- Coleman Cable, LLC / Jiawei Technology (HK) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentablePTAB · Dec 21, 2015 · IPR2014-00935 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45, and 48–50 are unpatentable under the instituted anticipation and obviousness grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Notwithstanding a “reasonably comprehensive search of U.S. patents and published patent applications on the USPTO website to look for the term ‘surround frame’” by Dr. Ducharme (id. ¶ 81), there is no evidence that the term “surround frame” is a term that has a single recognized meaning to a person of ordinary skill in the technology relevant to the claimed invention of the ’370 patent, or is otherwise considered a term of art. See Tr. 67, ll. 15–23 (“We don’t have anything like that in the record, Your Honor.”). Dr. Ducharme was not able to identify a single patent that used the term “surround frame” in a technology analogous to the claimed invention. Patent Owner maintains, however, that the term “surround frame” has “a uniform, well accepted and consistently used meaning to persons in the art . . . . That is our position.” Id. at 51, ll. 2–6. The evidence of patents and published patent applications directed to doors and window frames, eyeglass frames, and other technologies on which Patent Owner relies, is not persuasive that the detailed construction of the term “surround frame,” advocated by Patent Owner and quoted above, is the broadest reasonable construction of that term based on the intrinsic and extrinsic evidence. The patents and published patent applications have different specifications, use the term in different contexts, and do not show that the term has a common meaning across technology areas.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, a court may consider various factors, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.1986)). The ’370 patent, Ouyang, and Chliwnyj include circuit diagrams, and Norton and Kuelbs address circuitry for lighting assemblies. The parties seem to agree that a person of ordinary skill in the art would be capable of reading the circuit diagrams and understanding what function(s) they perform, at least at some level. PO Resp. 3 (arguing that “[t]he primary area of expertise of a [person of ordinary skill in the art] is that of a person having knowledge of electrical engineering, in particular the ability to recognize how a pre-designed circuit may operate”); Pet. Reply 2–5. Patent Owner in its Response, however, asserts that a person of ordinary skill in the art would have had a “basic knowledge of . . . electrical circuits” and related components in solar garden lights, but he or she would be unable to make any modifications to those circuits and would only be capable of taking them whole cloth and inserting them into another device. See PO Resp. 4–5; see also Ex. 2022 ¶ 39 (Patent Owner’s declarant Dr. Ducharme testifying that a person of ordinary skill would be capable of “making only simplistic changes to the exterior aesthetic of the product to make the product appealing to consumers. But a person of ordinary skill and creativity in the art does not have the ability to re-design the aesthetic effect of a solar garden light by either mechanical or electrical means.”). Patent Owner would seemingly limit the person of ordinary skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Based on our review of the factors above in the current record, we agree” slip op. at 34
- Expert testimonyPetitioner expert creditedDecided for petitioner
“1. Dr. Shackle’s Declaration Petitioner cites and relies on the Declaration of Dr. Shackle, which is Exhibit 1002, for evidentiary support. Patent Owner objects to Dr. Shackle’s qualifications as an expert because “Dr. Shackle has never designed a solar light.” PO Resp. 10. Patent Owner also objects to Dr. Shackle’s qualifications because he conducted a “retrospective review” of the prior art. Id. at 11. Dr. Shackle has a Ph.D. in Physics. Ex. 1002 ¶ 2. Physics is “the branch of science concerned with the properties of matter and energy and the relationships between them. It is based on mathematics and traditionally includes mechanics, optics, electricity and magnetism, acoustics, and heat.”6 In addition to his academic credentials, Dr. Shackle has over twenty years of experience in the field of lighting electronics, with particular emphasis on LED drivers and electronic ballasts. Ex. 1002 ¶ 3. This experience includes, but is not limited to: President and Founder of Photolume, a consulting company in the field of lighting electronics products; Director of Power Supply Products at Light Based Technologies; Chief Technologist at Lightech Electronics North America, Inc.; and Director of Engineering and later V.P. of Advanced Technology at Universal Lighting Technologies, Inc. Id. In these positions, Dr. Shackle was responsible for developing a number of LED circuits and products. Id., App’x A (CV of Dr. Shackle). The ’370 patent refers very generally to LEDs, solar panels, and related circuits. See, e.g., Ex. 1001, col. 6, ll. 25–53. Considering the well-known basic technology of solar cells and solar circuits, and the type and sophistication of the 6 physics. Dictionary.com. Collins English Dictionary - Complete & Unabridged 10th Edition. HarperCollins Publishers. http://dictionary.reference.com/browse/physics (accessed: December 16, 2015) (Ex. 3002). solar cell technology disclosed and claimed in the ’370 patent, Dr. Shackle appears qualified by knowledge, experience, training, and education to testify in the form of an opinion in this proceeding. Patent Owner was entitled to, and did, cross-examine Dr. Shackle based on his Declaration testimony as part of routine discovery. See 37 C.F.R. § 42.51(b)(1)(ii). We discussed the issue of Dr. Shackle’s “retrospective review” above in the” slip op. at 32
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“a. General Legal Principles [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); see also Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). “The identical invention must be shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).” slip op. at 36
Patent outcomesUS 8,089,370 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,089,370 - Jiawei Technology (HK) Ltd. / Jiawei Technology (USA) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00938 · APJ William V Saindon · IPR · Final written decision
Claims 24–30 and 35 are unpatentable as obvious over the instituted combinations of Chliwnyj, Wu, Pu, Dowling, and Lau.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner alleged that Petitioner failed to list all real parties in interest, and we authorized the parties to brief the issue. Paper 37 (Motion to Terminate); Paper 44 (Opposition); Paper 47 (Reply). We denied Patent Owner’s Motion to Terminate. Paper 57.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties seem to be in agreement that a person of ordinary skill in the art would be capable of reading the diagrams and understanding what function(s) they perform, at least at some level. PO Resp. 4 (a person of ordinary skill in the art has “the ability to recognize how a pre-designed circuit may operate”); Pet. Reply 3 (a person of ordinary skill in the art “would [have been] able to understand the patent’s descriptions and drawings”). Patent Owner’s position, however, seems to be that although a person of ordinary skill in the art would recognize what these circuits do, he or she would be unable to make any modifications to those circuits and would only be capable of taking them whole cloth and inserting them into another device. Patent Owner would seemingly limit the person of ordinary skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton”). We agree with Petitioner that a person of ordinary skill in the art at the time of the ’827 patent7 would have had a graduate degree in electrical or electronics engineering or physics with experience in circuit design, or a bachelor’s degree in electrical or electronics engineering or physics with at least two years industrial experience and experience in circuit design, and apply that level of skill for purposes of this Decision. See Ex. 1002 ¶ 36.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“B. Dr. Shackle is Qualified to Testify to the Level of Ordinary Skill in the Art Patent Owner argues that Petitioner’s declarant, Dr. Shackle, is not qualified to testify as to the level of ordinary skill in the art. PO Resp. 14– 15. Patent Owner argues that, for example, he “has never supervised engineers in the design of solar lights.” Id. at 14. Patent Owner argues we should give his declarant, Dr. Ducharme, more weight because Dr. 7 The application issuing as the ’827 patent was filed in April 2005 and is a continuation-in-part of the application, filed in February 2004 and claiming the benefit of a foreign application filed in December 2003, that issued as the ’477 patent. Ducharme is allegedly better qualified. Id. We weigh competing testimony of witnesses on an observation-by-observation basis, based on the witness’s skills and experience, as well as the reasoning and evidence they offer with respect to that particular observation. Further, we are not persuaded that Dr. Shackle would not have been a person of ordinary skill in the art at the time of the invention simply for not being a supervisor of engineers designing solar lights. Instead, we find that Dr. Shackle has ample experience in the field of lighting devices to testify in this proceeding. See Ex. 1002 ¶¶ 3–5; Ex. 1047 ¶¶ 30–41; see also Pet. Reply 7–8 (persuasively arguing why Dr. Shackle is qualified to testify).” slip op. at 11
- Prior constructionPrior construction adoptedDecided for patent owner
“Owner’s proposed constructions of this term because we determined that both proposed constructions focused too much on how the varying color was created rather than what was varying color. Dec. on Inst. 6–9. Or, to put it another way, we determined that the claims required a particular observable phenomenon (varying color) from a particular structure (a circuit having at least two lamps) but did not limit the manner in which the structures were operated to achieve that result. As we stated then, we declined to incorporate any particular way to create varying color because the specification of the ’827 patent does not so limit the term. Id. at 7–8. For that reason, we construed “varying colour” as “a perceptible changing of color over time.” Id. at 8.” slip op. at 13
Patent outcomesUS 7,429,827 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,429,827 - Jiawei Technology (HK) Ltd. / Jiawei Technology (USA) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00936 · APJ William V Saindon · IPR · Final written decision
Claims 1–29 are unpatentable as obvious over four combinations of Chliwnyj, Wu, Hung, Xu, and Pu.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner alleged that Petitioner failed to list all real parties in interest and we authorized the parties to brief the issue. Paper 34 (Motion to Terminate); Papers 42, 43 (Opposition); Paper 46 (Reply). We denied Patent Owner’s Motion to Terminate. Paper 56.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). We agree with Petitioner that a person of ordinary skill in the art at the time of the ’477 patent7 would have had a graduate degree in electrical or electronics engineering or physics with experience in circuit design, or a bachelor’s degree in electrical or electronics engineering or physics with at least two years industrial experience and experience in circuit design, and apply that level of skill for purposes of this Decision. See Ex. 1002 ¶ 36.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“engineers in the design of solar lights.” Id. at 13. Patent Owner argues we should give his declarant, Dr. Ducharme, more weight because Dr. Ducharme is allegedly better qualified. Id. We weigh competing testimony of witnesses on an observation-by-observation basis, based on the witness’s skills and experience, as well as the reasoning and evidence they offer with respect to that particular observation. Further, we are not persuaded that Dr. Shackle would not have been a person of ordinary skill in the art at the time of the invention simply for not being a supervisor of engineers designing solar lights. Instead, we find that Dr. Shackle has ample experience in the field of lighting devices to testify in this proceeding. See Ex. 1002 ¶¶ 3–5; Ex. 1050 ¶¶ 30–41; see also Pet. Reply 7–8 (persuasively arguing why Dr. Shackle is qualified to testify).” slip op. at 12
- Prior constructionPrior construction adoptedDecided for patent owner
“phenomenon (varying color) from a particular structure (a circuit having at least two lamps) but did not limit the manner in which the structures were operated to achieve that result. As we stated then, we declined to incorporate any particular way to create varying color because the specification of the ’477 patent does not so limit the term. Id. at 7. For that reason, we construed “varying colour” as “a perceptible changing of color over time.” Id. at 8.” slip op. at 14
Patent outcomesUS 7,196,477 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,196,477 - PTAB · Dec 11, 2015 · IPR2015-00605 · APJ Ken B Barrett · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and ordered claims 1–8 canceled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R. § 42.73(b)(4), “[a]bandonment of the contest” is construed as a request for adverse judgment. Accordingly, we interpret Patent Owner’s Notice as a request for adverse judgment. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims is appropriate. Accordingly, it is: ORDERED that Patent Owner’s request for adverse judgment under 37 C.F.R. § 42.73(b) with respect to claims 1–8 of U.S. Patent No. 6,837,551 B2 is granted; and FURTHER ORDERED that claims 1–8 of U.S. Patent No. 6,837,551 B2 shall be canceled.” slip op. at 2
NonePatents in suitUS 6,837,551 - Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentablePTAB · Dec 1, 2015 · IPR2014-00780 · APJ William V Saindon · IPR · Final written decision
Claims 6 and 8 are unpatentable as obvious over Liebermann, Engelke ’405, and Mukherji.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“We are not persuaded that the probative value of these Exhibits “is substantially outweighed by a danger” of needlessly presenting cumulative evidence, nor are we persuaded that they are untimely. Patent Owner fails to address the “substantially outweighed” aspect of the Rule. In addition, these Exhibits were presented in response to Patent Owner’s argument that the claims required a certain amount of speed; they tend to show that the prior art was sufficiently speedy. In view of the above, Patent Owner’s Motion to Exclude is denied.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“in this proceeding.” PO Resp. 6–8. Patent Owner alleges the relevant technology is “TRS [(Telephone Relay Systems)] for the deaf and HOH [(Hard of Hearing)].” Id. at 7. We have heard already Patent Owner’s arguments on this issue and ruled against it. See, e.g., CaptionCall, L.L.C., Case IPR2013-00549, Paper 71, 13–14 (upon review of Mr. Occhiogrosso’s qualifications, finding that “he is qualified to testify as to the level of ordinary skill in the art in this proceeding”); see also id. at 8–13 (also discussing the pertinent field and the qualifications for testifying in the pertinent art). As we found in IPR2013-00549: We determine the pertinent art to be telecommunications systems, because any communications technology would be pertinent art to the ’835 patent. While assistive technology may be more pertinent, and assistive technology for the deaf and hearing impaired, using voice-to-text relays, may be most pertinent, anything in the telecommunications technology field would be pertinent to the inventors when considering their problem. Id. at 11–12. This proceeding involves the same patent; the pertinent art is generally the same. Thus, we consider Mr. Occhiogrosso suitably qualified to testify as to the level of ordinary skill in the art, given his background, training, and experience. See Ex. 1010 ¶¶ 10–11 (testifying to experience in “call centers,” “speech recognition algorithms,” “relay services and assistive technologies,” and “captioning of meetings”); see also CaptionCall, L.L.C., Case IPR2013-00549, Paper 71, 8–14 (setting forth in detail why Mr. Occhiogrosso is qualified to testify).” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“We have construed already several terms in the ’835 patent in a prior decision. CaptionCall, L.L.C., Case IPR2013-00549, Paper 7, 8–12 (PTAB Mar. 5, 2014) (Decision to Institute, discussing “assisted user,” “hearing user,” “directly between,” and the control limitation); id., Paper 71, 7–8 (Final Written Decision, discussing “assisted user,” “hearing user,” “directly between,” and “initiating”). Petitioner submits that those prior constructions should be applied to this proceeding. Pet. 11–13. Patent Owner does not contest our prior constructions. PO Resp. 8. For purposes of this decision, we adopt our prior constructions, which are reproduced below, for convenience. We also address a limitation in claim 8 requiring voice recognition. 1. “assisted user” The individual making use of the transcribed text, regardless of the individual’s actual hearing abilities.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languagePlain and ordinary meaningDecided for petitioner
“Nothing in the ’835 patent, however, expresses an intention to limit the scope of “using voice recognition software” to only those uses where revoicing is used. It is well settled that claims generally should be construed broadly enough to encompass at least one preferred embodiment but need not be limited to any embodiment, even if there is only one embodiment, absent disclaimer. Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1581 (Fed. Cir. 1996) (claim interpretation that would exclude the inventor’s device is rarely the correct interpretation); Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (discussing cases wherein the court expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment). The claim language is plainly broader than the particular embodiment Patent Owner seeks to incorporate. We recognize that the ’835 patent describes an embodiment utilizing voice recognition for revoicing, but we are not apprised of any disclosure that so limits the claims. Likewise, there is nothing structurally present in the claims that would limit or imply that revoicing is used.” slip op. at 12
Patent outcomesUS 6,603,835 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,603,835 - Captioncall, L.L.C. v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00544 · APJ Lynne E Pettigrew · IPR · Rehearing
Patent Owner’s rehearing request was granted to modify the Ryan–McLaughlin combination analysis and denied otherwise; claims 7–11 remain unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Patent Owner Response, that for a patent to serve as prior art the patent must be enabled as to its own earliest claimed effective filing date in 1994. Req. 1–4; PO Resp. 15–22. We addressed this argument in the Final Decision and additionally examined the evidence of record as to whether Ryan would have enabled one of ordinary skill in the art to make the invention without undue experimentation prior to the date of invention of the challenged patent. Final Dec. 22–25. We are not persuaded that we overlooked or misapprehended Patent Owner’s prior argument or made an erroneous interpretation of law.” slip op. at 3
- ExcludeDecided for petitioner
“transcript is inadmissible because it does not satisfy the requirements that all testimony, other than uncompelled direct testimony, must be in the form of a deposition transcript, 37 C.F.R. § 42.53(a), and that the witness shall be sworn, 37 C.F.R. § 42.53(f)(1). Req. 5. Therefore, according to Patent Owner, the Yamamoto transcript was “not taken, sought, or filed in accordance with these regulations [and] is not admissible.” Id. (citing 37 C.F.R. § 42.61(a)). Rule 42.53, however, is titled “Taking Testimony,” and applies only to testimony taken “during a testimony period set by the Board” for purposes of a particular review proceeding. 37 C.F.R. § 42.53(b); see also 37 C.F.R. § 42.53(c) (providing time limits set by the Board); id. § 42.53(d) (providing notice requirements). As stated in our Final Decision, Petitioner sought to admit the Yamamoto transcript as a deposition taken in the district court proceeding, not as deposition testimony taken in this inter partes proceeding. Final Dec. 32. And based on the parties’ stipulation in district court, we treated the Yamamoto transcript as sworn deposition testimony taken in the district court. Id. at 32–33 (citing Ex. 1067 ¶ 5). Petitioner filed the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b), establishing that the Yamamoto transcript reasonably could not have been obtained earlier and that its consideration was in the interests of justice. Paper 59, 7–8. Therefore, Petitioner’s filing of the Yamamoto transcript complied with Board rules, and we properly relied on it in determining the public accessibility of Yamamoto. See Final Dec. 35–38. Having reviewed Patent Owner’s Request, we are not persuaded we misapprehended or overlooked any matter relating to the admissibility of the Yamamoto transcript.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“disclosure in the ’578 patent of “voice pattern.” Id. at 7–9. We disagree that our reliance on the “Brief Summary of the Invention,” which refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 12 (quoting Ex. 1001, 2:44–46 (emphasis added)). Rather, in our Final Decision, we determined that the ’578 patent contemplated software trained to a “voice pattern of the call assistant,” as set forth in the “Brief Summary of the Invention,” as well as software “specifically trained to the voice of [a] particular call assistant,” as described in the context of a particular relay embodiment shown in Figure 1. Final Dec. 12 (quoting Ex. 1001, 2:44–46; Ex. 1002, 5:44–47). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’578 patent did not indicate expressly how training occurs. Id. Giving the claim language its broadest reasonable construction in light of the specification, we concluded we would not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant. Id.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,213,578 - Captioncall, LLC v. Ultratec, Inc.Rehearing deniedPTAB · Dec 1, 2015 · IPR2013-00540 · APJ Barbara A Benoit · IPR · Rehearing
Denied Patent Owner’s request for rehearing of the Final Written Decision, which held claims 1 and 2 unpatentable, and denied its request for an expanded panel.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Patent Owner, as the party challenging the Final Decision, has the burden of showing the decision should be modified. Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Ryan1 did not qualify as prior art because it was not enabled (Paper 30, 15– 24 (“PO Resp.”)), we determined that Ryan was enabled prior to the date of invention of the challenged patent in 1997 and, therefore, qualified as prior art to the challenged claims. Final Dec. 18–23.” slip op. at 3
- ExcludeDecided for petitioner
“transcript is inadmissible because it does not satisfy the requirements that all testimony, other than uncompelled direct testimony, must be in the form of a deposition transcript, 37 C.F.R. § 42.53(a), and that the witness shall be sworn, 37 C.F.R. § 42.53(f)(1). Req. 7. Therefore, according to Patent Owner, the Yamamoto transcript was “not taken, sought, or filed in accordance with these regulations [and] is not admissible.” Id. (citing 37 C.F.R. § 42.61(a)). Rule 42.53, however, is titled “Taking Testimony” and applies only to testimony taken “during a testimony period set by the Board” for purposes of a particular review proceeding. 37 C.F.R. § 42.53(b); see also 37 C.F.R. § 42.53(c) (providing time limits set by the Board); id. § 42.53(d) (providing notice requirements). As stated in our Final Decision, Petitioner sought to admit the Yamamoto transcript as supplemental information, not as deposition testimony taken in this inter partes proceeding. Final Dec. 31. And based on the parties’ stipulation in district court, we treated the Yamamoto transcript as sworn deposition testimony taken in the district court. Id. at 33–35 (citing Ex. 1062 ¶ 5). Petitioner filed the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b), establishing that the Yamamoto transcript reasonably could not have been obtained earlier and that its consideration was in the interests of justice. Paper 63, 7–8. Therefore, Petitioner’s filing of the Yamamoto transcript complied with Board rules, and we properly relied on it in determining the public accessibility of Yamamoto. See Final Dec. 30– 35.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Specification’s disclosure of “voice pattern.” Req. 10–11. We disagree that our reliance on the Specification’s “Brief Summary of the Invention,” which indicates “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 7 (quoting Ex. 1021, 2:45-48 (emphasis added)). Rather, in our Final Decision, we contrasted the Specification’s use of “voice pattern of the call assistant” in its “Brief Summary of the Invention” with its use of “a voice recognition software package which is specifically trained to the voice of that particular call assistant” in the context of a particular embodiment of the invention shown in Figure 1. Final Dec. 7 (quoting Ex. 1021, 2:45–48, 5:45–48). Based on the evidence in the Specification (including the Specification’s disclosure of “a voice pattern”), we determined that the Specification did not indicate expressly that the voice recognition software is trained to the voice of only that particular call assistant or otherwise indicate that the voice recognition software is trained for the voice of only one call assistant. Final Dec. 7. We concluded that “we will not limit ‘trained to the voice of the call assistant’ to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant.” Id. at 8 (citing Ex. 1021, 2:41–49 (“Summary of the Invention”)).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,233,314 - Captioncall, LLC v. Ultratec, Inc.Rehearing deniedPTAB · Dec 1, 2015 · IPR2013-00550 · APJ William V Saindon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving the finding that claim 1 was anticipated by McLaughlin unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableDecided for petitioner
“MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 n.5 (Fed. Cir. 2008), “for the proposition that anticipation can be based on combining characteristics of various distinct embodiments in a prior art reference.” Req. Reh’g 1 (citing to Final Dec. 20). Patent Owner’s argument mischaracterizes our Final Decision. We pointed to Net MoneyIn in support of our finding that McLaughlin “is describing options for a single system, not separate embodiments.” Final Dec. 20 (emphasis added). Further, Patent Owner overstates the importance of the word “embodiment”; the anticipation inquiry is whether there is “a single prior art disclosure of all elements of a claimed invention arranged as in the claim,” i.e., the word “embodiment” is not itself governing. Net MoneyIn, 545 F.3d at 1359. In this case, Patent Owner has attempted repeatedly to get around McLaughlin’s anticipating disclosure by arguing that the various features are in different “embodiments,” essentially because they are under separate headings. But Patent Owner fails to address convincingly Petitioner’s assertions, backed by convincing testimony, that these features are all part of the same single prior art disclosure and arranged as claimed. In our Final Decision, we reviewed the facts and found that Petitioner had established that all of the elements of the claim were found in a single system in McLaughlin. See generally Final Dec. 15–24.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner next alleges that we “explained that a captioned telephone device is a single device that has the features in the body of the claim.” Req. Reh’g 2. Patent Owner mischaracterizes our Final Decision; we made no such statement or implication regarding a “single device.” Our Final Decision already explains why a construction including the phrase “single device” is not commensurate with the broadest reasonable interpretation. See Final Dec. 7–9 (setting forth our construction of the “captioned telephone device”). Specifically, we pointed out that the specification of the ’082 patent instructed one of ordinary skill in the art that “the captured telephone device displays text but need not output any audio signals,” or, in other words, there was no requirement for all features of the claims to be found in one housing or a “single device.” Final Dec. 9 (citing, e.g., an example in the ’082 specification where the speaker/microphone portion (telephone) was depicted as a separate device from the text display portion); Ex. 1021, 9:20–32, Figs. 4–6.” slip op. at 4
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Written Decision “with less than a full panel.” Req. 11–13. Panel composition for an inter partes review is specified in 35 U.S.C. § 6(c), which states “[e]ach . . . inter partes review shall be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be designated by the Director.” The Director’s authority under 35 U.S.C. § 6 to designate panels has been delegated to the Chief Judge. See Patent Trial and Appeal Board Standard Operating Procedure 1 (Rev. 14) (May 8, 2015) (“PTAB SOP 1”). As acknowledged by Patent Owner (Req. 11–12), the Final Decision was decided by three administrative patent judges, who are members of the Board. See 35 U.S.C. § 6(a) (indicating that administrative patent judges, along with various members of the United States Patent and Trademark Office, constitute the Patent Trial and Appeal Board). The three administrative patent judges were designated by the Chief Judge according to PTAB SOP 1, titled “Assignment of Judges to Merits Panels, Interlocutory Panels, and Expanded Panels.” The Board, therefore, complied with the statutory requirements for panel composition. Accordingly, we did not issue the Final Decision with less than a “full panel,” as Patent Owner contends.” slip op. at 5
Claim construction§ 102 anticipationPatents in suitUS 7,003,082 - Captioncall, LLC v. Ultratec, Inc.Rehearing deniedPTAB · Dec 1, 2015 · IPR2013-00545 · APJ Barbara A Benoit · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving claims 1 and 2 unpatentable over Ryan and Alshawi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Patent Owner, as the party challenging the Final Decision, has the burden of showing the decision should be modified. Id.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable
“secondary considerations evidence. Req. 5. This is incorrect. We considered the arguments and evidence presented in Patent Owner’s Response. Final Dec. 36–37. We concluded Patent Owner did “not provide sufficient analysis for us to determine whether Patent Owner has provided adequate evidence of secondary considerations and a nexus between any such evidence and the merits of the claimed invention.” Id. In its Request, Patent Owner seems to suggest that we should have reviewed and analyzed the entirety of each of three declarations submitted by Patent Owner in support of its secondary considerations contention (Exs. 2003, 2004, and 2005). Req. 5. This also is incorrect because, in its Patent Owner Response, Patent Owner merely cited each declaration in its entirety without citing with particularity portions of these declarations. PO Resp. 49 (citing “declarations by Brenda Battat (Ex. 2004) and Constance Phelps (Ex. 2005)” and “declaration of Paul Ludwick (Ex. 2003)”). We will not scour the 143 pages of declaration evidence submitted by Patent Owner and generally serve as an advocate for Patent Owner by finding evidence of secondary considerations in the voluminous exhibits submitted. Cf. DeSilva v DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”); Ernst Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d 110, 111–12 (2d Cir. 1999) (“Appellant’s Brief is at best an invitation to the court to scour the record, research any legal theory that comes to mind, and serve generally as an advocate for appellant. We decline the invitation.”). Testimony of Patent Owner’s Declarant” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“F.3d 1322 (Fed. Cir. 2012) in finding a motivation to combine Ryan1 and Alshawi2 and, therefore, erred in determining that the challenged claims would have been obvious. Req. 7–8 (citing Final Dec. 33). The Final Decision cited Mouttet for the proposition that a “determination of obviousness is not based on bodily incorporation of parts from one disclosed system into another, but what the combined teachings would have suggested to one with one of ordinary skill in the art.” Final Dec. 33 (citing Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Keller, 642 F.2d 412, 425 (CCPA 1981)). We disagree that we misapprehended Mouttet, which states: It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily 1 U.S. Patent No. 5,809,112 (Ex. 1004). 2 U.S. Patent No. 5,815,196 (Ex. 1010). incorporated into the structure of the primary reference....”). In re Mouttet, 686 F.3d at 1332. Thus, we are not persuaded that we misapprehended Mouttet. Nor did we “disregard[] Patent Owner’s counter-evidence that there would be disincentives for a [person of ordinary skill in the art] to combine Ryan and Alshawi,” “given that Alshawi’s features are incompatible with the TDD devices with which Ryan is used.” Req. 8. Rather, in finding a sufficient reason one of ordinary skill in the art would combine the references, we considered the reasons identified by the Petition, weighed the testimony of the respective declarants, and considered Patent Owner’s arguments. Final Dec. 32–35. Claim Construction” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Rather, in our Final Decision, we contrasted the Specification’s use of “voice pattern of the call assistant” in its “Brief Summary of the Invention” with its use of “a voice recognition software package which is specifically trained to the voice of that particular call assistant” in the context of a particular embodiment of the invention shown in Figure 1. Final Dec. 8–9 (quoting Ex. 1001, 2:51–54, 6:21–24). Based on the evidence in the Specification (including the Specification’s disclosure of “a voice pattern”), we determined that the Specification did not indicate expressly that the voice recognition software is trained to the voice of only that particular call assistant or otherwise indicate that the voice recognition software is trained for the voice of only one call assistant. Final Dec. 8. We concluded that “we will not limit ‘trained to the voice of the call assistant’ to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant.” Id. at 9 (citing Ex. 1001, 2:41–49 (“Summary of the Invention”)).” slip op. at 9
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 6,594,346 - Captioncall, LLC v. Ultratec, Inc.Rehearing deniedPTAB · Dec 1, 2015 · IPR2013-00541 · APJ Barbara A Benoit · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving claims 1–15 unpatentable based on the prior final written decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Patent Owner, as the party challenging the Final Decision, has the burden of showing the decision should be modified. Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner
“Ryan1 did not qualify as prior art because it was not enabled (Paper 28, 16– 25 (“PO Resp.”)), we determined that Ryan was enabled prior to the date of invention of the challenged patent in 1997 and, therefore, qualified as prior art to the challenged claims. Final Dec. 23–28.” slip op. at 3
- ExcludeDecided for petitioner
“record will be treated as a sworn deposition taken in [the district court proceeding] at which both parties appeared and had the opportunity to question the witness.” Ex. 1062 ¶ 5 (Stipulation Regarding Seiichi Yamamoto). As explained in our Final Decision, we granted Petitioner’s motion to submit the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b) relating to the prior art status of Yamamoto and, after supplemental briefing by the parties, determined the Yamamoto transcript was admissible. Final Dec. 36–41.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Specification’s disclosure of “voice pattern.” Req. 10–12. We disagree that our reliance on the Specification’s “Brief Summary of the Invention,” which indicates “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 8–9 (quoting Ex. 1001, 2:46–48 (emphasis added)). Rather, in our Final Decision, we contrasted the Specification’s use of “voice pattern of the call assistant” in its “Brief Summary of the Invention” with its use of “a voice recognition software package which is specifically trained to the voice of that particular call assistant” in the context of a particular embodiment of the invention shown in Figure 1. Final Dec. 8–9 (quoting Ex. 1001, 2:46– 48, 5:44–47). Based on the evidence in the Specification (including the Specification’s disclosure of “a voice pattern”), we determined that the Specification did not indicate expressly that the voice recognition software is trained to the voice of only that particular call assistant or otherwise indicate that the voice recognition software is trained for the voice of only one call assistant. Final Dec. 9. We concluded that “we will not limit ‘trained to the voice of the call assistant’ to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant.” Id. at 10 (citing Ex. 1001, 2:41–49 (“Summary of the Invention”)).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,909,482
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.