- Microsoft Corporation v. Bradium Technologies LLCNo claims unpatentablePTAB · Dec 21, 2016 · IPR2015-01432 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1 and 2 were not shown unpatentable because Microsoft did not establish that a skilled artisan would have been motivated to combine Rutledge, Ligtenberg, and Cooper.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Person of Ordinary Skill in the Art Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination—obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Unigene Labs v. Apotex, Inc, 655 F.3d 1352, 1360 (Fed. Cir 2011). Petitioner contends that, in addition to his educational background, a person of ordinary skill in the art would have at least five years of experience in a technical field related to geographic inform systems (GIS). Pet. 11–12. The Patent Owner Response does not dispute explicitly Petitioner’s description of a person of ordinary skill in the art. Nevertheless, Petitioner contends there is a dispute as to the level of ordinary skill in the art because Patent Owner’s expert, Dr. Chandrajit Bajaj, ignores the teachings in the ’794 Patent concerning the relevance of geographic information systems (GIS) and that, unlike Petitioner’s expert, Dr. William Michalson, there is no suggestion on the record that Dr. Bajaj has any experience in GIS systems. Pet. Reply. 2; Hr’g. Tr. 6–8. Petitioner undermines its position that qualifying as a one of ordinary skill requires five years of experience in GIS by arguing the even a person without GIS experience would consider GIS highly relevant to the problem presented in the ’794 Patent and would not ignore this issue. Pet. Reply 2. Thus, although Petitioner attacks the credibility of Dr. Bajaj based on his testimony concerning the applicability of the references, we do not discern any genuine dispute as to the level of ordinary skill in the art.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“in Rutledge or Ligtenberg and that the Petition does not assert that Rutledge or Ligtenberg discloses a priority system. Hr’g Tr. 48. Although Petitioner contends that Rutledge and Ligtenberg suggest a priority system (id.), Petitioner argues “[b]ut the reason we added Cooper is because there was nothing specific as to how you would actually do that or how you could possibly do that” (id. at 19). Thus, Petitioner appears to acknowledge hindsight reasoning in its analysis and does not answer our question as to why a person of ordinary skill would have been motivated to apply the priority techniques in Cooper to Rutledge and Ligtenberg. Patent Owner argues that Petitioner frames its argument at a level of generality that obscures the incompatibility of Cooper with Rutledge and Ligtenberg. PO Resp. 31. We agree with Patent Owner that the level of abstraction argued by Petitioner is insufficient to overcome the incompatibility issues identified by Patent Owner. Id. at 31–32. The Petition does not explain why or how a person of ordinary skill would have applied the importance values Cooper uses to determine priority in a 3D environment to Rutledge and Ligtenberg’s 2D environment. Id. at 32–34. For the reasons discussed above, Petitioner has not demonstrated by a preponderance of the evidence that a person of ordinary skill would have been motivated to combine the teachings of Rutledge and Ligtenberg with the priority teaching of Cooper.” slip op. at 22
- ExcludeMotion to exclude, deniedDenied
“Notwithstanding Dr. Michalson’s incorporation of his earlier declaration by reference, Petitioner contends that it was improper for Patent Owner to cross-examine Dr. Michalson on the subject matter of his first declaration, because Patent Owner waived the opportunity to conduct such cross-examination when it filed its Patent Owner Response without taking any testimony from Dr. Michalson and that Patent Owner’s cross-examination and Motion for Observations on Cross-Examination (Paper 40) should have been limited only to matters in Dr. Michalson’s second declaration submitted in support of Petitioner’s Reply. Mot. to Exclude. 2. This issue is moot because this Final Written Decision does not cite to any of the Subject Exhibits. For that reason, we do not address the matter on the merits and dismiss Petitioner’s Motion to Exclude.” slip op. at 24
Patent outcomesUS 7,139,794 not shown unpatentable§ 103 obviousnessPatents in suitUS 7,139,794 - QSC Audio Products, LLC v. Crest Audio, Inc.No claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents 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.