• Micron Technology, Inc. / SK Hynix, Inc. v. Elm 3ds Innovations, LLCInstitution denied
  PTAB · Sep 6, 2016 · IPR2016-00703 · APJ Barbara A Benoit · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, including for failure to establish the required partitioned control layer.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “4. Conclusion “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) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., No. 2015-1693, 2016 WL 2620512, at *6 (Fed. Cir. May 9, 2016) (“It was [Petitioner]’s burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.”) (internal quotation marks removed). Thus, Petitioner must explain how the combination of Hsu and Sakuta would have rendered the independent claims 1 and 5 unpatentable. For the foregoing reasons, we determine that the Petition does not demonstrate sufficiently that Petitioner’s proposed combination of Hsu and Sakuta would have conveyed to one of ordinary skill in the art a control layer of the stacked memory integrated circuit partitioned into a plurality of vertically interconnected circuit block stacks as required by independent claims 1 and 5. Accordingly, after considering the information presented in” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art relevant to the challenged patent “would have had at least a B.S. degree in electrical engineering, material science, or equivalent thereof, and at least 3–5 years of experience in the relevant field, e.g., semiconductor processing.” Ex. 1002 ¶ 58; see Pet. 6–7 (relying on Ex. 1002 ¶ 58). Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the challenged patent. See generally Prelim. Resp. Based on our review of the challenged patent, the types of problems and solutions described in the challenged patent and cited prior art, and the testimony of Petitioner’s Declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “required partitioned circuit control layer of a stacked memory integrated circuit, Petitioner asserts, without further explanation or analysis, that one of ordinary skill in the art “would have recognized that the stacked memory integrated circuits disclosed by Hsu, e.g., ROM and SRAM, are often partitioned into a plurality of circuit blocks. Ex. 1002 at ¶147.” Id. at 33 (quoting ¶ 147 of Dr. Franzon’s testimony (Ex. 1002)). Although Petitioner quotes Dr. Franzon’s testimony for support, Dr. Franzon’s testimony is unavailing because it is conclusory. Dr. Franzon’s testimony merely states, without providing further analysis or evidence, that one of ordinary skill in the art would have recognized stacked memory integrated circuits are often partitioned. As such, Dr. Franzon’s testimony does not disclose the facts underlying his conclusion or provide sufficient analysis or evidence to support his conclusion. Accordingly, Dr. Franzon’s testimony is entitled to” slip op. at 14

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

    “In referring to “the block-based design” or “the block-based memory design” of Sakuta, Petitioner fails to distinguish between Sakuta’s various embodiments, only one of which even arguably discloses a partitioned control circuit (embodiment shown in Figure 3) for the reasons previously discussed. See id. at 33–34 (discussing embodiments shown in both Figures 1 and 3). This further demonstrates shortcomings in Petitioner’s position relying on Sakuta’s purported “memory circuit design that is partitioned into a plurality of circuit blocks” for a partitioned two-dimensional control circuit. Id. Moreover, Petitioner does not address, much less sufficiently explain, why one of ordinary skill in the art would have combined, with Hsu’s threedimensional memory structure, Sakuta’s embodiment that includes a control circuit in the memory block (as shown in Figure 3), rather than Sakuta’s embodiment that includes the memory blocks controlled by a shared control circuit (as shown in Figure 1). See generally id. at 25–30, 35. For these reasons, we are not persuaded by Petitioner’s reasons to” slip op. at 20

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,791,581
• Micron Technology, Inc. / SK Hynix, Inc. v. Elm 3ds Innovations, LLCInstitution denied
  PTAB · Sep 6, 2016 · IPR2016-00706 · APJ Barbara A Benoit · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 5, 12, 36, 54, 78, 113, 116, 133, or 136 were unpatentable as obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (“It was [Petitioner]’s burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner then asserts, without further explanation or analysis, that one of ordinary skill in the art “would have recognized that the integrated circuits are often partitioned into a plurality of circuit blocks.” Id. (citing Ex. 1002 ¶ 132 (claim element 1c) 8). Although Petitioner cites Dr. Franzon’s testimony regarding how one of ordinary skill in the art would have understood Bertin ’945, Dr. Franzon’s testimony is unavailing because it is conclusory. Dr. Franzon’s testimony merely states, without providing further analysis or evidence, that one of ordinary skill in the art would have recognized that the integrated circuits are often partitioned into a plurality of circuit blocks. As such, Dr. Franzon’s testimony does not disclose the facts underlying his conclusion or provide sufficient analysis or evidence to support his conclusion. Accordingly, Dr. Franzon’s testimony is entitled to little or no weight. 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 re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and” slip op. at 14

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

    “Petitioner’s reliance on Sakuta’s two-dimensional memory circuit design for the requisite partitioned control layer, however, does not distinguish sufficiently between Sakuta’s embodiment with a two-dimensional matrixed memory circuit that shares a control circuit (as shown in Sakuta’s Figure 1) and Sakuta’s embodiment with a two-dimensional matrixed memory circuit in which each memory block includes a control circuit (as shown in Sakuta’s Figure 3). See id. at 31–32 (citing Ex. 1067, Abstract, 5:52–54 (discussing embodiment shown in Fig. 1), 8:49–60 (discussing embodiment shown in Fig. 3), Fig. 3). Thus, Petitioner relies both on Sakuta’s embodiment in which the control circuit arguably seems to be partitioned (Figure 3) and on Sakuta’s embodiment in which the control circuit is not partitioned (Figure 1). See, e.g., Ex. 1067, 6:34–35 (indicating the “control circuit” is the “timing and address generator of FIG. 1”), 8:49– 60 (indicating Fig. 3 shows “each memory block of this embodiment” as being “equipped with . . . the control circuit”). Petitioner’s reliance on both embodiments—only one of which arguably has a partitioned control 15 circuit—undermines Petitioner’s position that its proposed combination of Bertin ’945 and Sakuta would have conveyed to one of ordinary skill in the art the required partitioned control layer of a stacked memory integrated circuit. Thus, we are not persuaded that Petitioner has shown sufficiently that Petitioner’s proposed combination of Bertin ’945 and Sakuta would have conveyed to one of ordinary skill in the art the required partitioned circuit control layer of a stacked memory integrated circuit.” slip op. at 15

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

    “In referring to “the block-based design” or “the block-based memory design” of Sakuta, Petitioner fails to distinguish between Sakuta’s various embodiments, only one of which even arguably discloses a partitioned control circuit (embodiment shown in Figure 3) for the reasons previously 16 discussed. See id. at 31 (discussing embodiments shown in both Figures 1 and 3). This further demonstrates shortcomings in Petitioner’s position relying on Sakuta’s purported “memory circuit design that is partitioned into a plurality of circuit blocks” for a partitioned two-dimensional control circuit. Id. Moreover, Petitioner does not address, much less sufficiently explain, why one of ordinary skill in the art would have combined, with Bertin ’945’s multichip semiconductor stack, Sakuta’s embodiment that includes a control circuit in the memory block (as shown in Figure 3), rather than Sakuta’s embodiment that includes the memory blocks controlled by a shared control circuit (as shown in Figure 1). See generally id. at 27–29, 32. For these reasons, we are not persuaded that Petitioner’s reasons to combine explain how Sakuta would have conveyed to one of ordinary skill in the art a partitioned control circuit.” slip op. at 16

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,791,581
• Unified Patents Inc. v. William GreciaInstitution denied
  PTAB · Aug 30, 2016 · IPR2016-00602 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 1 unpatentable over DeMello or Pestoni, alone or in the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “requesting inter partes review of claim 1 of U.S. Patent No. 8,887,308 B2 (Ex. 1003, “the ’308 patent”). William Grecia (“Patent Owner”) filed a Preliminary Response (Paper 7, “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

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

    “reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under this standard, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer,” however, and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).” slip op. at 6

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

    “Claim 1 requires the “credential” to be assigned to the apparatus of (a). As Patent Owner points out, the specification of the ’308 patent describes such credential as “an API Key, an Application Secret Key and could also include an Application ID,” which “[is] usually embedded in the source code of the apparatus, or stored on a remote Internet server.” Id. at 28–29 (citing Ex. 100[3], 10:51–56); Ex. 1003, 10:51–66. The apparatus, such as an Internet-powered desktop or a browser-based application, uses the API Key to establish a data exchange session with the API. Ex. 1003, 10:51–58. By contrast, the “credential in DeMello is assigned to the user, not the device.” Prelim. Resp. 28. As Petitioner explains, “[i]n DeMello, the reader prompts a user to provide login credentials (e.g., PASSPORTTM credentials) to connect to the PASSPORT server via the API of the PASSPORT server to authenticate the user at the PASSPORT server.” Pet. 31 (emphases added); see also Ex. 1006, 23:6–10. Further, Mr. Cherukuri characterizes the PASSPORT credentials as “user’s credentials.” See Ex. 1009 ¶ 72 (cited at Pet. 32) (emphasis added). Neither Petitioner nor Mr. Cherukuri explains persuasively how the user PASSPORT credentials in DeMello are assigned to the reader (apparatus of (a)). Based on the record presented, we are not persuaded that DeMello discloses the recited credential. In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that DeMello anticipates claim 1.” slip op. at 9

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

    “B. Obviousness over DeMello, Wieder, and the Admitted Prior Art Petitioner argues that claim 1 of the ’308 patent would have been obvious over DeMello, Wieder, and “the admitted prior art.” See Pet. 19– 39. Petitioner does not cite Wieder or the admitted prior art as teaching the elements found to be lacking in the above discussion with respect to DeMello. Accordingly, on this record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious over DeMello, Wieder, and the admitted prior art.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,887,308
• Unified Patents Inc. v. William GreciaInstitution denied
  PTAB · 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 obviousness
  Patents in suitUS 8,533,860
• American Megatrends, Inc. / Micro-Star International Co., Ltd. et al. v. Kinglite Holding, Inc.Institution denied
  PTAB · May 31, 2016 · IPR2016-00122 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–20 obvious over BBS and the knowledge of an ordinarily skilled artisan.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For this reason, Petitioner has not demonstrated that a person of ordinary skill would have been motivated to modify BBS to arrive at the subject matter recited in claim 1. Independent Claims 10 and 19 Petitioner contends that the combination of BBS and the knowlege of one of ordinary skill renders independent claim 10 obvious for reasons similar to those discussed with respect to claim 1 (Pet. 26) and that claim 19 is a computer program product claim similar in scope to apparatus claim 1 (id at 29). For the same reasons as discussed with respect to claim 1, we are not persuaded by Petitioner’s arguments concerning claims 10 and 19.” slip op. at 22

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

    “Reordering priorities, as urged by Petitioner, expressly contradicts the disclosure in BBS that the user cannot change priority using the Boot Menu. Ex. 1006, 42. BBS states: [u]nlike in Setup, the Boot Menu doesn’t allow you to edit the position of an IPL device in the IPL Priority. This menu simply allows you to select a Boot First device. A Boot First device attempts booting first before the regular IPR Priority is considered. You select a Boot First device from the Boot Menu by using the up/down keys to move the highlight bar to the desired device, and then by pressing <ENTER> the ordinal value from the IPL Priority for this selection is stored so that that later the INT 19h handler can boot from this device. Id. Thus, BBS discloses that a user who exercises the <HOT KEY> option during POST may select a Boot First device by highlighting it on a pop-up menu. Upon making this selection, the identifier of the Boot First device is saved and that device is used to boot the O/S. The user does not have the option of changing IPL Priority. BBS explicitly states that the Boot Menu does not allow a user to change the position of an IPL device in the IPL Priority. Thus, the priority swapping described by Petitioner as suggested by BBS is not allowed using the BBS Boot Menu. In BBS a user must reenter Setup to change the priority. Prelim. Resp. 14. Based on this disclosure alone, we agree with Patent Owner that one of ordinary skill would not have been motivated to swap priorities or the device numbers corresponding to the priorities.” slip op. at 21

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

    “Determine if a boot process should proceed from and determining whether to boot from Petitioner contends that there is no substantive difference between the two expressions determine if a boot process should proceed from (claims 1 and 19) and determining whether to boot from (claim 10) and that they are co-extensive in scope. Pet. 8. According to Petitioner, both expressions should be read to mean “[determine/determining], based on a user’s command to continue to boot from.” Id. at 9. Patent Owner contends that Petitioner reads “based on the user input” into these terms from an example in the specification and that Petitioner’s construction is superfluous if the claim preamble, which recites “based on user input” (independent claims 1 and 10),2 is given patentable weight. Prelim. Resp. 3–4. We agree with Patent Owner that the expressions are self-explanatory and should be given their plain and ordinary meaning in the context of the claims in which they appear.” slip op. at 8

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

    “If not Petitioner contends that if not should be construed to be at least as broad as “[determine/determining] to not continue to boot from.” Pet. 9. Patent Owner contends that if not should be construed to mean “if it is determined not to proceed with a boot process from a currently configured device. Prelim. Resp. 6. Patent Owner notes that the use of the word “continue” in Petitioner’s definition implies that a boot process has already been initiated, when that is not the case. Id. at 7. Patent Owner points to Figure 3 of the ’641 Patent in which the process flow first determines whether the boot process proceeds from the currently specified drive (step 120) and later, after making that determination and the desired drive is complete, the process flow initiates the boot process (step 140). Claim 1 recites as step (b) performing sub-steps (b.1), (b.2), and (b.3) if the condition in step (a) is not satisfied. The condition in step (a) is determining if a boot process should proceed from a currently configured device. The claim requires no further construction. If the boot process should proceed from the currently configured device the condition in step (a) is met, step (b) is by-passed, and at step (c) the boot process is initiated; if the boot process should not proceed from the currently configured device, the condition in step (a) is not met, the process moves to step (b) and sub-steps (b.1), (b.2), and (b.3) are performed.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,282,641
• Hospitality Core Services, LLC v. Nomadix, Inc.Institution denied
  PTAB · May 3, 2016 · IPR2016-00073 · APJ Trevor M Jefferson · IPR · Institution

  The Board denied institution on claims 1–17 because Petitioner did not show a reasonable likelihood of proving anticipation by Slemmer or obviousness over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “1, “Pet.”) to institute an inter partes review of claims 1–17 of U.S. Patent No. 8,156,246 B2 (Ex. 1001, “the ’246 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Nomadix Inc., filed a Preliminary Response to the Petition. (Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a). Section 314(a) 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 associated evidence, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of claims 1–17.” slip op. at 2

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Based on the record before us, neither Petitioner nor Patent Owner has provided sufficient evidence or argument that the CRU’s interpretation of “redirection server” should be discarded. Petitioner’s support for rejecting the CRU’s construction is to point to Patent Owner’s comments after the CRU’s reexamination decision in the ’894 patent. Pet. 31 (citing Ex. 1004, 1–2; Ex. 1001, 24:60–66, 36:52–55). Patent Owner’s comments do not definitively refute the reasoning and construction of “redirection server” and “redirection unit” set out by the CRU and applied in the ’894 reexamination. See Ex. 1004, 1–2; Ex. 1004, 67. We are also not persuaded by Patent Owner’s argument that the Specification of the ’246 patent indicates that the “redirection server” or “redirection unit” need not be a separate device. Prelim. Resp. 7. The Specification states that the redirection server may be located within the gateway device, which does not directly refute the CRU’s construction. Based on the record before us, we determine that the CRU’s interpretation of “redirection server” as claimed is not in error. Accordingly, we determine that “a redirection server [or portal page redirection unit] is a piece of hardware that can be configured as a stand-alone unit or an add-in module for a gateway device” and “is not software.” Ex. 1004, 67. B. Anticipation Based on Slemmer (Ex. 1005) and Obviousness Based on” slip op. at 7

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

    “Regardless of the confidential markings, Mr. Olsen does not indicate why, in his service as the lead software programmer (Ex. 1011 ¶ 1) with the “role of software development,” which included “working on all aspects of IPORT system including the development, implementation, and documentation” relating to the IPORT system (id. ¶ 3), he was privy to when, or whether, particular documents were placed on the company’s website. Further, although Mr. Olsen submits that documents including IPORT were “distributed to a number of major hotel chains,” and “many other existing and prospective customers” (id. ¶ 50) — with no clear indication of when — the Declaration does not allege or explain that distribution to those entities means that the document “must have been sufficiently accessible to the public interested in the art.” Lister, 583 F.3d at 1311. “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been 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.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Further, although Mr. Olsen testifies (Ex. 1020 ¶ 49) that information “describing IPORT” was “published on [ATCOM’s] website,” the testimony does not indicate how one of ordinary skill in the art, exercising reasonable diligence, could locate the IPORT documents in question. See SRI Int’l, 511 F.3d at 1186. We conclude that, on this record, Petitioner has failed to meet its burden of at least a preliminary showing that IPORT are printed publications as contemplated by 35 U.S.C. §§ 102 and 311(b).” slip op. at 13

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

    “1005) (Pet. 36–39) and rendered obvious by Slemmer and Vu (Ex. 1006) (Pet. 39–40). Petitioner relies on the “software control program” in Slemmer (Ex. 1005, 4:40–42) to disclose the “portal page redirection unit” in claim 1 and the “redirection server” in claims 6 and 9 of the ’246 patent. Petitioner concedes, however, that if “redirection server” and “portal page redirection unit” are construed as in the ’894 patent reexamination proceedings “to exclude a software proxy running on the gateway,” then the software proxy of Slemmer does not disclose the recited “redirection server” or “portal page redirection unit.” Pet. 36, 40. Based on our construction of “redirection server” and “portal page redirection unit” discussed above, we agree with Petitioner that the software program of Slemmer does not disclose the “portal page redirection unit” in claim 1 and the “redirection server” in claims 6 and 9 of the ’246 patent. Accordingly, we find that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing that claims 1–17 are unpatentable as obvious under 35 U.S.C. § 103(a) over Slemmer and Vu, or unpatentable as anticipated by Slemmer under 35 U.S.C. § 102(e).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,156,246
• Hospitality Core Services LLC v. Nomadix, Inc.Institution denied
  PTAB · Apr 27, 2016 · IPR2016-00052 · APJ Howard B Blankenship · IPR · Institution

  The Board denied institution on all claims because the IPORT grounds lacked a threshold showing of printed-publication status and it declined the Applegate grounds under § 325(d).

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “and IPORT V2x are prior art “printed publications” in accordance with 35 U.S.C. §§ 102 and 311(b). We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009).” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “and IPORT V2x are prior art “printed publications” in accordance with 35 U.S.C. §§ 102 and 311(b). We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009).” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In determining whether to institute or order a proceeding under . . . chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d) (titled “MULTIPLE PROCEEDINGS”). Further, in construing our authority to institute inter partes review under 37 C.F.R. § 42.108, we are mindful of the guidance provided in § 42.1(b): “[37 C.F.R. § 42] shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” Petitioner’s remaining asserted grounds of unpatentability, five of seven asserted grounds, rely on Applegate, alone or in combination with other references. See Pet. 4‒5, 29‒34, 36. Yet, Applegate received full consideration in view of the subject matter claimed in the ʼ894 patent in the denial of inter partes reexamination. The Central Reexamination Unit determined that a redirection server, as claimed, comprises hardware, and the only element disclosed by Applegate that performs redirection is software. See supra § II.D. We find nothing in this record that might demonstrate error in the CRU’s determinations. For example, as alleged by Patent Owner in its “Comments” to the CRU Director’s denial of the inter partes reexamination, the ʼ894 patent discloses that “[t]he redirection is accomplished by a Home Page Redirect (HPR) performed by the gateway device, a AAA server, or by a portal page redirect unit located internal to or external to the gateway device.” Ex. 1001, col. 9, ll. 5‒8. The claims, however, do not set forth a redirection “device” or “unit” but a redirection “server.” The indicated Specification portion of the ʼ894 patent describes an AAA “server” that may perform the redirection, which may be distinguished from a pure software embodiment performing the function, even if the server is located within the gateway device.5 See, e.g., Ex. 1001, col. 7, ll. 22‒24” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “ordinary skill in the art would have combined the teachings of the references, however, is lacking in a factual basis for such combination. According to Petitioner, “IPORT and Birrell describe the redirection server configured as a separate hardware circuit, and Coss and Colby describe systems using packet address modification for packet redirection, which could likewise be combined with Applegate and [Slemmer] to arrive at the system claimed in the [ʼ]894 patent.” Pet. 59 (citing Ex 1020 ¶ 39 (similar allegations)). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). As our reviewing court instructs: Although the obviousness analysis should “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” the Supreme Court emphasized that this evidentiary flexibility does not relax the requirement that, “[t]o facilitate review, this analysis should be made explicit.” Id. [KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)] (citing [In re] Kahn, 441 F.3d [977, 988 (Fed. Cir. 2006)] (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)). Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009). Petitioner’s challenge of the claims over Applegate, Slemmer, and Birrell (Pet. 4 (Ground 3), 32‒33, 58‒59) provides mere conclusory statements in support of the legal conclusion of obviousness. Petitioner offers no convincing rationale, in light of the teachings of the prior art, with respect to why one of ordinary skill in the art would have chosen to combine the elements of the asserted art in a way “to arrive at the system claimed in the [ʼ]894 patent.” Pet. 59.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 6,636,894
• American Megatrends, Inc. / Micro-Star International Co., Ltd et al. v. Kinglite Holdings Inc.Institution denied
  PTAB · 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 · Graham
  Patents in suitUS 6,308,265
• Wangs Alliance Corporation D/B/A Wac Lighting Co. v. Koninklijke Philips N.V.Institution denied
  PTAB · Nov 25, 2015 · IPR2015-01289 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 15, and 21 were anticipated by Perry or obvious over Hochstein and Perry.

  RulingsInstitution decision

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

    “means-plus-function format. Both parties also agree that the recited function is “detecting an incorrect functioning of the converter or of the semiconductor light source connected thereto” (claim 1) and “detecting a defective converter or semiconductor light source connected thereto” (claim 15). The parties, however, disagree on whether the structure should refer to a Zener diode, or a Zener diode Z60 or Zener diode Z70, specifically. See Prelim. Resp. 19 (“Philips disagrees with [Petitioner’s] construction insofar as it requires a generic zener diode.”). We agree with the parties that the “detection means” is a Zener diode that performs the recited function. But we do not agree, at this time, that the diode must be the Z60 or Z70 diode, arranged as indicted in the drawings of the ’458 patent. Nor do we find that the Zener diode must be arranged to detect minimum and maximum voltages, because the recited function specifically defines the function of the Zener diode and its equivalents. See 35 U.S.C. § 112, ¶ 6 (the structure of a means-plus-function term is construed to “cover the corresponding structure . . . described in the specification and equivalents thereof”) (emphasis added). Therefore, we construe the “detection means” as a Zener diode that performs the recited function, according to the claim language of the appropriate claim.” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Second, Petitioner failed to show that a Zener diode (or its equivalent) performs the recited function. We agree with Patent Owner that failure circuit 70 does not contain a Zener diode. Prelim. Resp. 28. We also find that Petitioner did not explain how failure circuit 70 is an equivalent to a Zener diode. Neither the Petition nor the cited passages of the Dr. Tingler’s Declaration allude to a Zener diode or its equivalent in describing the contention that Perry discloses the “detection means” limitation. Accordingly, we determine that Petitioner has failed to show a reasonable likelihood of prevailing in its contention that the challenged claims are unpatentable as anticipated by Perry.” slip op. at 10

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

    “First, the Petition did not show how the construed claim (as presented in the Petition) renders unpatentable the challenged claims in view of the prior art. See 37 C.F.R. § 42.104 (b)(4). Although the Petitioner proposed a Zener diode as the structure corresponding to the “detection means,” it presented an analysis of the prior art relying on a different position, i.e., that a transistor and a Zener diode are the corresponding structure of the “detection means.” Petitioner does not explain these different positions or how the applied construction of “a transistor and a Zener diode” is supported by the specification. Second, Petitioner failed to show that a Zener diode (or its equivalent) performs the recited function. We agree with Patent Owner that failure circuit 70 does not contain a Zener diode. Prelim. Resp. 28. We also find that Petitioner did not explain how failure circuit 70 is an equivalent to a Zener diode. Neither the Petition nor the cited passages of the Dr. Tingler’s Declaration allude to a Zener diode or its equivalent in describing the contention that Perry discloses the “detection means” limitation.” slip op. at 9

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

    “claims 1, 15, and 21. Pet. 1735. Petitioner relies exclusively on Perry, however, as disclosing the “detection means.” Pet. 4345. The Petition cites for support the Declaration of Dr. Tingler. Id. (citing Ex. 1005, ¶¶ 119–121). Petitioner’s position with regard to the obviousness ground is the same as its anticipation contention that Perry discloses the “detection means.” Further, the Dr. Tingler Declaration passages relied upon for the “detection means” in the obviousness ground repeat the same analysis provided for the anticipation ground. Patent Owner has persuaded us that Petitioner’s obviousness contention relies on the same evidence of “detection means” proffered with respect to the anticipation ground. We determined above that Petitioner did not show that Perry discloses a “detection means.” Further, we find that Petitioner has not shown that Perry teaches or suggests the “detection means,” as we have construed the term. Consequently, we determine that Petitioner has failed to show a reasonable likelihood that it will prevail in its contention that the challenged claims are unpatentable as obvious over the combination of Hochstein and Perry.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,147,458
• American Megatrends, Inc. / Micro-Star International Co., Ltd et al. v. Kinglite Holdings Inc.Institution denied
  PTAB · Nov 20, 2015 · IPR2015-01188 · APJ Glenn J Perry · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 7, 10, 14, and 18 were obvious over Schieve and AAPA.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Patent Owner’s Preliminary Response, and the evidence of record, we conclude Petitioner has not established a reasonable likelihood it would prevail with respect to at least one of the challenged claims. We, therefore, deny the Petition.” slip op. at 2

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

    “FIG. 1 is an example graphical representation of a typical memory map 100 in a computer (e.g., an IBM compatible personal computer, any Intel central processing unit (CPU) -based machine, or similar computing devices). Memory 100 is generally divided into two areas: conventional memory 110 and upper memory 120. Conventional memory 110 comprises a random access memory (RAM) 112 address space that is set aside for use by operating systems and application programs. Conventional memory 110 is, for example, located in the 0 to 9FFFFh (Where “h” indicates hexadecimal notation) address range of memory 100. Upper memory 120 is used by the computer hardWare. Upper memory 120 is, for example, located in the AOOOOh to FFFFFh address range of memory 100. The first 128 kilo bytes (“K”) of upper memory 120 addresses are generally used for video memory 122. The remaining upper memory addresses (e. g., 0000h to 100000h or the end of memory) are set aside for read only memory (ROM) 130. Ex. 1001, 2:45–63. We understand from this passage that “conventional memory” referred only to lower memory and not to upper memory. While we agree with Petitioner that video RAM and other kinds of RAM were conventional in the sense that they were known and used, we are not persuaded that the term “conventional memory” should be construed to include video RAM. The Specification clearly identifies what was meant by “conventional memory.” We therefore adopt Patent Owner’s construction. For purposes of this decision, “conventional memory” refers to the basic 640K of memory available for running DOS programs.” slip op. at 6

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

    “In accordance with our construction of “conventional memory,” we agree with Patent Owner’s argument that Schieve’s teaching to a PHOSITA is to utilize video RAM, and not conventional memory, for running a decompressed diagnostic routine. Schieve’s Figure 2 is reproduced below (with annotation). Schieve describes Figure 2 as a partial block diagram of a PC architecture. Ex. 1002, 4:39–40. Video RAM 232 is shown in Figure 2 in a subsystem separate from memory subsystem 220. As discussed above, the ’013 patent itself, in Figure 1 (Prior Art), demonstrates that “conventional memory” (RAM 112) is separate and distinct from “video memory” (video memory 122). Accordingly, this limitation of claim 10 is not met by Schieve.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 5,836,013

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.