• Commscope, Inc. v. TQ Delta, LLC.Institution denied
  PTAB · Apr 25, 2023 · IPR2023-00068 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution of review of claims 9–16 as time-barred under § 315(b), and denied CommScope’s motion for joinder as moot.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied

    “instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”” slip op. at 4

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “The ’664 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00664, Paper 24 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’664 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’664 IPR is moot, and the Petition is not timely under 35 U.S.C. § 315(b). IV. CONCLUSION The Motion for Joinder is denied as moot because the ’664 IPR already has been terminated, and the Petition is denied because it was not filed within the time period set forth in 35 U.S.C. § 315(b). V. ORDER Accordingly, it is ORDERED that the Motion for Joinder is denied as moot; and” slip op. at 5

  Discretionary denial
  Patents in suitUS 7,844,882
• Commscope, Inc. v. TQ Delta, LLCInstitution denied
  PTAB · Apr 25, 2023 · IPR2023-00064 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution of review of claims 1–4 as time-barred under § 315(b) and denied joinder as moot because the proceeding to be joined had terminated.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”), a privy of Petitioner,1 with a complaint alleging infringement of the ’048 patent in February 2014. Ex. 2001; Ex. 2002. Patent Owner served Petitioner with a complaint alleging infringement of the ’048 patent on August 17, 2021. Ex. 1027; Ex. 3001. Petitioner filed the Petition more than one year later on October 26, 2022. Pet. 79. Petitioner does not dispute those facts, but instead relies on its request to join the ’666 IPR to avoid the time limit in Section 315(b). Pet. 1 (“Because . . . this is a copycat petition . . . accompanied by a motion for joinder . . . , the time bar under § 315(b) does not apply.”); Mot. 8–10 (“the one-year time limitation does not apply to a request for joinder”). The ’666 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00666, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’666 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’666 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “The ’666 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00666, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’666 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’666 IPR is moot, and the Petition is not timely under Section 315(b). III. CONCLUSION The Motion for Joinder is denied as moot because the ’666 IPR” slip op. at 5

  Discretionary denial
  Patents in suitUS 8,276,048
• Commscope, Inc. v. TQ Delta, LLCInstitution denied
  PTAB · Apr 25, 2023 · IPR2023-00066 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution of IPR on claims 1–8 as time-barred under § 315(b), and denied joinder as moot because the proceeding sought to be joined had terminated.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”), a privy of Petitioner,1 with a complaint alleging infringement of the ’381 patent in February 2014. Ex. 2001; Ex. 2002. Petitioner filed the Petition more than one year later on November 1, 2022. Pet. 79. Petitioner does not dispute those facts, but instead relies on its request to join the ’665 IPR to avoid the time limit in Section 315(b). Pet. 1 (“Because . . . CommScope will file an accompanying motion for joinder . . . , the time bar under § 315(b) does not apply.”); Mot. 8–10 (“the one-year time limitation does not apply to a request for joinder”). The ’665 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00665, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’665 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’665 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “The ’665 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00665, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’665 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’665 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5

  Discretionary denial
  Patents in suitUS 7,836,381
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01601 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over both listed combinations; the contingent motion to amend is granted, replacing them with substitute claims 3 and 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated we would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Institution Dec. 19. We reasoned that our review of the ’199 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’199 patent on more general principles of cellular communications and signaling. Id. at 19– 20. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and therefore, we concluded that our decision would be the same under either formulation. Id. at 20.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “device associated with a driver at all.” PO Resp. 39 (citing Valenti III Decl. ¶ 94). Patent Owner continues, “Petitioner’s expert acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Williams Dep. 128:14–129:25, 132:1–8). This is a misrepresentation of Mr. Williams’s testimony. He was not asked whether Lalancette “discloses” a mobile communication device; he was asked to agree whether Lalancette “identi[fies] the mobile computer as a mobile communication device.” Williams Dep 129:10–13. He explained his response later in his testimony: “In the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing Smartphones.” Id. at 132:5–8. We do not agree with Patent Owner’s argument that this limitation is not met by Lalancette and we do not find the testimony of its expert, Dr. Valenti, credible or helpful. See Valenti III Decl. ¶¶ 94 (“Lalancette does not disclose a mobile device associated with a driver at all.”). As Petitioner points out, the argument supported by Dr. Valenti is an “attempt to improperly narrow the definition of a mobile device to only mean a smartphone of the driver.” Pet. Reply 24. We find that this argument and the supporting expert testimony are contradicted by the ’199 patent specification. See id, at 24–25 (quoting Ex. 1001, 3:10–11, defining mobile communication device broadly). We, therefore, find that the mobile computer disclosed in Lalancette meets the requirement of this claim limitation for a “mobile communication device associated with the driver.” We find for the reasons given that Petitioner demonstrates that Lalancette and Kemler meet limitation 1E.” slip op. at 45

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPlain and ordinary meaningDecided for petitioner

    “We declined to adopt this implicit construction (and the related construction “actively generate”). Institution Dec. 23. The claims themselves do not require the controller to “actively formulate” a new indicator for the same rider requesting a subsequent trip for that second trip, or that “a new signal be actively formulated each time a ride is dispatched,” as Patent Owner’s analysis asserts. See infra. Nor is it clear how this construction is supported by the ’199 patent specification. The ’199 patent describes the controller as “communicatively coupled to the transceiver.” Ex. 1001, 2:10–11. Further, “[t]he controller is adapted to generate a first signal to be transmitted by the transceiver to a mobile communication device.” Id. at 2:12–14. Elsewhere in the patent, “controller” is defined as “any type of computing device, computational circuit, or any type of processor or processing circuit capable of executing a series of instructions that are stored in a memory associated with a with the controller.” Id. at 3:6–10. The operation of the controller is also described as follows: “The controller 110 may generate a first signal (also referred to herein as a ‘notification signal’) that is transmitted via the transceiver 120 to the mobile communication device 150 associated with the driver D.” Id. at 5:14–17. Still further, “[t]he controller 110 generates four different notification signals, NOTIFICATION-A, NOTIFICATION-B, NOTIFICATION-C, and NOTIFICATION-D, to be transmitted by the transceiver 120 to a first DRIVER'S MOBILE DEVICE 150A, a second DRIVER'S MOBILE DEVICE 150B, a third DRIVER'S MOBILE DEVICE 150C, and a fourth DRIVER'S MOBILE DEVICE 150D, respectively.” Id. at 6:39–46. And further, “[i]n other embodiments, wherein the vehicle identification system 11 is utilized, an indicatory signal to the rider's mobile communication device may be generated by the controller 110.” Id. at 7:4–7. In none of these descriptions of the controller’s operation is there” slip op. at 15

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–25. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-demand service system can also use location information from the driver’s device and/or transport information . . . to automatically determine the driver’s state or state of the transport service.” Id. at 22 (citing Ex. 1006 ¶¶ 29, 35). Petitioner explains that in Kalanick, “[w]hen a service application on the driver’s device determines that the transport service is to change state, such as to ‘arriving now,’ based on a determination that the driver is within a predetermined distance, the service application can trigger the indication device to output the user’s specific color.” Id. at 23 (citing Ex. 1006 ¶ 37). Thus, Kalanick’s system can “control the indication device to output the user’s color or other unique distinctive indicator based on the transport state.” Id. (citing Ex. 1006, ¶ 38). Petitioner explains that Kemler describes a central dispatching system in which one or more server computing devices of the centralized dispatching system may select a vehicle to be dispatched based upon the location of the client computing device. Id, (citing Ex. 1008, 10:3–33). Thus, Petitioner explains that Kemler, like Kalanick, “discloses ride-matching based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. Petitioner demonstrates that “a [person of ordinary skill] would find it obvious to modify Kalanick’s vehicle identification system in view of Kemler, at least because both systems disclose substantially similar ride-matching techniques based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. at 23–24. Petitioner also explains that a person of ordinary skill would “anticipate success of such a modification.” Id. at 24. Petitioner explains that “the controller in Kalanick is already in communication with the car and could easily send a signal to activate the display with the unique code.” Id. (citing Williams I Decl. ¶ 121). Petitioner recognizes that although both Kalanick and Kemler “focus” slip op. at 28

  Patent outcomesUS 10,559,199 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,559,199
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01598 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–9 and 11–20 are unpatentable as obvious over either asserted combination; the motion to amend is granted for substitute claims 29, 31, and 32.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated “[w]e would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner.” Institution Dec. 16. We reasoned that our review of the ’637 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’637 patent on more general principles of cellular communications and signaling. Id. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and, therefore, our decision would be the same under either formulation. Id. at 16–17.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Resp. 12–14. The fact that Kalanick may not “disclose any problem” arising from the possibility of two passengers in the same area having the same signal does not prove a problem did not exist or that a person of ordinary skill would not be motivated to improve upon the solution for it. See Pet. Reply 5–6. Similarly, we are not persuaded by Patent Owner’s argument that there would be no reasonable expectation of success based on Kemler’s disclosure of a server farm. PO Resp. 24 (“The immense expense and complexity of operating a server ‘farm’ would be a reason to avoid Kemler’s teachings.”). Testimony from Mr. Williams establishes the advantages of such systems. Pet. Reply 7 (citing Williams I Decl. ¶¶ 124); Williams Dep. 82:1–88:25, 92:13–93:1; Williams III Decl. ¶¶ 34–35.5” slip op. at 33

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–27; Williams I Decl. ¶¶ 113–125; Williams III Decl. ¶¶ 5–17. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-” slip op. at 30

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The ’637 patent describes an indicator as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier, on the display 130 and on a mobile communication device 140 associated with the user P to enable the user P to identify the vehicle that he/she has requested for a ride service.” Ex. 1001, 4:6–10. Consistent with this description in the specification, we construed the term “indicator” as a code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver. Institution Dec. 20. We did not see a basis in the claims or specification for Patent Owner’s contention that a “new unique indicator” must be “actively formulate[d] . . . for each rider-driver trip while the driver is in transit.” Id. at 20 (citing Prelim. Resp. 29). Patent Owner does not address the construction of “indicator” in its Response. For the reasons given, therefore, we maintain our construction of this term. We discuss Patent Owner’s contention that a new indicator must be “actively formulated” further in connection with our consideration of the claim term “generate,” infra.” slip op. at 15

  Patent outcomesUS 9,892,637 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,892,637
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01599 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1, 2, 4, and 6–8 are unpatentable as obvious over Kalanick and Kemler, anticipated by Lalancette, or obvious over Lalancette and Kemler.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with one qualification. Inst. Dec. 19. We stated we would also expect a person of ordinary skill to have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. at 19–20. We reasoned that our review of the ’987 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. Id. at 20. However, we observed that our decision would be the same under either formulation. Id. at 20.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also find unavailing Patent Owner’s argument that Mr. Williams, Petitioner’s expert, “acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Ex. 2022, 128:14–129:25, 132:1–8). Patent Owner misrepresents Mr. Williams’s testimony. Mr. Williams was not asked whether Lalancette “discloses” a mobile communication device, but rather was asked “You’ll agree that La[l]ancette doesn’t identify the mobile computer as a mobile communication device associated with the driver?” Ex. 2022, 129:10–13. specifically referenced, that description is not in that passage.” Id. at 129:14–16. Notably, Mr. Williams also testified that (i) “[t]he nature of La[l]ancette requires some sort of computing device in the taxi that has the ability to receive and communicate in order to get information, for example, icon information from the central computer”; (ii) “mobile computer . . . has a variety of form factors inclusive of something like a [s]martphone”; and (iii) “[i]n the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing [s]martphones.” Id. at 125:17–22, 129:20–25, 132:5–8.” slip op. at 38

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “1. “indicator” In our Institution Decision, we construed the term “indicator” as a “code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver.” Inst. Dec. 22. We determined this construction was consistent with the description of an indicator in the specification of the ’987 patent. Id. at 21–22 (citing Ex. 1001, 4:9–13). Neither party challenges this construction, which we maintain for this Final Written Decision. See PO Resp. 6; Pet. Reply 2; PO Sur-reply 2.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Because the specification and prosecution history do not explicitly provide a definition for the term “generate,” we looked to extrinsic sources to determine its plain meaning. Inst. Dec. 24. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. general dictionary definitions as an aid to claim construction.”) (citation omitted). One dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: PRODUCE.” See https://www.merriam-webster.com/dictionary/generate. We therefore construed the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is “to originate or produce the signal.” Inst. Dec. 24–25.” slip op. at 13

  Patent outcomesUS 10,169,987 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,169,987
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01602 · APJ John D Hamann · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Lalancette; the Board did not reach the anticipation or Kalanick–Kemler obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the full record, we determine that Petitioner’s definition, with the above qualification, is consistent with the ’417 patent and the asserted prior art, and thus, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt. The parties’ statements made during the oral hearing are consistent with this point. See Tr. 75:17–18 (Patent Owner stating that “[i]t’s not clear to us that the level of ordinary skill arguments actually matter”), 106:12–17 (Petitioner stating that its arguments do not depend on which definition we adopt). In sum, we maintain Petitioner’s definition, as qualified, for the level of one of ordinary skill in the art, and employ it in our analysis of the parties’ unpatentability arguments.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “In addition, because the Specification and file history do not explicitly provide a definition for the term “generate,” we look to a dictionary definition to illustrate its plain meaning for the parties. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted). A dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: [produce].” Merriam-webster.com (accessed April 8, 2022), https://www.merriam-webster.com/dictionary/generate (Ex. 3001). We therefore construe the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is to originate or produce the signal.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Simply put, these arguments incorrectly conflate “signal” and “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal, rather than reciting that the controller generates an indicator. Ex. 1001, 8:1–6. And the Specification of the ’417 patent is replete with examples of the controller generating signals, including those that represent an indicator, for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65. And we find unavailing Patent Owner’s arguments that claim 1 requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 32. The language of claim 1 sets forth no such requirements. Ex. 1001, 7:31–8:14. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. PO Resp. 30–32. Rather, Patent Owner cites to the testimony of Dr. Valenti. Id. (citing Ex. 2023 ¶¶ 78–82). We find that this testimony lacks factual 7 The’417 patent describes “an indicator” as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier.” Ex. 1001, 4:8–10 (emphasis added). support and is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). In addition, because the Specification and file history do not explicitly provide a definition for the term “generate,” we look to a dictionary definition to illustrate its plain meaning for the parties. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted). A dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: [produce].” Merriam-webster.com (accessed April 8, 2022), https://www.merriam-webster.com/dictionary/generate (Ex. 3001). We therefore construe the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is to originate or produce the signal.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal, rather than reciting that the controller generates an indicator. Ex. 1001, 8:1–6. And the Specification of the ’417 patent is replete with examples of the controller generating signals, including those that represent an indicator, for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65. And we find unavailing Patent Owner’s arguments that claim 1 requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 32. The language of claim 1 sets forth no such requirements. Ex. 1001, 7:31–8:14. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. PO Resp. 30–32. Rather, Patent Owner cites to the testimony of Dr. Valenti. Id. (citing Ex. 2023 ¶¶ 78–82). We find that this testimony lacks factual 7 The’417 patent describes “an indicator” as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier.” Ex. 1001, 4:8–10 (emphasis added). support and is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). slip op. at 11

  Patent outcomesUS 10,748,417 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,748,417
• Motorola Mobility LLC v. Maxell, Ltd.Institution denied
  PTAB · Feb 2, 2023 · IPR2022-01287 · APJ Kevin C Trock · IPR · Institution

  The Board denied institution on claims 1–6 under § 325(d), finding substantially the same prior art had been presented and no material Office error was shown.

  RulingsInstitution decision

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

    “cumulative to at least Kijima and Tani, as well as Petitioner’s cumulative use of Sawanobori, Silver, and Teranishi, we find that part one of the Advanced Bionics framework is met. Other Board decisions have reached the same conclusion given circumstances similar to this case. See, e.g., Samsung Elecs. Co. v. Power2B, Inc., IPR2021-01190, Paper 11 at 15–17 (PTAB Jan. 6, 2022).” slip op. at 22

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

    “partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  Discretionary denial
  Patents in suitUS 8,059,177
• Google LLC v. Jawbone Innovations, LLCInstituted
  PTAB · Jan 3, 2023 · IPR2022-01124 · APJ Norman H Beamer · IPR · Institution

  The Board instituted IPR on claims 1–20 under § 103 over Kanamori, McCowan, and Elko, finding a reasonable likelihood that the challenged claims are unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Given that the median time to go to trial in the Google case indicates that a decision is unlikely to precede our Final Written Decision, we find that factor 2 weighs against exercising our discretion to deny institution.” slip op. at 14

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

    “c) Analysis In regard to Patent Owner’s arguments regarding the simulations relied on by Petitioner’s declarant, we note that Dr. Vipperman’s declaration includes an extensive explanation in a section of the declaration titled “Simulations of Virtual Microphone Responses” that explains in detail the equations used for each simulation and the values of the variables in each equation based on Kanamori, McCowan, and the knowledge of a person of ordinary skill in the art. See Reply 1 (citing Ex. 1003 ¶¶ 50–60). Patent Owner is free to further explore the basis of Dr. Vipperman’s simulations, but at this stage we are not persuaded to disregard them. Also, in response to Patent Owner’s argument that 1000 Hz is not a representative speech signal, we note that the ’357 patent uses that frequency in its examples of speech signals, which undercuts Patent Owner’s argument. Ex. 1001, 11:41, 12:40. We are also not persuaded at this stage that the fact that Kanamori does not discuss near-field applications is inconsistent with Petitioner’s articulation of why a person of ordinary skill in the art would have been motivated to modify Kanamori based on the teachings of McCowan. Other than as discussed above, Patent Owner does not specifically” slip op. at 34

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

    “Petitioner argues that this modification of Figure 17A is motivated because it would have been obvious to implement Kanamori’s microphone device for use with near-field speech, such as a headset. Pet. 24 (citing Vipperman Decl. ¶ 80). Petitioner argues that although Kanamori discloses a variety of “use environments” and “purposes” for its microphone devices, it does not explicitly factor in the distance of the speech source to the microphones because the amplitude differences at each microphone caused by amplitude decay from the distance traveled “are negligible for far-field sources.” Id. at 28 (citing Ex. 1005 ¶¶ 151, 182; Ex. 1006, 93; Vipperman Decl. ¶ 84). In addition, Petitioner’s declarant Dr. Vipperman explains that when both speech and noise originate in the far field, a person of ordinary skill in the art would understand that Kanamori’s microphone device would suppress noise from most directions well but may struggle to suppress noise that originated from the same direction as the speech source because it could not differentiate between speech and noise arriving from the same direction. Id. at 29 (citing Ex. 1005, 168; Vipperman Decl. ¶ 86). To accommodate a near-field application such as a headset, Petitioner argues that one of ordinary skill would have been motivated to modify Kanamori’s noise reference signal m2 to account for differences in amplitude decay caused by distance travelled, which “can be significant in the near-field case.” Pet. 30 (citing Ex. 1006, 93; Vipperman Decl. ¶ 88). Petitioner argues that one of ordinary skill would have been motivated to turn to the teachings of McCowan, because it provided the information on how to modify Kanamori’s noise reference signal m2 for use in a device such as a headset. Id. at 32 (citing Ex. 1006, 88; Vipperman Decl. ¶¶ 89– 90). This includes considering the fact that, for a near-field speech source, a spherical wavefront model is more accurate than a planar wavefront, in which case phase misalignment and amplitude scaling must be taken into account. Id. at 33 (citing Ex. 1006, 89–90, 93–94; Vipperman Decl. ¶ 91). As a result, according to Dr. Vipperman’s analysis, the above modification of Figure 17A would have been obvious. Pet. 34–37 (citing Vipperman Decl. ¶¶ 95–98). Petitioner’s declarant Dr. Vipperman used simulations to generate plotted responses of virtual microphones m1 and m2 when this modified version of Figure 17A is used, which plots are reproduced below.” slip op. at 29

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “c) Analysis In regard to Patent Owner’s arguments regarding the simulations relied on by Petitioner’s declarant, we note that Dr. Vipperman’s declaration includes an extensive explanation in a section of the declaration titled “Simulations of Virtual Microphone Responses” that explains in detail the equations used for each simulation and the values of the variables in each equation based on Kanamori, McCowan, and the knowledge of a person of ordinary skill in the art. See Reply 1 (citing Ex. 1003 ¶¶ 50–60). Patent Owner is free to further explore the basis of Dr. Vipperman’s simulations, but at this stage we are not persuaded to disregard them. Also, in response to Patent Owner’s argument that 1000 Hz is not a representative speech signal, we note that the ’357 patent uses that frequency in its examples of speech signals, which undercuts Patent Owner’s argument. Ex. 1001, 11:41, 12:40.” slip op. at 34

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,122,357
• Google LLC v. Nobots LLCInstituted
  PTAB · Dec 1, 2022 · IPR2022-00941 · APJ Josiah C Cocks · IPR · Institution

  The Board instituted IPR on claims 3–9, 11, and 13–20 on all petition grounds, finding a reasonable likelihood that Google would prevail on at least one challenged claim.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’885 “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. Prelim. Resp. 13. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

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

    “ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner contends that all claim terms should be given their “ordinary and customary meaning as understood by a [person of ordinary skill in the art] and the patent’s prosecution history.” Pet. 4. Petitioner further contends that such meaning for the following terms is made explicit in the ’885 patent: “model data,” “issued data,” and “interest data.” Id. at 5 (citing Ex. 1001, 2:59–3:51). Patent Owner does not propose a construction for any claim term, or even address the issue of claim construction in its Preliminary Response. For purposes of this Decision, we regard all terms as having their ordinary and customary meaning as would be understood by an ordinarily skilled artisan. We determine that it is unnecessary to expressly construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in controversy must be construed and only to the extent necessary to resolve the controversy); see also Nidec, 868 F.3d at 1017 (citing Vivid Techs in the context of an inter partes review).” slip op. at 9

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

    “We conclude, at this time, that Petitioner’s reasoning is sound, and amply supported by record evidence. We also conclude that the record readily conveys that a skilled artisan would have had a reasonable expectation of success in combining the teachings of O’Sullivan and Willner to arrive at the invention of the relevant claims of the ’885 patent. On the record before us, we are not satisfied that either Patent Owner’s arguments or the testimony of its declarant, Samuel Russ, Ph.D., suitably take into account what a person of ordinary skill in the art would have gleaned from the teachings of O’Sullivan and Willner. See, e.g., Prelim Resp. 16, 25–27; Ex. 2101 ¶¶ 85–88. In that respect, and on the current record, we credit Dr. Lopresti’s testimony (e.g., Ex. 1003 ¶¶ 78, 79) over the countervailing testimony of Dr. Russ, as, in our view, Dr. Lopresti’s testimony better reflects what a skilled artisan would have understood in combining the teachings of O’Sullivan and Willner. Furthermore, although, as Patent Owner notes, the Petition does not use the specific phrase “reasonable expectation of success” (see, e.g., Prelim. Resp. 15), that such an expectation is present flows intrinsically from Petitioner’s and Dr. Lopresti’s explanation underscoring the proposed ground.” slip op. at 18

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Indeed, record evidence, which neither Patent Owner or Dr. Russ addresses, clearly suggests a recognized harmony in the field in distinguishing between two humans and distinguishing between a human and a computer. In that respect, O’Connell teaches, for instance, the following as a part of its disclosed fraud detection procedures: As discussed previously, the fraud detection results may include an indication of the likelihood that the person (or entity) acting as the user of the current session is in fact the actual user or is actually a different user or automated program instead engaging in fraudulent behavior, The algorithms used by the fraud detection module 116 and its sub-modules to determine the likelihood of fraudulent behavior may include both standard or general algorithms as well as algorithms specified by an implementer of the system (i.e., e-commerce application 118 operators) based on their own needs or observations of what is typical or fraudulent for their site. The flexibility of algorithms also includes whether to attempt to detect fraudulent behavior by both humans and automated programs to only attempt to detect one of the two. The fraud detection result algorithms may thus allow for flexible weighting and/or consideration of different or multiple factors. See Ex. 1007 ¶ 46. Because record prior art evidence clearly conveys recognition of the use of programming components and flexible algorithms to differentiate between different humans or between a human and an automated program, we do not agree with Patent Owner that there is any meaningful difference, much less a “fundamental difference,” between such differentiation in the relevant field. On this record, we find Patent Owner’s assessment to the contrary to be inadequately explained and supported, and we do not conclude that Tanzer is non-analogous art.” slip op. at 23

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,423,885

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.