- Renesas Electronics Corporation v. Broadcom CorporationAll claims unpatentablePTAB · Nov 12, 2020 · IPR2019-01040 · APJ Norman H Beamer · IPR · Final written decision
Claims 1 and 9–14 are unpatentable as obvious; the motion to amend is denied for substitute claim 15 and granted for substitute claims 16–19.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we instituted an inter partes review of claims 1 and 9–14. Paper 9 (“Institution Dec.”). In the Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would prevail as to the challenged claims, and we instituted trial on all challenged claims and all grounds in the Petition. Institution Dec. 35.” slip op. at 2
- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner contends that “a person of ordinary skill in the art” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Accordingly, we construe “configurable” in this context to mean” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, based on our review of the record and the parties’ submissions, we determine that the record establishes that each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as claimed, and that Fandrianto ’459 would have taught the second limitation of claim 1. d) Claim 1 Summary In sum, based on our review of the record and the parties’ submissions, we determine that the record establishes that RISC microprocessor 220 disclosed in Fandrianto ’459 is a “processor,” as required by claim 1, and each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as required by that claim. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that claim 1 of the ’844 patent would have been obvious in light of Fandrianto ’459.” slip op. at 33
Patent outcomesUS 8,284,844 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 8,284,844 - PTAB · Oct 30, 2020 · IPR2020-00909 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because claims 15–17 were statutorily disclaimed, and denied Garmin’s motion to join IPR2020-00782.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Pursuant to 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“As discussed above, because Patent Owner filed a statutory disclaimer in compliance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) disclaiming all the challenged claims of the ’958 patent, no inter partes review is instituted in this proceeding. Moreover, for the same reason, the Board has denied institution in IPR2020-00782. Accordingly, there is no ongoing inter partes review in IPR2020-00782 to which the instant Petitioner could be joined. Therefore, pursuant to § 315(c), we deny the Motion for Joinder.” slip op. at 6
NonePatents in suitUS 6,976,958 - Fitbit, Inc. v. Philips North America LLCInstitution deniedPTAB · Oct 30, 2020 · IPR2020-00782 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Philips had recorded a statutory disclaimer of all challenged claims 15–17.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Pursuant to 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” (Emphasis added.) A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 5
Discretionary denialPatents in suitUS 6,976,958 - Google LLC v. Uniloc 2017, LLCRehearing deniedPTAB · Oct 16, 2020 · IPR2019-01584 · APJ Kevin F Turner · IPR · Rehearing
The Board denied Google’s rehearing request, finding no abuse of discretion in denying institution of review of claims 1–3, 5, 6, 8, 39, and 41 under its General Plastic analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “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.” Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“petitions are only relevant if Petitioner was a party to the prior proceedings, or had a relationship with the prior petitioners. Reh’g Req. 7. But a review of the cited precedential decision does not reflect Petitioner’s suggestion. See General Plastic, Paper No. 19 at 15−19 (“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account.”). General Plastic does not proscribe panels of the Board from considering whether a subsequent petitioner knew of the prior art cited in the subsequent petition at the time of filing of the first petition, per the second factor. Similarly, we are not barred, under General Plastic, from considering the length of time that elapsed between when a petitioner learned of the art and when the petition, based on that art, was filed, or whether petitioner provides an adequate explanation for the time elapsed between the filings of multiple petitions, per the fourth and fifth factors. Additionally, we are not persuaded that the factors enumerated in General Plastic, as viewed through the lens of Valve Corp., must all be limited by any possible relationship between the multiple petitioners. Although the discussion of the first factor in Valve Corp. makes clear that “any relationship between those petitioners when weighing the General Plastic factors” must be considered, the remaining factors take into account the knowledge of the second petitioner irrespective of a specific relationship. See Valve Corp., Paper 11 at 9−15. As such, the relationship between the different petitioners certainly has some bearing on what the second petitioner knew, when they knew it, and when they acted upon it, but the consideration of the second through seventh factors does not require a showing of a specific relationship between the petitioners to consider those factors.” slip op. at 5
Discretionary denialPatents in suitUS 6,519,005 - Samsung Electronics Co., Ltd v. Uusi, LLC D/B/A NartronSome claims unpatentablePTAB · Sep 17, 2020 · IPR2016-00908 · APJ Kamran Jivani · IPR · Remand
Claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 are unpatentable as obvious; claims 37–39 were not shown unpatentable.
RulingsRemand decision- RemandOther
“Appeals for the Federal Circuit, which vacated our Decision and remanded the matter to us. Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed. Cir. 2019). As to the earlier instituted claims, the Court instructed that we should consider “whether Samsung has shown that there would have been a reasonable expectation of success in combining the teaching of Gerpheide with the teachings of Ingraham [I]/Caldwell to arrive at the claimed invention.” Id. at 697. The Court further instructed us to “consider the patentability of claims 37, 38, and 39” (id.) because, on April 24, 2018, the Supreme Court of the United States held that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). Pursuant to the Federal Circuit’s instruction in this case and in light of SAS Inst., Inc., we modified our Decision on Institution to institute review of claims 37–39 of the ’183 patent as obvious over Ingraham I, Caldwell, and Gerpheide. Paper 40. We further held a teleconference on August 15, 2019, with respective counsel for the parties, to hear their proposals on how to proceed with this trial. Paper 41, 2. Having considered the parties’ proposals, we authorized the parties to submit concurrent briefs and subsequent responses addressing the following issues (id. at 6):” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person having ordinary skill in the art at the time of the invention would have had a minimum of: (1) a bachelor’s degree in electrical engineering, or equivalent thereof; and (2) “two to three years of experience in the relevant field, which includes touch systems technology.” Pet. 3 (citing Ex. 1002 ¶ 19). Patent Owner’s witness, Dr. Cairns, opines that a person of ordinary skill “in the art of capacitive touch sensors would have had at least a bachelor’s degree in physics or electrical engineering or equivalent industry experience in the field.” Ex. 2002 ¶ 14. In our Final Written Decision, we noted that the levels of ordinary skill proposed by the parties do not differ significantly, but adopted Petitioner’s proposed definition as more representative, indicating that our analysis would be the same under either definition. Paper 35, 9–10. On remand, neither party disputes the definition adopted in the Final Written Decision. Furthermore, no argument presented by the parties on remand would be affected by adopting one of the proposed definitions over the other. We maintain here the definition adopted in the Final Written Decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“transition term[s]” should be considered in determining the meaning of a claim term, but asserts without further support that the presence of a semicolon after “supply voltage” and the use of the transition term “wherein” do not compel the preliminary construction. Id. As we addressed in denying Petitioner’s Request for Rehearing, claim 37 employs the open-ended transition term “comprising” followed by a colon to indicate that a list elements follows, and employs semicolons to separate the elements of that list. Paper 17, 5. The first element of the list, element 37a, describes an oscillator and includes the supply voltage limitation preceded by a comma and the transition term “wherein.” Id. Element 37a then ends with a semicolon and the claim proceeds to element 37b, which recites a microcontroller. Id. Petitioner thus nominally acknowledges consideration of punctuation, but advances a construction that asks us to disregard punctuation affirmatively recited in the claim. To do so would be “inconsistent with the punctuation [patentee] chose for this claim.” In re Pelz, 379 F. App’x 975, 978 (Fed. Cir. 2010). Likewise, as to Petitioner’s assertion that we read an additional limitation into the claim (Pet. Br. 10), we observe that, if the claim is limited to a particular exemplary embodiment, such a limitation results from the claim being drafted to cover only that embodiment. While we confirmed in the Decision on Institution that the use of the term supply voltage is consistent with its use in the Specification (Dec. on Inst. 9), the limitation of the claim to the oscillator is based on the language of the claim, not on definition or disavowal. Therefore, even accepting, for the sake of argument, that there is no disavowal or definition in the Specification of “supply voltage,” the term refers in independent claim 37 to supply voltage of the oscillator.” slip op. at 18
- Expert testimonyOther
“We disagree with Patent Owner’s arguments because they are not responsive to the combination of teachings at issue in the references before us. Patent Owner focuses on particular features of Gerpheide that it alleges either “would not work . . . in the proposed Caldwell-Ingraham system” or “can only work” in the presence of a component Patent Owner argues that “neither Ingraham nor Caldwell uses.” PO Br. 1–2, 12–13. These arguments are based on a mistaken premise that one or more components or physical configurations of Gerpheide must be incorporated into the combination of Ingraham I and Caldwell in order to show a reasonable likelihood of success. Under the Federal Circuit’s construction of the “selectively providing” limitation, the combination of Ingraham I, Caldwell, and Gerpheide need not incorporate the specific features of Gerpheide identified by Patent Owner. Petitioner asserts, supported by evidence from Dr. Subramanian, that the Ingraham I-Caldwell combination would have been modified based on Gerpheide “to provide features that adjust[] the oscillator signal frequency provided to the input portions 13 to negate the effect of interference on the input portions 13 and touch sensing circuits.” Pet. 26–27. This modification would not require any of the particular components or configurations of Gerpheide highlighted by Patent Owner. Thus, even if one or more of Patent Owner’s arguments as to the infeasibility of incorporating particular aspects of Gerpheide were correct, Patent Owner’s arguments do not address Gerpheide’s particular teaching of adjusting oscillator signal frequency to negate the effect of interference, and therefore, Patent Owner’s arguments are not responsive to the proposed combination and evidence relied upon by Petitioner. In view of the above, we find that Petitioner has shown that the skilled artisan would have combined Gerpheide with Ingraham/Caldwell as proposed with a reasonable expectation of success in achieving the claimed subject matter.” slip op. at 26
Patent outcomesUS 5,796,183 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,796,183 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot reached
“Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00260 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the Patent Owner’s rehearing requests, leaving institution in place for claims 1–7, 11, 15–18, 20–22, 32, and 47.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Strike new argumentNew argument disregardedOther
“Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelOther
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523 - Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 22, 2020 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Motorola’s rehearing request, leaving intact the remand decision that claims 1–4, 7, and 18 were not shown unpatentable on the instituted grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 3
- Expert testimonyPatent owner expert creditedDecided for patent owner
“that Dr. Tewfik’s testimony is not credible because he has “no personal knowledge” and “merely parrots the inventor’s claim chart.” Req. 6. We disagree, because we considered and analyzed expressly Petitioner’s argument and the basis for Dr. Tewfik’s testimony. Remand Dec. 27, 30. We determined that Dr. Tewfik’s testimony was credible, in that it was testimony concerning his opinion with respect to the claim chart, and also that his testimony was based, at least in part, on his personal experience with Windows 98 and its functionalities. Id. at 30. Indeed, the Federal Circuit noted that the rule of reason requires us to consider all pertinent evidence, and then noted explicitly that Dr. Tewfik’s testimony was one example of such pertinent evidence that needed to be considered. See Intellectual Ventures II, 692 F. App’x at 627–628. For these reasons, we are not persuaded that we misapprehended or overlooked the credibility of Dr. Tewfik’s testimony.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“not have changed the outcome of our Decision. In Figure 4, Kellerer shows a block with a central control unit, address management, routing, an application server, and network managers. Exhibit 1007, 45. This block diagram, however, does not specifically address whether or not Internet access requires an external service controller. Moreover, Petitioner provides no citations to any passages that describe the functions of the central control unit, address management, routing, the application server, and the network managers. See generally Req. 9–13. We are not persuaded that Kellerer teaches all of the components that are necessary to enable Internet access based on Figure 4 alone. That these components are located inside the car, as shown in Figure 3, also does not specifically address whether or not Internet access requires an external service controller. Accordingly, we are not persuaded that Figures 3 and 4 render the stand-alone system limitation obvious.” slip op. at 12
§ 103 obviousnessPatents in suitUS 7,382,771 - Unified Patents Inc. v. Portal Communications, LLCAll claims unpatentablePTAB · Jul 22, 2020 · IPR2019-00513 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Junqua and Julia; the motion to amend is denied because proposed substitute claim 31 is unpatentable over the prior art.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner, relying on testimony of Mr. McNair, contends that a person of ordinary skill in the art would have been motivated to implement the database of Junqua using the well-known query language of SQL as taught by Julia, for the benefit of providing “a standard interactive and programming language for getting information from and updating a database” as taught by Julia. Pet. 20 (citing Ex. 1005, 8:56–64, 9:2–18; Ex. 1003 ¶¶ 28, 74). We determine for the reasons given that converting the text in searchable form to a database query as taught by Junqua, where the database query is written in the well-known query language of SQL as taught by Julia, does no more than yield the predictable result of getting information from a database using the standard programming language of (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Ordinary Skill in the Art Claim 31 depends from claim 21. The Petition has demonstrated, by a preponderance of the evidence, that claim 21 would have been obvious over the combination of Junqua and Julia, as discussed in our analysis above. Claim 31 recites “wherein the location/proximity module consists of a radio frequency identification reader.” Petitioner, relying on testimony of Mr. McNair, contends Amitay teaches this limitation. Opp. 12 (citing Ex. 1018, 6:17–19, 6:37–41; Ex. 1022 ¶ 58). Amitay discloses a location sensor which may be an RF reader. Ex. 1018, 6:17–19, 6:37–41. For the reasons given, we determine that Amitay teaches this limitation. Claim 31 recites “the location/proximity device consists of an art museum exhibit equipped with a radio frequency identification tag.” Petitioner contends that Amitay combined with the knowledge of a person of ordinary skill teaches this limitation. Opp. 12–14 (citing Ex. 1018, 6:27– 32, 7:32–33; Ex. 1027; Ex. 1022 ¶¶ 34, 58). Patent Owner contends that Amitay does not teach tagging art exhibits with RFID tags. Mot. 18. We disagree with Patent Owner’s contention that Amitay alone does not teach this limitation, because, as Petitioner demonstrates, Amitay combined with the knowledge of a person of ordinary skill teaches this limitation. Amitay discloses tagging an item with an RFID tag. Ex. 1018, 7:31–33. Mr. McNair testifies that tagging an art museum exhibit with an RFID tag was within the knowledge of a person of ordinary skill in the art. Ex. 1022 ¶ 34 (citing Ex. 1026). Mr. McNair also testifies that using an” slip op. at 21
- Skill levelOther
“We disagree with Patent Owner’s contention that Amitay alone does not teach this limitation, because, as Petitioner demonstrates, Amitay combined with the knowledge of a person of ordinary skill teaches this limitation. Amitay discloses tagging an item with an RFID tag. Ex. 1018, 7:31–33. Mr. McNair testifies that tagging an art museum exhibit with an RFID tag was within the knowledge of a person of ordinary skill in the art. Ex. 1022 ¶ 34 (citing Ex. 1026). Mr. McNair also testifies that using an guests about art museum exhibits was known in the art. Id. (citing Ex. 1027, 78–79, 84–87). Mr. McNair testifies that using the device of Junqua, Julia, and Amitay to provide information about art exhibits to museum guests yields the known benefit of reducing museum costs by providing virtual docents instead of human ones. Id. (citing Ex. 1027, 86). We rely on the testimony and supporting evidence of Mr. McNair to determine that Amitay combined with the knowledge of a person of ordinary skill teaches this limitation.” slip op. at 21
Patent outcomesUS 7,376,645 unpatentable§ 103 obviousnesscites KSRPatents in suitUS 7,376,645 - Microsoft Corporation v. Iron Oak Technologies, LLCAll claims unpatentablePTAB · May 7, 2020 · IPR2019-00107 · APJ Arthur M Peslak · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Oberlander and obvious over Oberlander or Dutta and Oberlander; the remaining alternative grounds were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art in the field of the ’658 patent would have a “Bachelor’s degree in computer 7 No evidence of objective indicia of non-obviousness is in the record. engineering, computer science, electrical engineering, physics or a similar discipline” and “at least two years of relevant experience including, for example, work related to computer and telecommunications networking.” Pet. 8 (citing Ex. 1003 ¶ 32). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. Based on the foregoing, we adopt Petitioner’s definition of the level of ordinary skill in the art because it appears reasonable and consistent with the disclosure of the ’658 patent and the prior art of record.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on all the evidence of record and the parties’ respective arguments, we determine that express construction of these claim terms is not necessary for the purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”). To the extent necessary, claim terms will be construed below when addressing the parties’ arguments.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Patent Owner’s contention is based on an implicit construction of “associated with” which requires that communication attributes be present in the structure of the data base shown in Oberlander’s Figure 5. However, Patent Owner does not provide any arguments or intrinsic evidence in support of such a construction. See PO Resp. 2–3. Further, a plain and ordinary meaning of the word “associated” is “related, connected, or combined together.” See https://www.merriam-webster.com/dictionary/ associated. Consequently, the relevant inquiry is not whether communication attributes are present in the same table as the Oberlander’s network lists but rather whether the network lists are related to, connected to, or combined with communication attributes.” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner’s contention is based on an implicit construction of “associated with” which requires that communication attributes be present in the structure of the data base shown in Oberlander’s Figure 5. However, Patent Owner does not provide any arguments or intrinsic evidence in support of such a construction. See PO Resp. 2–3. Further, a plain and ordinary meaning of the word “associated” is “related, connected, or combined together.” See https://www.merriam-webster.com/dictionary/ associated. Consequently, the relevant inquiry is not whether communication attributes are present in the same table as the Oberlander’s network lists but rather whether the network lists are related to, connected to, or combined with communication attributes. Oberlander’s message 300 contains attributes field 310 that includes various attributes of a message including “message priority,” as noted by Petitioner, and “message logical size.” Ex. 1005, 3:66–4:9; see also Ex. 1003 ¶ 125 (“attributes help determine which network . . . the message will be routed on.”) (citing Ex. 1005 4:62–5:1). Figure 7b of Oberlander, discloses “a graphical representation of a logic function that delimits messages based upon size.” Id. at 5:58–59, Fig. 7b. Oberlander further discloses in connection with Figure 9 that “the attribute 310 values of the received message 300 are applied to the logic function of the retrieved record at block 912 by NMM 115. At block 914 a check is performed by NMM 115 to determine whether the logic function is true or false” based on the message attribute value. Id. at 8:47–51, Fig. 9. If the logic function is true at step 914, “flow proceeds to block 918, where the network ID list stored in field 505 of the retrieved record is written by NMM 115 into Null field 308 of the message 300.” Id. at 8:61–64, Fig. 9. As discussed above, message 300 includes attributes field 310. Id. at Fig. 9. Patent Owner confirms that this is the process by which Oberlander’s logic functions are used. See Sur-reply 6, 8–10. As a result, in the case of the logic function shown in Figure 7b, the network ID list stored in field 505 is related to (i.e., “associated with”) the communication attribute of message size. See also Ex. 1003 ¶ 125. Based on the arguments and evidence presented by Petitioner discussed above and after considering Patent Owner’s arguments, we determine that Petitioner establishes that Oberlander discloses the limitation “each ordered list associated with one of a plurality of communication attributes.”” slip op. at 21
Patent outcomesUS 5,966,658 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 5,966,658
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.