- Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing grantedPTAB · Mar 8, 2017 · IPR2016-00647 · APJ Glenn J Perry · IPR · Rehearing
Granted petitioner’s request for reconsideration and added institution of the §102 Cioffi challenge to claims 8, 11, 12, 14, 15, 18, and 19.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. CONCLUSIONS For the foregoing reasons, we are persuaded that our Decision to Institute overlooked or misapprehended the matters discussed in this Decision, and that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to its challenge as to the patentability of claims 8, 11, 12, 14, 15, 18, and 19 as being anticipated by Cioffi. The Board has not made a final determination on the patentability of any challenged claims or the construction of any claim terms. Our final decision will be based on the record as fully developed during trial.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
§ 102 anticipationPatents in suitUS 6,430,148 - PTAB · Dec 7, 2015 · IPR2015-01438 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute review of claims 1–3 and 8–12.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“they have settled their disputes regarding the ’104 patent. Paper 7, 2. The parties further represent that there are numerous related matters in the United States District Court for the Northern District of California that have been dismissed with prejudice or stayed pending final determination of two related inter partes reviews involving U.S. Patent No. 7,550,870 B2 (“the ’870 patent”). Id. at 3. Based on the joint requests filed by the parties in the two proceedings involving the ’870 patent, those cases have been terminated. Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, Cases IPR2015-00690 & IPR2015-00725 (PTAB Dec. 7, 2015) (Paper 33 in each proceeding). Lastly, the parties do not represent that the ’104 patent is involved in any other proceedings before the Office. See generally id. at 2–4. Under these circumstances, we determine that it is appropriate to terminate this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,672,104 - PTAB · Jul 20, 2015 · IPR2015-00517 · APJ Kevin F Turner · IPR · Institution
The Board denied institution because neither petition showed a reasonable likelihood that claims 1, 9, 10, 12, 30, 32, 42, or 45 were unpatentable over Kitamura or Mehrotra.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We review the Petitions under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on our review of the record, we conclude that neither Petitioner is reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable, based on the Petitions filed. See 35 U.S.C. § 314. B.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Kitamura is largely silent as to the specific functioning of the D/A conversion circuit 10. Kitamura discloses that D/A conversion circuit 10 and A/D conversion circuit 13 “preferably share a voltage dividing element and a reference voltage supply (for the purpose of making their characteristics uniform),” and level differences to maximize the operating margin (Ex. 1010 ¶ 11), but does not disclose a “selection” between reference voltages or signals. Although Petitioners emphasize the obviousness of certain elements of the challenged claims (Pet. 25– 26), the obviousness of selecting a reference voltage versus outputting a voltage from a D/A conversion is not discussed. Indeed, Dr. Baker’s discussion is clear (Ex. 1003 ¶¶ 74–79) as to how the output voltages could be set, but it remains unclear how Kitamura itself suggests the examples proffered. The normal function of a D/A converter is not to select between reference voltages, but to render the digital input into analog form. We are not persuaded that Kitamura teaches or suggests the selection of one of a plurality of reference voltages in accordance with the input information, per the challenged claims. In addition, the Petitions fail to provide any rationale for why Kitamura’s disclosure of D/A conversion renders the selection of a reference voltage or signal obvious. For these reasons, Patent Owner’s contentions that Kitamura does not teach or suggest “reference voltage selecting means,” or equivalent elements, or “reference voltages,” per the challenged claims, are persuasive. C.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner construction§112(f) appliesDecided for petitioner
“Reference Voltage Selection Claim 1 recites “reference voltage selecting means for selecting one of a plurality of reference voltages,” with claims 9, 12, and 30 reciting “selecting device which selects one of a plurality of reference signals,” and claims 42 and 45 reciting “selecting one of a plurality of predetermined reference signals.” Petitioners acknowledge that the means-plus-function element in claim 1 is “governed by 35 U.S.C. § 112, ¶ 6,” and that the construction of the claim term in claim 1 “is applicable to claim terms” recited in claims 9, 12, 30, 42, and 45, discussed above. Pet. 5, 8. Petitioners assert that “the verify reference voltage select circuit 222 selects and provides such a reference voltage to the comparator,” and is the corresponding structure described in the specification. Id. at 56 (citing Ex. 1003 ¶¶ 4552). For purposes of this Decision, we construe the referenced claim terms according to that structure and apply the same to the analysis below. B.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Reference Voltages” “Reference Signals” All of the independent claims of the challenged claims recite either “reference signals” or “reference voltages.” Petitioners emphasize that “a person of ordinary skill in the art would have interpreted these features to be broad enough to include and be met by either a digital reference voltage/ signal or an analog reference voltage/signal.” Id. at 10 (citing Ex. 1003 ¶¶ 53–58). For purposes of this Decision, we construe the reference voltages and signals terms as being met by either digital or analog reference voltages/signals, and apply that construction to the analysis below. slip op. at 7
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 5,764,571 - PTAB · Jul 20, 2015 · IPR2015-00504 · APJ Kevin F Turner · IPR · Institution
The Board denied institution in both proceedings because neither petition showed a reasonable likelihood of proving any challenged claim obvious over Kitamura or Mehrotra.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We review the Petitions under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on our review of the record, we conclude that neither Petitioner is reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable, based on the Petitions filed. See 35 U.S.C. § 314. B.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Kitamura is largely silent as to the specific functioning of the D/A conversion circuit 10. Kitamura discloses that D/A conversion circuit 10 and A/D conversion circuit 13 “preferably share a voltage dividing element and a reference voltage supply (for the purpose of making their characteristics uniform),” and level differences to maximize the operating margin (Ex. 1010 ¶ 11), but does not disclose a “selection” between reference voltages or signals. Although Petitioners emphasize the obviousness of certain elements of the challenged claims (Pet. 25– 26), the obviousness of selecting a reference voltage versus outputting a voltage from a D/A conversion is not discussed. Indeed, Dr. Baker’s discussion is clear (Ex. 1003 ¶¶ 74–79) as to how the output voltages could be set, but it remains unclear how Kitamura itself suggests the examples proffered. The normal function of a D/A converter is not to select between reference voltages, but to render the digital input into analog form. We are not persuaded that Kitamura teaches or suggests the selection of one of a plurality of reference voltages in accordance with the input information, per the challenged claims. In addition, the Petitions fail to provide any rationale for why Kitamura’s disclosure of D/A conversion renders the selection of a reference voltage or signal obvious. For these reasons, Patent Owner’s contentions that Kitamura does not teach or suggest “reference voltage selecting means,” or equivalent elements, or “reference voltages,” per the challenged claims, are persuasive. C.” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The standard for granting a motion to seal is “good cause,” reflecting the strong public policy for making all information in inter partes review proceedings open to the public. 37 C.F.R. § 42.54. The moving party bears the burden of showing that the relief requested should be granted. 37 C.F.R. § 42.20(c). This includes showing that the information is truly confidential, and that such confidentiality outweighs the strong public interest in having an open record. See Garmin Int’l v. Cuozzo Speed Techs., LLC, Case IPR2012-00001, slip op. at 3 (PTAB Mar. 14, 2013) (Paper 36). Petitioner Micron has made a sufficient showing. Accordingly, the Motion to Seal Exhibit 1011 is granted.” slip op. at 15
§ 103 obviousnesscites KSRPatents in suitUS 5,764,571 - Foursquare Labs, Inc. v. Silver State Intellectual Technologies, Inc.No claims unpatentablePTAB · May 26, 2015 · IPR2014-00159 · APJ Lynne E Pettigrew · IPR · Final written decision
Claim 1 was not shown unpatentable because Fraccaroli does not disclose all claim limitations arranged or combined in the same way.
RulingsFinal written decision- BurdenNot shown unpatentable
“example when reviewing an allegedly anticipating prior art reference. Reply 7 (citing Net MoneyIN, 545 F.3d at 1369 n.5). Nevertheless, we still must determine whether the reference discloses all of the limitations arranged or combined in the same way as recited in the claim, even while looking at the reference as a whole. See Net MoneyIN, 545 F.3d at 1371. Claim 1 is a method claim reciting specific steps. Limitation [f] recites the step of “receiving, from the user, additional data regarding the user, the additional data being related to the geographic location of the user.” In Fraccaroli, only the convention application includes this step, with the information in the event field corresponding to the “additional data” recited in the claim. See Ex. 1003, 8:57–9:5. For limitation [h], which recites the step of “receiving from the user an access list of possible requesters of the data and the additional data,” Petitioner relies on information provided by the user in Fraccaroli’s closest friend application, i.e., a list of known persons with whom the user wishes to share information. Pet. 30 (citing Ex. 1003, 8:44–48). Notably, Petitioner does not contend that the user in Fraccaroli’s convention application places the information center or registration desk on an access list. See Pet. 30–31; Tr. 60:7–11. Thus, the convention application does not include the step of receiving an “access list” from the user (limitation [h]), and the closest friend application does not include the step of receiving “additional data” from the user (limitation [f]). For limitation [j]—the step of providing location data and additional data to possible requesters on the access list—Petitioner cites Fraccaroli’s description of message signals sent after a match is made. Pet. 31–32. Petitioner contends that message signals containing information from a user’s matching profile are sent in any of the embodiments disclosed in Fraccaroli. Reply 13 (citing Ex. 1003, 10:40–67). Nevertheless, Fraccaroli does not describe a process that includes both the steps of receiving “additional data” from a user and receiving an “access list” from a user. Therefore, even if message signals are sent in all embodiments or applications described in Fraccaroli, the reference does not disclose a process in which message signals including “additional data” are sent to possible requesters on an “access list,” as set forth in limitation [j]. Accordingly, we find that Petitioner has not shown that Fraccaroli discloses all of the limitations arranged or combined in the same way as recited in claim 1 and, thus, has not shown that Fraccaroli anticipates claim 1.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“example when reviewing an allegedly anticipating prior art reference. Reply 7 (citing Net MoneyIN, 545 F.3d at 1369 n.5). Nevertheless, we still must determine whether the reference discloses all of the limitations arranged or combined in the same way as recited in the claim, even while looking at the reference as a whole. See Net MoneyIN, 545 F.3d at 1371. Claim 1 is a method claim reciting specific steps. Limitation [f] recites the step of “receiving, from the user, additional data regarding the user, the additional data being related to the geographic location of the user.” In Fraccaroli, only the convention application includes this step, with the information in the event field corresponding to the “additional data” recited in the claim. See Ex. 1003, 8:57–9:5. For limitation [h], which recites the step of “receiving from the user an access list of possible requesters of the data and the additional data,” Petitioner relies on information provided by the user in Fraccaroli’s closest friend application, i.e., a list of known persons with whom the user wishes to share information. Pet. 30 (citing Ex. 1003, 8:44–48). Notably, Petitioner does not contend that the user in Fraccaroli’s convention application places the information center or registration desk on an access list. See Pet. 30–31; Tr. 60:7–11. Thus, the convention application does not include the step of receiving an “access list” from the user (limitation [h]), and the closest friend application does not include the step of receiving “additional data” from the user (limitation [f]). For limitation [j]—the step of providing location data and additional data to possible requesters on the access list—Petitioner cites Fraccaroli’s description of message signals sent after a match is made. Pet. 31–32. Petitioner contends that message signals containing information from a user’s matching profile are sent in any of the embodiments disclosed in Fraccaroli. Reply 13 (citing Ex. 1003, 10:40–67). Nevertheless, Fraccaroli does not describe a process that includes both the steps of receiving “additional data” from a user and receiving an “access list” from a user. Therefore, even if message signals are sent in all embodiments or applications described in Fraccaroli, the reference does not disclose a process in which message signals including “additional data” are sent to possible requesters on an “access list,” as set forth in limitation [j]. Accordingly, we find that Petitioner has not shown that Fraccaroli discloses all of the limitations arranged or combined in the same way as recited in claim 1 and, thus, has not shown that Fraccaroli anticipates claim 1.” slip op. at 13
- RehearingRehearing, grantedGranted
“Subsequent to institution, Petitioner filed a Request for Rehearing, Paper 8, which we granted for the limited purpose of modifying our construction of one claim term, Paper 13 (“Reh’g Dec.”). Thereafter, Patent Owner filed a Patent Owner Response, accompanied by a Declaration of Dr. Craig Rosenberg. Paper 14 (“PO Resp.”). Petitioner filed a Reply to the Patent Owner Response, along with a Declaration of Mr. Chris Schmandt. Paper 17 (“Reply”); Ex. 1027. We held an oral hearing on February 24, 2015. A transcript of the oral hearing is included in the record. Paper 27 (“Tr.”).” slip op. at 2
Patent outcomesUS 7,343,165 not shown unpatentable§ 102 anticipationPatents in suitUS 7,343,165 - Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentablePTAB · Mar 18, 2015 · IPR2013-00597 · APJ Peter P Chen · IPR · Final written decision
Claims 2, 6, and 10–12 are unpatentable: Bi anticipates claims 2, 6, and 10–12; Gladwin anticipates claims 2, 6, 11, and 12; Berman renders claims 2, 6, 11, and 12 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“[a] playlist is a list of a user’s favorite selections.” Ex. 1001, 1:33–34. Patent Owner quotes from the specification of the ’099 Patent: Playlists also facilitate the playing of a plurality of selections in a particular order. That is, the playlist may be compiled in an order in which the playing of selections therefrom is desired. The selections may then be automatically played sequentially from the playlist. Typically, selections may also be played randomly from a playlist. PO Resp. 10; Ex. 1001, 1:45–52 (emphasis added).2 As noted by Petitioner, this passage reflects that a playlist may have a particular order of selections (see Pet. Reply 6), but also expressly discloses that selections may be played randomly from a playlist. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“wireless handheld remote control which is associated with and separate from the media player device,” arguing that the term requires “a handheld remote control that can operate as an independent device relative to the media player that it control.” PO Resp. 14–16 (emphasis and grammatical error in original); see also Tr. 70:1–14 (“independent and separate would be synonyms.”). Petitioner argues that Patent Owner’s proposal is narrow and excludes “a standard remote control for a device,” Pet. Reply 8–9. We agree, as in addition to the Petitioner’s contentions, we note the terms “operate” and “independent” do not appear in the ’099 patent. 9 We decline to adopt Patent Owner’s proposed construction over the ordinary and customary meaning of the term.” slip op. at 9
- Skill levelOther
“year of practical experience with networked multimedia.” Ex. 1002 ¶ 8. Patent Owner’s proposal is similar, requiring “a person with a bachelor’s degree in computer science or electrical engineering and one year of practical experience with networked media.” PO Resp. 7. The parties dispute Petitioner’s use of the qualifying phrase “at least” in describing the level of education and work experience. While we disagree with Patent Owner’s argument that “at least” is “improper because it is open-ended” (PO Resp. 7–8),3 we determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, neither party has provided a sufficient explanation as to how their specific proposal regarding the level of ordinary skill (and in particular the importance of the inclusion or exclusion of “at least”) affects the analysis in this case. Therefore, we find the level of ordinary skill in the art to” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“B. Motion to Amend In its Motion to Amend, Patent Owner moves to cancel independent claim 1 and dependent claim 9. Paper 25. Petitioner’s Reply does not oppose the motion. Pet. Reply 1. We grant the motion to amend, and proceed to analyze the remaining five claims.” slip op. at 10
Patent outcomesUS 8,230,099 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,230,099 - Mercedes-Benz USA, LLC / Mercedes-Benz U.S. International, Inc. v. Velocity Patent LLCAdverse judgmentPTAB · Jan 6, 2015 · IPR2014-01247 · APJ Peter P Chen · IPR · Adverse judgment
The Board granted Patent Owner’s request to cancel challenged claims 31 and 32 and entered adverse judgment against Patent Owner before institution.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“of claims 31 and 32 (Paper 19). Under 37 C.F.R. § 42.73(b), cancellation of all challenged claims leaving no remaining claims for trial is construed as a request for entry of adverse judgment. ORDER Accordingly, it is ORDERED that Patent Owner’s request to cancel claims 31 and 32 of U.S. Patent No. 5,954,781, is granted; and FURTHER ORDERED that adverse judgment is entered herein against Patent Owner.” slip op. at 2
NonePatents in suitUS 5,954,781 - PTAB · Sep 2, 2014 · IPR2014-00472 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motion to terminate the preliminary IPR proceeding and terminated it without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate without rendering a final written decision under 37 C.F.R. § 42.72. ORDER It is, therefore, ORDERED that the joint motion to terminate this proceeding is GRANTED and the proceedings are hereby terminated; and FURTHER ORDERED that the settlement agreement shall be treated as business confidential information.” slip op. at 3
NonePatents in suitUS 7,096,358 - PTAB · Aug 25, 2014 · IPR2014-00582 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the three proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,149,124 - PTAB · Aug 25, 2014 · IPR2014-00588 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,466,795
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.