• Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.No claims unpatentable
  PTAB · Apr 14, 2025 · IPR2023-01416 · APJ Ken B Barrett · IPR · Final written decision

  The Board held claims 1–15 and 18 not unpatentable; the petition failed to prove the asserted anticipation and obviousness grounds, including failure to establish WiMAX as prior art.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “filed with the Office a statutory disclaimer disclaiming method claims 16, 17, 19, and 20. See Ex. 2007; see also Tr. 33, 21:1–12 (Patent Owner’s counsel informing the Board that the disclaimer had been filed in the USPTO Patent Center, and Petitioner’s counsel having no objection to the filing of the disclaimer as an exhibit in this inter partes review); Tr. 34:19 1 Petitioner identifies Nokia of America Corporation, Ericsson Inc., and T-Mobile USA, Inc. as real parties in interest. Pet. 72. 2 Patent Owner identifies General Access Solutions, Ltd. as the real party in interest. Paper 6, 1. (Patent Owner’s counsel stating, “General Access has disclaimed method Claims 16, 17, 19, and 20.”). We treat disclaimed claims as if they never existed. See Facebook, Inc. v. SKKY, LLC, CBM2016-00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (expanded panel) (precedential) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”) (citing, inter alia, Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”)). Accordingly, the remaining claims challenged in this proceeding are apparatus claims 1–15 and method claim 18.” slip op. at 2

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

    “of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32

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

    “of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Id. “[A] work is not publicly accessible if the only people who know how to find it are the ones who created it.” Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1372 (Fed. Cir. 2019) (citing SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) Application of Bayer, 568 F.2d 1357 (CCPA 1978)). Accordingly, in this case, Petitioner must demonstrate by a preponderance of the evidence that the WiMAX exhibit was disseminated or otherwise made available to interested ordinary artisans outside of the group that created the document. Petitioner has failed to satisfy that burden.” slip op. at 48

  Patent outcomesUS 6,947,477 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,947,477
• Interactive Communications International, Inc. v. Blackhawk Network Inc.No claims unpatentable
  PTAB · Feb 6, 2025 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under either obviousness ground because Szrek did not disclose a pre-printed lottery ticket without lottery numbers associated at customer purchase.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “real party in interest. Prelim. Resp. 1–2, 32–34. In the Institution Decision, we stated: To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial. Inst. Dec. 11. In its Patent Owner Response, Patent Owner did not raise the issue of challenging Petitioner’s identified real party in interest. See generally PO Resp. Thus, we need not address this issue further because we find that Patent Owner has waived any challenge to Petitioner’s identification of the real parties in interest in this proceeding. See Paper 12 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶ 13).5 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19. 5 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084. Pet. 2–3 (citing Ex. 1008, 11). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDisclaimer foundDecided for patent owner

    “Following the block quote from Yacenda, the applicant then stated, “[b]ased on the foregoing, Yacenda’s system is directly opposite of the instant claims, as the instant claims require a ‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.’” Ex. 1002, 76. This statement is clear and unmistakable. It (1) specifically states that “the instant claims require” and (2) then states what the claims require—a “‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.” We fail to see how the applicant could have been more clear in stating a requirement of the Challenged Claims. And, by doing so, the applicant narrowed the scope of what would otherwise be encompassed in the meaning of “pre-printed lottery ticket” and therefore what would otherwise be encompassed in the scope of the Challenged Claims—a lottery ticket which has lottery numbers associated with it at the time of customer purchase.” slip op. at 27

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We do not find Mr. Hutton’s testimony particularly helpful. First, we have addressed the points raised by his testimony in our discussion above because they are largely the same as the arguments raised in Petitioner’s Reply. Second, we find his testimony entitled to very little weight because he applies an incorrect understanding of the caselaw, which mirrors Petitioner’s incorrect and arguably misleading quotations of the Federal Circuit’s decision in Quest. In particular, in paragraph 5, Mr. Hutton states the following as his understanding of the law as it applies to prosecution disclaimer: “I also understand that in order to disclaim embodiments within the specification, the statements should have some indication that the applicant intended to surrender embodiments from the specification.” Ex. 1038 ¶ 5 (emphasis added). This then leads Mr. Hutton to state: “[t]hus, in my opinion, a [person of ordinary skill in the art] would not view applicant’s statements as a disclaimer, because the applicant never stated that they intended to surrender multiple embodiments described in the specification.” Id. ¶ 13 (emphasis added). As we explained above in responding to a similar argument by Petitioner, the caselaw does not require an applicant to expressly state whether a disclaimer excludes particular embodiments of the subject specification when disclaiming claim scope during prosecution. See Quest, 924 F.3d at 1229. And, as noted above, counsel for Petitioner agreed that such a statement explicitly disclaiming particular embodiments is not required. Tr. 12:18–13:17. Third, although we have considered Mr. Hutton’s testimony, we find it “less significant than the intrinsic record in determining the legally operative meaning of” “pre-printed lottery ticket.” Phillips, 415 F.3d at 1317. In particular, we are cognizant of the Federal Circuit’s guidance that we “should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the prosecution history.” Id. at 1318 (internal quotation omitted). In this instance, for the reasons explained above, we find that Mr. Hutton’s testimony is clearly at odds with the applicant’s arguments during prosecution and that his testimony is based on a misunderstanding of what is required by the governing caselaw for prosecution history disclaimer.” slip op. at 43

  Patent outcomesUS 9,865,135 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,865,135
• Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.No claims unpatentable
  PTAB · Dec 23, 2024 · IPR2023-01147 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–6 were not shown unpatentable because the asserted references did not establish that the claimed second transceiver routes information based on monitored signal characteristics.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had either: (1) a Bachelor of Science degree in computer science, electrical or computer engineering, or a related field, and at least 2 years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a Master’s degree in electrical engineering, computer engineering, computer science or similar field. Additional education could compensate for less practical experience and vice versa. Ex. 1002, ¶¶1-46. Pet. 10. Patent Owner does not address the level of ordinary skill in the art. Cf. Ex. 2007 ¶19 (Patent Owner’s declarant, after acknowledging Petitioner’s definition, stating: “Patent Owner has not offered a different understanding of a POSITA, and the PTAB accepted Petitioner’s submission. I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person 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 oral argument, both parties confirmed their respective positions that the claim term “route” needs no construction. See, e.g., Tr. 11:7–9 (Petitioner’s counsel: “Frankly, it doesn’t make any difference to the analysis of the prior art. And so, we don’t believe that the PTAB needs to construe the term route, and so we have not proposed a construction.”); id. at 58:25–59:2 (Patent Owner’s counsel: “You know, I don’t think that you have to define routing in order to decide the case. I think you can do it, you know, just apply whatever plain and ordinary meaning is.”); cf. Tr. 40:14–18 (Patent Owner’s counsel at oral argument: “For the routing itself, you know, there is a District Court construction and that’s a construction that the other—the Petitioner did not ask for determination whether that’s appropriate or not appropriate here. We did not address that as well, so the parties aren’t arguing that that construction should be applied here.”). For the reasons discussed below, we determine that Petitioner has not proven by a preponderance of the evidence that the prior art discloses or teaches, under Petitioner’s articulated theories, that a second transceiver routes information based on monitored characteristics. This is dispositive of the inter partes review. Accordingly, we determine that no claim terms require express construction for purposes of deciding the dispositive issues.” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Ex. 1004, 5:25–36 (emphasis added). Thus, Palmer discloses that the determination to roam to another cell may be done by the mobile worker’s wireless communication device 20 having a specifically-programmed processor or may be done centrally, with examples being the “network” or central host processor. We disagree that this constitutes a disclosure of the access point 40 performing the roaming determinations. Rather, we find to be persuasive and credible Dr. Chrissan’s testimony that “a POSITA recognizes that an access point does not qualify as ‘centrally, for example, by the network or a central host processor,’” and, “[i]nstead, this phrase refers to one of the centrally located devices such as network 14 or central host processor 12 (in Fig. 1), or a device in administration building 33 (in Fig. 2).” Ex. 2007 ¶ 71 (citing Ex. 1004, Figs. 1, 2). Dr. Chrissan’s opinion is consistent with Palmer’s disclosure, as we will now discuss.” slip op. at 23

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

    “We determine that Petitioner has not established by a preponderance of the evidence its foundational assertion that Palmer discloses that “access point 40 determines whether roaming by a portable terminal 20 should take place and routes data packets accordingly.” Pet. 26–27; see Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (“Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.”). As such, Petitioner has not met its burden to show that Palmer discloses, as recited in independent claim 1, a second transceiver that, “based on the first signal characteristics and the second characteristics, routes information to the first mobile station and the second mobile station, respectively,” or, as recited in independent claim 6, “based on the first signal characteristics and the second characteristics, routing, using the second transceiver, information to the first mobile station and the second mobile station, respectively.” Ex. 1001, 10:38–44, 11:19–22. The Petition does not contain a contention that this “route” aspect of the claims would have been obvious. Compare Pet. 25–26 (offering an alternative argument for the monitoring aspect; contending that, “to the extent the Board disagrees that Palmer’s access point 40 performs the monitoring, it would have nonetheless been obvious to a POSA to select the access point 40 to perform the monitoring since it directly communicates with the portable terminals 20.”), with id. at 26–27 (making the anticipationtype contention that “[t]he access point 40 routes information” without an alternative obviousness contention); see also Pet. Reply 12–13 (arguing, under the monitoring-and-routing heading, that monitoring by the access point would have been obvious, but not arguing the same for routing). Petitioner has not shown by a preponderance of the evidence that independent claims 1 and 6 and dependent claims 2–4 are anticipated by or would have been obvious over Palmer.” slip op. at 28

  Patent outcomesUS 9,426,794 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,426,794
• Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Feb 22, 2024 · IPR2020-00558 · APJ Iftikhar Ahmed · IPR · Remand

  The majority determined claims 1–24 were not shown unpatentable over Chen, Lindahl, and Hurst; the dissent would have found them obvious.

  RulingsRemand decision

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

    “We determine Patent Owner’s reading of the claim limitation is the better one. The limitation begins with the verb “locating,” and it therefore makes sense that the clause would recite what is located (i.e., encryption information) and where it is located (i.e., within the requested portions of the selected stream of protected video). In other words, it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).10 On the other hand, Petitioner’s reading of the limitation, 10 In general, we recognize that the use of commas to set off phrases in claim drafting is not consistent. We included commas above to illustrate Patent Owner’s understanding of the claim limitation. allowing only the second clause to modify the first, while not unreasonable, makes less sense. That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video. Reading the claim in its entirety, the encrypted portions of frames would be understood to be located within the requested portions of the stream; it does not seem necessary for the claim to expressly recite that aspect. For example, the very next limitation— limitation [m] of claim 1—refers to “each encrypted portion of the frames of video” but does not expressly recite “within the requested portions of the selected stream.” Ex. 1001, 27:58–60. Thus, when limitation [l] recites “within the requested portions of the selected stream,” it seems more likely that the clause refers to where that encrypted information is located rather than simply to indicate the obvious location of the encrypted portion of the frames of video. We therefore view Patent Owner’s reading of the claim language as the better one.” slip op. at 13

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

    “I am persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix, slip op. at 9–10 (citing Pet. 17– 19, 69–70). I agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41– 15:60). I determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 52

  • Strike new argumentNew argument disregardedDecided for petitioner

    “I agree with Petitioner that Patent Owner’s Remand Brief, specifically pages 1–7, attempt to address aspects of claim 1 for the first time on remand. I also agree that Patent Owner’s arguments attempt to recharacterize limitations [j] and [k] to raise issues that Patent Owner did not raise previously, in contravention of our Order that issues raised needed support from “where those issues were raised in previous briefings by the parties.” Paper 56, 2. I have addressed whether scalability and FEC are integral to how Chen operates above, as well as whether the Petition relies on those aspects, supra. The questions about how Chen operates and what portions of Chen are asserted in the ground of unpatentability were previously raised, but now are being considered or reconsidered, based on the Federal Circuit’s decision. In Patent Owner’s Remand Brief, pages 1–7, the citations to argument previously raised do not support the arguments now presented by Patent Owner on remand. As such, I determine Patent Owner’s new arguments fall outside the scope of remand, and I dismiss these arguments seeking to distinguish limitations [j] and [k] from the cited prior art combination.24” slip op. at 62

  • ExcludeMotion to exclude, grantedMixed

    “7 Patent Owner’s Brief on Remand recognizes that there are two arguments Patent Owner raised in its Patent Owner Response that were not addressed in the Final Written Decision. See PO Remand Br. 1 (citing PO Resp. 24–37 (the construction of “locating encrypted information . . . within requested portions”), 38–58 (referring to Patent Owner’s “common keys” argument)). 8 The Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42). See Final Dec. 28–37 (granting-in-part, denying-in-part, and dismissing-in-part Petitioner’s Motion). Our determinations on that Motion were part of Petitioner’s appeal to the Federal Circuit. See Paper 52. Because the Federal Circuit did not address this aspect of the Final Written Decision and the Federal Circuit’s decision does not impact our previous rulings on the Motion, we maintain those rulings here. Additionally, on remand, Petitioner requested authorization to file a motion for sanctions, which we held in abeyance until the parties’ briefing on remand was complete. See Ex. 3003, 1. Petitioner requests sanctions because of the impropriety of Patent Owner’s remand brief, including new claim construction arguments for limitations [1j] and [1k], and prejudice to Petitioner. Id. at 3, 5. Although we reserved further consideration of Petitioner’s request, we expanded both the time and pages allowed for Petitioner’s responsive brief, and also allowed Petitioner to address any related issues in its responsive brief. Id. at 1. Having considered the parties’ briefing on remand, and given that we do not reach the claim construction arguments that Petitioner objected to in its request for authorization to file a motion for sanctions, we deny Petitioner’s request.” slip op. at 5

  Patent outcomesUS 10,225,588 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,225,588
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jun 26, 2023 · IPR2022-00325 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–17 were not shown unpatentable: the Keely–Geva combinations lacked sufficient reasoning to combine, and did not teach claimed movement in the third dimension.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Testimony cannot take the place of disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. See CTPG at 36. More specifically, the Consolidated Trial Practice Guide sets forth the following: Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. For example, because “[a] claim is anticipated only if each and every element as set forth in the 8 For exhibits 1004 and 2025, we use the pagination added by the submitting party. 9 Although not relied on for independent claim 1, Kameyama also was cited in that Information Disclosure Statement that was initialed by the Examiner. Id. single prior art reference,” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987), a petitioner asserting anticipation cannot rely on its expert to supply disclosure of a claim element that is not expressly or inherently present in the reference. Similarly, in an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). Furthermore, because an inter partes review may only be requested “on the basis of prior art consisting of patents or printed publications,” 35 U.S.C. § 311(b), expert testimony cannot take the place of disclosure from patents or printed publications. In other words, expert testimony may explain “patents and printed publications,” but is not a substitute for disclosure in a prior art reference itself. CTPG at 36. We, therefore, find that Dr. Bederson’s testimony (Ex. 1002 ¶ 92) does not remedy the deficiency in Geva’s disclosures. Petitioner has not shown that Geva teaches element 1[G].” slip op. at 49

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the complete record now before us, we maintain our determination in the Institution Decision (Inst. Dec. 8) that Petitioner’s proposed definition is consistent with the level of skill reflected in the 3 Patent Owner does not present objective evidence of nonobviousness based on the complete record now before us. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase. Our analysis and determinations herein, however, do not turn on which level of skill we adopt.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Importantly, to prevail in its challenge to Patent Owner’s claims, Petitioner must demonstrate that the claims are unpatentable, and that burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012)); see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). includes argument and evidence indicating clear reliance on Keely’s teachings of determining pen position, consistent with Patent Owner’s contentions. We further find that the Petition does not include Petitioner’s Reply arguments regarding Geva’s planar element. We conclude that the Petition does not set forth Petitioner’s proposed combination of Keely and Geva argued in the Reply and, therefore, the Reply includes improper, new argument. With respect to Patent Owner’s argument that Petitioner’s Reply and Reply declaration should be disregarded (Sur-reply 3; Paper 33, 1), we need not reach that decision because, as discussed below (see §§ III.D.3.b–c) even upon consideration of Petitioner’s new Reply arguments, Petitioner does not demonstrate that claim 1 is unpatentable. To the extent Patent Owner has not fully explained its opposition to the Petition in its Patent Owner Response, Petitioner must demonstrate that the claims are unpatentable, and that burden never shifts to the patentee. Dynamic Drinkware, 800 F.3d at 1378. We had cautioned Patent Owner that arguments not raised in its Patent Owner Response “may be deemed waived.” Paper 8, 9. We determine that any such waiver is not appropriate here because the Petition does not include Petitioner’s newly raised, improper Reply arguments.” slip op. at 23

  • BurdenFwd all claims patentableNot shown unpatentable

    “CTPG at 36. We, therefore, find that Dr. Bederson’s testimony (Ex. 1002 ¶ 92) does not remedy the deficiency in Geva’s disclosures. Petitioner has not shown that Geva teaches element 1[G]. For the reasons given, after consideration of the assertions and the evidence based on the complete record now before us, we determine that Petitioner has not shown that its combination of Keely and Geva teaches element 1[G] of claim 1.” slip op. at 50

  Patent outcomesUS 9,946,369 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,946,369
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jun 23, 2023 · IPR2022-00315 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the Petition did not establish that Keely and Geva teach the touch-sensitive display plane or provide sufficient reasoning to combine them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the complete record now before us, we maintain our determination in the Institution Decision (Inst. Dec. 8) that Petitioner’s proposed definition is consistent with the level of skill reflected in the 3 Patent Owner does not present objective evidence of non-obviousness into the complete record now before us. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase. Our analysis and determinations herein, however, do not turn on which level of skill we adopt.” slip op. at 8

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

    “federal courts, in other words, “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We find that paragraph 75 of Dr. Bederson’s original Declaration that his testimony “show[s] how Keely’s touch-sensitive plane can be used as Geva’s planar element” (Ex. 1002 ¶ 75 (emphasis added)) is consistent with Patent Owner’s position that the proposed combination in the Petition does not include Geva’s planar element 14. We find that Dr. Bederson’s testimony that “[p]erhaps I could have been more precise by using the word ‘with’ in place of ‘as’ in this sentence, since that is what Geva itself teaches and what I relied on in forming my opinions” (Ex. 1044 ¶ 13) is not a clarification of his initial testimony, but, instead, is a clear revision of his testimony and his opinion. Dr. Bederson’s testimony regarding “using the word ‘with’ in place of ‘as’” (id.) is improper new testimony in his Reply Declaration. Furthermore, Dr. Bederson’s testimony that his new opinion is supported by “what Geva itself teaches” (id.) is not consistent with Geva’s teachings. Geva does not refer to Keely’s LCD or any LCD similar to that in Keely with a digitizer grid, but instead, Geva describes “[a]dvantageously, the position-determining input device does not require a specific, active board with in-built sensors for determining positions.” Ex. 1011, 3:7–9. which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Here, Dr. Bederson’s original Declaration (Ex. 1002) does not disclose facts or data showing a reliance on Geva’s planar element 14 or any LCD other than the LCD described in Keely, which incorporates by reference the hardware of Keely II.” slip op. at 28

  • BurdenFwd all claims patentableNot shown unpatentable

    “After consideration of the assertions and the evidence of record based on the complete record now before us, we determine that Petitioner has not shown that the combination of Keely and Geva teaches element 1[B]. Accordingly, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Keely and Geva.” slip op. at 40

  Patent outcomesUS 10,664,070 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,664,070
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jan 13, 2023 · IPR2021-01257 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, 6–8, 13, 14, 16, 18, 19, 21–23, 26, and 30 were not shown unpatentable over Newton or Reime, alone or with Hinckley, because the references did not teach element 1[b].

  RulingsFinal written decision

  • ExcludeOther

    “A. Patent Owner’s Motion to Exclude Patent Owner filed a Motion to Exclude certain of Dr. Bederson’s testimony in his Reply Declaration (Ex. 1035) arguing that the testimony is irrelevant and has little probative value. Mot 1. In particular, Patent Owner 3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103, and was effective on March 16, 2013. Because the challenged claims of the ’170 patent have an apparent effective filing date before March 16, 2013, we refer to the pre-AIA version of 35 U.S.C. § 103. 4 The Petition lists “Ground 3 and 4” as obviousness over Reime and Hinckley (Pet. 3, 46–60 (emphasis omitted)), and Ground 3 appears to be obviousness over Reime alone. Id. at 58. We treat the omission of the explicit obviousness identification of Reime “alone” as a typographical error. and 21 of Exhibit 1035, which Patent Owner argues are introduced for the sole purpose of supporting attorney argument against Patent Owner’s proposed claim constructions (Mot. 1–2); and (2) paragraphs 28, 31, 34, 36, 37, 43, 45, 47, 49, 50–52, 60, and 62 of Exhibit 1035, which Patent Owner argues are introduced for the sole purpose of supporting attorney argument for Petitioner’s Grounds 1–4 (Mot. 2–3). Patent Owner relies on the Federal Rules of Evidence (“FRE” or “Fed. R. Evid.”) 401 through 403 as legal support for its arguments that the identified paragraphs are inadmissible. See generally Mot. In its Opposition, Petitioner provides a table including the testimony in each contested paragraph, along with citations to the record set forth in that testimony, and the corresponding argument in Patent Owner’s Response that the testimony responds to. Opp’n 2–7. Petitioner argues, in contrast to Patent Owner’s arguments, Dr. Bederson’s testimony directly responds to arguments in Patent Owner’s Response and, therefore, is highly relevant and probative of the issues raised by Patent Owner. Id. at 1, 8. Petitioner also argues that Dr. Bederson’s testimony “is replete with citations to the record” and is “well-supported” proper expert testimony. Id. (citing Fed. R. Evid. 702–704; Consolidated Trial Practice Guide (“TPG”)5). Petitioner argues that the probative value of Dr. Bederson’s testimony in his Reply Declaration (Ex. 1035) is not outweighed by any unfair prejudice or confusion. Opp’n 8. Petitioner argues that Patent Owner’s arguments in that regard are conclusory and unsupported. Id. at 7–8.” slip op. at 7

  • Skill levelSkill level board ownDecided for patent owner

    “We find that for the most part Petitioner’s proposed definition is the better definition for purposes of this proceeding, except we again decline to adopt “at least” because that language is vague and open-ended. With respect to the educational qualifications, Petitioner’s proposed qualifications are that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field. Pet. 8 (citing Ex. 1002 ¶ 41) (emphasis added). The claims are directed to an interactive assembly comprising at least one input sensor to provide an output indicative of an impingement of an electromagnetic radiation spot. Individuals with bachelor’s degrees in physics would be knowledgeable in researching, designing, or developing such assemblies and would be able to comprehend and evaluate the teachings of the prior art. Accordingly, Petitioner’s proposed qualifications are overly narrow in not including individuals with bachelor’s degrees in physics. With respect to work experience, a person having two years of experience would be able to comprehend and evaluate the teachings of the prior art, consistent with Petitioner’s proposal. technical field, and the asserted prior art, we agree therefore with Patent Owner’s addition of “physics” in its proposed qualifications of the educational level for a person having an ordinary level of skill and we otherwise agree with Petitioner’s proposed qualifications, except without the “at least” language. Based on the complete record now before us, the level of skill that we adopt is set forth immediately below. One of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa. We find that the definition set forth above is consistent with the level of skill reflected in the specification of the ’170 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis and conclusions herein, however, do not turn on whether we adopt Petitioner’s proposed qualifications, Patent Owner’s proposed qualifications, or the qualifications set forth immediately above.” slip op. at 11

  • Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner

    “Based on the complete record now before us, we conclude that our preliminary determination in our Decision to Institute adopting Petitioner’s implicit construction of “impingement of an electromagnetic radiation spot” was not correct. Based on the complete record now before us, for the reasons given below, as urged by Patent Owner in its Response (Resp. 8–15), we adopt the same constructions adopted by the District Court, including that “impingement of an electromagnetic radiation spot” should be construed as “an area of reflected or projected radiation.” Because the constructions that we adopt do not differ from that adopted by the District Court and because Patent Owner urged adoption of those constructions in its Patent Owner Response with detailed substantive argument and explanations, Petitioner has had notice and a full opportunity to respond. Indeed, Petitioner has provided responsive argument disputing Patent Owner’s claim constructions prior art reference meets the limitations under Patent Owner’s proposed constructions. Reply 1–5, 22–23. We have considered the arguments and evidence by both parties in the complete record now before us in making our final determinations herein.” slip op. at 17

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

    “For the reasons given with respect to claim construction (see supra § II.D.2), we conclude that “impingement of an electromagnetic radiation spot” means “an area of reflected or projected radiation,” which is the same as the claim construction provided by the District Court. See Ex. 1034, 4. For the longer claim recital that includes additional language, as well as the same cited phrase, we conclude that the “plain and ordinary meaning” should apply to the remaining language, which is the same as the construction provided by the District Court. See Ex. 1034, 4. We agree with Patent Owner (Resp. 32) that Newton’s teachings relied on by Petitioner describe an object interrupting an energy beam above an exterior surface of a protective barrier as well as a finger touching or contacting the surface)), but Newton does not teach “an output indicative of an impingement of an electromagnetic radiation spot on at least one of the at interactive surface element” recited in claim 1. See, e.g., Ex. 1012, Figs. 2, 3, 6, ¶¶ 13, 25, 48. After consideration of the contentions and the evidence of record, we determine that Petitioner has not shown that either Newton alone or the combination of Newton and Hinckley teaches element 1[b] of claim 1. Accordingly, based on the complete record now before us, we conclude that Petitioner has not established by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Newton alone or with Hinckley.” slip op. at 37

  Patent outcomesUS 9,317,170 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,317,170
• Platform Science, Inc. v. Omnitracs, LLCNo claims unpatentable
  PTAB · Aug 29, 2022 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–4, 6–9, 11, 12, and 15 were not shown unpatentable because Coffee did not disclose the claimed copying, and Coffee combined with Heijden did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In our Initial and Rehearing Decisions, we noted that Patent Owner did not contest Petitioner’s proffered level of ordinary skill in the art at that stage of the proceeding and we found “Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record.” Initial Dec. 13 (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)); Rehearing Dec. 16 (same). Therefore, we adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Initial Dec. 13; Rehearing Dec. 16. In its Patent Owner Response, Patent Owner states that “[f]or purposes of this proceeding, Patent Owner does not dispute Petitioner’s offered level of ordinary skill in the art.” PO Resp. 7. Accordingly, we maintain our preliminary finding by adopting Petitioner’s proposed level of ordinary skill in the art, as set forth above.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “received message 7102 and the header of the response message 7202 are not the same. PO Resp. 25 (citations omitted); Pet. Reply 14. In the Petition, Petitioner argued that “header information” was the same in each message (received and response). Pet. 32 (citations omitted), 36–37. Petitioner relies on Tables 58 and 63, which show “Header.” Id. at 32–33, 37. Petitioner also relies on paragraphs 102 and 118 of Mr. Andrews’s Declaration. Neither the Petition nor Mr. Andrews’s Declaration, however, provide any sufficient basis to find that even a portion of the header or header information is copied from the received message to the response message. Mr. Andrews states his opinion as though it were fact without providing the underlying factual support for his opinion. See Ex. 1003 ¶¶ 102, 118; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). In cross-examination, Mr. Andrews provided additional information explaining which portion of the headers he believes are the same, but he still does not provide any explanation as to why he believes the information is copied. See, e.g., Ex. 2007 at 111:3–25. The same is true of Petitioner’s Reply, which reiterates Mr. Andrews’s deposition testimony, but still fails to provide any reason as to why Coffee’s charts or Mr. Andrews’ testimony necessarily means that Coffee copies a portion of the header from the received message to the response message. See Continental Can Co. U.S.A., Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). And, despite Petitioner’s identification of a “Header” listed in Tables 58 and 63, Coffee does not expressly describe the header or part of the header as being copied from the received message to the response message. The Petition and Mr. Andrews also state that “if Coffee did not employ such copying, the response message would not automatically include information extracted from the received message.” Pet. 38 (citing Ex. 1003 ¶ 118). But, Coffee does not expressly describe the header as being “extracted from the received message” or describe automatically including the header in a response message to make the leap argued by Petitioner and Mr. Andrews. Accordingly, on the full record before us, we find that Petitioner has not established that Coffee explicitly or inherently discloses copying the header or header information and we do not credit Mr. Andrews’ testimony, discussed above, because he fails to provide the underlying factual basis for the opinions offered.” slip op. at 43

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

    “proceeding and on the full record before us, we do not find that Coffee’s silence is sufficient to support Petitioner’s argument. See Campbell Soup Co. v. Gamon Plus, Inc., 787 Fed. Appx. 731, 739 (Fed. Cir. 2019) (“We do not find any error in the Board changing its understanding of the teachings of [a prior art reference] from the institution decision to the final written decision. ‘The Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced that its inclinations were wrong.’” (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016))). Coffee does not explain the process by which the IOD of the received message is included in the response message; rather, Coffee just states that the response message “contains the IOD of the message being answered.” See, e.g., Ex. 1005, 56:63–67 (see full text quoted above). In particular, although Coffee attributes certain actions to the operator, the lack of attribution to the operator does not necessitate that the only viable possibility remaining is that Coffee copies the IOD from the received message to the response message. Even if it may be said that Coffee probably (or possibly) copies the IOD, that probability is not sufficient to find that Coffee necessarily copies the IOD. See Continental Can, 948 F.2d at 1269 (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).7 Additionally, on the full record before us, we determine that Mr. Andrews’s testimony, as with his testimony as to copying of the header and selected response, fails to provide any factual or underlying support for his opinions expressed therein. See Ex. 1003 ¶¶ 100–102. In particular, the leap occurs in paragraph 102, where Mr. Andrews takes the fact that some information (at least the IOD) from the received formatted message is included with the response message to opine that this means the information is “copied over.” Id. ¶ 102. But, again, Coffee is silent. And because Mr. Andrews did not provide any underlying factual basis for his opinion, we do not credit his testimony as to copying the IOD. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 48

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

    “generally, including the alleged benefits of such and reasons why one of ordinary skill in the art would have been prompted to include field-mapping information in Coffee’s MDT. See id. at 62–70. None of Petitioner’s discussion, however, explains how the combination of Coffee and Heijden remedies the deficiencies that we identified regarding Petitioner’s challenge based on Coffee. In particular, Petitioner does not assert or explain how the teachings of Heijden would be applied to Coffee such that Coffee would then copy or fill in the specific information from Coffee’s received message to Coffee’s response message, particularly as pertains to the header, Response, and IOD fields (which Petitioner relied on in the first ground), or any other information field from Coffee. The same is true of Mr. Andrews’s testimony. See Ex. 1003 ¶¶ 214–231. Additionally, it appears that Petitioner’s analysis of the combination of Heijden and Coffee maintains the position that Coffee copies information fields. See Pet. 70 (“Given that Coffee’s system already implements field mapping to copy information fields . . . .”). And, Mr. Andrews’s testimony similarly maintains that Coffee copies information fields. See Ex. 1003 ¶ 229 (“Coffee also discloses (at least inherently) field mapping by describing that data is copied from fields in request messages into corresponding fields in response message.”). But, as we explain in detail in the context of Petitioner’s challenge based on Coffee, Petitioner has not shown sufficiently that Coffee copies or fills in information from a received message to a response message. Thus, we do not find and Petitioner does not allege that Ground “1B” fills the gaps identified in Petitioner’s Ground “1A.”10 Accordingly, we determine that Petitioner has not established, by a preponderance of the evidence, that the combination of Coffee and Heijden would have rendered the subject matter of claims 1–4, 7–9, and 12 unpatentable.” slip op. at 60

  Patent outcomesUS 6,925,308 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Next Caller Inc. v. Trustid, Inc.No claims unpatentable
  PTAB · Jul 18, 2022 · IPR2019-00039 · APJ Barbara A Parvis · IPR · Remand

  Claims 8–11, 19, and 20 were not shown unpatentable as obvious over Martin and Kealy or Martin, Abramson, and Kealy.

  RulingsRemand decision

  • RemandOther

    “ultimately issued as the ’985 patent and determined “there is no legal basis for the proposition the Board must defer to the examiner’s previous findings in deciding the merits of an [inter partes review].” Id. 2021 WL 4427918, at *7–8. The Federal Circuit, however, stated that “the Board’s analysis with respect to Kealy’s teachings and motivation to combine were insufficient.” 9 Both Decisions were entered into the public record. Papers 83, 84, 85. 10 The Federal Circuit stated that “[t]he Board held claims 15 and 21 had not been shown to be unpatentable” and “[t]hose claims are not at issue on appeal.” Id. at n. 1. Thus, our prior determination upholding the patentability of claims 15 and 21 is not implicated in this Final Written Decision on Remand. Id. 2021 WL 4427918, at *8. The court remanded “for further proceedings consistent with this opinion.” Id. at *9.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). We do not discern a significant difference in the parties’ standards. We note a slight difference is that Dr. Forys’s testimony indicates expressly that the skilled artisan would have had experience with telecommunications signaling and protocols used for call processing. Ex. 2001 ¶ 36. Mr. Geier’s testimony considered as a whole, however, is substantively significantly the same, as he testifies that the skilled artisan would have had 1–2 years of experience with telecommunications and that such person would have known of state-of-the-art technologies such as those described as background of the ’985 Patent including call routing and use of ANI and caller identification (ID). Ex. 1003 ¶¶ 16, 18–20. On the record before us, we are persuaded and adopt Mr. Geier’s assessment of a person with ordinary skill in the art because it is consistent with the problems and solutions in the prior art of record. We further find that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art). However, our conclusions and analysis herein do not turn on which definition is selected and would be the same under Patent Owner’s level of the skilled artisan.” slip op. at 13

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

    “interpretation or to assess whether it is consistent with the broadest reasonable construction of the term.”). The District Court determined that “source origin confidence metric” means “a number in a range that represents the credibility of the calling party number or the calling party billing number.” Ex. 1015, 5 (emphasis added). We agree that Patent Owner’s proposed construction is consistent with the District Court’s determination and consistent with the intrinsic record. Final Dec. 24. We rejected Petitioner’s proposal that the term encompasses “a singular determination such as ‘valid’ or ‘invalid.’” Id. at 24–30. We noted that following our Decision to Institute, the District Court issued its Memorandum regarding claim construction. Ex. 1015. The District Court stated “[t]he PTAB, in its Institution Decision, concluded . . . that a ‘source origin confidence metric’ does not ‘encompass[] a binary (valid or invalid) determination.’ (D.I. 82-1 Ex. 2 at 11) The Court agrees with the PTAB’s conclusion.” Id. at 9 n. 6. We determined, in light of the ’985 Patent Specification, that the broadest reasonable interpretation of “metric” is “a measurement produced using statistical methods to indicate a probability, which does not encompass a binary (valid or invalid) determination.” Final Dec. 29.” slip op. at 15

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s new arguments in its post-remand submission relating to “personal risk factors” are pervasive throughout the brief.20 As such, Petitioner’s brief is not in compliance with our Order and we need not consider it for that reason alone. As an independent reason for our determination that the Petition is deficient with respect to showing that the prior art teaches “personal risk factors,” we address certain of Petitioner’s improper, new arguments. With respect to the call management rules, Petitioner states that Kealy shows “suspect callers presented with ‘challenged/response’ scenario ‘to provide a spoken reason for the call, [or] type his number or identity to allow the call recipient to decide whether or not to accept the call etc.’” Pet. Post Remand Br. 3 (citing Pet. 20 (providing a generalized summary of Kealy)). The claimed steps of determining and adjusting the confidence metric occur before the incoming call is answered. See, e.g., Ex. 1001, 15:12, 16:11, Fig. 1. In contrast, the call management operations relied on by Petitioner for the first time in its post-remand submission (Pet. Post Remand Br. 3) occur as the call is being answered. Ex. 1006, 9:38–64 (teaching a “‘challenge/response’ scenario” that “allow[s] the call recipient to decide whether or not to accept the call” and “a ‘reject call’ option” that shows the trust rating). Petitioner does not explain how call management operations occurring as the call is being answered and after Kealy’s trust rating is 20 As discussed above (see § II.F.1.b), Petitioner also makes a new argument relating to the prosecution history and stating that the Examiner “observed Kealy’s complaints render obvious personal risk factors.” Pet. Post Remand Br. 4 n. 4. determined relate to the recitations in the challenged claims, such as determining and adjusting a source original confidence metric that Petitioner states is taught by Kealy’s trust rating (Pet. 44). Also, in its post-remand submission, Petitioner characterizes Kealy as relating to “callers with reduced trust ratings.” Pet. Post Remand Br. 3. The call management operations relied on by Petitioner for the first time in its post-remand submission (id.) include only a single reference to a “caller’s trust rating” (Ex. 1006, 9:57). That statement pertains to a call management rule that rings as a normal call, shows the trust rating, and presents a reject option. Id. at 9:54–59. The sentence includes a reference to a “caller’s” trust rating. Id. To the extent that “caller’s” is relied on to satisfy the requirement that the “risk factors” recited in the claim are “personal” that reliance is not consistent with Kealy’s teachings discussed throughout that make clear that Kealy’s trust rating is associated with the calling device. For instance, Kealy teaches that its trust rating will be reduced based on “accumulated complaints associated with a given calling device,” which is not a reduction based on complaints associated with a caller. Id. at code (57), 14:61–65 (teaching comparing “respective quantities of accumulated complaints associated with each calling device.”) (emphases added). Also, Kealy teaches that its trust ratings “are embedded in certificates of calling devices.” Id. at code (57), 14:58–60. Additionally, Kealy teaches that “a person will still be blacklisted even if he changes his phone number or other identifiers, so long as he maintains the same equipment and therefore the same certificate.” Ex. 1006, 6:57–60. The one statement in Kealy referring to “callers with reduced trust ratings” (id. at 9:57) is not made in connection” slip op. at 54

  Patent outcomesUS 9,001,985 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,001,985
• Intel Corporation v. Parkervision, Inc.No claims unpatentable
  PTAB · Jan 21, 2022 · IPR2020-01302 · APJ Bart A Gerstenblith · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

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

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

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

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

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

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

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

  Patent outcomesUS 7,539,474 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,539,474

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.