- Unified Patent Inc. v. Plectrum LLCRehearing deniedPTAB · Dec 12, 2017 · IPR2017-01430 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution for claims 1–6, 12–14, and 21–24 because the petition did not show a reasonable likelihood of success on obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise 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. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“The Request for Rehearing repeatedly refers to alleged mischaracterizations in Patent Owner’s assertions. However, as discussed in the Decision, it is the failure of the Petition to demonstrate a reasonable likelihood of prevailing on its assertion that the challenged claims are obvious—and not the Patent Owner’s assertions—that was determinative. See Dec. 14–16. We are aware, as the Petitioner argues (see Req. Reh’g 4–5), that there is no requirement under § 103 that claim terms be described verbatim in a prior art reference. As discussed in the Decision, however, the issue of an explicit disclosure of the term “row” in Cheriton was not in itself determinative. See Dec. 14–16. The Decision states that institution was denied because the Petition failed demonstrate a reasonable likelihood of prevailing on the obviousness challenge based on lack of adequate support in Cheriton for the alleged teaching of a comparison of values associated with a row in a cache, as well as the lack of support for the expert’s view that it would have been obvious to one of skill in the art to compare the cache value by row. Id. The disclosures in Cheriton that Petitioner relied upon fail to disclose or suggest the use of rows in caches. Id. at 14–15. And, Petitioner expert’s testimony regarding the knowledge of one of skill in the art concerning row comparisons in caches is conclusory and, therefore, deserved little to no credit. Id. at 15; see Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). Petitioner’s argument that Fujishima’s disclosure of 4-way set associative cache organized by rows, which corroborates its expert’s testimony, misses the point. Although the use of rows in 4-way set associative caches may have been known, the Petition fails to provide sufficient support to identify why one of skill in the art would view Cheriton as teaching or suggesting the specific limitations associated with the use of rows.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“requirement under § 103 that claim terms be described verbatim in a prior art reference. As discussed in the Decision, however, the issue of an explicit disclosure of the term “row” in Cheriton was not in itself determinative. See Dec. 14–16. The Decision states that institution was denied because the Petition failed demonstrate a reasonable likelihood of prevailing on the obviousness challenge based on lack of adequate support in Cheriton for the alleged teaching of a comparison of values associated with a row in a cache, as well as the lack of support for the expert’s view that it would have been obvious to one of skill in the art to compare the cache value by row. Id. The disclosures in Cheriton that Petitioner relied upon fail to disclose or suggest the use of rows in caches. Id. at 14–15. And, Petitioner expert’s testimony regarding the knowledge of one of skill in the art concerning row comparisons in caches is conclusory and, therefore, deserved little to no credit. Id. at 15; see Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). Petitioner’s argument that Fujishima’s disclosure of 4-way set associative cache organized by rows, which corroborates its expert’s testimony, misses the point. Although the use of rows in 4-way set associative caches may have been known, the Petition fails to provide sufficient support to identify why one of skill in the art would view Cheriton as teaching or suggesting the specific limitations associated with the use of rows.” slip op. at 3
NonePatents in suitUS 5,978,951 - PTAB · Dec 1, 2017 · IPR2017-01291 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied rehearing; inter partes review remains instituted for claims 1 and 3 and denied for claims 7, 9, 13, and 15.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). In our Decision, we disagreed with Petitioner’s proposed construction of “means for maintaining” as encompassing the structure of “a database and equivalents thereof.” Dec. 6. We determined that Petitioner’s argument and evidence did not show that the database was clearly linked to the recited function. Id. Instead, we were persuaded by Patent Owner’s showing that the Specification of the ’433 patent linked the function of “maintaining license management policy information for a plurality of application programs at a license management server” to algorithms for maintaining license management policy information. Id. at 7−8. Petitioner’s Request does not show a matter that we misapprehended or overlooked. For instance, Petitioner argues that “the Board’s construction appears to have overlooked or misapprehended the disclosure of the ’766 patent, as the specification does not disclose—and the Board’s construction does not identify—any algorithmic structure.” Req. Reh’g 3. Further, Petitioner argues that the “database and equivalents thereof” is the only structure that is clearly linked to the function and that does not render the claims indefinite. Req. Reh’g. 4. These arguments amount to expressing mere dissatisfaction with the Board’s decision, not identifying a matter that we overlooked or misapprehended. As we noted in the Decision, Petitioner did not proffer any argument as to how “a database and equivalents thereof” is linked to the function of “maintaining” the license management policy at the server. Dec. 6. The argument presented in Rehearing does not point out any argument or evidence included in the Petition that we did not consider or that we misapprehended. The Rehearing merely restates what we already found lacking: that the “database” is the linked structure.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). In our Decision, we disagreed with Petitioner’s proposed construction of “means for maintaining” as encompassing the structure of “a database and equivalents thereof.” Dec. 6. We determined that Petitioner’s argument and evidence did not show that the database was clearly linked to the recited function. Id. Instead, we were persuaded by Patent Owner’s showing that the Specification of the ’433 patent linked the function of “maintaining license management policy information for a plurality of application programs at a license management server” to algorithms for maintaining license management policy information. Id. at 7−8.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“argument, the claim term “means for maintaining” allegedly would lack proper disclosure in the ’733 patent Specification, rendering us powerless to review the denied claims. Petitioner’s argument is that “the ‘766 Patent provides no disclosure of an algorithm, instructions, or steps for setting license management policy information[,which] renders the Board’s construction of the ‘means for maintaining’ limitation indefinite.” Req. Reh’g 9−10. In the end, given that we have not been persuaded by Petitioner’s showing that the “database” is the linked structure, a finding of no “algorithm” would result in denial of inter partes review of claim 7, 9, 13, and 15 based on our inability to construe the claim. In summary, Petitioner has not persuaded us that we misapprehended or overlooked arguments or evidence that a “database and equivalents thereof” is clearly linked to the function recited in the “means for maintaining” limitation. Further, Petitioner has not persuaded us that we misapprehended or overlooked any contention that the ’766 patent does not disclose an “algorithm” for the “means for maintaining,” as such contention was not presented. Consequently, Petitioner’s Request for Rehearing is denied.” slip op. at 4
Claim constructionPatents in suitUS 6,728,766 - Bitdefender Inc. v. Uniloc USA, Inc.Rehearing deniedPTAB · Nov 16, 2017 · IPR2017-01315 · APJ Jessica C Kaiser · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution for claims 15–17, 22–24, 30, and 35–37 based on the means-plus-function installing limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD 37 C.F.R § 42.71(d) provides: “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” In addition, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“We did not overlook any arguments in the Petition. Specifically, the Petition cited two office actions as showing “[i]nstalling was interpreted during the prosecution of the ‘466 patent, under the BRI standard, as storing, an interpretation that was not contested by the patent applicant.” Pet. 18 (citing Ex. 1002 (File History) Office Action mailed 08/13/2001 at 2, Office Action mailed 2/22/2002 at 2). In each of those office actions, the Examiner mapped a reference’s teachings to the claim language in an obviousness rejection and applied “installing (storing)” as part of that rejection. Ex. 1002 (File History) Office Action mailed Aug. 13, 2001, at 2; Office Action mailed Feb. 22, 2002, at 2. In these Office Actions, the Examiner did not engage in detailed claim construction analysis of “installing” or determine that such “installing” was a basic function of a microprocessor. Thus citing to these Office Actions in the Petition did not provide evidence or factuallysupported explanation to support Petitioner’s argument that “installing” in the context of the ’466 patent claims is a basic function of a microprocessor.1 1 We note that in discussing prior systems, the ’466 patent suggests that installing encompasses more than mere storing of data: “To the extent software distribution capabilities from a central location are provided, such as with the TME 10TM system, they typically require various steps in the installation process to occur at different locations rather than allowing the entire process to be controlled from a single point for an entire managed network environment.” Ex. 1001, 3:31–36 (emphasis added). As shown in the quotation above, the ’466 patent contemplates that installation is a process requiring multiple steps.” slip op. at 4
Claim constructionPatents in suitUS 6,510,466 - Juniper Networks, Inc. / Brocade Communications Systems, Inc. et al. v. Mobile Telecommunications Technologies, LLCAdverse judgmentPTAB · Oct 31, 2017 · IPR2017-00640 · APJ Meredith C Petravick · IPR · Adverse judgment
Claims 1–5 were cancelled and adverse judgment was entered against Patent Owner after it requested cancellation of all claims at trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Patent Owner requests cancellation of claims 1–5 of U.S. Patent No. 5,659,891 (“the ’891 patent) and entry of adverse judgment against it. Paper 20. Claims 1–5 are all claims of the ’891 patent and all claims at trial. We determine that entry of adverse judgment against Patent Owner is appropriate. Accordingly, it is: ORDERED that claims 1–5 of U.S. Patent No. 5,659,891 are cancelled; ORDERED that adverse judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner; and FURTHER ORDERED that this Order constitutes a final written decision under 35 U.S.C. § 318(a).” slip op. at 1
NonePatents in suitUS 5,659,891 - EMC Corporation / EMC International US. Holdings, Inc. et al. v. Clouding Corp.All claims unpatentablePTAB · Oct 17, 2017 · IPR2014-01309 · APJ Rama G Elluru · IPR · Remand
Claims 6, 8, and 14 are unpatentable because Barnett alone, or Barnett combined with Allen ’664, teaches or suggests saving a state of the computer system.
RulingsRemand decision- RemandOther
“On May 1, 2017, the Federal Circuit issued a decision, vacating and remanding our Final Decision. EMC, 686 F. Appx. 858. The Federal Circuit determined we erred, and in particular determined that Petitioner properly argued, and Patent Owner did not dispute, that the combination of Barnett and Allen ’664 teaches the condition “when a likely solution [to a problem in the computer system] cannot be determined.” Id. at 860–62. 1 U.S. Patent 5,664,093 (Ex. 1005). 2 U.S. Patent 5,581,664 (Ex. 1006). The Federal Circuit further determined that Patent Owner admitted that there would have been motivation to combine Barnett and Allen ’664. Id. at 863. Of relevance to this decision, the Federal Circuit determined that Patent Owner’s only argument to the Board in support of nonobviousness was that Petitioner’s proposed combination of Barnett and Allen ’664 would not yield a solution that involves “saving a state of a computer system,” as the second half of claim 6, step 5 requires. Id. Because there is no claim of secondary considerations, the Federal Circuit remanded for us to answer only one question: “whether Barnett and Allen, considered in combination, would [have] suggest[ed] to a person of ordinary skill in the art ‘saving a state of the computer system.’” Id. The mandate issued on June 7, 2017.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The Federal Circuit further determined that Patent Owner admitted that there would have been motivation to combine Barnett and Allen ’664. Id. at 863. Of relevance to this decision, the Federal Circuit determined that Patent Owner’s only argument to the Board in support of nonobviousness was that Petitioner’s proposed combination of Barnett and Allen ’664 would not yield a solution that involves “saving a state of a computer system,” as the second half of claim 6, step 5 requires. Id. Because there is no claim of secondary considerations, the Federal Circuit remanded for us to answer only one question: “whether Barnett and Allen, considered in combination, would [have] suggest[ed] to a person of ordinary skill in the art ‘saving a state of the computer system.’” Id. The mandate issued on June 7, 2017.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“determine that Petitioner has shown by a preponderance of the evidence that the combination of Allen ’664 teaches and Barnett teaches the limitation at issue. Patent Owner’s argument is not persuasive because it is based improperly on what Allen ’664 teaches individually, and not on the teachings of the combined references. As the Federal Circuit has explained, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). In the combined system of Barnett and Allen ’664 proposed by Petitioner, a case template would be created, “when there is a fault in the computer system, to search for a case whose symptoms (i.e., the state of the computer system) match the fault.” Pet. Reply 12 (citing Ex.1024 ¶¶ 22–23, 25; Ex. 1006, 8:31–40). As Petitioner reasons, Allen ’664 teaches “saving of the case template of a problem,” and thus, the case template would comprise facts about the state of the faulty computer system. Id. at 12–13 (citation omitted) (emphasis added); see id. at 13 (Petitioner argues that a skilled artisan would understand that “the case retrieval step in the standard case-based reasoning cycle entails comparing a digital model of the presenting situation with the digital model of each of a collection of cases, and determining if there is a match.”). Petitioner avers, “[t]o match a problem to the cases in the case base [in the combined Barnett and Allen ’664 system], the case template may be constructed for the problem with attribute-value pairs which correspond to notable parameters of the problem.” Pet. Reply 13 (citing Ex. 1006, 5:2–6). Allen ’664 discloses that “[e]ach case 105 may comprise a set of attributes 301, each of which has a value 302. Attributes 301 and values 302 are typically manipulated as an attribute-value pair 303.” Ex. 1006, 4:32–36. Dr. Sacerdoti states that a skilled artisan “would understand that the attributes whose values describe a case template are the same attributes that describe a case that is stored in the case database.” Ex. 1024 ¶ 27. Allen ’664 further discloses that “[t]o match a problem 311 to the cases 105 in the case base 104, a case template 312 may be constructed for the problem 311 with attribute-value pairs 303[,] which correspond to notable parameters of the problem 311.” Ex. 1006, 5:2–6. Thus, we agree with Petitioner that when applying the teachings of Allen ’664 to Barnett, which teaches a fault management for any computer system, the case template includes the “information about the state of the faulty computer system.” See id. at 12; Ex. 1024 ¶¶ 22–26. Furthermore, Allen ’664 teaches saving the “case template” of a problem, as a “new case,” for which it cannot find a solution. Specifically, Allen ’664 teaches that: [T]he inference engine 111 may determine that there is no case 105 which is a good match for the case template 312. The inference engine 111 may create a new case 105 which partly or fully copies the case template 312 and may ask the user 119 (by means of the user interface 118) what the prescribed action 309 for the case 105 should be. The inference engine 111 may add the new case 105 to the case base 104 and proceed to another problem 311 with an augmented case base 104. Ex. 1006, 8:22–30. Thus, we further agree that in the combined Barnett and Allen ’664 system, when Allen ’664’s case template is saved as a “new case,” the “state of the computer system” would also be saved. See Pet. Reply 13–14. Accordingly, we further find that the combination of Barnett and Allen ’664 teaches or suggests “saving a state of the computer system.”” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ex. 1005, 6:66–7:6. According to Dr. Sacerdoti, “it would be clear to a person of ordinary skill in the art that in order for the programmer or user to understand how and when [] additional rules should be added, a state of the computer system should be saved when the AI engine fails to determine a likely solution, so that the programmer or user can later determine the context in which the failure took place.” Ex. 1007 ¶ 75. Dr. Sacerdoti further states that “[because] actions such as this are implemented via rules in a rule-based system, it would be natural and obvious to a skilled artisan to add a rule to the rule base that states that when a likely solution cannot be found, such a state of the computer system should be saved.” Id. With regard to saving a state of the computer system, Dr. Sacerdoti, also opines as follows: It is known in the art that an effective means of enabling the debugging and improvement of virtually any software program is to save the state of the computer system at the point when a failure occurs. If an embodiment of the Barnett patent were not to have such a capability, it would be obvious to a skilled artisan to include this capability when implementing the invention disclosed in Barnett. Id. ¶ 74. We are persuaded by Dr. Sacerdoti’s testimony and determine that Petitioner has demonstrated that it was known that an effective means of enabling the debugging and improvement of almost any software program was to save the state of the computer system when a fault (i.e., failure) occurred, and a skilled artisan would have applied this teaching to Barnett’s fault management system. Accordingly, we find that Barnett alone teaches or suggests “saving a state of the computer system.”” slip op. at 9
Patent outcomesUS 5,944,839 unpatentable§ 103 obviousnessPatents in suitUS 5,944,839 - Arris Group, Inc. / Aruba Networks, Inc. et al. v. Mobile Telecommunications Technologies, LLCAll claims unpatentablePTAB · Sep 20, 2017 · IPR2016-00766 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–5 are unpatentable: claims 1–5 are anticipated by Petrovic, and claim 5 is also obvious over Petrovic, Raith, and Alakija.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The asymmetrical condition recites “the band edge of the mask defining the channel,” referring to the “single mask-defined, bandlimited channel” also recited by the claims. A channel is a range or band of frequencies. See Pet. 5–6; see also Ex. 2001 ¶ 49; Ex. 2011 ¶ 48 (testimony of Patent Owner’s declarant Dr. Kesan that “[t]he word ‘band’ of ‘band edge’ refers to a frequency band or range.”). The language of the claims, themselves, thus indicates that “the band edge” is the edge of the mask that defines the range or band of frequencies of the channel. For example, in Annotation B of Figure 3B the left vertical line 31a and right vertical line 31b are the edges of the mask that define the range or band of frequencies of the channel. In other words, the entire range or band of frequencies of the channel are between left vertical line 31a and right vertical line 31b.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Third, according to Dr. Kesan, example masks described in the specification of the ’891 and other extrinsic evidence support Patent Owner’s proposed construction. PO Resp. 21–33 (citing Ex. 2011). Dr. Kesan’s testimony is unpersuasive because it is not adequately supported by the cited evidence. See Pet Reply. 6–13. For example, Dr. Kesan testifies that “FCC emission masks can have multiple band edges,” meaning “all points along the edge of the mask that limits the frequency band” (Ex. 2011 ¶¶ 48–51 (citing id. at Appendix C). However, the material cited by Dr. Kesan does not mention the term “the band edges.” See id. at Appendix C. As another example, Dr. Kesan testifies that drawing the mask depicted in Figure 4 of the ’891 patent on Figure 5A of the ’891 patent proves that “not choosing the nearest band edges of the mask of Figure 4 would cause the two carriers of Figure 5A to exceed the diagonal band edges of the masks when the carriers are modulated.” PO Resp. 28–30 (citing Ex. 2011 ¶¶ 71– 76). Dr. Kesan, however, does not sufficiently explain why his placement of the Figure 4 mask on Figure 5A is the correct placement. See generally Ex. 2011 ¶¶ 71–76; see also Ex. 1018 ¶¶ 20–25 (testimony of Dr. Kakaes indicating the Dr. Kesan’s placement is incorrect). Further, Patent Owner’s argument that a POSITA would construe “the band edge” according to its proposed construction is unpersuasive. See generally PO Resp. 21–30. Patent Owner relies upon the testimony of Dr. Kesan for support. Id. We give Dr. Kesan’s testimony little weight because it is not credible due to inconsistency in his testimony. For example, in its Preliminary Response, Patent Owner points to an annotation of Figure 3B of the ’891 patent by Dr. Kesan in related district court litigation. See Prelim. Resp. 27 (reproducing a figure from Ex. 20106, 5). Annotated Figure 3B from the related district court litigation is reproduced below.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Upon review of Petitioner’s evidence and analysis, which we agree with and hereby adopt, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. Pet. 13–14, 23–26; Pet. Reply 16–28. In particular, we are persuaded by Dr. Kakaes’s testimony that Petrovic meets the asymmetric condition. Dr. Kakaes testifies that in Petrovic: the frequency difference between the center frequency of the outer most of the carriers and the band edge of the mask defining said channel (which is greater than 7.5 kHz) is more than half the frequency difference between the center frequencies of each adjacent carrier (which is 5 kHz), as required by claim 1. Ex. 1003 ¶ 22. Dr. Kakaes’s testimony is based upon Petrovic’s description of doubling the 25 kHz bandwidth to 50 kHz to provide “a 35 kHz pass band in the middle of the channel and 7.5 kHz guard bands on each side,” with eight subcarriers spaced 5 kHz apart.” Ex. 1013 1. Further, we are persuaded by Petitioner that Petrovic describes transmitting the carriers from the same location. Petrovic states that “[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset of the 8 frequencies. Outputs of the subtransmitters are combined and sent to a common antenna.” Id. at 2; see also Ex. 1003 ¶¶ 25, 26. We are not persuaded by Patent Owner that Petrovic fails to anticipate claims 1, 3, and 5 because Patent Owner’s arguments are not commensurate with the scope of the claims. See PO Resp. 41–52. First, Patent Owner contends that Petrovic does not meet the asymmetric condition when “the band edge of the mask” is construed, according to Patent Owner’s proposed construction, as “the nearest band edge of the mask,” where “the nearest band edge” is defined as “the band edge that is nearest to the center frequency of each outer most carrier at the highest power level of each outer most carrier.” Id. at 42–50. As discussed above, however, we determine that Patent Owner’s proposed construction of “the band edge of the mask” is not the correct construction. Second, Patent Owner argues that Petrovic does not describe transmitting the carriers from the same location because it does not describes transmitting multiple carriers from the same location at the same time. PO Resp. 51–52. As also discussed above, claims 1, 3, and 5 do not require the carriers to be transmitted at the same time. Claims 1, 3, and 5 do not recite any temporal requirement, i.e., that all the carriers must be transmitted at the same time, only that the carriers must be transmitted from the same location. Patent Owner’s arguments, thus, are not commensurate with the scope of the claims. After consideration of both Petitioner’s and Patent Owner’s argument and evidence, Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“In addition, we are persuaded by Petitioner that the combination of Petrovic, Raith, and Alakija teaches the claimed co-locating. Petrovic describes an experiment in which two transmitters are located seven miles apart and synchronized to provide a simulcast overlap area. Ex. 1013, 2. Raith describes a similar cellular digital mobile radio system with plural base station transmitters. Pet. 33 (citing Ex. 1014, Title). Raith describes diving a geographical area into multiple cells and providing two transmitters, which simultaneously transmit the same message information to mobile stations, in each cell. Ex. 1014, Abstract, 6:1–3; Ex. 1003 ¶ 30. For adjacent cells, Raith teaches co-locating groups of three base transmitters to transmit information to contiguous cells. See Ex. 1014, 6:11–15; see also Pet. 33 (reproducing Figure 1 of Raith with annotations to illustrate the co-located transmitters). Dr. Kakaes testifies that a POSITA would have been motivated to expand the experimental paging system configuration described in Petrovic to include multiple adjacent paging cells/regions similar to the structure illustrated in Figure 1 of Raith . . . in order to provide messaging services to a larger geographic area and a larger number of mobile devices. Ex. 1003 ¶¶ 31–32; Ex. 1018 ¶ 73. Alakija describes a “mobile communications base station antenna, which utilizes a cylindrical array design.” Ex. 1015, Abstract. Alakija describes that, “[b]y combining a number of feed networks into a single antenna system, an antenna with multiple independently steerable beams is achieved.” Ex. 1015, 1–2; see also id. at Fig. 6. Dr. Kakaes testifies that a POSITA would have been motivated to utilize a single cylindrical antenna structure to emit the output signals of the three co-located transmitters described by Petrovic in view of Raith instead of three separate antennas, because a single antenna structure “[c]an be used to realize advantages such as...hardware savings, low manufacturing costs, [and] low installation costs,” as recognized by Alakija. Ex. 1003 ¶ 36 (quoting Ex. 1015, 3); Ex. 1018 ¶ 73.” slip op. at 27
Patent outcomesUS 5,659,891 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 5,659,891 - Arris Group, Inc. / Aruba Networks, Inc. et al. v. Mobile Telecommunications Technologies, LLCAll claims unpatentablePTAB · Sep 20, 2017 · IPR2016-00768 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–5 are unpatentable: claims 1–5 as anticipated by Petrovic, and claim 5 also as obvious over Petrovic, Raith, and Alakija.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The asymmetrical condition recites “the band edge of the mask defining the channel,” referring to the “single mask-defined, bandlimited channel” also recited by the claims. A channel is a range or band of frequencies. See Pet. 5–6; see also Ex. 2001 ¶ 49; Ex. 2011 ¶ 48 (testimony of Patent Owner’s declarant Dr. Kesan that “[t]he word ‘band’ of ‘band edge’ refers to a frequency band or range.”). The language of the claims, themselves, thus indicates that “the band edge” is the edge of the mask that defines the range or band of frequencies of the channel. For example, in Annotation B of Figure 3B the left vertical line 31a and right vertical line 31b are the edges of the mask that define the range or band of frequencies of the channel. In other words, the entire range or band of frequencies of the channel are between left vertical line 31a and right vertical line 31b.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“with and hereby adopt, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. Pet. 13–14, 23–26; Pet. Reply 16–28. In particular, we are persuaded by Dr. Kakaes’s testimony that Petrovic meets the asymmetric condition. Dr. Kakaes testifies that in Petrovic: the frequency difference between the center frequency of the outer most of the carriers and the band edge of the mask defining said channel (which is greater than 7.5 kHz) is more than half the frequency difference between the center frequencies of each adjacent carrier (which is 5 kHz), as required by claim 1. Ex. 1003 ¶ 22. Dr. Kakaes’s testimony is based upon Petrovic’s description of doubling the 25 kHz bandwidth to 50 kHz to provide “a 35 kHz pass band in the middle of the channel and 7.5 kHz guard bands on each side,” with eight subcarriers spaced 5 kHz apart.” Ex. 1013 1. Further, we are persuaded by Petitioner that Petrovic describes transmitting the carriers from the same location. Petrovic states that “[e]ach transmitter has four subtransmitters capable of 4-FSK over a subset of the 8 frequencies. Outputs of the subtransmitters are combined and sent to a common antenna.” Id. at 2; see also Ex. 1003 ¶¶ 25, 26. We are not persuaded by Patent Owner that Petrovic fails to anticipate claims 1, 3, and 5 because Patent Owner’s arguments are not commensurate with the scope of the claims. See PO Resp. 41–52. First, Patent Owner contends that Petrovic does not meet the asymmetric condition when “the band edge of the mask” is construed, according to Patent Owner’s proposed construction, as “the nearest band edge of the mask,” where “the nearest band edge” is defined as “the band edge that is nearest to the center frequency of each outer most carrier at the highest power level of each outer most carrier.” Id. at 42–50. As discussed above, however, we determine that Patent Owner’s proposed construction of “the band edge of the mask” is not the correct construction. Second, Patent Owner argues that Petrovic does not describe transmitting the carriers from the same location because it does not describes transmitting multiple carriers from the same location at the same time. PO Resp. 51–52. As also discussed above, claims 1, 3, and 5 do not require the carriers to be transmitted at the same time. Claims 1, 3, and 5 do not recite any temporal requirement, i.e., that all the carriers must be transmitted at the same time, only that the carriers must be transmitted from the same location. Patent Owner’s arguments, thus, are not commensurate with the scope of the claims. After consideration of both Petitioner’s and Patent Owner’s argument and evidence, Petitioner has shown by a preponderance of the evidence that claims 1, 3, and 5 are anticipated by Petrovic. 3. Dependent claims 2 and 4 With respect to the additional limitations of dependent claims 2 and 4, Petitioner proffers annotated versions of Petrovic’s Figure 1 (Pet. 22–23) to show that adjacent carriers (claim 2) and subchannels (claim 4) “overlap with each other,” as recited in these claims. Id. at 21–23, 27. Figure 6 and Figure 7, the annotated versions of Petrovic’s Figure 1, are reproduced sideby-side below. Figure 6 depicts Petrovic’s Figure 1 with annotations to show transmission levels if subchannels 1–8 are all on. Pet. 21; Ex. 1003 ¶ 23. Figure 7 depicts a portion of Petrovic’s Figure 1 around carrier 1 and carrier 2 and has been annotated to highlight the overlap. According to Patent Owner, to meet claims 2 and 4, Petrovic must “teach overlap of the carriers that could be recognized by a receiver as the carrier except for near-far interference.” PO Resp. 53–59. Patent Owner argues that Petrovic does not teach overlapping carriers, because Petrovic’s overlap is caused by near-far interference and is at a very low power. PO Resp. 53–56 (citing Ex. 2011 ¶¶ 112, 115–120). Patent Owner argues that overlap must be overlap of those portions of a carrier that could be recognized by a receiver as the carrier except for near-far interference. Id. at 54.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In addition, we are persuaded by Petitioner that the combination of Petrovic, Raith, and Alakija teaches the claimed co-locating. Petrovic describes an experiment in which two transmitters are located seven miles apart and synchronized to provide a simulcast overlap area. Ex. 1013, 2. Raith describes a similar cellular digital mobile radio system with plural base station transmitters. Pet. 33 (citing Ex. 1014, Title). Raith describes diving a geographical area into multiple cells and providing two transmitters, which simultaneously transmit the same message information to mobile stations, in each cell. Ex. 1014, Abstract, 6:1–3; Ex. 1003 ¶ 30. For adjacent cells, Raith teaches co-locating groups of three base transmitters to transmit information to contiguous cells. See Ex. 1014, 6:11–15; see also Pet. 33 (reproducing Figure 1 of Raith with annotations to illustrate the co-located transmitters). Dr. Kakaes testifies that a POSITA would have been motivated to expand the experimental paging system configuration described in Petrovic to include multiple adjacent paging cells/regions similar to the structure illustrated in Figure 1 of Raith . . . in order to provide messaging services to a larger geographic area and a larger number of mobile devices. Ex. 1003 ¶¶ 31–32; Ex. 1018 ¶ 73. Alakija describes a “mobile communications base station antenna, which utilizes a cylindrical array design.” Ex. 1015, Abstract. Alakija describes that, “[b]y combining a number of feed networks into a single antenna system, an antenna with multiple independently steerable beams is achieved.” Ex. 1015, 1–2; see also id. at Fig. 6. Dr. Kakaes testifies that a POSITA would have been motivated to utilize a single cylindrical antenna structure to emit the output signals of the three co-located transmitters described by Petrovic in view of Raith instead of three separate antennas, because a single antenna structure “[c]an be used to realize advantages such as...hardware savings, low manufacturing costs, [and] low installation costs,” as recognized by Alakija. Ex. 1003 ¶ 36 (quoting Ex. 1015, 3); Ex. 1018 ¶ 73.” slip op. at 27
Patent outcomesUS 5,659,891 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 5,659,891 - Zepp Labs, Inc. v. Blast Motion, Inc.No claims unpatentablePTAB · Aug 14, 2017 · IPR2016-00675 · APJ Rama G Elluru · IPR · Final written decision
Claims 1, 7, 13, 14, 19–22, and 32 were not shown unpatentable because the petition did not establish the claimed remote database.
RulingsFinal written decision- BurdenNot shown unpatentable
“We determine that Petitioner’s evidence and argument are insufficient to demonstrate that Mahajan teaches a “remote database.” As an initial matter, Petitioner does not explain sufficiently how Mahajan’s teaching of storing information informs a skilled artisan that that storage is a “database,” as required by claim 1. See Pet. 27; Pet. Reply 14–15. Petitioner also does not adequately explain why a storage medium, such as a hard drive or a server, sufficiently equates with a “database.” Id. Indeed, in response to the question—“[s]o Mahajan’s disclosure of a remote server is not the same thing as disclosing a remote database, correct?”—Dr. Nesbitt testified, “[n]ot exclusively.” Ex. 2011, 123:8–12; see id. at 120:19–21. Dr. Nesbitt further testified that, [a] server would be more of a hardware device, where a database would be more of a software. It would be a place where the data is actually stored within a remote computer or remote server. So it’s the hardware versus what’s in the hardware is the distinction” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Although we acknowledge that Mahajan discloses that its system can be used in conjunction with database systems generally, Petitioner does not explain sufficiently why a skilled artisan would have modified Mahajan to include a “remote database.” See Pet. 27; Pet. Reply 14–15; Ex. 1003 ¶ 165 (emphasis added). Similarly, Petitioner also does not explain sufficiently why a skilled artisan would have modified the disclosed remote “server” of Mahajan to include a “database.” See id.” slip op. at 14
Patent outcomesUS 8,941,723 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 8,941,723 - Zepp Labs, Inc. v. Blast Motion, Inc.Some claims unpatentablePTAB · Aug 14, 2017 · IPR2016-00676 · APJ Rama G Elluru · IPR · Final written decision
Claims 1, 7–9, and 12–15 were held unpatentable as obvious; claims 5 and 6 were not shown unpatentable because the evidence did not establish the claimed database limitation.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“to the ’855 patent is “a person with a Bachelor’s degree in mechanical or electrical engineering or a related field with two to three years of experience working with data acquisition systems.” Pet. 9 (citing Ex. 1003 ¶ 19). According to Petitioner, “[w]ith more education, such as additional graduate degrees and/or study, less experience is needed to attain the ordinary level of skill.” Id.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“The Supreme Court has made clear that “[t]hroughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.” KSR, 550 U.S. at 415. In direct contrast, Patent Owner’s assertions of law, by use of the terms “unnecessary” and “unneeded,” harkens back to the rigid TSM test, which the Supreme Court held explicitly as being incorrect. The Supreme Court further opined as follows: Neither the enactment of § 103 nor the analysis in [Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)] disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Id. at 415–416. Contrary to Patent Owner’s assertions of law, there is no use of terms similar to “unnecessary,” “unneeded,” or even “goals” in the obviousness analysis. Instead, the Supreme Court’s inquiry is straightforward: (1) if the elements are found in the prior art, and (2) if the combination results in “no change in respective function” and “does no more than yield predictable results,” i.e., a predictable reason to combine for a predictable advantage, then the resulting combination is “likely to be obvious.” Id.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner asserts further that “Mahajan teaches such a person of skill in the art not to include a memory, as its real-time data transmission system is described as preferable to a memory-based system such as Lee’s.” PO Resp. 28 (emphasis omitted). We disagree. While Mahajan does disclose such a general preference in one embodiment, we find that it, at the same time, expressly acknowledges the possibility of the alternative. Ex. 1005 ¶ 42 (“The hardware device need not have an on-board memory for storing the orientation and position information.”). See, e.g., Merck & Co. v. Biocraft Labs, 874 F.2d 804, 807 (Fed. Cir. 1989) (non-preferred embodiments can be the basis for an obviousness analysis). Specifically, we find that the words “need not” actually conveys the following meaning in the context of the Mahajan: “may, but need not.” This understanding is further underscored by the fact that Mahajan expressly incorporates-by-reference Lee, and, in describing Lee, asserts the following: “A distinctive feature of this instrumented golf club is the use of a data storage memory device located within the golf club that eliminates the need for radio transmission hardware.” Ex. 1005 ¶ 6. Indeed, not only does Mahajan acknowledge that an alternative of adding memory was known, it even identifies an advantage for that alternative. The argument that such an advantage may be allegedly contrary to the goals of Mahajan is unpersuasive, for the reasons set forth above. Finally, insofar as Patent Owner is asserting that Mahajan teaches away from the proffered modification, we disagree for the same reasons. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (a reference that “merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into” the claimed invention does not teach away).” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We determine that Petitioner’s evidence and argument is insufficient to demonstrate that Mahajan teaches the limitation of claim 5. As an initial matter, Petitioner does not explain sufficiently how Mahajan’s teaching of storing information informs a skilled artisan that that storage is a “database,” as required by claim 5. See Pet. 32–33; Pet. Reply 14–15. Petitioner does not adequately explain why a storage medium, such a hard drive or a server, sufficiently equates with a “database.” Indeed, in response to the question— “[s]o Mahajan's disclosure of a remote server is not the same thing as disclosing a remote database, correct?”—Dr. Nesbitt testified, “[n]ot exclusively.” Ex. 2011, 123:8–12; see id. at 120:19–21. Dr. Nesbitt further testified that, [a] server would be more of a hardware device, where a database would be more of a software. It would be a place where the data is actually stored within a remote computer or remote server. So it’s the hardware versus what’s in the hardware is the distinction between the two. Id. at 122:17–23; see Ex. 2001 ¶ 63 (Patent Owner’s expert opining that “[d]isclosure of sending data to remote server for storage, without more, is insufficient to convey to a person of ordinary skill in the art that the server contains a database.”). The ’855 patent also distinguishes between a “remote database” and a “remote server.” See Ex. 1001, 8:33–34 57 (“[t]he data uploaded to the Internet, i.e., a remote database or remote server or memory remote to the system”); id. at 26:48–51. At oral argument,” slip op. at 30
Patent outcomesUS 8,905,855 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,905,855 - Zepp Labs, Inc. v. Blast Motion, Inc.All claims unpatentablePTAB · Aug 14, 2017 · IPR2016-00677 · APJ Michael W Kim · IPR · Final written decision
Claims 1, 2, 4, 7, and 8 are unpatentable: claims 1, 4, 7, and 8 as obvious over Mahajan, and claim 2 as obvious over Mahajan and Dugan.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Based on the above, we modify Petitioner’s proffered level of ordinary skill as follows: “a person with a Bachelor’s degree in mechanical or electrical engineering or a related field with two to three years of experience working with data acquisition systems, including motion data captured using markers and sensors.” We decline, however, to limit the level of ordinary skill to “designing wireless motion capture sensors,” as the ’928 Patent does not disclose being limited to “design” and “wireless” sensors. We note, however, that, in this case, the prior art itself reflects an appropriate skill level. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For example, the prior art of record, such as Mahajan, has been shown to relate to the field of data acquisition systems, and, in particular, motion capture sensors.” slip op. at 8
- Expert testimonyOther
“basis for the proposed modification, nor identifies any benefit. PO Resp. 17–23. We disagree. The relevant portion of the Petition cites expressly to paragraphs 42 and 127 of Mahajan, and in quoting paragraph 127, Petitioner bolds the following: “‘[t]he apparatus can be used alone or in conjunction with other hardware . . . or software . . . and may be adapted for wired transmission of data, wireless transmission of data, or for storage of data on the apparatus.’” Pet. 17. The next sentence of the Petition then reads “[t]hus, Mahajan teaches that the on-board memory component for storage of data on the apparatus is an obvious design choice.” Pet. 17. This statement is supported by Dr. Nesbitt’s testimony, with which we agree, explaining that Mahajan provides the option to include on-board memory and leaves it to the designer to include it, considering that it was common to include memory in data capture systems to store the captured data. Ex. 1003 ¶ 115. We are unclear as to how this portion of the Petition can be read as asserting anything other than coupling memory for the purpose of data storage would have been, as Petitioner phrases it, an “obvious design choice” to one of ordinary skill at the time of the invention.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b)). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would have been understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). For the purposes of this Decision, we determine that no claim term needs express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Accordingly, given our above findings that (1) Mahajan discloses a microcontroller and (2) coupling memory for the purpose of data storage was known to one of ordinary skill at the time of the invention, we have little trouble in concluding that it would have been obvious to modify microcontroller 50 of Mahajan by coupling memory thereto for the purpose, i.e., the predictable reason to combine of, of data storage. With no persuasive evidence of unpredictability or change in function of the microcontroller with memory combination, nothing more is required under KSR, nor under other Federal Circuit precedent. See Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010)) (“a finding of obviousness at the time of invention requires a ‘plausible rational [sic] as to why the prior art references would have worked together’” (citation omitted)).” slip op. at 16
Patent outcomesUS 8,944,928 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,944,928
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.