• Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing denied
  PTAB · Sep 28, 2017 · CBM2016-00091 · APJ Glenn J Perry · CBM · Rehearing

  The Board denied Facebook and Instagram’s rehearing request, finding no abuse of discretion in denying CBM review because the disclaimed claims could not establish eligibility.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “may deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.208(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 4

  • Adverse judgmentOther

    “when a patent owner files a statutory disclaimer after the filing of the petition but before institution, CBM patent review eligibility can be based on the disclaimed claims. Specifically, Petitioner relies upon limitations of disclaimed claims 6 and 8−11 as supporting its contention that the ’502 patent qualifies for CBM patent review. See Pet. 4–8 (citing claim 6, for example, which recites “charging a fee, to the user”). Patent Owner, however, statutorily disclaimed claims 6 and 8−11, pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). See Prelim. Resp. 4; Ex. 2001. In the Decision on Institution, for purposes of establishing CBM patent review eligibility and in accordance with Federal Circuit case law, we treated the ’502 patent as though these claims never existed. Dec. on Inst. 8–10.” slip op. at 7

  None
  Patents in suitUS 9,037,502
• Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing granted
  PTAB · 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 anticipation
  Patents in suitUS 6,430,148
• American Megatrends, Inc. / Micro- Star International Co., Ltd et al. v. Kinglite Holdings Inc.All claims unpatentable
  PTAB · Jan 19, 2017 · IPR2015-01488 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–50 are unpatentable: claims 1 and 14 over Shipman; claims 2–5, 7–13, 15–18, 20–30, 32–42, and 44–50 over Shipman and Harmer; claims 6, 19, 31, and 43 over Shipman, Harmer, and Patel.

  RulingsFinal written decision

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

    “In the Decision to Institute, we applied the following claim constructions. Dec. to Inst. 10–12. We determined that “BIOS initialization code” as recited in claims 1, 14, 27, and 39 as “predetermined amount of BIOS initialization code” does not require further construction. Id. at 11. We also determined that “dispatch manager” as recited in claims 1–4, 14–17, 27–29, and 39–41, is construed as a program that handles the locating, loading and executing of task code. Id. at 12. Finally, we adopted the parties’ agreed construction of “system memory” as “random access memory (RAM).” Id. As neither Petitioner’s nor Patent Owner’s arguments persuade us to revise our interpretations of “BIOS initialization code,” “dispatch manager,” or “system memory,” we adopt as final our determinations of the broadest reasonable interpretations of those terms. Dec. to Inst. 10–12.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art for the ’189 patent would be “a person having at least a Bachelor of Science degree in computer science or software engineering or a Bachelor of Science degree in a technical field requiring computer science or software engineering courses and at least one year of industry experience in computer science or engineering related to firmware.” Pet. 10 (citing Ex. 1013 ¶ 15). Patent Owner does not dispute this proposed level of skill in the art. Based on the full record, we agree with Petitioner.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Mr. Perla’s declaration testimony (Ex. 1013 ¶ 56) is contradicted and undermined by his deposition testimony that shows him scrambling and leading counsel “on a wild goose chase” to support his declaration (PO Resp. 3–54 (citing Ex. 2010, 28:7–8, 29:7–23, 32:20–33:6, 33:15–20, 33:21– 34:14; 35:7–36:25, 46:1–12)). Patent Owner argues that Mr. Perla’s testimony should be ignored because he “fabricates an aspect of modularity” in the Harmer reference to combine it with the modularity contemplated in the Shipman reference. PO Resp. 3–5. We disagree, finding that the deposition testimony cited by Patent Owner concerning “portions of BIOS” as contrasted with “BIOS modules” does not support the conclusion that Mr. Perla’s testimony should be disregarded in its entirety or given no weight. Considered in its entirety (Ex. 2010 and Ex. 1013), we find sufficient support and explanation for Mr. Perla’s testimony regarding modularity of Harmer and Shipman. In addition, Patent Owner’s deposition questions are 4 We note that Patent Owner’s citations to the testimony of Mr. Perla (PO Resp. 3–5) do not support Patent Owner’s contentions. For example, the Patent Owner response quotes Mr. Perla’s testimony (PO Resp. 3–4), but the deposition exhibit citations (Ex. 2010, 28:7–8, 28:10–12, 28:13–16), do not contain the quoted language and do not support Patent Owner’s contentions. In the absence of accurate citations to the record, we have considered Mr. Perla’s testimony in its entirety (see Ex. 2010). narrowly drawn and fail to support Patent Owner’s contentions that Mr. Perla fabricated his testimony regarding the modular teachings of the Harmer reference. PO Resp. 3–5 (citing Ex. 2010, 28:7–8, 29:7–23, 32:20– 33:6, 33:15–20, 33:21–34:14; 35:7–36:25, 46:1–12). Accordingly, we do not disregard the testimony of Mr. Perla.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Patent Owner contends that there is no motivation to combine the Harmer and Shipman references because there is no support for the testimony of Mr. Perla that Harmer contemplates modular BIOS. PO Resp. 3–5, 11–13. As discussed above, we disagree with Patent Owner’s argument that Mr. Perla’s deposition testimony shows there is no support for his opinion that a skilled artisan would have been motivated to combine Harner and Shipman given that both deal with BIOS modularity because “Harmer’s purported BIOS modularity was fiction.” PO Resp. 11. Considering Mr. Perla’s testimony in its entirety, Mr. Perla’s deposition testimony is consistent with his declaration testimony that Harmer’s teachings of expansion BIOS are similar to the teachings in Shipman relied upon by Petitioner. Compare Ex. 1013 ¶ 56, with Ex. 2010, 30:3–11. We do not find that Mr. Perla’s deposition testimony undermines the testimony regarding what Harmer teaches a person of ordinary skill in the art. Petitioner relies on Harmer to establish that it was known, prior to the time of invention of the ’189 patent, to store BIOS modules in a protected area of a secondary nonvolatile storage device to reduce the cost of the ROM by relocating BIOS components to the mass memory storage of peripheral computer devices. Reply 9–10; Ex. 1013 ¶¶ 110–111; Ex. 1003, 4:63–67; Pet. 32–33. We are not persuaded by Patent Owner’s argument based solely on the” slip op. at 20

  Patent outcomesUS 7,185,189 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,185,189
• Google Inc. v. Better Food Choices LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 5,841,115
• 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 · 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
• Hughes Network Systems, LLC / Hughes Communications, Inc. v. California Institute Of TechnologyAll claims unpatentable
  PTAB · Apr 21, 2016 · IPR2015-00059 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1 and 2 are unpatentable as anticipated by Divsalar; Patent Owner’s motion to strike and exclude was denied.

  RulingsFinal written decision

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

    “Although Petitioner has the ultimate burden of persuasion in an inter partes review, once the Petitioner has represented what it believes to be a proper identification of the real parties-in-interest, Patent Owner has the burden of production in establishing that a real party-in-interest has not been named. Patent Owner has not carried that burden with respect to establishing that Dish is an unnamed real party-in-interest. Petitioner persuasively argues that Patent Owner failed to show that the Petition was filed at the behest of Dish. Paper 15, 1. The key to a real party-in-interest inquiry is the relationship between the potential unnamed real party-in-interest and the proceeding, not the relationship between parties. For example, “[a] common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” 77 Fed. Reg. at 48,759. There is no persuasive evidence of record that Dish controls or even had an opportunity to control Hughes’ decision to file or maintain this inter partes review.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We construe the term “linear transformation” in order to apply the Divsalar reference. The term “linear transformation” is used in the context of a transformation between two vector spaces. We adopt a linear algebra definition7 that a linear transformation is one that obeys the laws of linear algebra including distributive and associative properties, e.g., the transform of vectors a+b is equal to the transform of a + the transform of b. The linear transform of x (a scalar) times a vector y is equivalent to x times the transform of vector y. We decline to read into the claim limitation the requirement of an irregular repeat. 2. Additional Claim Terms We find it unnecessary to construe additional claim terms.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “Based on the same named authors that appear in bibliographic citations in the 1998–1999 time frame, we find that the evidence of record supports that a relatively small community of artisans worked in error correction coding, several of whom referenced the Divsalar paper. Under 9 The presence of the citation in a book copyrighted in 2000 suggests that the author of that portion of the book (here, David Mackay) would have received the article prior to the book’s publication. these circumstances, we find that the Divsalar paper was published to the relevant community of skilled artisans well before the earliest effective filing date of the patent at issue. We determine, based on the totality of the evidence discussed above, that Divsalar is prior art with respect to the ’781 Patent. We conclude that the preponderance of evidence establishes that Divsalar is a printed publication available as prior art against the ’781 Patent as required by 35 U.S.C. § 311(b).” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Patent Owner that the specification explains how irregular coding is achieved. However, we do not read limitation [a] of claim 1 as being limited to irregular repeat coding, as discussed above in our claim construction. Claim 1 requires “performing a first encoding operation on at least some of the information bits, the first encoding operation being a linear transform operation that generates L transformed bits.” The first encoding can be on “at least some” of the information bits. Thus, it could also be on all of the information bits. Also, according to the claim, the first encoding operation must produce “L” transformed bits. There is no explanation in the claim as to the relationship of “L” to the incoming block of bits being transformed. All that claim 1 recites, at the end of the claim, is that L is 2 or more. Thus, claim 1 could produce a regular repeat code by repeating all of the information bits to generate L (more than 2) transformed bits. Although Patent Owner argues that claim 1 is limited to producing irregular codes, there is no language in the claim that so limits it. Claim 1 is in contrast to claims 9 and 22 (not at issue) which require information bits to appear in a “variable number of subsets.” If limitation [a] were limited to “irregular” codes, Patent Owner’s position would have merit. However, claim 1 embraces more than just “irregular” repeat codes. It includes first and second encoding operations that may produce regular and irregular repeat codes. Thus, on the full record, Patent Owner’s argument is not commensurate in scope with the actual language of claim 1.” slip op. at 24

  Patent outcomesUS 7,916,781 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 7,916,781
• Toshiba Corporation v. Optical Devices, LLCNo claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01445 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1–10 were not shown unpatentable: Baird did not disclose the required FES and TES determination, and the ST Datasheet was not established as prior art.

  RulingsFinal written decision

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

    “Ex. 1001, 13:50–61. From this disclosure, we recognize that the Specification suggests that a DSP operates faster than a microprocessor and, in some embodiments, real time digital servo algorithms can be executed on a DSP. Id. at 53–55. The Specification, however, does not expressly define the term “digital signal processor.” We note the competing views of Dr. de Callafon, on behalf of Patent Owner, and Dr. Zech, on behalf of Petitioner. We also note issues regarding the testimony of each declarant. For example, in some respects, Dr. de Callafon bases his proposed construction of a DSP on features that he asserts one of ordinary skill in the art would have understood that “most DSP processors have,” as opposed to features that all DSP processors require. Ex. 2008 ¶ 21(a). Dr. Zech’s deposition testimony describing the design of a DSP, also relied upon by Patent Owner, is unreliable because Dr. Zech testified that he had “no expertise” as to design elements distinguishing a DSP from a general processor. See, e.g., Ex. 2001, 35:12–13, 44:12–14. As we seek to give the term “DSP” 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. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Ex. 2002; Ex. 2003. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. We note also that only one of the submitted dictionary definitions additionally characterizes such digital signal manipulation as “real-time.” Id. at 2003. The Specification, however, discloses that only some embodiments can execute real time digital servo algorithms on a DSP. 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. 20 (providing a minimal definition for a DSP). Thus, we are persuaded that that the broadest reasonable intepretation of the term “digital signal processor,” consistent with the Specification, 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.” Patent Owner’s proposal to characterize further an integrated circuit as “specialized” is not well taken. Indeed, we find that proposed modification to be 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 operating faster than a microprocessor. 2.” slip op. at 8

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

    “Patent Owner proposes constructions for additional claim phrases without providing any discussion or reference to the Specification in support of those proposed constructions. PO Resp. 12–13. Based on our analysis, we determine that no express claim construction is necessary for any remaining claim term. Thus, we are not persuaded to adopt those proposed constructions.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that one of ordinary skill in the art at the time of the filing of the ’729 patent as having: (1) a Bachelor’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field and at least two years of additional experience in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies, either in industry or research[,] or (2) at least a Master’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field with coursework in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies. Pet. 36–37 (citing Ex. 1006 ¶¶ 65–66) (emphases added). Patent Owner asserts that one of ordinary skill in the art would have “a Bachelor of Science in Mechanical or Electrical Engineering and at least two years of experience in control systems technology.” PO Resp. 5 (citing Ex. 2008 ¶¶ 9–11) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 11

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

    “Having considered the arguments and evidence, we are not persuaded 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 understand 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 ¶ 82). However, neither Petitioner, nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is true. 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. For example, 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). 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 Id.; see MEHL/Biophile Int’l. Corp., 192 F.3d at 1365 (inherency is not 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.”) (citations omitted). Thus, we do not afford Dr. Zech’s opinions persuasive weight.” slip op. at 20

  Patent outcomesUS 7,839,729 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,839,729
• Toshiba Corporation v. Optical Devices, LLCNo claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,416,651
• Toshiba Corporation v. Optical Devices, LLCAll claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01443 · APJ Erica A Franklin · IPR · Final written decision

  Claims 37, 38, 48, 49, 51–53, 55, 57, 58, 60, 61, 63, 64, 67–69, and 71 are anticipated by Ando; the contingent motion to amend is denied for insufficient written-description support.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “Patent Owner’s arguments notwithstanding, we conclude that the strongest evidence for construing the term “optical gain” comes from the Specification itself which defines the term. As the Federal Circuit has explained, [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the specification is “the single best guide to the meaning of a disputed term” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in” slip op. at 12

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

    “Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For this reason, we provide express constructions for only the following terms.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that one of ordinary skill in the art at the time of the filing of the ’729 patent as having either: (1) a Bachelor’s of Science Degree in Physics, Optics, Electrical Engineering, or a related field with coursework in Optics technology, Photonics technology, or related technologies, either in industry, academia, or research, or (2) a Master’s degree in Physics, Optics, Electrical Engineering, or a related field with coursework in Optics or Photonics. Pet. 26–27 (citing Ex. 1008 ¶ 32) (emphasis added). Patent Owner asserts that one of ordinary skill in the art in 1967 would have “held a Bachelor of Science and Master of Science Degrees in either Physics or Electrical Engineering with a focus on optics, and additionally, at least two to three (2-3) years of experience in Physics or Electrical Engineering optics research.” PO Resp. 4 (citing Ex. 2104 ¶ 10) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 15

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Contrary to Patent Owner’s assertion, Dr. Leger’s declaration does not confirm that each of the proposed amendments find support in the ’186 application. To begin, the portion of Dr. Leger’s declaration cited by Patent Owner contains a conclusory opinion that is allegedly supported by disclosures in the ’186 application. Ex. 2104 ¶ 134. Dr. Leger, however, does not explain or otherwise justify why one of skill in the art would have understood from those cited portions of the ’186 application that the inventor possessed the claimed subject matter. Further, we agree with Petitioner that Dr. Leger’s testimony on cross-examination undermined his credibility with respect to written description support for the amended claim. In particular, we consider Dr. Leger’s cross-examination testimony regarding detecting radiant flux density and comparing radiant flux density that Petitioner listed:  Making a determination “by comparing the radiant flux density of the retroreflected radiant energy to that of a reference in the scanned area” as recited in claims 72, 74 and 83 requires measuring radiant flux density twice and comparing the measured values. ([Ex.]-1009 at 155:20-160:4.)  Measuring radiant flux density requires measuring radiant flux through a known area, and dividing the radiant flux by the known area. (Id. at 50:9-51:4.)  Without knowing the area (e.g. spot size hitting detector), radiant flux density cannot be measured or determined. (Id. at 53:21-54:1.)  Even if the beam completely fills the detector, a utilization” slip op. at 31

  Patent outcomesUS RE40,927 unpatentable
  Claim construction§ 102 anticipationcites Phillips · Graham

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.