- Unified Patents, LLC v. Velos Media, LLCRehearing deniedPTAB · Dec 9, 2020 · IPR2019-00710 · APJ Jason W Melvin · IPR · Rehearing
The Board denied rehearing, leaving claims 1, 2, 11, 12, and 22 not shown unpatentable over Chen or Chen and Bao under §103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The Decision, however, did not overlook and rather accepted that the DC block group flag was “not necessary (and often redundant).” Dec. 12–13 (quoting Pet. 53). Notwithstanding that proposition, we declined to extend it to compel omitting the DC block group flag and withholding the DC block from the (0,0) inference. Id. at 13. Petitioner faults the Decision’s conclusion because the (0,0) inference cannot be applied if the DC block does not have a group flag (the inference depends on the group flag’s value). See Req. Reh’g 7–8. The Request fails to persuade us that we misapprehended or overlooked Petitioner’s argument. Asserting that the DC block group flag was “unnecessary (and often redundant)” does not compel a conclusion that the DC block group flag would be omitted from the bitstream. The Decision determined that the Petition does not sufficiently justify such a conclusion and we do not agree with the Request’s post hoc view equating “not necessary” with “would be omitted.” See Req. Reh’g 8–9.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“The Request argues the Petition establishes “it would have been obvious not to include (i.e., omit) a group flag in the bitstream for the DC block” as “one of three ways to reduce the size of coded video.” Req. Reh’g 6 (emphasis omitted) (citing Pet. 54). As an independent basis for modifying Chen, the Petition identifies three potential solutions for reducing coded-video size—“not encoding the significant-coefficient-group flag for the block containing the last significant coefficient, the DC block, and the block whose right neighboring block and lower neighboring block both have non-zero significant-coefficient-group flags.” Pet. 54–55. As support, the Petition cites the challenged patent. Id. at 54 (citing Ex. 1001, 12:6–54). Although the Petition also cites declaration testimony (id. at 55 (citing Ex. 1002 ¶ 94)), that testimony offers no support beyond that in the Petition. Thus, other than through the challenged patent itself, the Petition does not support the factual underpinning required for an obvious-to-try conclusion. That hindsight approach does not establish a persuasive position.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,964,849 - Facebook, Inc. / Instagram, LLC et al. v. Blackberry LimitedAll claims unpatentablePTAB · Sep 1, 2020 · IPR2019-00706 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–3, 5, 7–11, 13–15, 17, 19–22, and 24 are unpatentable as obvious over the instituted combinations of Dallas, Brown, and Kent, with Bott, Mann, or LeBlanc as applicable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have possessed at least a bachelor’s degree in software engineering, computer science, or computer engineering, or electrical engineering with at least two years of experience in software application development, including development of applications for messaging (or equivalent degree/experience).” Pet. 5 (citing Ex. 1002 ¶¶ 12–15). Because Patent Owner “does not dispute the level of ordinary skill proposed by Petitioner” (PO Resp. 10), and because we find it generally consistent with the disclosures of the asserted prior art and the ’120 patent, we adopt Petitioner’s formulation. B.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The fundamental problem with the disputed language is that it causes the meaning of “notification” to turn on the interests, personality, perceptions, or actions of a user, rather than on the operation of the underlying program. As explained above, however, the notification described in the ’120 patent is simply a mechanism in the software that provides some sort of indication that a new message has been received. Unless it is silenced, that mechanism is triggered when a new message appears in the inbox, regardless of what the user of the software may or may not be doing at that time. 7. Conclusion We find no support for inclusion of the disputed language in the claims themselves, elsewhere in the ’120 patent, or in prosecution history; we find no extrinsic support, as Patent Owner’s expert offers only conclusory testimony; and we find that the disputed language would unnecessarily and improperly interject ambiguity into the claim. We thus do not adopt the disputed language and, instead, construe “notification” in the ’120 patent to mean “some form of visual, auditory, or physical cue to draw attention to an incoming message at the time of its receipt.” C.” slip op. at 23
- Expert testimonyPatent owner expert discountedDecided for petitioner
“4. Extrinsic Evidence Patent Owner also offers testimony of its expert in support of its claim construction. See Ex. 2003 ¶¶ 49–64. Although Dr. Smith contends that font color, bold text, and italics cannot be “notifications” because “[a person of skill in the art] would not have understood any of these display characteristics as a claimed ‘notification,’” he cites no evidence to support that bare conclusion and does not explain why font color and the like could not be notifications. See id. ¶ 52. We thus give this testimony little weight. Dr. Smith also reiterates Patent Owner’s arguments about “alerts,” the “manner of display,” and “bothering,” which we find unpersuasive for the reasons explained above. See id. ¶¶ 56–60. Dr. Smith further argues that Dallas’ flags, icons, and colors cannot be “notifications” because the user must be looking at their inbox in order to notice them. See id. at ¶¶ 53–55, 61–64. We find the question of whether Dallas’ flags, icons, and colors are “notifications” to be a matter of fact to be resolved in the patentability analysis, not a claim construction issue.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“c. Conclusion on the Independent Claims We find that Petitioner has shown how the combination of Dallas, Kent, and/or LeBlanc teaches all the limitations of independent claims 1, 13, and 24, that the combination is supported with sufficient motivations to combine, and that Patent Owner’s arguments to the contrary are not persuasive. We conclude, therefore, that Petitioner has shown by a preponderance of the evidence that the subject matter of these claims would have been obvious.” slip op. at 34
Patent outcomesUS 9,349,120 unpatentableClaim construction§ 103 obviousnesscites KSR · Graham · NautilusPatents in suitUS 9,349,120 - Intel Corporation v. Qualcomm IncorporatedNo claims unpatentablePTAB · Jul 8, 2020 · IPR2019-00049 · APJ Aaron W Moore · IPR · Final written decision
Claims 2–8 and 11 were not shown unpatentable: Ground 1 failed under the adopted carrier-aggregation construction, and Ground 2 lacked a sufficient motivation to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not dispute Petitioner’s contention that a person of ordinary skill in the art ‘at the time of the alleged invention would have had at least an M.S. degree in electrical engineering (or equivalent experience) and would have had at least two years of experience with the structure and operation of RF transceivers and related structures (or the equivalent).’” PO Resp. 11 (quoting Pet. 34). We adopt Petitioner’s characterization of the level of ordinary skill in the art, which we find to be generally consistent with the disclosure of the ’356 patent.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We are not persuaded by Petitioner’s analysis because the claim recites both “aggregation” and “transmissions sent on multiple carriers,” indicating that “aggregation” must mean something more than the presence of multiple carriers. We thus do not agree that “aggregation” simply means that multiple carriers are present in the input RF signal. We conclude that the language of the claim itself is more supportive of Patent Owner’s proposed construction, which gives meaning to the term “aggregation” beyond the concept of multiple carriers, which is already in the claim.” slip op. at 14
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“construction is “consistent” with a person of ordinary skill in the art’s understanding of the term. Id. at 31; see Ex. 1202 ¶ 62. Dr. Fay, however, cites no evidence other than the specification to support the idea that “carrier aggregation” is simply simultaneous operation on multiple carriers. Nor, we find, does he persuasively explain how his proposed construction accounts for “aggregation.” The mere presence of multiple carriers in the input signal cannot be “aggregation” of the carriers because the claim already recites “multiple carriers” in the input signal. Aggregation must mean something more than multiple carriers existing at the same time.4 Patent Owner cites Dr. Foty for support of its proposed construction, and Dr. Foty provides citations to various pieces of supporting extrinsic evidence. See PO Resp. 18–23; Ex. 2024 ¶¶ 94–110 (citing Ex. 1204, 10; Ex. 2013, 3:19–22 (“One technique for providing additional bandwidth . . . is through the use [of] carrier aggregation of multiple smaller bandwidths to form a virtual wideband channel at a wireless device.”); Ex. 2018, 3:27–62 (describing “carrier aggregation of multiple smaller bandwidths to form a 4 We agree with Petitioner that its proposed construction is not “inconsistent” with the meaning that this term had in the art, but find that Patent Owner’s proposed construction is both “consistent” with and better captures what the term would have meant to one of skill in the art at the time of the application.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“independent claim 1 and, therefore, include its limitations, including, among other things, that “the input RF signal employ[s] carrier aggregation comprising transmissions sent on multiple carriers at different frequencies to a wireless device.” Petitioner’s Ground 1 is based on its construction of “carrier aggregation” as meaning “simultaneous operation on multiple carriers.” See, e.g., Pet. 51–52 (arguing that “Jeon teaches ‘a dual-band signal containing two different frequencies concurrently,” which teaches carrier aggregation). Because, for the reasons detailed above (see Section II.B), we find “carrier aggregation” to additionally require that the carriers “are combined as a single virtual channel to provide higher bandwidth,” we find that Petitioner has not shown claim 1 to be unpatentable and, thus, has not shown that dependent claims 2–8 and 11 are unpatentable in view of Jeon and Xiong.7” slip op. at 26
Patent outcomesUS 9,154,356 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,154,356 - Unified Patents Inc. v. Velos Media, LLCNo claims unpatentablePTAB · May 12, 2020 · IPR2019-00194 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–3, 5, 13–15, and 17 were not shown unpatentable because the asserted grounds failed to establish the claimed scan passes or scan order.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts a person of ordinary skill in the art at the time of the application resulting in the ’449 patent “would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, or a related subject and two or more years of experience in the field of video coding.” Pet. 23–24. Patent Owner does not contest that definition of a skilled artisan or offer a different one. Petitioner’s definition is consistent with the descriptions in the ’449 patent and the asserted art, and we adopt it.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although Petitioner proposes a construction for “information indicating levels of significant coefficients” (Pet. 27), we determined in the Institution Decision that there was no need to construe the phrase. Inst. 5. Absent any indication from the parties why such a construction would impact our analysis, we reach that same conclusion here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the phrase “in a first scan pass” and shows the proper grammatical relationship. That limitation recites “coding information indicating levels . . . according to the scan order used for coding the information indicating significant coefficients in a second scan pass.” The phrase “in a second scan pass” serves not to frame the scan order—the scan order for coding level information must be the same as the scan order for coding significance information. Rather, “in a second scan pass” relates to the phrase “coding information”—no other understanding of “in a second scan pass” would make sense. For internal consistency, that same understanding must apply to the first limitation such that “in a first scan pass” frames the step of “coding information.” Thus, the claim language requires coding significance information in a first scan pass, and then coding level information in a second scan pass, where each scan pass uses the same scan order.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We find Cheon’s disclosure regarding a purported second scan is insufficient to carry Petitioner’s burden. The primary disclosure Petitioner relies on states only that “[l]evel information of an effective coefficient . . . is encoded after the significance map is encoded.” Ex. 1003 ¶ 175. That does not expressly state that a second scan is performed to encode the level information. Petitioner is left relying on a statement by its declarant that a person of skill would have understood to perform a second scan pass when encoding the level information. Pet. 61. But Petitioner’s declarant provides no explanation and instead simply makes the conclusion. Ex. 1002 ¶ 127. We do not afford significant weight to such a conclusory statement. 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.”). We are left with the possibility that Cheon’s paragraph 175 discloses a second scan, but that does not persuade us that Cheon makes an adequate disclosure to teach a second scan. In this regard, we credit the testimony of Patent Owner’s declarant that skilled artisans would have understood Cheon’s paragraph 175 to teach a single scan pass. Ex. 2034 ¶¶ 158–159.” slip op. at 11
Patent outcomesUS 9,338,449 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,338,449 - Apple Inc. v. Qualcomm IncorporatedAll claims unpatentablePTAB · Jan 15, 2020 · IPR2018-01250 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1, 5–8, and 13 are unpatentable: Needham anticipates claims 1 and 5–7, and the asserted Needham-based combinations render claims 8 and 13 obvious.
RulingsFinal written decision- Skill levelSkill level board ownOther
“A person of ordinary skill in the art as of the Critical Date7 (a “POSITA”) would have had a Bachelor of Science degree in computer science or a similar technical field together with 3-5 years of educational practicum or work experience in the field of computer vision and/or image processing. Ex. 1003 ¶ 7. Citing the testimony of its declarant, Dr. John Villasenor, Patent Owner argues that the level of ordinary skill in the art would have been that of a person with “a Bachelor of Science degree in electrical engineering, computer science, or a related discipline, and 2-3 years of experience in image processing.” PO Resp. 9 (citing Ex. 2001 ¶¶ 30–32). Patent Owner also argues that, “[a]lthough this definition differs from that proposed by petitioner, the difference would not change the actions of this proceeding.” PO Resp. 9. 6 Petitioner submitted the declaration of Dr. Larry Davis with its Petition, but, due to Dr. Davis’s unavailability for deposition, Petitioner sought to enter a substitute declaration in the record. We held a call with the parties to discuss the issue. On the call, the parties agreed to a general framework for dealing with the situation. Paper 11. After the call, the parties met and conferred and emailed us with their proposed solution to allow Petitioner to serve and file a substitute declaration (Ex. 3001), and we authorized the parties to proceed as agreed (Paper 11). Petitioner filed Dr. Bovik’s declaration as Exhibit 1003 and moved unopposed to expunge Dr. Davis’s declaration. Paper 13. We granted Petitioner’s unopposed motion and expunged Dr. Davis’s declaration. Paper 20. 7 Dr. Bovik identifies the Critical Date as December 9, 2009, the date of filing of US Provisional Application 61/285,063, to which the ’132 patent purports to claim priority. Ex. 1003 ¶ 6. skill in the art should be adopted. Although there are slight differences between the proposed levels of ordinary skill in the art, the parties’ declarants agree that a person with a Bachelor of Science degree in a field such as computer science and professional experience in image processing would qualify as a person of ordinary skill in the art. Ex. 1003 ¶ 7; Ex. 2001 ¶ 30. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that the skill level of a person of ordinary skill in the art would have been that of a person having a Bachelor of Science degree in electrical engineering, computer science, or a related discipline, and three years of experience in image processing. We apply this level of ordinary skill in the art in our analysis.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“presumption may be rebutted when a patentee, acting as a lexicographer, sets forth an alternate definition of a term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Furthermore, only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 1. Physical Object of a Predetermined Type Petitioner proposes a construction for “physical object of a predetermined type.” Pet. 3–4. There is no dispute between the parties that the art teaches “determining whether a first portion of digital image data represents a physical object of a predetermined type,” and, therefore, we agree with Patent Owner that this term does not require express construction. See PO Resp. 7–8.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“2. Gain Patent Owner argues that “gain” is “an attribute that relates to brightening or darkening a region of an image.” PO Resp. 8 (citing Ex. 2001 ¶ 107). Petitioner does not dispute that Patent Owner’s construction is within the broadest reasonable interpretation of gain but instead argues that “gain” is not limited to brightening or darkening. Pet. Reply 1–3. Because, as explained below, the asserted prior art teaches “gain” under Patent Owner’s construction, we need not determine the full scope of the term “gain” to resolve the dispute before us. See Nidec, 868 F.3d at 1017. Rather, we apply Patent Owner’s proposed construction in our analysis below. Patent Owner argues that “gain map” is “a representation of a plurality of gain values corresponding to different locations of an image.” PO Resp. 8 (citing Ex. 2001 ¶ 107). Petitioner does not dispute that Patent Owner’s construction is within the broadest reasonable interpretation of “gain map”; rather, Petitioner’s dispute as to this term centers on the broadest reasonable interpretation of “gain,” discussed above. Pet. Reply 1– 3. Because, as explained below, the asserted prior art teaches “gain map” under Patent Owner’s construction, we need not determine the full scope of the term “gain map” to resolve the dispute before us. See Nidec, 868 F.3d at 1017. Rather, we apply Patent Owner’s proposed construction in our analysis below.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“dynamic range correction for a face than for a building if the face has a higher weight (“considered as more important”) than a building, such that “the human faces may be corrected so that they become more visible than buildings.” Ex. 1004 ¶ 22. In a passage cited by Patent Owner in support of its claim interpretation, the ’132 patent states that “the DRC [(dynamic range correction)] unit uses a weighting factor . . . to modify the gain obtained/calculated from the lookup table, according to whether the input pixel is part of a specified type of object.” Ex. 1001, 3:19–22, cited in PO Sur-reply 4–7. Needham and the ’132 patent, therefore, both describe determining a dynamic range correction based on identifying a face in the image and finding associated weights to apply in the correction operation. Ex. 1004 ¶ 22; Ex. 1001, 3:12–27. Furthermore, Patent Owner’s statement that “weights themselves are not corrections” (PO Resp. 19) is correct insofar as the correction is dynamic range correction performed according to the weights in Needham. See Ex. 1004 ¶ 22. But this disclosure of Needham is precisely what the ’132 patent discloses in performing dynamic range correction based on gain and weight values pertaining to particular objects, and, as discussed extensively above, this is the subject matter that Patent Owner contends claim 1 encompasses. See Ex. 1001, 3:12–27; see also PO Sur-reply 4–6. Accordingly, Patent Owner’s arguments support the finding that Needham describes the subject matter of claim 1 of the ’132 patent. Patent Owner argues that “Needham does not describe the cause- effect relationship that a determined type of physical object results in the particular correction that is applied to the objects of that type in the image” and that, “[t]o be ‘matched,’ a particular correction must be applied to a (citing Ex. 2001 ¶ 51). Paragraph 22 of Needham, however, expressly discloses applying dynamic range correction to human faces differently from buildings because “human faces may be considered as more important than buildings.” Ex. 1004 ¶ 22. Patent Owner also argues the following in reference to Needham: “That correction parameters are specified for each feature is insufficient to demonstrate that the correction parameters are ‘matched’ to a particular object type.” PO Resp. 15 (citing Ex. 2001 ¶ 51). Yet, in characterizing the ’132 patent, Patent Owner argues the following: “A set of gain values or specific gain table for specific image content, such as a set of gain values or specific gain table applied to all faces, is a correction that is applied to faces because they are faces, i.e., a correction that is matched to faces.” PO Sur-reply 6 (citing Ex. 2001 ¶ 51). We fail to see a distinction between these two disclosures. Needham discloses that automated feature-based image correction mechanism 120 identifies “the set of specified image features” and that “a specified image feature may correspond to a human face, a building, an animal, etc.” Ex. 1004 ¶ 17. And, as Patent Owner acknowledges in the quote above (PO Resp. 15), Needham specifies correction parameters for each feature. See also Ex. 1004 ¶ 35 (“For each detected image feature, the corresponding correction parameters are retrieved 860.”). Thus, Needham’s disclosure of specifying correction parameters for feature types falls squarely within Patent Owner’s explanation of how the ’132 patent describes matching. Patent Owner also cites testimony from Petitioner’s declarant, Dr. Bovik, stating that, in paragraph 22 of Needham, dynamic range correction would occur even in the absence of a face, and Patent Owner” slip op. at 15
Patent outcomesUS 8,447,132 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,447,132 - Apple Inc. v. Qualcomm IncorporatedAll claims unpatentablePTAB · Jan 15, 2020 · IPR2018-01251 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1, 5–8, 11, and 14 are unpatentable under § 103 over Zhang and Konoplev, with Nonaka and Gonzalez added for the dependent-claim grounds.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted. Although there are slight differences between the proposed levels of ordinary skill in the art, the parties’ declarants agree that a person with a Bachelor of Science degree in a field such as computer science and professional experience in image processing would qualify as a person of ordinary skill in the art. Ex. 1017 ¶ 7; Ex. 2005 ¶ 26. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that the skill level of a person of ordinary skill in the art would have been that of a person having a Bachelor of Science degree in electrical engineering, computer science, or a related discipline, and three years of experience in image processing. We apply this level of ordinary skill in the art in our analysis.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes a construction for “physical object of a predetermined type.” Pet.14–15. Patent Owner does not dispute Petitioner’s proposed construction. PO Resp. 6. Further, there is no dispute between the parties that the art teaches “determining whether a first portion of digital image data represents a physical object of a predetermined type.” See generally PO Resp. Therefore, this term does not require express construction. Based on the trial record, we do not find it necessary to construe expressly any claim terms.” slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“asserting Konoplev as prior art because Konoplev’s non-provisional filing date precedes the ’132 patent’s non-provisional filing date. See Dynamic Drinkware, 800 F.3d at 1379. The burden of production, i.e., “the burden of going forward with evidence,” then shifted to Patent Owner to show that Konoplev is not prior art because the ’132 patent is entitled to an earlier filing date. Dynamic Drinkware, 800 F.3d at 1379–80. As the Federal Circuit has stated, this “mean[s] both producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record, as the case may require.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Here, Patent Owner provides no argument at all explaining how the ’132 Provisional Application’s Z-Light disclosures provide written description support for the determining and applying steps of claim 1. Nor does Patent Owner’s declarant, Dr. Villasenor, provide testimony explaining how the disclosure of the Z-Light module conveys possession of the invention to persons of ordinary skill in the art. Rather, Dr. Villasenor testifies, “In light of what I have been informed about regarding written description and enablement (¶¶35-37, above), and as demonstrated in the below claim chart, it is my opinion that the claims at issue (Claims 1, 5-8, 11, and 14) are supported by” the ’132 Provisional Application, and he reproduces the same claim chart that is in the Patent Owner Response. Ex. 2005 ¶ 43. The only substantive explanation of the ’132 Provisional Application that Dr. Villasenor provides has to do with maintaining local contrast, which pertains to claim 8. Ex. 2005 ¶ 44. Patent Owner directs us to no evidence in the record showing that the Z-Light module would have been readily recognized by persons of ordinary skill in the art such that its disclosure would provide written the ’132 patent itself. Based on the foregoing, we determine Patent Owner has failed to carry its burden of production to show—with evidence and persuasive argument—that the ’132 Provisional Application provides section 112, first paragraph support for claim 1 of the ’132 patent, and, by virtue of their dependency, claims 5–8, 11, and 14, at least as to the written description requirement. Therefore, Konoplev is prior art under 35 U.S.C. § 102(e)(2) because its June 15, 2010, filing date is before the ’132 patent’s December 6, 2010, filing date.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“upon teachings of correcting facial imperfections, discussed above, and a reason to utilize those teachings, namely “to enhance the original image quality.” Ex. 1009, 1:64–67; see also Ex. 1009, 6:24–30 (“If, in step 150, faces are found in the image, the facial skin is enhanced by the skin-recognition filter applied to detected facial areas of the image in step 160. The filter uses wrinkle reducing parameters. Then, in step 170, the facial skin is enhanced by the skin-recognition filter applied to detected facial areas using spots/blemishes reducing parameters.” (emphases added)). Patent Owner asserts that “Petitioner must provide more than generic incentives and conclusory statements to support its obviousness rationale.” PO Sur-reply 15. Here, however, Konoplev expressly provides a reason to utilize its facial correction techniques—to enhance image quality. Ex. 1009, 1:64–67, 6:24–27. Thus, Petitioner’s proffered rationale—“provid[ing] automatic correction of facial imperfections to further improve the quality of images containing faces” (Pet. 22)—is supported by the prior art itself.” slip op. at 26
Patent outcomesUS 8,447,132 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,447,132 - Apple Inc. v. Qualcomm IncorporatedAll claims unpatentablePTAB · Jan 15, 2020 · IPR2018-01245 · APJ Amanda F Wieker · IPR · Final written decision
Claims 1–4 are unpatentable as obvious over Hullender and Renaud; the contingent motion to amend with substitute claims 5–8 is denied.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“C. Level of Ordinary Skill in the Art In the Institution Decision, we accepted the parties’ agreement that a” slip op. at 9
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Owner proposes Claims 5–8 as substitutes for Claims 1–4 in the event that Claims 1–4 are found unpatentable.” MTA 1. As discussed above, claims 1–4 have been shown unpatentable. Sections III.A and III.B. Accordingly, the contingency has been satisfied and we address Patent Owner’s Motion to Amend. For the reasons that follow, the Motion to Amend is denied.” slip op. at 67
Patent outcomesUS 8,665,239 unpatentableNonecites KSR · GrahamPatents in suitUS 8,665,239
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.