construe claim terms that are in controversy, 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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In this proceeding, neither party proposes a formal construction for any term. See Pet. 23; PO Resp. 3. We find it unnecessary to construe expressly any claim terms to resolve the controversy before us.” slip op. at 9

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

    “Weighing the parties’ arguments and evidence on the complete record now before us, we find Petitioner has not shown that a person of ordinary skill in the art would have understood Takahashi’s “predetermined value” to be an estimated power gain. Patent Owner, with the support of Dr. Wolfe’s credible testimony, persuasively argues that Takahashi’s “predetermined value” is a previous value of the cache-miss rate. Petitioner, on the other hand, does not point to anything in Takahashi that describes the “predetermined value” as an estimated power gain, nor does Petitioner cite any testimony from Dr. Raghunathan in support of its position other than a portion of his declaration that is substantially the same as the discussion in the Petition. See Pet. 33–34 (citing Ex. 1102 ¶ 80); see also Ex. 1102 ¶¶ 72– 80 (testimony substantially the same as pages 29–34 of the Petition). Without any suggestion in Takahashi that the “predetermined value” relates to an estimated power gain, Takahashi’s stated goal of reducing power consumption is not sufficient to show that Takahashi’s “predetermined value” is representative of an estimated power gain. For these reasons, we find that Petitioner has not established that Takahashi teaches or suggests an estimated power gain or determining whether to power down a portion of a device component in response to a relationship between an estimated power gain and an estimated power loss, as recited in independent claim 1. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Takahashi.” slip op. at 19

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

    “We focus on one argument we find particularly persuasive—that Hu does not teach using the L2Access:leak ratio to “determin[e] whether to power down” a cache or a portion of a cache, as required by claim 1, even if the L2Access:leak ratio can be considered a relationship between an estimated power gain and an estimated power loss. See PO Resp. 24; PO Sur-reply 16–18. In its Reply, Petitioner alleges that “Hu explicitly discloses using the L2Access:leak ratio to determine when to power down the L1 cache.” Pet. Reply 16 (emphasis added) (citing Ex. 1102 ¶¶ 97–98). Petitioner, however, does not support this proposition by quoting or citing specific language in Hu, relying only on Dr. Raghunathan’s declaration, which provides substantially the same discussion as the Petition. Compare Ex. 1102 ¶¶ 97–98, with Pet. 39–40. We agree with Patent Owner that the portion of Hu cited in the Petition and Dr. Raghunathan’s declaration does not teach using the L2Access:leak ratio to determine whether to power down the L1 cache, as Petitioner contends. See PO Sur-reply 16–18; Pet. 39–41; Ex. 1102 ¶¶ 97– 99. Rather, Hu discloses determining values of the normalized cache leakage energy for different decay intervals at four values of the L2Access:leak ratio—5, 10, 20, and 100. Ex. 1104, 175–76; see PO Sur-reply 17. Hu uses these assumed values of the L2Access:leak ratio as inputs to generate simulation data, not to determine whether to power down a cache or portion of a cache. Ex. 1104, 175, see PO Resp. 24; PO Sur-Reply 15–16. Petitioner argues that Hu teaches that the higher the L2Access:leak ratio, the longer the system should wait before powering down the cache. Pet. 39–41; Pet. Reply 16–17. Hu, however, does not expressly compare the effect of different L2Access:leak ratios other than to state that when the L2Access:leak ratio is 100, a small decay interval is detrimental to performance and power. Ex. 1104, 175. As Patent Owner correctly asserts, Hu does not describe using the L2Access:leak ratio to determine an appropriate decay interval, nor does Hu describe using the L2Access:leak ratio to determine whether to power down a portion of a cache. See PO Sur-Reply 17–18.” slip op. at 24

  Patent outcomesUS 8,020,014 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,020,014
• Campbell Soup Company / Campbell Sales Company et al. v. Gamon Plus, Inc.No claims unpatentable
  PTAB · May 2, 2018 · IPR2017-00087 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–16 were cancelled at Patent Owner’s request; claims 27, 28, and 32–35 were not shown unpatentable over the instituted §103 grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, as of the earliest priority date of the claims, would have had either: “(1) a Bachelor’s Degree in Industrial Design and at least 1-2 years of experience in designing gravity feed display dispensers, or (2) 5-10 years of experience in designing gravity feed display dispensers.” Pet. 7 (citing Ex. 1002 ¶ 36). Patent Owner does not propose an explicit level of ordinary skill in the art in its Response. 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); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 18

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

    “construed according to their broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Institution Decision, we construed several claim terms recited in claims 1–17. Inst. Dec. 13–20. Patent Owner requests cancellation of claims 1–16 and we did not institute inter partes review of claim 17. Thus, none of the claim terms we construed previously are at issue in the trial. Additionally, Patent Owner’s Response and Sur-Reply and Petitioner’s Reply do not request that we construe any additional claim terms. Accordingly, we need not construe expressly any claim terms to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803.” slip op. at 15

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

    “how or why an ordinarily skilled artisan would have been led to combine Weichselbaum and Nesso in the manner claimed. On that point, the Petition rests on bare opinion testimony that is not tethered to any disclosure in the prior art or other objective proof. Pet. 32 (citing Ex. 1002 ¶¶ 168–170). We are mindful that a reason to combine prior art may exist “in the content of the public prior art, in the nature of the problem addressed by the invention, or even in the knowledge of one of ordinary skill in the art.” Princeton Biochemicals Inc. v. Beckman Coulter Inc., 411 F.3d 1332, 1338-39 (Fed. Cir. 2005). But when we turn to the opinion testimony that undergirds Petitioner’s argument on the reasons to combine, we find no objective proof and inadequate reasoning. Id. Ultimately, Petitioner presents two very weak reasons based on unstated and unexplained factual assumptions in support of its view that one of ordinary skill in the art would have been prompted to modify Weichselbaum. Additionally, as explained above, Petitioner takes conflicting positions as to how Nesso’s second chute would be incorporated in Weichselbaum’s device and the record remains unclear as to the precise structure resulting from Petitioner’s combination. Accordingly, Petitioner fails to provide sufficient clarity regarding the specific modifications to Weichselbaum, fails to provide a sufficient reason with rational underpinning as to why and how one of ordinary skill in the art would have modified Weichselbaum in light of Nesso, and appears, on this record, to engage in an impermissible exercise of hindsight reconstruction to make out a reason to combine the applied references in the manner claimed. Further, in light of the full trial record, including Patent Owner’s evidence of secondary considerations discussed below, we are persuaded that the bare opinions set forth in the Visser Declaration (Ex. 1002 ¶¶ 168–170) are entitled to little weight. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for” opinion testimony “going to factual determinations” may be of little probative value in validity determination.”).” slip op. at 36

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner

    “specific product and that product ‘is the invention disclosed and claimed in the patent.’” WBIP, 829 F.3d at 1329 (citation omitted). The presumption is rebuttable, but “a patent challenger cannot successfully rebut the presumption with argument alone—it must present evidence.” Id. (citation omitted). Patent Owner has shown that the asserted objective evidence, discussed further below, is tied to a specific product and that product “is the invention disclosed and claimed in the patent.” Id. (quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997)). “This showing––that the specific products are embodiments of the claimed invention and that the proffered objective evidence relates to these products—is sufficient to establish the presumption of nexus for the objective considerations at issue in this case.” Id. at 1330. It is, therefore, Petitioner’s burden to rebut that presumption. Id. at 1329 (“a patent challenger cannot successfully rebut the presumption with argument alone— it must present evidence”); see Tr. 46:20–47:8 (Petitioner agreeing that nexus is presumed and that Petitioner has the burden to overcome the presumption.). Petitioner does not rebut the presumption of nexus. First, Petitioner’s entire argument is phrased as challenging whether Patent Owner satisfied its burden of establishing nexus, as opposed to whether Petitioner rebuts the presumption of nexus. Pet. Reply 20–21 (“It is Patent Owner’s burden to establish a nexus.”) (citing CaptionCall LLC v. Ultratec Inc., IPR2013- 00540, Paper 78 at 50 (PTAB Mar. 3, 2015)). Second, Petitioner points to other factors, including higher prices and increased advertising, referred to in Campbell’s annual reports that contributed to increased soup sales. Pet. Reply 21–22. There is no dispute that other factors also contributed to the increase in soup sales. But, there is also no dispute that Campbell’s own statements, through its Annual Reports and Mr. Finnel’s interview, tie increased soup sales expressly to Gamon’s display racks. Additionally, Campbell’s internal presentation describes Gamon’s IQ Maximizer as “Breakthrough Gravity Feed Shelving” and attributes the following to the display racks based on the results of its study: • +13.6% volume lift for Corporate Brand • +10% volume lift for Condensed Segment • +9.3% volume lift for Campbell’s Condensed • +5.5% volume lift for Wet Soup Category • Encourages purchase of additional varieties • Billboard effect improves branding: 210% larger • Positive labor impact due to elimination of shelf conditioning Ex. 2032, 4. Although other factors had some degree of impact on commercial success,29 we determine that Patent Owner has established that an appreciable amount of Campbell’s increased commercial success of soup during the relevant time period is attributable to the display rack covered by claim 27 of the ’111 patent. Accordingly, Gamon’s sales to Campbell of about $31 million from 2002–2009 as well as a portion of the increased sales of Campbell’s soup using Gamon’s display racks provide a strong showing of commercial success of the commercial embodiment of claim 27 of the ’111 patent.” slip op. at 61

  Patent outcomesUS 8,827,111 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,827,111
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Feb 15, 2017 · IPR2015-01872 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 7, 11–14, 17, and 20–25 were not shown unpatentable because Lu did not teach providing resources to queued users of packet data.

  RulingsFinal written decision

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

    “1. Means-plus-function Terms Claims 11–14 and 17 recite several terms in means-plus-function format. Claim 24 recites several terms in the form of “logic for” performing the functions of parallel terms recited in claim 11. In the Institution Decision, we adopted Petitioner’s proposed constructions, set forth at pages 10–15 of the Petition, as our constructions for the means-plus-function terms of claims 11–14 and 17. Dec. 17–18. We also determined to treat the “logic for” terms of claim 24 as means-plus-function terms, see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015), and adopted Petitioner’s statement of the structure corresponding to the “logic for” terms (Pet. 10–13). Id. at 18. Patent Owner does not dispute these constructions. PO Resp. 8. On the complete record, we maintain these constructions.” slip op. at 8

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

    “Read in light of the Specification, “providing said communication resource to queued packet data users on a tier-by-tier basis,” as recited in claim 1, means providing the communication resource to queued users of packet data on a tier-by-tier basis. We are persuaded by Patent Owner that this is the only reasonable reading that is consistent with the Specification. Petitioner provides no examples in the Specification consistent with its reading. Although the preamble of claim 1 recites a “method of processing queued data packets,” this is consistent with the Specification’s general statement that the invention pertains to “an improved packet data queueing algorithm,” Ex. 1001, 9:3. We do not read this general statement in the preamble of claim 1 (or the similar preamble recitations in claims 11 and 24) to provide a basis for construing more specific language in the body of the claim in a manner inconsistent with the description in the Specification. In sum, the only reasonable reading of “queued packet data users,” in the context of the dependent claims, and in light of consistent description in the Specification, is queued users of packet data, not users of queued packet data.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “such as initial class queues 416–438, organized into high, medium, and low classes, are “a plurality of individual packet data queues.” Pet. 19–20. As to claim element 1[b], “determining a total number of data packets that can use an available communication resource,” Petitioner points to Lu’s description of using a weight-based scheduling scheme to transfer packets from one level queue to another. Id. at 23–24. Petitioner identifies the transmission capacity of the output link (e.g., 209) as the “available communication resource,” and contends that such weighted transfer during a cycle includes determining a total number of data packets that can be transferred for a cycle.5 Id. at 24. Petitioner further contends that Lu’s description of using subscriber weights based on subscriber volumes for particular classes teaches “allocating different weights to each tier of service based on a number of users requiring access to the available communication resource,” as recited in claim element 1[c]. Id. at 28–30. Regarding claim element 1[d], Petitioner argues that “[b]ecause the weights of Lu vary with the 4 We refer the claim elements 1[a]–1[e] as identified in Section I.E, above. 5 Patent Owner contends that Lu does not teach claim element 1[b]. PO Resp. 12–23. Because we decide that Petitioner has not shown that Lu teaches claim element 1[e], as detailed below, we do not decide whether Petitioner has shown that Lu teaches claim element 1[b]. available capacity (which in turn would affect the ‘total number of data packets that can use an available communication resource’), the weights of Lu consistently indicate how much (i.e., ‘proportion’) of the capacity (‘total number of data packets’) each class (i.e., ‘tier of service’) will receive.” Id. at 32.” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s Reply argument is not simply rebuttal to the Patent Owner Response. Rather, it is an attempt to formulate a new prima facie case of obviousness. The Office has instructed that such improper Reply argument will not be considered: A reply may only respond to arguments raised in the corresponding opposition. [37 C.F.R.] § 42.23. While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or 6 In the Institution Decision, we considered Petitioner’s argument and evidence (including Mr. Lanning’s testimony, Ex. 1006 ¶¶ 96–97) and determined that Petitioner did not present evidence sufficient to show a reason to modify Lu and, accordingly, declined to institute as to claims 5 and 15. Dec. 26–27. unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012); see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 (Fed. Cir. 2016) (The “Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because IBS relied on an entirely new rationale.”). Accordingly, we do not consider Petitioner’s Reply argument for claim element 1[e]. For the same reasons, we do not consider the argument Petitioner made for the first time at the oral argument (Tr. 22:17–23:2). Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768 (“A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument.”); see also Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016) (“In this case, the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”).” slip op. at 25

  Patent outcomesUS 7,385,994 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,385,994
• Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01374 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1, 2, 4–6, 9–11, 14–17, and 20 were not shown unpatentable under § 102(b) over Averbuj because its BIST controller did not generate the claimed address signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Sechen believes a person of ordinary skill in the art would have additional experience, education, or a combination of the two, beyond that proposed by Dr. Bagherzadeh. Both experts have been employed as professors since the mid 1980s. Dr. Bagherzadeh also has some experience working with engineers in the industry by virtue of his employment with AT&T Bell Labs from 1980–1984 (Ex. 1009 ¶ 6; id. Appx. A). Both experts were awarded bachelors and masters degrees in electrical engineering. Dr. Bagherzadeh was awarded a doctorate in computer engineering, while Dr. Sechen was awarded a doctorate in electrical engineering. Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-971. We, therefore, adopt our finding in IPR-971 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’501 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10

  • Expert testimonyPetitioner expert discountedMixed

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “arranged” or “prepared.” Reply 9–10. Responsive to this Board panel’s questioning during the oral hearing, however, Petitioner agreed that “designed to, adapted to, or arranged to” was an acceptable definition for the claim term “configured to.” See Tr. 22:7–17. Patent Owner contends the phrase “configured to generate” should be construed as “programmed to generate.” PO Resp. 9. Patent Owner does not propose a separate construction for the term “configured.” See generally id. at 9–17. In support of its proposed construction, Patent Owner relies on language in the ’501 patent and the testimony of its expert, Dr. Sechen. See id. Dr. Sechen testifies as to the meaning of “configured to generate,” but does not provide a separate discussion of the meaning of “configured to” outside the context of “configured to generate.” See Ex. 2019 ¶¶ 42–57. As explained in our Final Decision in IPR-971, the term “configured to” is used in the ’501 patent in conjunction with numerous terms, such as “provide” and “selectively input,” and there is a presumption that the term “configured to” should carry the same meaning in each instance. See IPR- 971 FWD, 18–19. The evidence relied on by Patent Owner in support of its proposed construction of the term “configured to” in the present inter partes review does not differ materially from the evidence relied upon by Patent Owner in IPR-971. Compare PO Resp. 9–17 with IPR-971, Paper 19, 14– 19. Accordingly, we determine the broadest reasonable construction of “configured to” is “designed to, adapted to, or arranged to” for the reasons stated above and in our Final Written Decision in IPR-971. We adopt and incorporate by reference our analysis and construction of the term “configured to” in our Final Written Decision in IPR-971 (IPR-971 FWD, 18–22). slip op. at 18

  Patent outcomesUS 8,359,501 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,359,501
• Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01372 · APJ Linda M Gaudette · IPR · Final written decision

  The Board held claims 1–4, 14–20, 27, and 29 not unpatentable because Averbuj did not disclose a control module configured to generate the claimed address signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-970. We, therefore, adopt our finding in IPR-970 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST. IPR-970 FWD, 10–11 (noting that our finding was “based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art”).” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’434 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’434 patent. See Ex. 1008, 6:3–5, 10:67–11:2, 6:14–17. Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “supports a finding that a customary meaning of “generate” to one of ordinary skill in the art is “cause.”1 We, therefore, determine the broadest reasonable 1 Petitioner relies on Webster’s II, for a definition of “cause.” See Reply 4, 6–8 (citing Ex. 1032, 3). Having determined the broadest reasonable interpretation of “generate” does not encompass “cause,” we do not find this evidence relevant to our claim construction analysis. construction of “generate” is “produce” for the reasons stated above and in our Final Written Decision in IPR-970. We adopt and incorporate by reference our analysis and construction of the term “generate” in our Final Written Decision in IPR-970 (IPR-970 FWD, 24–33).” slip op. at 16

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

    “Moreover, the evidence in this proceeding fails to support a finding that Averbuj’s BIST controller 4 is configured to generate address signals for testing the memory devices in the manner claimed. In Averbuj, the algorithms (i.e., CMD_DATA containing OP CODE such as SET ADDRESS (see Ex. 1011, 4:4–12, 5:19–21, Table 1)) communicated to sequencers 8 are either received by user interface 22 via external input (id. at 5:41–43) or generated by another component (i.e., a component that is not part of BIST controller 4 circuitry) and stored in algorithm memory 20 (see Ex. 2012, 30:23–24, 41:1–4, 54:21–22, 55:6–25, 55:20–56:9 (wherein Dr. Bagherzadeh testifies that OP CODE residing in the algorithm memory of BIST controller 4 are generated by hand or by a tool, e.g., a compiler, and that “99 percent of the designs or chips do not have a compiler on-board”)). Multiplexer 24 selects one of the algorithms (i.e., CMD_DATA) and BIST controller 4 provides to sequencers 8 the same CMD_DATA (e.g., address signals) without transformation or modification. See Ex. 1011, 4:4–12, 5:16–21; Ex. 2012, 54:8–13 (“Averbuj Figure 2, without consideration of any other disclosure in Averbuj, illustrates that a multiplexer selects an input from the algorithm memory and the output [] reflect[s] what’s in the input, based on the selection.”). Based on our interpretation of the terms “configured to” and “generate,” as discussed above, the claim recitation “a control module configured to generate address . . . signals for testing the memory devices” (claims 1, 20, and 29) does not read on Averbuj’s BIST controller 4, because the SET ADDRESS signal output by BIST controller 4 is produced by a component external to BIST controller 4, and merely selected by multiplexer 24 and provided to sequencers 8 without transformation or modification by BIST controller 4. In sum, after considering the parties’ arguments and evidence, we determine Petitioner has not shown, by a preponderance of the evidence, that Averbuj discloses “a control module configured to generate address . . . signals for testing the memory devices” as recited in independent claims 1, 20, and 29. Petitioner does not correct this deficiency in its challenges as to dependent claims 2–4, 14–19, and 27. See Pet. 32–39; 35 U.S.C. § 112, ¶ 4 (“A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”). Because Petitioner has not identified in Averbuj a teaching of each and every limitation recited in claims 1–4, 14–20, 27, and 29, Petitioner has not met its burden to show these claims are unpatentable under 35 U.S.C. § 102(b) as anticipated by Averbuj.” slip op. at 30

  Patent outcomesUS 8,001,434 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,001,434
• QSC Audio Products, LLC v. Crest Audio, Inc.No claims unpatentable
  PTAB · Apr 29, 2015 · IPR2014-00129 · APJ Glenn J Perry · IPR · Final written decision

  Claims 5 and 13 were not shown unpatentable under § 103 because the petitioner did not establish a reason to modify the prior art to calculate impedance or power from detected current and voltage.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “meaning of the patent law. The touchstone of whether a particular document is a publication under the patent law is whether it was available to those of ordinary skill in the art to which it pertains.” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments conflate two separate issues — (1) whether Gittleman is authentic, and (2) whether it constitutes a publication under the patent law. Gittleman includes the AES logo. The cover page further identifies a specific address for AES for the purpose of obtaining additional preprints, and states that reproduction of the article is prohibited without permission from the Audio Engineering Society Journal. Ex. 1009. There is no dispute that this document is a preprint of a paper intended for presentation at their respective AES conventions. Therefore, having considered and weighed the distinctive characteristics of the article and the circumstances surrounding its retrieval from the AES E-Library, we find that Gittleman is what it appears to be — a paper categorized by the Audio Engineering Society as a “preprint.” Petitioner has met its authentication burden under Fed. R. Evid. 901 and 902. Whether the self-authenticated “preprint” qualifies as a “publication” under the patent law is a separate matter.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had the following education and experience: Master of Science degree in Electrical Engineering and at least some practical experience with the design and testing of electronic amplifiers. Ex. 1003 ¶ 15. Patent Owner’s declarant agrees generally with the above assertion, asserting that a person of ordinary skill in the art would have had one year of experience with the design and testing of electronic amplifiers. Ex. 2001 ¶ 27. The disagreement appears to be that the Petitioner asserts that a person of ordinary skill would be aware of amplifier designs useful at frequencies ranging from audio frequencies to radio frequencies (RF) (Ex. 1003 ¶ 16), while Patent Owner asserts that a person of ordinary skill would not have practical experience with amplifier designs useful at frequencies ranging from audio frequencies to radio frequencies (RF) (Ex. 2001 ¶¶ 28–30). We credit Petitioner’s declarant, and agree that a person of ordinary skill would be at least aware of amplifier designs useful at radio frequencies (RF) based at least on that person’s educational background. Ex. 1003 ¶ 16. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Porambo reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to audio amplifiers and the incorporation of DSPs in audio amplifiers. See Ex. 1005, Abstract (describing the features of the audio amplifiers and DSPs at issue in Porambo).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “As to his audio amplifier experience, Dr. Ellis completed a Master of Science degree in Electrical Engineering with numerous years of experience as a research assistant researching audio signal processing, sound synthesis and analysis. Ex. 1004, 1. Dr. Ellis stated during his deposition that, although he is an expert in digital signal processing (Ex. 2002, 154:15–16), he has experience in the design of amplifiers from his undergraduate education. Id. at 124:7–20. Dr. Ellis designed and tested microphone amplifiers as a post-doctoral student at the Computer Science Institute at Berkeley, id. at 111:13–113:4, and is currently designing amplifiers that can drive speakers with the goal of incorporating these into his professional work. Id. at 120:4–121:12. We also note, as discussed above, the field of the ’542 patent invention is related to audio amplifiers generally and the incorporation of DSPs. We find that although Dr. Ellis is less qualified than Mr. Cordell in the area of amplifier design, he is qualified sufficiently to testify about audio amplifiers as they relate to DSPs. As to his alleged bias, Patent Owner points to Dr. Ellis’s testimony that “DSP revolution” has occurred, where DSP solutions were preferred over analog solutions. PO Resp. 20–23. We do not agree with Patent Owner that this indicates that he is biased toward believing that “any DSP application that replaces an analog application is obvious.” See PO Resp. 23. As to his alleged use of the wrong standard for obviousness, Patent Owner argues that Dr. Ellis did not evaluate the prior art from the perspective of a person having ordinary skill in the art at the time of invention because apparently he did not use the words “at the time of invention” when discussing the standard in his declaration. PO Resp. 23–24. We are not persuaded by this argument. Patent Owner also argues that Dr. Ellis must himself be a person of ordinary skill in the art. PO Resp. 24. Patent Owner’s arguments are unpersuasive because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Ellis is qualified in the pertinent art.” slip op. at 15

  Patent outcomesUS 5,652,542 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 5,652,542

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.