• NEC Corporation / Nokia Corporation et al. v. Neptune Subsea IP LimitedAll claims unpatentable
  PTAB · Nov 25, 2019 · IPR2018-01157 · APJ Jason W Melvin · IPR · Final written decision

  Claims 13–20 are unpatentable as obvious over Yamamoto and Nishimoto; the Chowdhury and Webb grounds, with or without Tanaka162, do not establish unpatentability.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableDecided for petitioner

    “III. CONCLUSION For the foregoing reasons, we determine Petitioner has shown by a preponderance of the evidence that each of claims 13–20 is unpatentable.” slip op. at 26

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

    “The parties submit and we agree that there is no need to construe any term to resolve the issues in this decision. See Pet. 7–9; PO Resp. 6; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “e. Summary For the reasons described above, we find that a person of ordinary skill in the art at the time of invention would have had reason to combine Yamamoto’s and Nishimoto’s teachings as asserted by Petitioner and that the combination teaches all of claim 13’s limitations. Accordingly, Petitioner has shown by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Yamamoto and Nishimoto.” slip op. at 21

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

    “tunable compensators is a contingent argument, applicable only if one reads claim 13 to require a certain transmission rate. PO Resp. 21–25. We do not read Petitioner’s argument as so constrained. Rather, we understand Petitioner to argue that a desire for higher transmission speeds would drive skilled artisans to use solutions such as Nishimoto’s tunable compensators, particularly in light of Nishimoto’s guidance regarding the ability to achieve high speeds with the system. See Pet. 21–23. In that regard, we agree with Petitioner that the increase in transmission rates from Yamamoto’s to Nishimoto’s disclosures would have given skilled artisans reason to consider Nishimoto’s teachings. Pet. Reply 16–18 (citing Ex. 1005 8:9–11; Ex. 1007, 12:37–39). As Petitioner points out, Nishimoto specifically discloses that higher-speed transmissions were more sensitive to dispersion. Pet. Reply 17 n.9. Thus, we find the desire for higher transmission speeds and the need for techniques such as taught by Nishimoto would have given skilled artisans reasons to combine Nishimoto’s disclosure regarding dispersion compensation with Yamamoto’s system to achieve Yamamoto’s goals regarding the dispersion maps for multiple channels. Further, Petitioner does not rest entirely on the desire for high-speed operation. Petitioner argues also that using Nishimoto’s adjustable compensators and feedback control would “yield an improved WDM system capable of automatic compensation for degradation of the optical signal waveform caused by both wavelength dispersion and polarization mode dispersion of the optical transmission path, resulting in further reduced size and cost.” Pet. 16 (citing Ex. 1003 ¶¶ 99, 101; Ex. 1007, 3:41–60, 4:3–58, Figs. 17, 20, 21), 29–30 (quoting Ex. 1007, Abstract, 3:37–40, 6:56–64, 7:53–56, 11:41–46, 17:53–55, 17:59–60; citing Ex. 1003 ¶¶ 114–115); accord id. at 14 (quoting Ex. 1007, 3:19–25). Patent Owner recognizes that basis for the combination but argues that the record lacks evidence to support Petitioner’s claim of reduced size and cost. PO Resp. 25–26. Patent Owner does not contest that the modification would give Yamamoto’s system the ability to automatically compensate for signal degradation from dispersion. Nishimoto discloses that as transmission speeds increase, “changes in wavelength dispersion characteristics due to temperature changes of optical fiber; and the influence by polarization mode dispersion” both “can not be neglected,” therefore requiring a system for automatically compensating for wavelength dispersion and polarization mode dispersion,” as taught by Nishimoto. Ex. 1007, 1:34–41. We find that a skilled artisan would have had reason to make the combination because the system would gain capability for automatic compensation. Regarding reduced size and cost resulting from the combination, Patent Owner does not provide any contrary evidence and we conclude that Nishimoto’s statements regarding the benefit of its invention also would have motivated skilled artisans to make the combination. See Ex. 1007, 3:17–26 (“to thereby provide a dispersion compensating apparatus of reduced sizes at a reduced cost”).” slip op. at 18

  Patent outcomesUS 8,351,798 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,351,798
• Apple Inc. v. Red.Com, LLCInstitution denied
  PTAB · Nov 7, 2019 · IPR2019-01064 · APJ J John Lee · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–29 were unpatentable as obvious over the asserted combinations.

  RulingsInstitution decision

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

    “We have authority to institute an inter partes review only if the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the Preliminary Response, we conclude that Petitioner has not shown a reasonable likelihood of prevailing in its challenges to the ’299 Patent. Accordingly, the Petition is denied. A.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art at the relevant time would have had (1) “a Bachelor’s degree in Computer Science, Electrical Engineering, or equivalent training”; (2) “approximately three years of experience in designing and/or manufacturing video capture, processing, and display systems”; and (3) “experience in data compression.” Pet. 6. At this stage, Patent Owner does not dispute Petitioner’s contention or propose its own formulation of the relevant level of ordinary skill. For purposes of this Decision, we adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 5

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

    “We agree with Petitioner that the specification’s definition is critical to the proper construction of this term. Petitioner’s proposed construction, however, differs significantly from the definition provided in the specification. First, Petitioner’s construction refers to “sets of data” that are compared for visual similarity, but it does not reflect the specification’s requirement for comparison “side by side” specifically with “original (never compressed) image data.” See Ex. 1001, 9:55–60. Second, Petitioner’s construction makes no mention of the specification’s requirement that the comparison be made based on display “on the same display device.” See id. Third, Petitioner’s construction looks to whether the data sets are “substantially visually similar,” but does not explain how or why that benchmark differs from the specification’s requirement that a person of ordinary skill “would not be able to determine which image is the original with a reasonable degree of accuracy, based only on a visual inspection of the images.” See id. Although the claim term at issue is “substantially visually lossless” whereas the specification defines “visually lossless,” Petitioner does not indicate that they should be considered differently or explain its deviations from the specification’s definition. Nor do we discern any basis to deviate from that definition to the extent required to adopt Petitioner’s proposed construction. Thus, we determine Petitioner’s construction to be incomplete and insufficiently supported in light of the specification. See Phillips, 415 F.3d at 1315–16. Although Patent Owner does not dispute Petitioner’s construction at this time, Petitioner is required to present a full explanation of its position and how the relevant evidence and governing law support its proposed construction, as part of its overall burden to demonstrate a reasonable likelihood of prevailing. See 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(3). We determine the Petition did not adequately do so. Consequently, based on the available evidence and for purposes of this Decision, we construe “substantially visually lossless” as “substantially indistinguishable from the original (never compressed) image, to a reasonable degree of accuracy, when compared side by side on the same display device by a person of ordinary skill, based only on a visual inspection of the images,” consistent with the definition provided in the specification of the ’299 Patent. C.” slip op. at 7

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

    “As Patent Owner notes, however, Mølgaard actually urges the use of near-lossless compression. Prelim. Resp. 70–71. For example, Mølgaard indicates that “[i]n the present invention, near-lossless compression is implemented using a gamma function to provide a compression that is visually lossless.” Ex. 1006, 2:62–64 (emphases added). In other words, Mølgaard teaches that using near-lossless techniques (rather than truly lossless techniques) is sufficient to produce “visually lossless” images. See id. Petitioner does not explain adequately why a skilled artisan nonetheless would have been motivated to combine Mølgaard with Chui for its truly lossless Huffman compression when Mølgaard teaches that its near-lossless technique was sufficient. See Pet. 42–43. Petitioner notes (Pet. 39) that Mølgaard states, “[t]he next stage in the algorithm is an optional lossy bit reduction stage used to adjust the compression ratio, the stage is bypassed if lossless compression is desired.” Ex. 1006, 10:32–34 (emphasis added). At most, however, this indicates that using lossless compression was known at the time of Mølgaard, which is undisputed. Mølgaard proceeds to describe how “[t]he use of a gamma-function [in the bit reduction stage] to implement a near-lossless data reduction yields a very high quality image” with image artifacts that are “simple quantization errors” that “can easily be removed,” which is “a huge advantage of the present invention.” Id. at 10:56–11:15; see also id. at 15:20–25 (“Using the near-lossless compression setting, a typical high-quality image will be compressed to 1/8th . . . . The image quality achieved is superior . . . as visual image artifacts are totally absent . . . .”). Petitioner does not address Mølgaard’s teachings regarding near-lossless compression at all; in fact, Petitioner appears to treat them as teachings of lossless compression. See Pet. 42–43. We are not persuaded Petitioner explained adequately why a person of ordinary skill, based primarily on the teachings of Mølgaard (as Petitioner urges), would have been motivated to replace its near-lossless technique with Chui’s lossless Huffman technique.7” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,230,299
• Feit Electric Company, Inc. v. Signify Holding B.V. F/K/A Philips Lighting Holding B.V.Some claims unpatentable
  PTAB · Oct 18, 2019 · IPR2018-00921 · APJ Jason M Repko · IPR · Final written decision

  Claims 1, 22, and 30 are unpatentable as obvious over Biebl; claims 7 and 14 were not shown unpatentable because the proposed combinations lacked sufficient support.

  RulingsFinal written decision

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

    “The Specification supports the construction that an oscillating signal is periodically varying. For instance, the Specification states that “the low frequency oscillating signal changes from low to high.” Ex. 1001, 2:35–37. In another example, “the oscillating signal can be a square wave oscillating between 0 and 16 volts with a frequency of 200 to 300 Hertz.” Id. at 4:17– 20. In these examples, the ’890 patent uses term “oscillating” to describe signals having periodic variation or change. Thus, we construe “an oscillating signal” as a signal with periodic variation. generating an oscillating signal. Petitioner’s definition from a technical dictionary merely adds that an oscillator is (1) an electronic circuit and (2) “converts energy from a direct-current source.” Pet. Reply 4 (citing Ex. 1021, 3 (McGraw-Hill Dictionary of Scientific and Technical Terms 1341–40 (4th ed. 1989))). There is no dispute about a direct-current source. The Specification discusses an “oscillator” in terms of its function. See Ex. 1001, 2:17–19, 26–27; 44–48. Thus, we determine that “oscillator” means an electronic circuit that generates an oscillating signal.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner

    “We agree with Patent Owner that the Patent indicates that either set of resistors can perform the claimed function. Prelim. Resp. 12. For instance, R1A1, R1A2, and R1A3 appear in the schematic diagram in Figure 2A. This diagram shows a first power supply 112 that supplies current to LED array 114. Ex. 1001, 3:11–12. LED array 114 responds to signals for the STOP input 104 or TURN input 102. Id. at 3:12–14. The resistors are between the first power supply 112 and LED array 114 to sense current. Id. at 3:31–35. By contrast, R1B1, R1B2, and R1B3 appear in the schematic diagram in Figure 2C. This diagram shows a second power supply (130) that supplies power to LED array 126. Id. at 3:55–56. LED array 126 responds to signals for the STOP input 104 or TAIL input 106, depending on the input mode. Id. at 3:56–59. Figure 2C shows the resistors connected to the second power supply 130. Id., Fig. 2C. So the two sets of resistors perform the same function but are connected to different power supplies. Thus, the structures disclosed in the Specification as corresponding to the claimed function are (1) R1A1, R1A2, or R1A3 or (2) R1B1, R1B2, or corresponding structure because it is immaterial to our analysis below.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Any difference between Petitioner’s and Patent Owner’s proposed levels of ordinary skill in the art are immaterial because, as Dr. Zane explains, “applying Dr. Shackle’s standard for the level of ordinary skill in the art would not affect [Dr. Zane’s] analysis and conclusion regarding the patentability of any challenged claim.” Id. ¶ 27. So we apply Petitioner’s proposed definition, which appears to be consistent with the level of skill reflected in the asserted references. See Okajima v. Bordeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of skill in the art).” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Yet nothing in the claim suggests that visual characteristics are relevant. Rather, claim 1’s system uses the recited states for a purpose unrelated to viewing waveforms—i.e., to determine whether to supply power or not. See Ex. 1001, 5:24–27. So we are unpersuaded by Patent Owner’s argument that slope or other visual characteristics should be the only basis for defining the states. See PO Resp. 15. Thus, Petitioner has shown that Biebl teaches “an oscillating signal having a first state and a second state.”” slip op. at 26

  Patent outcomesUS 6,586,890 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 6,586,890
• Kingston Technology Company, Inc. v. Memory Technologies, LLCInstitution denied
  PTAB · Jul 8, 2019 · IPR2019-00638 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–3, 5–7, 12–15, 19, or 25 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that the information presented in the Petition 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.” 35 U.S.C. § 314(a). Having considered all submissions of both parties, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–3, 5–7, 12–15, 19, and 25. The Petition is denied, and no inter partes review is instituted.” slip op. at 2

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

    “result in permanent write protection to result in permanent write protection—lacks sufficient clarity. It is unclear whether a single instance of permanent write protection is sufficient to meet the limitation, or whether all future executions of the redefined command must result in permanent write protection until another redefinition occurs. We determine that, in the context of the Specification of the ’370 patent, the redefinition, when accomplished, applies to all future executions of the command until it is redefined again. It is insufficient to meet the limitation if, after the redefinition, the redefined command still may function the way it used to function prior to the redefinition.” slip op. at 10

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

    “respect to the requirements of “to redefine the command to allow permanent write protection” as we have construed and discussed above. Nothing in Chevallier as identified by Petitioner indicates that setting the secure function bit to some value changes the meaning of the write protect command in the sense that it can no longer be used to provide temporary write protection, and can be used thereafter, until the next redefinition, solely to provide permanent write protection. The secure function bit of Chevallier, identified by Petitioner, serves only to enable the secure function (Ex. 1003 ¶¶ 37, 38, 40) and is nowhere described in Chevallier as changing the meaning of the locking command such that it no longer can be used to cause write protection of a memory block temporarily.” slip op. at 16

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

    “ordinary skill in the art would have found ambiguity in Chevallier’s embodiment in which the same command is used both for “locking” and for “securing.” In that regard, Petitioner refers to “any” ambiguity. The same is true with respect to Dr. Baker, who testifies: “a person having ordinary skill in the art would have been particularly motivated to use the secure function bit in that circumstance because doing so would eliminate any ambiguity as to whether the command meant ‘lock’ or ‘secure.’” Ex. 1006 ¶¶ 259, 270, 276 (emphasis added). Also, neither Petitioner nor Dr. Baker in the cited paragraphs of his Declaration addresses the specific disclosure in Chevallier that implements using one command to cause “locking” and the same command to cause “securing.” Chevallier describes: “The secure command used in the present invention, in one embodiment, is also used for another function within the memory device. However, in such an embodiment, the command is written to a different register that is assigned to that particular function.” Ex. 1003 ¶ 18 (emphasis added). Thus, there is no “ambiguity” as to whether the command means “lock” or “secure” in any instance because Chevallier uses different registers to distinguish between them. We are not sufficiently persuaded that there is ambiguity in Chevallier’s disclosure to be resolved. Petitioner’s assertion of a motivation that lies in resolving an ambiguity is not sufficiently supported by the record. Petitioner also argues, assuming that there is ambiguity: “A POSA [person of ordinary skill in the art] would understand that Chevallier’s secure function bit, which enables and disables the secure function, could provide the beneficial specificity—if the secure function is not enabled, then the command results in the lock function; if the bit is enabled, then the command results in the secure function.” Pet. 42 (emphasis added). This argument also is not persuasive. The issue is not whether one with ordinary skill in the art “could” perform an operation but whether one with ordinary skill in the art, without application of improper hindsight, would have reason and want to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Here, whether one with ordinary skill in the art would want to do in Chevallier what Petitioner proposes is not sufficiently explained. Chevallier expressly states that the secure function it provides is an added feature relative to the locking function. Ex. 1003 ¶ 29. Thus, the two functions are concurrently supported in Chevallier, not mutually exclusively at any one time. The limitation “to redefine the command to allow permanent write protection” as we have construed it above, is contrary to Chevallier’s concept and implementation. Petitioner has not adequately explained why one with ordinary skill in the art would have wanted to modify Chevallier to eliminate concurrent support for both functions. For determining obviousness, the benefits, both lost and gained, in making a modification, should be weighed against each other. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000).” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,827,370
• HTC Corporation / HTC America, Inc. v. Invt Spe LLCInstitution denied
  PTAB · Mar 5, 2019 · IPR2018-01556 · APJ Thu A Dang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 4 was obvious over Padovani and Gils.

  RulingsInstitution decision

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

    “B. Principles of Law In an inter partes review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied on). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 7

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

    “Although Petitioner contends “a POSITA would have been motivated to provide greater protection for the decimal integer portion (an error in which would be magnified versus an error in the decimal fraction portion)” in Padovani (Pet. 33), Petitioner does not identify any passage or combination of passages in Padovani that teaches or suggests providing, or even the need to provide, greater protection for one decimal portion than the other decimal portion, let alone by using “different coding schemes for the different parts.” Id. As Patent Owner asserts, “Padovani discloses using a single code to encode the DRC message[,]” and “does not teach using multiple codes to encode different portions of the DRC message.” Prelim. Resp. 14 (citing Ex. 1009, 45:20–22 (emphasis added)). We recognize that Petitioner’s Declarant, Dr. Min, testifies that, “by virtue of Padovani contemplating the use of an (n,k) coding scheme,” the POSITA “would have naturally sought out similar coding schemes [as those of Gils] to protect DRC messages.” See Pet. 41 (citing Ex. 1017 ¶ 156). Dr. Min further testifies that “a POSITA would have been motivated to provide greater protection for certain bits by selecting appropriate code words generated by one or more of the coding schemes contemplated by Gils,” and thus, use “different coding schemes for the different parts.” Ex. 1017 ¶ 132. Dr. Min’s testimony, however, does not address adequately why one of ordinary skill in the art would have used together different coding schemes from Gils, let alone a separate scheme for certain bits over the other bits. As Dr. Min testifies, “a single UEP coding scheme could also be used depending upon how a POSITA would have wanted to implement unequal error protection.” Ex. 1017 ¶ 132; see Pet. 33 (citing Ex. 1017 ¶ 132). As such, Dr. Min acknowledges that a single unequal error protection coding scheme could be used as well as applying different coding schemes to different parts of a message. Here, Dr. Min’s testimony that a single unequal error protection coding scheme could be used further undermines Petitioner’s position that one of ordinary skill in the art would have used the different coding schemes for different parts as set forth in Gils. Thus, Dr. Min’s testimony does not adequately explain why one of ordinary skill in the art would have applied different coding schemes from Gils to the DRC message of Padovani, much less in the manner proposed by Petitioner, of providing greater protection for the decimal integer portion than the decimal fraction portion, especially when Padovani discloses “using a single code to encode the DRC message.” See Prelim. Resp. 14 (citing Ex. 1009, 45:20–22).” slip op. at 14

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

    “Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Min’s declaration testimony to support its contention that one of ordinary skill in the art would have used Gils’s techniques to encode Padovani’s DRC message in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Petitioner also has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Moreover, Dr. Min’s contention that “[t]he nature of binary numbers (or other base-x number systems) means that the leftmost bit of any binary number is the most significant bit” (Ex. 1017 ¶ 154) is conclusory. As Patent Owner points out, “Dr Min’s declaration, however, merely repeats the allegations of the Petition without any explanation or citation to any supporting or corroborating evidence.” Prelim. Resp. 20 (citing Ex. 1017 ¶ 154). That is, “[t]here is no proffered evidence that it was well understood by a POSITA at the time that the leftmost bit in binary numbers, and specifically in the DRC message of Padovani, is the ‘most significant bit.’” Prelim. Resp. 20. For that reason, we give little weight to Dr. Min’s uncorroborated testimony that “the leftmost bit of any binary number is the most significant bit.” 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations[.]”).” slip op. at 15

  § 103 obviousnesscites KSR
  Patents in suitUS 7,206,587
• Apple Inc. / Zte(Usa) Inc. v. Invt Spe LLCInstitution denied
  PTAB · Mar 5, 2019 · IPR2018-01474 · APJ Thu A Dang · IPR · Institution

  The Board denied institution on claim 4 because Petitioner did not show a reasonable likelihood that Bender and Piret rendered it obvious; claim 3 had been statutorily disclaimed.

  RulingsInstitution decision

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

    “For the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 4 would have been obvious over Bender and Piret. See 35 U.S.C. § 316(e) (To prevail in an inter partes review that has been instituted, “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’587 patent challenged in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’587 patent, and no trial is instituted.” slip op. at 17

  • Adverse judgmentAdverse judgmentOther

    “We agree with Patent Owner. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An inter partes review cannot be instituted on claims that have been disclaimed and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). This conclusion is consistent with other panel decisions addressing this issue. See, e.g., Intuitive Surgical, Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7, 2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015, Paper 9, 12–14 (PTAB Nov. 14, 2018). Accordingly, we treat claim 3 as having never been part of the ’587 patent, and do not institute inter partes review on this claim. As discussed above, we regard claim 4 as the only challenged claim. See Sections I.A and I.E.” slip op. at 9

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

    “Accordingly, a plain reading of the reference does not support a finding that Bender teaches or suggests that the FEC scheme is used to encode the SNR itself. Therefore, we are not persuaded that Bender’s FEC description would have provided reason to look to Piret’s encoding techniques for encoding Bender’s “quality” information. That is, although we agree with the Petitioner that Piret teaches and suggests a method of encoding less significant bits differently from the more significant bits of each data word, wherein the most significant bit of the plurality of bits is encoded to be less susceptible to errors (Ex. 1005, 1:20–33), that alone is insufficient to support a conclusion of obviousness of providing an encoder that encodes Bender’s SNR “quality” information, as required by claim 4. That Piret discloses encoding transmitted information does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, the Petitioner’s obviousness position does not explain why a person of ordinary skill in the art would have encoded the SNR value in Bender, which may not even be transmitted, using Piret’s encoding method. Indeed, Petitioner does not direct us to persuasive evidence that encoding the SNR value would have been expected to provide any advantage, outside the teachings of the ’587 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Singer’s declaration testimony to support its contention that one of ordinary skill in the art would have used Piret’s techniques to encode Bender’s SNR values in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. In that regard, Petitioner’s Declarant, Dr. Singer, testifies that a person of ordinary skill in the art at the time of the ʼ587 Patent’s invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with wireless communication systems or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 6; Ex. 1003 ¶ 39. At this juncture, Patent Owner does not dispute Dr. Singer’s assessment on the level of ordinary skill in the art. See generally Prelim. Resp. Based on the current record, we apply Dr. Singer’s assessment for purposes of this Decision. We also note that the prior art of record currently in the instant proceeding is consistent with this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,206,587

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