- 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 - Unified Patents Inc. v. William GreciaRehearing deniedPTAB · Nov 29, 2016 · IPR2016-00789 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Unified Patents’ rehearing request, leaving in place the denial of institution because the petition did not sufficiently show the claimed token correspondence or GUI and API.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 4 Wieder, U.S. Patent No. 8,001,612 B1, issued Aug. 16, 2011 (Ex. 1007). 5 Wiser, U.S. Patent No. 6,385,596 B1, issued May 7, 2002 (Ex. 1008). 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a password or e-mail, not just any password or e-mail automatically satisfies the recited membership verification token. To satisfy the recited membership verification token, the password or e-mail must correspond to the digital media, as recited in each of independent claims 1, 12 and 15. See also Inst. Dec. 7 (construing the claim phrase “the request comprising a membership verification token provided by a first user, corresponding to the encrypted digital media” such that the language “corresponding to the encrypted digital media” modifies the membership verification token). This is supported by the specification of the ’555 patent, which teaches that “an identifier for the digital media is stored in a database with another database of a list of associated tokens for cross-reference identification for verification.” Ex. 1001, 8:52–55 (emphasis added); see also id. at 8:19–21 (“Subsequently, the membership verification token is authenticated at step 604. The authentication is performed in connection with a token database.”).” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“a password or e-mail, not just any password or e-mail automatically satisfies the recited membership verification token. To satisfy the recited membership verification token, the password or e-mail must correspond to the digital media, as recited in each of independent claims 1, 12 and 15. See also Inst. Dec. 7 (construing the claim phrase “the request comprising a membership verification token provided by a first user, corresponding to the encrypted digital media” such that the language “corresponding to the encrypted digital media” modifies the membership verification token). This is supported by the specification of the ’555 patent, which teaches that “an identifier for the digital media is stored in a database with another database of a list of associated tokens for cross-reference identification for verification.” Ex. 1001, 8:52–55 (emphasis added); see also id. at 8:19–21 (“Subsequently, the membership verification token is authenticated at step 604. The authentication is performed in connection with a token database.”).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“the admitted prior art” For the asserted grounds based on DeMello, Petitioner relied on either DeMello or the admitted prior art as teaching the recited “membership verification token . . . corresponding to the encrypted digital media.” Pet. 17–21, 52. For the asserted grounds based on Pestoni, Petitioner relied on either Pestoni or the admitted prior art as teaching the recited “GUI” and “API.” Id. at 33; see id. at 29 (citing Ex. 1009, Exhibit D). We denied institution of these asserted grounds because we were not persuaded by Petitioner’s arguments regarding the teachings of DeMello or Pestoni, either alone or in combination with the admitted prior art. slip op. at 3
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,402,555 - Unified Patents Inc. v. William GreciaRehearing deniedPTAB · Oct 13, 2016 · IPR2016-00600 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving institution denied on the DeMello-based anticipation and obviousness grounds because the petition did not sufficiently show the claimed verification token or reason to modify DeMello.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent 3 Wiser, U.S. Patent No. 6,385,596 B1, issued May 7, 2002 (Ex. 1008). 4 Cooper, U.S. Publ’n No. US 2009/0037388 A1, published Feb. 5, 2009 (Ex. 1009). Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the asserted grounds based on DeMello, Petitioner relied on either DeMello or the admitted prior art as teaching the recited “verification token . . . corresponding to the digital content.” Pet. 17–21, 52. We denied institution of these asserted grounds because we were not persuaded by Petitioner’s arguments regarding the teachings of DeMello, either alone or in combination with the admitted prior art.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“noted in our Institution Decision, an obviousness analysis requires “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Inst. Dec. 12. With respect to claim elements [C], [D], and [G], Petitioner did not explain sufficiently why one of ordinary skill in the art would have considered modifying DeMello to arrive at the claimed invention. See id. at 13; see also Req. Reh’g 8 (“A claim can be rejected as obvious over a single reference by identifying a teaching, suggestion, or motivation (TSM) to modify the single reference to fall within the scope of the claim.”). For example, with respect to claim element [D], Petitioner merely asserts that “DeMello describes a browser, which clearly implies or suggests a GUI.” Req. Reh’g 8; see also id. at 12 (“one of skill in the art, analyzing the ‘browser’ in DeMello, would understand that these browsers obviously have a GUI”); Pet. 23 (“it is obvious that the browser of the reader mentioned in DeMello includes a GUI, since browsers provide a GUI”). We are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness over DeMello alone as to claim element [D]. Similarly, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness over DeMello alone as to claim elements [C] and [G]. See Req. Reh’g 10–11; Pet. 20–21, 26–28.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“DeMello, Petitioner contends that we “overlooked the Petition’s argument that the claims are obvious in view of DeMello alone, without any of the additional, admitted prior art.” Req. Reh’g 7 (emphasis omitted). According to Petitioner, “the admitted prior art was added, as background information,” and the Petition showed that claim elements [C], [D], and [G] are obvious over DeMello alone. Id. at 8, 10, 12. This is a new argument, which does not address what was overlooked or misapprehended in our Decision, and is not appropriate in a request for rehearing. See 37 C.F.R. § 42.71(d). For instance, the heading at page 15 of the Petition reads “Ground 1: Claims 1–20 are unpatentable as obvious over DeMello (EX1006) in view of the admitted prior art” (emphasis omitted). None of the other headings in the Petition alleges that any of the claims are unpatentable as obvious over DeMello alone. Nor has Petitioner directed us to any portion of the Petition presenting such argument.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,533,860 - PTAB · Aug 30, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing
The Board denied rehearing of its final written decision, leaving claims 1 and 7 unpatentable over He and Korodi under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, concluding Petitioner had shown by a preponderance of the evidence that the challenged claims are unpatentable. Specifically, we determined Petitioner had established by a preponderance of the evidence claims 1 and 7 are unpatentable under 35 U.S.C. § 103(a) over He and Korodi (Final Dec. 11–25). In light of our determination that Petitioner had established by a preponderance of the evidence that claims 1 and 7 of the ’279 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over He and Korodi, we took no position on whether the same claims are also obvious over the combination of the teachings and suggestions of Gustafsson and He (id. at 25).” slip op. at 3
§ 103 obviousnessPatents in suitUS 7,671,279 - Google Inc. v. Better Food Choices LLCAll claims unpatentablePTAB · Aug 18, 2016 · CBM2015-00071 · APJ Minn Chung · CBM · Final written decision
Claims 1–20 are unpatentable under § 101; claims 1–10 are also indefinite under § 112, ¶ 2 because the specification lacks an algorithm for the claimed correlating function.
RulingsFinal written decision- BurdenOther
“As an initial matter, Patent Owner asserts that Petitioner has not met its burden of proof because Petitioner relies only on the ’115 patent and its prosecution history to argue unpatentability and does not present any other evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues that Petitioner has presented no evidence of unpatentability because the ’115 patent and its file history “shows the Patent Owner has a valid, issued patent and nothing more.” Id. at 7. We are not persuaded because, as discussed below, in this case we need to look only to the ’115 patent and its prosecution history to support a finding of unpatentability under §§ 101 and 112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016) (the patent alone is sufficient to sustain a finding of unpatentability under § 101).” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“rebuttable presumption that the limitation is written in a means-plus-function format under 35 U.S.C. § 112, ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citation omitted). If, in addition to the word “means” and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption is overcome, and § 112, ¶ 6 does not apply. Id. “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–60.” slip op. at 28
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“with the Supreme Court and Federal Circuit precedents on step one analysis under the Alice framework. In step one of the Alice analysis, to determine whether the challenged claims are directed to an abstract idea, the inquiry is to ask, considered in light of the Specification, whether “their character as a whole” is directed to an abstract idea, not, as Patent Owner contends, identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas,” the court in Enfish clarified that a relevant inquiry in step one of the Alice framework is to ask whether the “focus” of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36 (citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an improvement in the functioning of a computer” are contrasted with claims “simply adding conventional computer components to well-known business practices” or “generalized steps to be performed on a computer using conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish, 822 F.3d at 1338). The Federal Circuit further clarified recently and described the first-stage inquiry as “looking at the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-” slip op. at 17
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of collecting and correlating information to provide personalized nutritional information of food products to shoppers into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. TLI, 823 F.3d at 613. Rather, the recited components must involve more than performance of “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).” slip op. at 22
Patent outcomesUS 5,841,115 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · NautilusPatents in suitUS 5,841,115 - Unified Patents Inc. v. William GreciaInstitution deniedPTAB · Aug 16, 2016 · IPR2016-00600 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pet.”) requesting inter partes review of claims 1–30 of U.S. Patent No. 8,533,860 B1 (Ex. 1001, “the ’860 patent”). William Grecia (“Patent Owner”) filed a Preliminary Response (Paper 10, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), 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.” For the reasons that follow, we have decided not to institute an inter partes review. slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As Patent Owner points out, the “claims require a verification token ‘corresponding to the digital content.’” Prelim. Resp. 29. Petitioner does not provide persuasive explanation as to how a retailer password or e-mail corresponds to digital content. In fact, Petitioner does not appear to address this recited feature at all. See 35 U.S.C. §312(a)(3) (a petition must identify, “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”); 37 C.F.R. § 42.104(b) (a petition must identify “[h]ow the construed claim is unpatentable under the statutory grounds identified” and “where each element of the claim is found in the prior art,” and must explain the “relevance of the evidence to the challenge raised”); 37 C.F.R. § 42.22(a)(2) (a petition must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). As Petitioner does not identify specifically how a retailer password or e-mail in DeMello corresponds to digital content, we are not persuaded that Petitioner has made a sufficient showing that DeMello discloses the recited verification token.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“It is not sufficient, however, for Petitioner to demonstrate that each of the claim elements is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner must also provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, with respect to element [B], Petitioner argues: DeMello teaches “user authentication” and establishing a membership relationship with a retailer (left of Figure 4), which inherently would include providing a token, such as a retailer password and/or email (e.g., Amazon log-on credentials). User authentication and establishing a membership are obvious in view of the admitted prior art. The admitted prior art steps are described in the parent ‘555 Patent as verifying membership for site to buy content, and DeMello recites establishing such a membership relationship. It would be obvious to use the verification token of the admitted prior art to establish a membership relationship. Pet. 18–19. Petitioner does not, however, explain sufficiently why one of ordinary skill in the art would have considered combining DeMello and any other patent or printed publication to arrive at the claimed invention. For example, Petitioner does not explain persuasively why one of ordinary skill in the art would have considered “us[ing] the verification token of the admitted prior art to establish a membership relationship” in DeMello, when DeMello already teaches “establishing a membership relationship with a retailer.” See id. With respect to elements [C] and [G], Petitioner does not appear to proffer any reason for combining DeMello and the admitted prior art. See Pet. 20–21, 26–28. Finally, with respect to element [D], Petitioner merely asserts that “it is obvious that the browser of the reader mentioned in DeMello includes a GUI, since browsers provide a GUI.” Id.at 23. Again, Petitioner does not explain sufficiently why one of ordinary skill in the art would have considered combining DeMello and any other patent or printed publication to arrive at the claimed invention. Based on the record presented, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness with respect to elements [B], [C], [D], and [G]. See Kahn, 441 F.3d at 988. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that claims 1, 9, and 11 would have been obvious over DeMello and the admitted prior art. See also Pet. 42 (referring to analysis of claim 1 for claim 9), 44–45 (referring to analysis of claim 1 for claim 11). Claims 2–8, 10, and 12–20 depend from claims 1, 9, or 11. We therefore also determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that these dependent claims would have been obvious over DeMello and the admitted prior art.” slip op. at 12
- PTAB / AIA Trials › §315(b) time barNot reached
“barred under 35 U.S.C. § 315(b) because “[Patent Owner] filed and served a complaint alleging that Google infringed the ‘860 patent” and “Google, an original founding member of [Petitioner] and continuing customer of [Petitioner] (Ex. 2005), is a privy of [Petitioner].” Prelim. Resp. 41–42. Because the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, we need not address Patent Owner’s assertions that the Petition is time-barred under 35 U.S.C. § 315(b) based on privity.” slip op. at 21
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,533,860 - Toshiba Corporation v. Optical Devices, LLCNo claims unpatentablePTAB · Mar 9, 2016 · IPR2014-01447 · APJ James B Arpin · IPR · Final written decision
Claims 1–39 were not shown unpatentable: Baird did not necessarily disclose determining FES and TES, and the ST Datasheet was not established as publicly accessible prior art.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“that Petitioner has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Petitioner’s primary contention with respect to inherency is that one of ordinary skill in the art would have understood that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 77). However, neither Petitioner nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is so. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. In particular, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and 0 come up with something entirely new. The chip 1 surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151:3–20 (emphases added); see Tr. 100:13–101:2. Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Ex. 2001, 151:15–18; see MEHL/Biophile Int’l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency is not to be established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48, 756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citing Fed. R. Evid. 705; 37 C.F.R. § 42.65; Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Thus, we do not credit Dr. Zech’s unsupported opinions with persuasive weight.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“As we seek to give the term “digital signal processor” its ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Patent Owner. Ex. 2002, 145; Ex. 2003, 198. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Id. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. See Tr. 98:12–23; see also id. at 95:10–96:3 (Petitioner’s argument that speed governed by function). We also note one of the submitted dictionary definitions characterizes “high speed,” such that digital signal manipulation as “real-time.” Ex. 2003, 198. Another dictionary definition simply includes “high speed.” Ex. 2002, 145. However, the Specification discloses that only some embodiments can execute real time digital servo algorithms on a DSP. See Ex. 1001, col. 13, ll. 38–42. We determine that Patent Owner has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a requirement for “real time” processing. See PO Resp. 16 (providing a minimal definition for a DSP). We are persuaded, however, that the broadest reasonable interpretation of the term “digital signal processor,” consistent with the Specification and the ordinary and customary meaning of the term as understood at the time of the invention by a person of ordinary skill in the art, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” We do not adopt Patent Owner’s proposal to characterize further an integrated circuit as “specialized.” We determine that proposed modification is superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operation faster than a microprocessor. B.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, 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. PO Resp. 30–31 (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis added) (citations omitted)). Petitioner argues that, because Baird discloses that the servo control processor performs focus and tracking control loops (Ex. 1003, col. 5 l. 63–col. 6, l. 11), “it is necessarily the case that a focus error and tracking error signal are generated” in order to perform that function (Pet. 42–43). See Ex. 1006 ¶ 77; Tr. 20:21–23:5. According to Petitioner and, its declarant, Dr. Zech, one of ordinary skill in the art would” slip op. at 25
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“qualify as a prior art printed publication under 35 U.S.C. § 102, the reference must be shown to have been “sufficiently accessible to the public interested in the art” prior to the earliest effective filing date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). Whether a reference qualifies as a printed publication is a legal conclusion based on underlying factual determinations. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). Blue Calypso, LLC v. Groupon, Inc., Dkt. Nos. 2015-1391, 2015-1393, 2015- 1394, slip op. at 28–29 (Fed. Cir. Mar. 1, 2016).” slip op. at 38
Patent outcomesUS 8,416,651 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,416,651 - American Megatrends, Inc. / Micro-Star International Co., Ltd et al. v. Kinglite Holdings Inc.Institution deniedPTAB · Jan 7, 2016 · IPR2015-01487 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on either obviousness ground for claims 1–19.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“13 is drawn to a computer program product reciting coded elements to perform substantially the same steps as those recited in claim 1. The steps in the method include comparing the second block code stored in the first writeable segment (the updated code) with the first boot block code (the original code) stored in the second writable segment to verify that the second and first boot block codes are identical. For the reasons discussed above, we are not persuaded that Petitioner has demonstrated this limitation is found in either Grote or Woodward. Petitioner does not cite any disclosure of this feature in Chuang. Instead, Petitioner cites Chuang as disclosing the application of write protection to flash memory segments. Pet. 33. Therefore, we decline to institute a trial on this challenge to independent claims 1 and 13. Claims 2–8 depend from claim 1 and claims 14–19 depend from claim 13. Having determined that Petitioner has not demonstrated a likelihood it will succeed on its challenges to independent claims 1 and 13, we decline to institute a trial on dependent claims 2–8 and 14–19. SUMMARY For the reason discussed above, we are not persuaded that Petitioner has demonstrated a likelihood of success in its challenges to claims 1–19 of the ’265 Patent and we decline to institute a trial.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1004, col. 7, ll. 5–10. Grote describes entering a reload mode in two ways: (1) manually, to allow a new system program to be downloaded and installed, or (2) by a recovery mechanism of the boot sequence. Ex. 1004, col. 5, ll. 21–27. In manual reprogram mode, after it is determined that the main boot segment is not corrupt, the auxiliary EEPROM is erased, programmed with an imageof the current boot set and the copy of the boot set in the auxiliary EEPROM is verified against the current boot set in the base EEPROM; then the system enters the “remap” mode, which is executed from the auxiliary EEPROM set. Id. at col. 5, ll. 35–56, Fig. 3, Steps 120– 128. If the system is in the remap mode, for example, as a result of having been corrupted or a power failure, Grote discloses skipping Steps 122–128, which appears to avoid copying corrupted boot code to the auxiliary EEPROM, to force a download of a valid bootstrap firmware set. Id. at col. 5, ll. 14–17, Fig. 3. In either case, beginning at Step 130, Grote discloses reprogramming the base EEPROM and verifying the base EEPROM set against the image of the new code. Id. at Fig. 3, steps 130–138. Petitioner has not identified any disclosure in Grote of comparing the “old” code in the auxiliary EEPROM to the “new” base code to verify the boot block has not been changed. Thus, we are persuaded by Patent Owner’s argument that Grote’s disclosure of operating from the auxiliary flash when the system is corrupt or when some other condition, such as a power failure triggers a reboot, is distinguished from the claimed apparatus in which the processor is programmed to compare the updated boot block code stored in the first of the equal sized segments with the original boot block code in the second of the equal sized segments to verify that the updated boot block code is exactly the same.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“as those of the ’265 Patent. Pet. 18. According to Petitioner, Woodward discloses asymmetrical memory storing a boot code in sector 3 and other data in differently sized sectors 0–2, and proposes a symmetrical memory structure where sector is the same size, as shown in Fig. 3 by flash ROM 14, which is divided into eight equal size sectors. Id. Petitioner argues that a person of ordinary skill would be motivated to combine Grote’s explicit disclosure of applying its process to the bootstrap loader code (BIOS) with the symmetrical flash memory disclosed in Woodward. Id. at 19. As support for this argument, Petitioner cites Woodward’s disclosure that it would be advantageous to develop a methodology for modifying the Extended Industrial Standard Architecture (EISA) configuration code in a flash ROM device, without disturbing the other contents of the flash ROM, especially the boot code. Id. at 20 (citing Ex. 1003, col. 4, ll. 3–9).” slip op. at 15
- Expert testimonyDecided for patent owner
“We are not persuaded by Petitioner’s argument that, taken in context, Grote demonstrates a structure having two equal sized flash segments, as recited in claim 9. Pet. 18. Petitioner has identified no specific discussion in Grote concerning equal sized flash segments. Instead, Petitioner references subject matter in Grote that, as Patent Owner demonstrates, does not require symmetric memory or equal sized segments. Petitioner’s arguments mirror the testimony Dr. Stefano Righi, Ex. 1010 (“Righi Decl.”), at paragraph 37. Although Dr. Righi testifies that the purpose of the ’265 Patent is to store the boot block and other code together in symmetrical memory, rather than asymmetrical memory, Dr. Righi points to no specific discussion in the ’265 Patent concerning this issue. Righi Decl. ¶ 37. Instead Dr. Righi points to the same subject matter in the ’265 Patent discussed in the Petition.” slip op. at 15
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,308,265 - 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 - Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCInstitution deniedPTAB · Oct 23, 2015 · IPR2015-01035 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–18 were obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Inc., and Streamray Inc. (collectively “Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute an inter partes review of claims 1–18 of U.S. Patent No. 8,185,611 B2 (Ex. 1001, “the ’611 patent”) pursuant to 35 U.S.C. § 311 et seq. Patent Owner, WAG Acquisition, LLC (“WAG”), filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), 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.” After considering the Petition, the Preliminary Response, and cited evidence, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of any of the challenged claims.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for patent owner
“For purposes of this decision, we consider Chen FH to be a publication. In re Wyer, 655 F.2d 221, 226–27 (CCPA 1981) and Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378–79 (Fed. Cir. 2006) establish that an application underlying a published patent, such as the Chen FH in the present case, is a printed publication. Contrary to Patent Owner’s contentions, Bruckelmyer does not require that an issued patent suggests turning to the underlying application in order to establish the file history was publicly accessible. Prelim. Resp. 11–12 (citing Bruckelmyer, 445 F.3d at 1379). Instead, as discussed in In re Wyer, the abstract of the issued patent is sufficient to indicate the subject matter and substance of the underlying patent application and establish its public accessibility. 655 F.2d 2 at 227; see also Bruckelmyer, 445 F.3d at 1379 (noting sufficiency of abstract in In re Wyer). For purposes of this Decision and based on the present record, we determine that Chen FH is available as prior art against the challenged claims.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Based on the record before us, Petitioner has failed to show that Chen and Chen FH teach or suggest that the server buffer in Chen fills at a constant rate that matches the rate of data coming out of the buffer. Petitioner’s citations to Chen (Pet. 19 (citing Ex. 1004, 5:17–34) and Pet. 31 (citing Ex. 1004, 9:21–30, claim 42)) and the Polish Declaration (Ex. 1003 ¶ 63) do not demonstrate that the data rate out of the server matches the data rate into its buffer and is “constant.” Indeed, Petitioner’s argument and evidence fails to address whether the rate is constant. In addition, we do not find the argument’s reliance on the small number of frames establishes that the rate of filling the server buffer is about at about playback rate. In sum, Petitioner has not provided persuasive evidence that Chen and Chen FH teach that “the media data elements is sent at a rate that matches the constant fill rate of a server buffer,” which appears in every challenged claims of the ’611 patent. Based on the foregoing, we find Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing that claims 1–18 are obvious in view of Chen and Chen FH.” slip op. at 15
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,185,611
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.