• Synaffix B.V. v. Hangzhou Dac Biotech Co., Ltd.Some claims unpatentable
  PTAB · Aug 26, 2025 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–17, 20, 21, 24, 26, and 29–31 are unpatentable; claims 25 and 32–34 were not shown unpatentable, and the motion to exclude was dismissed as moot.

  RulingsFinal written decision

  • RemandOther

    “review of claims 1–17, 20, 21, 24–26, and 29–34 of the ’682 patent. Paper 2 (“Pet.”), 1, 3. Patent Owner, Hangzhou DAC Biotech Co., Ltd., filed a Preliminary Response (Paper 9, “Prelim. Resp.”). We initially determined that the information presented in the Petition did not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and did not institute inter partes review. Paper 17. Petitioner requested Director review of our decision denying institution (Paper 18 (“Request”)). The Director delegated review of the decision to a Delegated Rehearing Panel (“DRP”). Paper 19. Patent Owner was granted the option to file a response to Petitioner’s Request (Paper 22 (“Request Resp.”)). The Delegated Review Panel vacated our decision and remanded the case to this panel with a revised claim construction for claim 1. Paper 23 (“DRP Dec.”). On August 30, 2024, we instituted an inter partes review after remand from the Director. Paper 25 (“Inst. Dec.”). Patent Owner subsequently filed a Patent Owner Response (Paper 31, “Resp.”), Petitioner filed a Reply (Paper 36, “Reply”), Patent Owner filed a Sur-reply (Paper 44, “Sur-reply”), and Petitioner filed a Sur-sur-reply (Paper 48, “Sur-sur-reply”).” slip op. at 2

  • PTAB / AIA Trials › Motions to amend / substitute claimsOther

    “I. Patent Owner’s Motion to Exclude Evidence Patent Owner moves to exclude Exhibits 1089 and 1090. Paper 50. As we did not rely on either of Exhibits 1089 or 1090 in deciding this matter, Patent Owner’s motion is dismissed as moot.” slip op. at 96

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

    “For these reasons, Patent Owner’s arguments and cited evidence also” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “function as R2, and the ethyl group may function as R4, which can be a linear alkyl having 1–6 carbon atoms. We note that claim 3 permits R5 and R6 to be absent. For these reasons, the arguments presented in the Petition demonstrate that claim 3 would have been obvious over Singh’s Compound 3 when modified in view of Harris.” slip op. at 73

  Patent outcomesUS 10,131,682 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,131,682
• Life Spine, Inc. v. Globus Medical, Inc.Some claims unpatentable
  PTAB · Mar 20, 2024 · IPR2022-01434 · APJ Cynthia M Hardman · IPR · Final written decision

  Claims 1–9 and 15 are unpatentable over Chung and Olmos-based obviousness grounds; claims 10–14 were not shown unpatentable because the asserted references did not teach the claimed complementary relationship.

  RulingsFinal written decision

  • Expert testimonyOther

    “improperly incorporates-by-reference 12 pages of expert testimony via a single sentence.” PO Sur-reply 16 n.2 (citing Pet. Reply 17, which in turn cites Ex. 1026 (Hatch Decl.) ¶¶ 49–66). We find that many of the paragraphs within the cited range (i.e., Hatch Declaration paragraphs 49–66) appear to have a tenuous connection to the proposition for which Petitioner cites these paragraphs. See Pet. Reply 17. That said, we find that paragraphs 53–55 directly relate to Petitioner’s proposition in the Reply, i.e., that “Petitioner’s experts explain why a [person of ordinary skill in the art] would rely on a cross-sectional view over a perspective view for making the determination in question, because only the cross-sections provide the needed side view directly orthogonal to the positions of the yellow expansion portion and the end of the dovetail.” Id. Accordingly, we find that paragraphs 53–55—the only paragraphs we cite from Petitioner’s range in reaching our conclusion—are not improperly incorporated by reference into Petitioner’s Reply.” slip op. at 66

  • Strike new argumentNew argument consideredDenied

    “provide Petitioner an opportunity to respond under the new construction, and decline to strike Petitioner’s relevant argument and evidence. Cf. Axonics, 75 F.4th at 1383 (“[W]hen the Board adopts a new claim construction following institution, an IPR petitioner must have adequate notice and an opportunity to respond under the new construction.”). Like in Axonics, in its new arguments on Reply, Petitioner here relies on the same embodiment from the same prior art reference that it relies on in the Petition to support the same legal argument, i.e., that Olmos’s Figure 16 embodiment discloses the “complementary with one another” limitation of challenged claims 10– 14. See Axonics, 75 F.4th at 1384; see also Apple Inc. v. Andrea Elecs. Corp., 949 F.3d 697, 706 (Fed. Cir. 2020) (permitting petitioner to elaborate in reply on an unpatentability theory presented in the petition). Moreover, we permitted Patent Owner to file (and it indeed did file) a sur-reply brief and expert declaration that addressed Petitioner’s new obviousness theories. Accordingly, both parties had adequate notice of our preliminary construction and an opportunity to respond under that new construction. For these reasons, we deny Patent Owner’s motion to strike.” slip op. at 124

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “from the expansion portion. We agree with Patent Owner that the wording of this limitation as a whole requires that the “extension necessarily must protrude beyond a longitudinal end of the expansion portion.” Id. at 11. We also agree with Patent Owner that “[u]nder Petitioner’s tenuous theory, an extension in any direction except 90 or 180 degrees would satisfy the claim language since any such direction has a so-called ‘longitudinal component.’” Id. at 13. For these reasons, we disagree with Petitioner’s argument that the purported “longitudinal component” of Chung’s extension satisfies limitation 1[h].” slip op. at 55

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “would have been motivated to add an extension to the Figure 16 embodiment because “an integrally-formed extension advantageously requires fewer parts, which facilitates both manufacturing and use.” Pet. 118. We agree with Patent Owner that this argument is unavailing. PO Resp. 50. Petitioner’s combination entails adding an extension (from Figure 8) to an embodiment lacking one (Figure 16). We agree with Patent Owner that adding a new component (whether separately or integrally) can in some instances complicate manufacturing/assembly and increase costs. See id. (citing Ex. 2013 (Culbert Decl.) ¶ 115). Petitioner has not sufficiently demonstrated that the proposed combination in this instance would reduce complexity or facilitate the manufacturing process. Accordingly, we do not rely on this argument offered by Petitioner.” slip op. at 106

  Patent outcomesUS 8,845,731 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,845,731
• Netflix, Inc. / Hulu, LLC v. Divx, LLCSome claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00648 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 16, 17, and 19 are unpatentable over Pyle and Marusi; claims 1–6, 8–10, 13, and 14 were not shown unpatentable under the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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. 8–9 (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 mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 8–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 10

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

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’515 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “[t]he plain language of the claim clearly indicates only a single [list] is used to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 12–13 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’515 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’515 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[e], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[d] and discussed above. See PO Resp. 1–2; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “motivated to combine these teachings for several reasons. Pet. 21. First, Petitioner contends “the combination is the use of a known technique to improve similar devices because using the capabilities of a client device to choose appropriately formatted content was a well-known technique.” Id. Petitioner asserts that “implementing Marusi’s techniques for organizing multiple representations and choosing among them based upon a client device’s capabilities would predictably function in Pyle’s system, which similarly seeks to target video content based on particular client device types and parameters.” Id. (citing Ex. 1004, 10:57–11:10; Ex. 1003 ¶ 147). Second, Petitioner argues that “detecting a client device’s capabilities based upon client device identifiers was a common and known solution to the problem of supplying information in a format usable by the client device.” Pet. 21. Petitioner contends that one of ordinary skill in the art “would have found it obvious to combine Marusi’s teachings with Pyle because it is one solution, from a finite number of known, and predictable solutions.” Id. (citing Ex. 1003 ¶ 148). Third, with respect to Marusi’s databases, Petitioner contends “[t]he combination of Marusi’s databases to manage the data in Pyle’s system uses a known technique to improve similar systems.” Pet. 21. In particular, Petitioner asserts that one of ordinary skill “would have been motivated to combine Marusi’s database teachings with Pyle because Pyle teaches storing the same content in multiple, different representations.” Id. at 21–22 (citing Ex. 1004, 9:64–10:21). Further, Petitioner argues that “[u]sing a database to store and manage multiple representations of the same data, or even to simply store voluminous data for retrieval, was an extremely well-known and common application of databases.” Id. at 22 (citing Ex. 1003 ¶ 149). Additionally, Dr. Reader opines that one of ordinary skill in the art “would have understood that the teachings of Pyle and Marusi were complementary, and therefore would have been motivated to combine Pyle with Marusi to enhance the efficiency of generating, storing, and delivering multimedia content tailored to the capabilities of particular playback devices.” Ex. 1003 ¶ 150.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Patent Owner that Petitioner and Dr. Reader fail to explain why one of ordinary skill in the art would have understood that Pyle generates a top level index file by placing a manifest file in memory for transmission to a client device. Pet. 35; see Ex. 1003 ¶ 184. “Opinions expressed without disclosing the underlying facts or data may be given little or no weight.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 40–41, available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Here, there is no explanation or reason given for Petitioner’s assertion or Dr. Reader’s testimony and the connection, if any, is not otherwise apparent. Further, aside from Dr. Reader’s unexplained position, Petitioner has not pointed us to any evidence of record supporting the argument that one of ordinary skill in the art would have understood that placement of a file in memory for transmission teaches generating the file as recited in limitation 1[f]. Accordingly, without any explanation whatsoever, the record is without a sufficiently supported basis upon which to make that finding, resulting in a failure of proof by Petitioner with respect to claim 1.11 10 We also note that Petitioner’s Reply does not seek to add a new argument for our consideration; rather, Petitioner’s Reply asserts, albeit incorrectly, that the argument was raised in the Petition. See Pet. Reply 15. 11 Although Petitioner’s Reply sets forth several arguments in response to other arguments raised in Patent Owner’s Response, those additional arguments do not address to this aspect of limitation 1[f]. See, e.g., Pet. c. Dependent Claims 4, 5, 8–10, and 14 Petitioner contends that the combination of Pyle and Marusi would have rendered the subject matter of claims 4, 5, 8–10, and 14 obvious to one of ordinary skill in the art. Pet. 36–41. Claims 4, 5, 8–10, and 14 depend from claim 1 and, therefore, include limitation 1[f], as discussed above. Accordingly, for the same reasons discussed with respect to claim 1, Petitioner’s analysis of these claims suffers from the same deficiency.” slip op. at 34

  Patent outcomesUS 9,998,515 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,998,515
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Jan 12, 2021 · IPR2019-01194 · APJ Minn Chung · IPR · Final written decision

  Claims 1 and 2 are unpatentable over Kim and Lee under § 103; Petitioner did not prove claims 4, 5, and 7 unpatentable because the combination was not adequately supported.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “determine that Petitioner has demonstrated sufficiently that the combination of Kim and Lee teaches “a mode indicator generator for generating a mode indicator that indicates a desired mode of the power gated circuit,” as recited in claim 1, and has articulated sufficient reasoning with rational underpinning for combining Kim and Lee to arrive at the subject matter of this claim limitation. c. Conclusion on Claim 1” slip op. at 64

  • Expert testimonyOther

    “F. Testimonial Evidence Petitioner relies on two Declarations from David Harris, Ph.D. in” slip op. at 9

  Patent outcomesUS 8,081,026 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,081,026
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.Some claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01828 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 21, 281, 283–286, 288, 289, and 293 are unpatentable as obvious over Nozawa and Philips 4052; claims 25, 26, 363–366, 368, 369, and 373 were not proven unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Qualcomm contends, citing Dr. Larson’s testimony, that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 10–11 (citing Ex. 1002 ¶¶ 31–39). ParkerVision does not contest Qualcomm’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, we adopt Qualcomm’s proposed level of ordinary skill in the art.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “During the trial, ParkerVision asserted that we should maintain our construction of “harmonic” (PO Resp. 19–23), and Qualcomm did not address the adopted construction. With respect to the remaining terms, ParkerVision argues that none of these terms are material to the remaining dispute between the parties, which is focused on the “harmonic” limitation. Id. at 24–25. On this, we agree. As the remaining terms are not material to the parties’ dispute, we decline to construe them further. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

  • Expert testimonyOther

    “Regarding the Maas equation, ParkerVision directs us to a portion of Dr. Larson’s deposition, in which Dr. Larson used the Maas equation to calculate the harmonics produced by a mixer, given certain assumed inputs supplied by ParkerVision’s counsel (an input signal of 100 kHz and an LO input of 1 MHz). Id. at 29–31 (citing Ex. 2001, 177–87). ParkerVision notes that Dr. Larson’s calculations produced -0.9, 3.1, and -4.9 MHz as the first three harmonics, which are not integer multiples. PO Resp. 31. Thus, ParkerVision argues, the circuit of Nozawa does not necessarily produce a plurality of harmonics, defined by the ’940 patent as being integer multiples of the fundamental frequency. Id. Qualcomm argues that the Maas equation “shows that Nozawa will necessarily produce the required ‘integer multiple’ harmonics for many input frequencies.” Pet. Reply 4 (emphasis added). According to Qualcomm, it is not required to show that Nozawa will produce integer multiple harmonics for all operating conditions; rather, it is only relevant that Nozawa could be operated to produce the harmonics. Id. Regarding Dr. Larson’s calculations during his deposition, Qualcomm contends that even using the assumed inputs provided by ParkerVision, the Maas equation shows that the 35th and 37th harmonics are 35.1 and -36.9 MHz, respectively, which are integer multiples of the fundamental frequency of 0.9 MHz. Id. at 7. Qualcomm also notes that selecting slightly different input frequencies for the Maas equation will produce much lower integer multiple harmonics, such as at the 7th and 9th harmonics. Id. at 8. The parties’ disagreements over the various inputs and permutations of the Maas equation aside, one point appears to be beyond dispute: under some conditions, but not all conditions, the Maas equation shows that Nozawa’s structure will produce a periodic signal that contains integer multiples of the fundamental frequency. In other words, the structure of Nozawa is capable of producing a signal that satisfies the limitations of the claim. Qualcomm argues that this is sufficient to show unpatentability. Pet. Reply 13 (citing Gen. Electric Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 248–49 (1945)). On this point, we agree. Claim 21 and its dependents are apparatus claims; as such, they “cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). In other words, the “periodic signal” limitations, which are directed to the transitory electrical signals produced by the apparatus, cannot give rise to patentability so long as the underlying apparatus has been shown to be capable of generating those signals. Here, it is undisputed that Nozawa’s circuit is capable of generating a periodic signal having a plurality of harmonics, wherein those harmonics are integer multiples of the fundamental frequency. Furthermore, we agree with Qualcomm that Nozawa’s low-pass filter is capable of isolating one or more of those harmonics, as desired.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Qualcomm contends that “Nozawa and Philips 4052 both provide architectures and methods for upconversion that can be used for a transmitter.” Pet. 21. Indeed, as Qualcomm observes, the 74HC4052 chip described in Philips 4052 is used in Nozawa. Id. at 28–29. We agree with Qualcomm that a person of ordinary skill in the art would have had reason to look to the disclosure of Philips 4052 to learn more about the operation of the 74HC4052 chip disclosed in Nozawa. ParkerVision does not challenge that a person of ordinary skill in the art would have combined Nozawa with Philips 4052.” slip op. at 12

  Patent outcomesUS 6,091,940 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,091,940
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01248 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 5, 20, 22–25, and 30 are unpatentable as obvious over Yamashita and Shamoon; claims 2–4, 6–8, and 19 were not proven unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that Patent Owner is attempting to improperly limit the construction. As we explained in our Decision on Institution, we declined to limit “comparison” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the “comparison” is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 9. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparison” that we adopted. See Inst. Dec. 9 (citing Ex. 2003 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2011 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”).” slip op. at 6

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

    “Here, we agree with Petitioner that the plain language of the claim is sufficient and no construction is necessary for this term. The claim language already establishes that there are two user profiles, each is associated with a particular and different mobile device, and the profiles include “information to alter an operating condition of the network device according to a preference of a [first/second] user.” The claim already addresses what attributes the user profile must have. We see no support in the claim language or specification for Patent Owner’s additional requirements that the profiles be “individual” and “include information unique to each user.”” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “v. Summary as to Claims 1, 20, 22–25, and 30 Patent Owner raises no evidence of secondary considerations of nonobviousness in this case. Thus, weighing the evidence of obviousness that is before us, we find that Petitioner has shown by a preponderance of the evidence that claims 1, 20, 22–25, and 30 would have been obvious over the combination of Yamashita and Shamoon.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “We do not find Patent Owner’s arguments persuasive. Teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).4 Patent Owner cites nothing in Yamashita that says that adding the features from Shamoon in addition to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages. 4 We understand Patent Owner to be arguing both that the references teach away from the combination generally and teach away because, in particular, the combination would change the principle of operation of the system. PO Resp. 33–36. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); see also Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) (finding no teaching away where nothing in the prior art device suggested that the claimed invention was unlikely to work). The lack of teaching away is confirmed by Yamashita’s disclosure of an embodiment requiring manual interaction. See Reply 20 (citing Ex. 1006, 22:31–51). Indeed, although Patent Owner contends that automatic functionality is “not the focus or main purpose of Shamoon,” PO Resp. 35, Shamoon’s system demonstrates that automatic functionality can be combined with manual functionality to result in a working system. See Ex. 1007, 8:36–45. As for Patent Owner’s contentions that Yamashita “abandoned bi- directional communication” (PO Resp. 35), we find no support in the cited portions of Yamashita for these contentions. Although Yamashita does tout the benefits of its automatic control system, the cited portions of Yamashita are silent about the advantages or disadvantages of “bi-directional communication.” As for Patent Owner’s arguments about substantial reconstruction and redesign (PO Resp. 36 (citing Ex. 2008 ¶ 91)), we do not find the testimony or argument persuasive. Yamashita’s control terminal and mobile terminals already has built in communication abilities (Ex. 1006, 11:31–38), and we find Dr. Selker’s testimony persuasive that a person of ordinary skill would have been motivated to add the ability to communicate the thermostat reading to verify that Yamashita’s automatic control worked. Ex. 1002 ¶¶ 205–207. As for Patent Owner’s allegation that the combination with Shamoon would change Yamashita’s principle of operation, we disagree. Yamashita would continue to work as before; the messages, rules, and control information would continue operate in the same manner. Shamoon would only add additional functionality to allow for an improved user interface and two-way communication. Where the device would operate on the same principles as before, the combination does not change the principle of operation. See Mouttet, 686 F.3d at 1332 (noting Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). As Petitioner explains, Shamoon demonstrates that its known techniques have been used to improve similar devices in similar ways. We find that Petitioner has articulated sufficient reasoning with rational underpinnings to support the combination. See Ex. 1002 ¶¶ 205–207, 213. Thus, we conclude that a person of ordinary skill would have had reason to combine the teachings of Yamashita and Shamoon.” slip op. at 29

  Patent outcomesUS 8,626,344 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,626,344
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01251 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 9–14, 16, and 26–29 are unpatentable as obvious over Yamashita and Shamoon; claims 15, 17, and 18 were not proven unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that Patent Owner’s further narrowing of our construction is improperly limiting. As we explained in our Decision on Institution, we declined to limit “comparing” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the comparison is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 10. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparing” that we adopted; rather, each of them emphasizes determining similarities as well. See Inst. Dec. 9 (citing Ex. 2002 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2006 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”). The specification does not compel a different understanding. The” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “that the parties’ actual dispute is twofold. First, the parties dispute whether the mobile device must be able to transmit location information to the site regardless of whether the proximity setting is enabled or disabled. See Reply 8–9; PO Resp. 14–15. Second, Patent Owner argues that the entire process of proximity detection must be automatic. PO Resp. 14. As we explain below, we agree with Petitioner that this term does not require that the mobile device continue to send location reports if the proximity setting is not enabled, whereas we disagree with Petitioner that the proximity setting is limited to enabling or disabling the ability to send location reports. Instead, we find the specification supports a broader construction. In particular, we find that the specification states that “[f]or example, a user may enable proximity detection using proximity detection selector 1036 and energy use at a site may be altered based on a user[’]s distance to the site.” Ex. 1001, 46:45–48. It further explains that “[i]n some forms, proximity detection selector 1036 can be hidden, displayed, selectable, or any combination thereof in response to a user having a mobile device capable of being detected when a user is at or away from a site.” Id. at 46:50–54. Thus, we consider the broadest reasonable construction of “proximity setting” consistent with the specification to be “a setting that can enable or disable proximity detection, where energy use at a site may be altered based on the user’s location.” Both parties acknowledge that this is a reasonable meaning of the term. Reply 8; PO Resp. 12.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “In sum, Petitioner has shown sufficiently that the control terminal in Yamashita receives messages from the wireless terminals that represent the relative location of the mobile terminal (e.g., within 300 m of the site or moving away from the site) and that the control terminal includes a number of rules to compare the messages to determine what control information to send to the controlled appliances, and that as a result of the comparison sends control information to alter the condition of the controlled appliances. See Ex. 1002 ¶¶ 214–216. Thus, we are persuaded that Yamashita accounts for the “comparing limitations” of claim 9.” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We find that Petitioner has shown adequately that a person of ordinary skill would have been motivated to combine Yamashita with Shamoon. In particular, we do not agree with Patent Owner that Yamashita teaches away from the combination or that the combination would change the principle of operation of Yamashita.3 Patent Owner is correct that Yamashita distinguishes manual control, and notes the disadvantages of “burdensome operations” and the possibility the user may forget to perform the required operations. Ex. 1005, 1:35–40. Patent Owner is also correct that Yamashita states that one objective of the invention is a system that can automatically control an appliance based on position without requiring any operation by the user. Id. at 1:44–47. Yet, Yamashita also discloses an embodiment where the user is prompted before a message is sent, which does require an operation by the user. Id. at 23:31–51. Thus, we do not agree that Yamashita disparages all manual interaction as Patent Owner contends. Moreover, teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Patent Owner cites nothing in Yamashita that says that adding the communication features from Shamoon to transmit the thermostat readings to the mobile terminal to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages, not that communicating information from the site to” slip op. at 32

  Patent outcomesUS 8,626,344 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,626,344
• Qualcomm Inc. / Marvell Semiconductor, Inc. et al. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00315 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 5, 6, 8, 17, 18, and 20 are unpatentable; claims 7 and 19 were not shown unpatentable, because Cuffaro does not disclose or render obvious a specified number of votes.

  RulingsFinal written decision

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

    “phrase “means for . . . .” Petitioner construes these terms in accordance with 35 U.S.C. § 112 ¶ 6, identifying an algorithm described in the specification corresponding to each “means” limitation. Pet. 7–9 (citing Ex. 1001, col. 8, l. 8–38, col. 8, ll. 49–col. 9, l. 16, col. 19, l. 25–col. 20, l. 67). Petitioner identifies a general purpose computer, processor 704 in Figure 7, as structure for “executing the instructions associated with the corresponding function” recited in each “means limitation,” except for the “means fro [sic] the first participant to communicate . . .” recited in claims 5 and 20. Pet. 7–9 (citing Ex. 1001, Fig. 7, col. 25, ll. 13–18). For the “means fro [sic] the first participant to communicate” limitation, Petitioner identifies transceiver 216, shown in Figure 2, reproduced supra. Pet. 9 (citing Ex. 1001, Fig. 2, col. 9, ll. 54–59). Patent Owner does not contest these identifications. We agree with Petitioner’s identifications and adopt them as our constructions of the means-plus-function limitations. Specifically, as to those means-plus-function limitations that correspond to processor 704 in Figure 7, Petitioner identifies in its claim chart the algorithm described in the specification for performing each function of these means. Pet. 8–9; See also Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (“When dealing with a ‘special purpose computer-implemented means-plus-function limitation,’ [the Federal Circuit] require[s] the specification to disclose the algorithm for performing the function.”); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009) (“[W]hen a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.”).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We are not persuaded by this reasoning. As Petitioner observes, the embodiments of the ’624 patent identified by Patent Owner are characterized as “examples,” and a person of ordinary skill “would understand that the example scenarios of the specification are not necessarily limiting on the claims.” Reply 3 (citing Ding Supp. Decl. ¶ 6). In addition, Petitioner notes that claim language in related patents owned by Patent Owner explicitly refers to participants, evidencing Patent Owner’s understanding “how to expressly create participant-specific voting requirements in claims.” Id. at 3.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Patent Owner responds that “the Gerten device is not capable of and expressly teaches away from performing this functionality.” PO Resp. 15 (citing Melendez Decl. ¶ 33). Patent Owner contends that “Gerten’s disclosure is directed toward eliminating channels for use in an entire piconet as opposed to eliminating channels for use by certain participants within a piconet.” Id. at 16 (emphasis added). Patent Owner argues that Gerten does not disclose a selection kernel capable of maintaining synchronization between a master and more than one slave in a piconet, with the master and one slave using a default set of channels while the same master and a different slave use a different set of channels. Id. We are not persuaded that the absence of a specific teaching of such a selection kernel supports the conclusion that one of skill in the art would understand Gerten to function in the manner Patent Owner suggests. In this instance, Petitioner refers to two embodiments of Gerten “in which a first participant communicates with a second participant via a normal sequence and with another participant via an adaptive hopping sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below. Figure 3 illustrates “methodology for determining and communicating channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As illustrated in the drawing, a master unit performs a discovery process (block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 60, 64. If the slave unit is capable of using interference avoidance, the master unit begins the process of determining a modified set of channels for use (block 120). Id. ¶ 45. If a second slave unable to use interference avoidance enters the piconet, standard frequency hopping is used. Supp. Ding Decl. ¶ 9. Under Patent Owner’s characterization of Gerten, entry of the second slave into the network would require the first slave necessarily to revert back to the default hopping sequence. Id. ¶ 10. But this would undermine the stated benefits of Gerten, which explicitly discloses: The above process can be applied to a Bluetooth example and includes identification of a Bluetooth device’s ability to support interference avoidance, the measurements of signal strength on all channels and identification of which channel should not be used without violating the FCC rules, a method of modifying the Bluetooth hop sequence so that it will avoid channels containing strong or fixed interferers while still supporting standard Bluetooth hopping with other non-enabled members of the piconet and a method of relating necessary interference avoidance information to the remote Bluetooth devices. Ex. 1003, col. 4, l. 66–col. 5, l. 9 (emphasis added).” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “of performance data from remote devices to a base station, which Petitioner respectively associates with the slave and master devices of Gerten. See Pet. 29. A quality metric is obtained from measurements of both assigned and unassigned frequency channels that are reported back to the base station. Ex. 1004, col. 7, ll. 23–47. Because Cuffaro does not limit the type of communications link used for such reporting, Petitioner reasons, and we agree, that “a person of ordinary skill in the art . . . would consider it obvious for the slave device in Gerten to perform the interference signal strength measurements” and to communicate channel performance data measured by the slave device over one or more of the plurality of communications channels based on the hopping sequence. Pet. 31. Petitioner supports this reasoning with declaration testimony by Dr. Ding. Ding Decl. ¶ 111. Petitioner further provides persuasive reasoning why a person of ordinary skill in the art would have combined the relevant teachings of Gerten and Cuffaro, including that “Cuffaro and Gerten are in the same field of endeavor” of selecting channels to avoid interference in a communications system; that measuring interference signal strength at a slave device such as described by Cuffaro provides a more accurate determination of the impact of the receiver unit from the interference on a given channel, and, therefore, would provide more accurate identification of bad channels in Gerten; and that Gerten suggests such a modification by describing that both a master and a slave can participate in identifying channels to avoid. Pet. 31–32. Petitioner supports this reasoning with declaration testimony by Dr. Ding. Ding Decl. ¶¶ 113, 114.” slip op. at 24

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentable
  PTAB · May 9, 2016 · IPR2015-01406 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1, 2, and 5 of the ’469 patent and claim 3 of the ’121 patent are unpatentable as obvious; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Patent Owner’s argument is not persuasive. We agree with Petitioner that 35 U.S.C. § 315(b) applies only to civil actions for patent infringement, and not to an administrative proceeding, including an ITC investigation. See Amkor, Paper 98, slip op. at 6–18; Brinkman Corp. v. A&J Mfg., LLC, Case IPR2015-00056, slip op. at 7–8 (PTAB Mar. 23, 2015) (Paper 10). Although Amkor and Brinkman Corp. are not precedential, we find them instructive and directly on point. In Amkor, the Board determined that “had Congress intended for arbitration, ITC, or other non-judicial proceedings to trigger the time bar of section 315(b), it would have used more encompassing language than ‘Patent Owner’s Action’ and ‘served with a complaint,’ which are harmonious with a civil action.” Amkor, Paper 98, slip op. at 11 (determining that the time bar is limited to being triggered by the service of a complaint in a civil action). A similar decision by the Board in Brinkman Corp. reaches the same result and specifically is directed toward an ITC investigation. Accordingly, we are not persuaded by Patent Owner that Petitioner is barred under 35 U.S.C. § 315(b).” slip op. at 18

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

    “running instance of a computer program or application.” PO Resp. 26‒31. Petitioner accepts Patent Owner’s proposed construction. Pet. Reply 6; Tr. 20:1–4. Petitioner and Patent Owner, however, disagree as to whether a computer with an operating system is a computer program, and, therefore, a “process.” PO Resp. 26–36; Pet. Reply 7–10. In Ancora Technologies, the Federal Circuit explained that “[t]he ordinary meaning of the word ‘program’ in the computer context encompasses both operating systems and the applications that run on them (as well as other types of computer programs)” and “‘to a computer programmer’ a program is merely a ‘set of instructions’ for a computer.” Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 734 (Fed. Cir. 2014). Applying this guidance to the case before us, we agree with Petitioner and construe the term “process” to mean “a running instance of a computer program or application,” where a “computer program” is a set of instructions for a computer that encompasses both operating systems and the applications that run on them. We further note that the ʼ704, ʼ469, and ʼ121 patent specifications interchange the terms “process” and “processing unit.” For example, the specifications explain that a first “processing unit” is “established in the database [] as an active on-line party.” Ex. 1001, 5:29–34. The claims recite the term “process.” Accordingly, our construction is also consistent with the specifications, such that a “process” includes a “processing unit” that is running a program (operating system) or application.” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly, and (2) requiring a renewal time period in which a computer must reregister. Ex. 1003, 62–63, 68–69. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1003, 68, 150. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein.” slip op. at 23

  • ExcludeOther

    “Exhibits 2021, 2028, 2031, 2033, 2034, 2035, 2036, and 2039. Mot. 1. Petitioner specifically argues that Exhibits 2021, 2028, 2031, 2033, 2034, 2035, and 2036 should be excluded because these Exhibits are irrelevant under Federal Rule of Evidence 401. Id. at 1‒5. Petitioner also argues that Exhibits 2028 and 2033 have not been authenticated under Federal Rules of Evidence 901(b)(1). Id. at 1‒3. Petitioner additionally argues that Exhibits 2028, 2033, and 2039 should be excluded as hearsay under Federal Rules of Evidence 802. Id. Because our decision does not rely on any of the challenged Exhibits, we dismiss Petitioner’s Motion to Exclude as moot.” slip op. at 34

  Patent outcomesUS 6,108,704 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,108,704
• LG Electronics, Inc. / Toshiba Corp. et al. v. Straight Path IP Group, Inc.Some claims unpatentable
  PTAB · May 9, 2016 · IPR2015-01397 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1, 2, and 5 of the ’469 patent and claim 3 of the ’121 patent are unpatentable as obvious; all other challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “2. Section 315(b) Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceedings is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query 11 Petitioner argues that the relevant specifications do not include an embodiment that “guarantee[s]” that an entry in its database is online, and, therefore, Patent Owner’s argument does not distinguish the ’704, ’469, and ’121 patents over the prior art. Addʼl Br. 6‒7. However, such an argument goes towards whether there is written description and enablement support for the claims. In Straight Path, the Federal Circuit did not offer a view as to the sufficiency of the written description or enablement based on the asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time that the query is transmitted to the server.” Id. at 1363. Petitioner and Patent Owner argue that the limitations “on-line status” and “is accessible” have the same meaning as “is connected to the computer network.” See 209 Pet. 35–36; 209 PO Resp. 36‒48; 198 Pet. 35–36; 198 PO Resp. 35‒46; 196 Pet. 29; 196 PO Resp. 38‒51. Similar to “is connected to a computer network,” the “on-line status” and “is accessible” of the second process are recited in the present tense, and therefore must be claim construction provided by the Federal Circuit because “written-description and enablement challenges were not, and could not have been, part of the inter partes review.” Straight Path, 806 F.3d at 1363. We similarly do not determine whether this claim limitation is supported by the specifications of the ʼ704, ʼ469, and ʼ121 patents. determined at the time of the querying whether the second process “is accessible” or selecting of the process having an “on-line status.” Therefore, we construe “on-line status” and “is accessible” as having the same meaning as “is connected to the computer network.”” slip op. at 12

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

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 48–51. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly, and (2) requiring a renewal time period in which a computer must reregister. Ex. 1003, 62–63, 68–69. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1003, 68, 150. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1004, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to WINS, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of WINS and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS, and Pinard, and claim 5 of the ’469 patent is unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS, and Palmer. 198 Pet. 37–47, 54‒ 55, 58‒59. For claims 1, 2, and 5, Petitioner provides citations for where each claim limitation is disclosed by WINS and NetBIOS. Id. Petitioner also articulates reasoning with rational underpinnings why a person of ordinary skill in the art at the time of the invention would have combined the teachings of WINS and NetBIOS. Id. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We determine the record supports Petitioner’s contentions and adopt Petitioner’s contentions discussed below as our own. Furthermore, we have reviewed the Petition and supporting evidence and determine that Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 5 of the ’469 patent would have been obvious over WINS and NetBIOS. See id.” slip op. at 25

  Patent outcomesUS 6,131,121 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 6,131,121

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.