- Bose Corporation v. Koss CorporationSome claims unpatentablePTAB · Sep 13, 2022 · IPR2021-00612 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–3, 6, 8, 10–13, 16, 18, 20–22, 25, 27, 29–31, 34, 36, 38–43, 46, 48, and 51–56 are unpatentable; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“C. Dr. Williams’ Credibility Patent Owner argues that the testimony of Dr. Williams, Petitioner’s” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Accordingly, we disagree with Patent Owner’s assertion that body 12” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“wireless interfaces, such that it could be used in Rezvani-446’s system.” PO Sur-reply 5. As such, Rezvani-875 would not have suggested to one of ordinary skill in the art that providing a headset with multiple wireless connections would produce undesirable battery drain. Accordingly, we are not persuaded that one of ordinary skill in the art would have been dissuaded from using two wireless connections because of increased battery usage.” slip op. at 28
Patent outcomesUS 10,206,025 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,206,025 - Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGSome claims unpatentablePTAB · Jun 2, 2021 · IPR2020-00190 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1, 2, and 4–7 are unpatentable as obvious over Dooley and von Ilberg 1999; claims 3 and 8 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence at this stage of the proceeding, including the asserted prior art.” Dec. Inst. 21. In its Response, Patent Owner notes that “Dr. Zeng explains that he would particularly emphasize experience relating to designing or developing cochlear implants and hearing aids, or systems for fitting such prostheses to patients,” but indicates that it does not dispute Petitioner’s proposed level of ordinary skill in the art for the purposes of this proceeding. PO Resp. 13 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution. We” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner asserts that the Specification of the ’747 patent defines the term “electric-acoustic processor.” Pet. 20 (citing Ex. 1001, 10:65–67, 11:1–7). In the Decision on Institution, we determined that it was not necessary to construe “electric-acoustic processor” at that stage of the proceeding. Dec. Inst. 22 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner agrees the term “electric-acoustic processor” does not require construction for purposes of this proceeding. PO Resp. 14. Accordingly, we do not expressly construe “electric-acoustic processor” for this Decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“that “configured to generate or apply . . . acoustic stimulation signals to the acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals. Dec. Inst. 28. In its Response, Patent Owner argues that the term should be given its plain meaning and does not require explicit construction. PO Resp. 15–16. Patent Owner adds that: To the extent there is a dispute, Patent Owner agrees with the Board’s reasoning that the “configured to” language does not merely reflect an intended use and requires more than a device that is simply “capable of” generating or applying the recited acoustic or electric stimulation in different or separate configurations. Id. at 16 (citing Dec. Inst. 28). Petitioner does not respond to Patent Owner’s assertion that “configured to generate or apply” should be given its plain meaning but does indicate that it disagrees with our “construction” of the term “configured to.” Pet. Reply 14–15 (citing Dec. Inst. 27–28). Petitioner, however, does not present any reasoning supporting its assertion the Board was wrong or offer any argument regarding how “configured to” should be construed. See generally Pet. Reply. We did not expressly construe “configured to” or “configured to generate or apply” in the Decision on Institution, but, as noted above, we did determine that that “configured to generate or apply . . . acoustic stimulation signals to the acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals. Dec. Inst. 28. Based on the complete record, we still are not persuaded by Petitioner’s argument that “configured to” should be construed as merely “capable of,” and for the reasons in the Decision on Institution, which we adopt here, we determine acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Anderson discloses an embodiment (“the acoustic embodiment”) in which earpiece 10 includes speaker 15 that generates acoustic waves (i.e., acoustic signals) to stimulate the user’s ear. Ex. 1003, 3:58–60, 4:33–35, 5:18–21, 6:63–67, Figs. 1, 2. Anderson also discloses in Figure 10 a different embodiment (“the cochlear implant embodiment”) that combines earpieces 10’ and 10” with a cochlear implant system. Id. at 27:25–45, Fig. 10. In this embodiment, “[s]peakers 15 in the left and right earpieces serve no purpose in the cochlear implant application, as the user is profoundly deaf, and may be disconnected to conserve power.” Id. at 27:52– 55. Because Anderson discloses that the speakers serve no purpose in the cochlear implant embodiment and could be disconnected from power, we determine that the speakers are not used in this embodiment. In addition, Petitioner does not direct us to—nor are we aware of—any disclosure in Anderson indicating that speaker 15 of the cochlear implant embodiment receives a signal that causes the speaker to generate acoustic output. In contrast, Anderson discloses that earpiece headset 21 of Figure 2, which is functionally equivalent to speaker 15 of the acoustic embodiment, receives a modified speech signal and converts this signal to acoustic waves. Ex. 1003, 4:33–35, 5:18–21; see also id. at 6:63–67 (disclosing that speaker 15 produces a processed acoustic signal that corresponds to the ambient acoustic signal detected by microphone 12). embodiment cannot generate or apply acoustic stimulation signals. For these reasons, we determine that speakers 15 in the cochlear implant embodiment are not configured to generate or apply acoustic stimulation signals.” slip op. at 16
Patent outcomesUS 8,155,747 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,155,747 - Fanduel, Inc. / Draftkings, Inc. v. Interactive Games LLCSome claims unpatentablePTAB · Nov 8, 2018 · IPR2017-01333 · APJ George R Hoskins · IPR · Final written decision
Claims 1–3 are unpatentable as obvious over Carter and Barton; claim 6 is unpatentable as obvious over Carter, Barton, and Walker. Claims 1–3 and 6 were not shown unpatentable over Carter and Martin.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“It “remains true in construing patent claims before the PTO” that “the prosecution history . . . serves as intrinsic evidence for purposes of claim construction.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014). “The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review,” such as the present inter partes review. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). Upon our review of the entire record, we agree with the construction of “selectable betting parameter” previously provided by the Board, during ex parte prosecution of the ’952 patent, as set forth above. Therefore, for the reasons provided in that previous Board decision, none of which are disputed here, we apply that construction here. 2.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner
“However, the Federal Circuit has “cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004); Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1327–28 (Fed. Cir. 2002); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We find no such clear disclaimer in the ’952 patent specification that would require Patent Owner’s narrow interpretation of the “corresponding” claim term. In particular, while any given location in the cited example from the ’952 patent corresponds to one value of the parameter so the location “determines the bet input” (Ex. 1001, 2:20–22), there is no clear disclosure that other locations may not correspond to that same parameter. It is only in one “example” that each different location “corresponds to a different roulette number.” Id. at 2:22–24 (emphasis added). Thus, the ’952 patent disclosure does not clearly disclaim multiple different locations each corresponding to the same bet input (number or color). See id. at 2:12–31.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“After full consideration of the foregoing arguments, we conclude Patent Owner’s analysis of the scope of the claim limitation at issue is vague and confusing. That claim limitation is: the first and second selectable betting parameters are different such that selecting one would cause a different result for the bet than selecting the other. Ex. 1001, 35:23–28. Such language, on its own, presents a straight-forward claim requirement. Patent Owner’s overlying varnish suggesting that the claim requires a relationship between the first and second parameters, making them “comparable variables,” is not supported by the claim language at issue, and confuses Patent Owner’s analysis of the prior art at issue. We reject Patent Owner’s implicit claim construction of this claim limitation and determine no explicit claim construction of this limitation is needed to resolve the issues presented by the arguments and evidence of record. 4. Remaining Claim Terms The parties do not offer any further explicit claim constructions. We determine no further explicit claim constructions are needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Patent Owner that Petitioner’s reference to video game experience, as opposed to some other computer gaming experience, is not required to achieve ordinary skill in the art pertinent to the ’952 patent. The ’952 patent is concerned principally with implementing different gaming rules via computer hardware and software as a mobile gaming device moves between jurisdictions; the specific technical implementation of presenting the game on a computer screen is only a secondary consideration. See, e.g., Ex. 1001, Abstract. However, even if we were to accept Petitioner’s position on this point, it would not affect the bases for our decision set forth below. We agree with Petitioner that ordinary skill here requires gaming experience, and does not encompass telecommunications experience without gaming experience. While wireless communication and location tracking are components of the ’952 patent’s claimed invention, the specifics of how such communication and tracking occur is only a secondary consideration. See, e.g., Ex. 1001, Abstract, 1:51–2:11, 7:48–8:12. However, even if we were to accept Patent Owner’s position on this point, it would not affect the bases for our decision set forth below. We determine a person of ordinary skill in the art pertaining to the ’952 patent would have a Bachelor of Science Degree in Electrical Engineering, Computer Engineering, or a similar field. Such a person, further, would have at least about two years of experience designing and developing computer hardware and software to be used for playing games.” slip op. at 18
Patent outcomesUS 9,306,952 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,306,952 - Google Inc. v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Nov 20, 2015 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 19–22 and 24–30 are unpatentable as anticipated by Gough; claims 1–3, 5, 7–10, 12–14, and 21 are not shown unpatentable over the asserted grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. Although Figures 4 and 5 of the ’960 patent show keys that are partially surrounded by shadowing or shading, there is no suggestion in the Specification that the “blended shadow” recited in the claims should be limited to only this shadowing. The claim language itself, referring to a blended shadow of the representation of at least one key and the main image (see claim 24), indicates explicitly that the blended shadow incorporates both the key image and the main image and, thus, should not be limited to the shadowing surrounding the keys. Accordingly, based on the full record, we adopt Petitioner’s proposed construction of “blended shadow” as “a portion of a composite image in which the main image is visible through the overlaid image as a result of combining the data from corresponding pixels from the main and overlaid images” for the purpose of this Final Written Decision. B.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner. Petitioner does not explain adequately where the detailed analysis set forth in the Reply is made in the Petition, and, in any event, we do not find the arguments persuasive. “A patent claim is anticipated if a single prior art reference expressly or inherently discloses every limitation of the claim.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed. Cir. 2014). Here, Petitioner does not describe sufficiently how Gough expressly discloses using logical operators to accomplish the blending process.6 We do not agree that either Gough’s description of the blending process depicted in Figures 10a–10f (Ex. 1007, 10:23–41) or Gough’s description of using the color look-up table (id. at 14:9–19) expressly discloses using logical operators, and such express disclosure is required for anticipation. At best, Petitioner’s arguments suggest how Gough could be envisioned as using logical operators, but do not explain adequately where or how Gough expressly discloses using logical operators to carry out the blending process. For these reasons, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that independent claim 1, and claims 2, 3, 5, 7–10, and 12–14 depending therefrom, are anticipated by Gough.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“3. Harrison Petitioner also argues Harrison teaches certain limitations. Pet. 44, 48, 52–55. Petitioner does not explain what Harrison adds to what is taught by Buxton. See id. at 48 (“[t]o the extent that these features may not be fully disclosed in Buxton, they are clearly disclosed in Harrison”). For purposes of this Final Written Decision, we determine the teachings of Harrison are cumulative to the teachings of Buxton, and therefore, do not address Harrison further.7 4. Claims 1–3, 5, 7–10, and 12–14 Petitioner argues that “Buxton discloses nearly all of the elements and limitations” of the challenged claims. Pet. 42. With respect to claim 1, Petitioner argues that Buxton discloses using alpha blending in accordance with the equation I = αI1 + (1-α)I2, where I is the resulting color intensity, I1 is the color intensity of the foreground image pixel, I2 is the color intensity of the background image pixel, and α is the specified transparency level between 0 and 1. Id. at 43–44 (citing Ex. 1009, 17:17–28). Petitioner argues that Buxton’s alpha blending “permits pixels to be ‘dedicated simultaneously’ to both images in order to produce a composite image” and is an “example of an operation using logical operators to provide different blending effects.” Id. at 44 (citing Ex. 1009, 16:63–17:4). Petitioner contends that although “Buxton may lack explicit disclosure of . . . a touchactivated device (required in claims 1 and 26),” Bier discloses that a touch screen is interchangeable with a mouse. Id. at 44–45. Petitioner also contends that Bier discloses a keyboard superimposed over a display. Id. at 7 Because the asserted ground includes Harrison, we continue to include it as part of our overall analysis.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“After considering all evidence and arguments, we agree with Patent Owner. In particular, we determine that Petitioner’s arguments do not persuade us that Buxton’s alpha blending equation uses operators that manipulate binary values at the bit level, consistent with our construction of “logical operators.” The alpha blending equation unquestionably involves arithmetic operations, which we find differ from logical operations. Furthermore, Petitioner has not shown persuasively whether any logical operations overlap with any arithmetic operations. Therefore, we agree with Patent Owner’s contention that Buxton’s alpha blending equation does not use logical operators.” slip op. at 24
Patent outcomesUS 6,121,960 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,121,960 - Motorola Mobility LLC v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Sep 9, 2015 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–4 and 18 are unpatentable: claims 1 and 2 are anticipated by Boehm, and the challenged claims are obvious over the instituted combinations.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“To remove Boehm as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Boehm; or (2) a conception before the filing date of the Boehm patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). Under either approach, however, it must be proven that conception occurred prior to November 4, 2002. See id. “Conception exists when a definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented, is known.” Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994). Furthermore, “[t]he conception analysis necessarily turns on the inventor’s ability to describe his invention with particularity. Until he can do so, he cannot prove possession of the complete mental picture of the invention.” Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994). Objective evidence that corroborates an inventor’s testimony regarding the conception of the invention is required “because of the danger in post-hoc rationales by an inventor claiming priority.” Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1065 (Fed. Cir. 2005). The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This approach, however, “does not dispense with the requirement for some evidence of independent corroboration.” Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“We agree with Patent Owner that Petitioner’s proposed construction does not take into account properly the “managing the data path” claim language, even given that Petitioner construes only the limitation “a Local Area Network (LAN) routing system” rather than the entire phrase. In any event, we decline to adopt Petitioner’s proposed construction because it erroneously equates a LAN routing system to “a local area network or equivalent circuitry.” We do not view a LAN routing system as being equivalent to a LAN itself or circuitry “equivalent” to a LAN, which Petitioner has not described. We also decline to adopt Patent Owner’s proposed construction, which is not supported adequately. Specifically, Patent Owner does not explain sufficiently why managing the data path necessarily is accomplished “by controlling client devices’ access to the Internet and by controlling access to the client devices from the Internet.” Patent Owner asserts that the Specification of the ’771 patent describes managing the data path “by controlling the client devices’ access to the Internet, such as by requiring authentication before permitting access” and preventing “unauthorized access in the opposite direction by ‘allow[ing] all client devices 30 to share a single external Internet address.’” PO Resp. 5–6 (citing Ex. 1001, 4:1–14); see also Tr. 43:10–14 (stating the Specification “talks about managing as controlling the client devices’ access to the Internet, things like authentication, and controlling access to client devices from the Internet, like sharing a single Internet address”). The Specification, however, does not describe “managing the data path” explicitly, and we are not persuaded that the “managing the data path” claim language necessarily includes the authentication and sharing functions described in the cited passages. As such, Patent Owner’s reliance on the cited passages in its construction seeks to improperly read limitations from the Specification into the claim. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). Dr. Tewfik testifies that “[i]n computer networking, routing systems allow data to be exchanged between networks by forwarding data to a recipient device in one network from a sending device in another network.” Ex. 2004 ¶ 10. Dr. Tewfik further testifies that, “[i]n the ’771 patent, the LAN routing system is the LAN [R]outer 16,” and the LAN routing system allows data to be exchanged between the short-range local network and the Internet. Id. ¶ 11. This testimony is not dissimilar to Dr. Roy’s testimony that a LAN routing system “routes (i.e. communicates) data between a client device that is accessible via a short-range wireless interface and the Internet that is accessible [via] a long range Internet access interface.” Ex. 1012 ¶ 18. Thus, Dr. Tewfik and Dr. Roy essentially are in agreement that a routing system directs (i.e., exchanges, routes, or communicates) data between networks. This meaning is consistent with the Specification of the ’771 patent, which describes LAN Router 16 as “direct[ing] traffic from the access point 12 to the Internet 20 via the fixed WAN interface 18.” Ex. 1001, 3:33–34. Therefore, applying the broadest reasonable interpretation of the claims in light of the Specification, we interpret the phrase “a Local Area Network (LAN) routing system managing the data path between said wireless access point and said Internet access interface” to mean “a system that directs data between a local area network and the Internet by managing the data path between a wireless access point and an Internet access interface.”” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“3. “stand-alone system” In the Decision on Institution, we interpreted “stand-alone system” to mean “a system capable of operating independently of any other system.” Dec. on Inst. 8–9. The parties do not dispute this interpretation (PO Resp. 10; Pet. Reply 13), and we see no reason to modify this interpretation in light of the record developed at trial. Accordingly, we adopt this interpretation for this Final Written Decision. B.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Regarding claim 1, Petitioner argues that Boehm discloses (1) the recited short-range, high-speed wireless access point in the form of wireless access point 325; (2) the recited long-range, wireless Internet access interface in the form of interchangeable network interface 350; and (3) the recited LAN routing system in the form of router 330. Pet. 13. Petitioner also argues that Boehm discloses the recited stand-alone system without the need to access an external service controller server, because Boehm discloses “performing DHCP and network address translation locally rather than by requiring an external server accessible via a long-range network connection to do so.” Id. at 13, 16. With respect to claim 2, Petitioner argues that Boehm discloses using 802.11b wireless communication technology. Id. at 16 (quoting Ex. 1005 ¶ 21).” slip op. at 21
Patent outcomesUS 7,382,771 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,382,771
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.