• Microsoft Corporation And Microsoft Mobile, Inc. v. Global Touch Solutions, LLCAll claims unpatentable
  PTAB · Dec 28, 2016 · IPR2015-01928 · APJ Justin Busch · IPR · Final written decision

  Claims 1, 3, and 20 are unpatentable as obvious over Jahagirdar and Schultz because their combination would have been a predictable substitution of familiar touch sensors for keys.

  RulingsFinal written decision

  • BurdenUnpatentable

    “III. CONCLUSION Based on the evidence and arguments, Petitioner has demonstrated, by a preponderance of the evidence, that claims 1, 3, and 20 of the ’494 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Jahagirdar and Schultz. IV. ORDER Accordingly, it is: ORDERED that claims 1, 3, and 20 of the ’494 patent have been shown to be unpatentable; and” slip op. at 19

  • Skill levelOther

    “touch sensors were not limited by size or arrangement, and a person of ordinary skill could have taken the Schultz sensors and put them into touch sensors the size of the buttons on Jahagirdar. Ex. 1017, 138:17–21, 140:2– 13. Additionally, as Dr. Morley acknowledges, the claims of the ’494 patent contain no limitations as to the physical form, internal architecture, or arrangement of the touch sensors. Id. at 172:12–173:10. Patent Owner presents no argument that the proposed combination would have been beyond the capabilities or knowledge of a person having ordinary skill in the art. As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of” slip op. at 11

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

    “As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results.”). Patent Owner does not point us to objective evidence of nonobviousness to overcome the textbook case of obviousness here.” slip op. at 11

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

    “Notwithstanding Patent Owner’s position that the proposed combination would increase accidental actuations when grabbing or holding Jahagirdar’s mobile station, Petitioner points to Dr. Morley’s testimony that touch sensors would alleviate accidental actuation by inanimate objects (e.g., “clothes, objects in a bag, [and] surfaces of furniture”). Pet. Reply 2 (citing Ex. 1017, 157:20–158:23; Ex. 2006 ¶ 63). Accordingly, Petitioner argues a person having ordinary skill in the art looking to reduce inadvertent actuation by inanimate objects would be motivated to incorporate Schultz’s touch sensor. Id. at 2–3 (citing Ex. 1023 ¶¶ 4–5). Moreover, Petitioner’s unrebutted evidence in the record demonstrates Schultz’s touch sensor could have been integrated into Jahagirdar’s keys 144 in multiple ways, depending upon what might have been convenient or desirable. Id. at 3–4 (citing Ex. 1015 ¶ 75); Ex. 1023 ¶ 5. For example, a person of ordinary skill would have been readily able to relocate those touch sensors to different locations, or “one of skill could have easily programmed Jahagirdar’s controller such that touch sensor inputs were only recognized at appropriate times for example, depending on whether the mobile station 102 was opened or closed.” Ex. 1015 ¶ 75. In such a way, inadvertent actuation of the touch sensors would be minimized or eliminated.” slip op. at 13

  Patent outcomesUS 7,265,494 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,265,494
• Toshiba America Information Systems, Inc. / Apple Inc. v. Global Touch Solutions, LLCAll claims unpatentable
  PTAB · Dec 28, 2016 · IPR2015-01616 · APJ Justin Busch · IPR · Final written decision

  Claims 1–3, 19, and 20 are unpatentable as obvious over Layman and Beard, with Rathmann additionally for claim 19 and APA additionally for claim 20.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “We have reviewed the Petition, Patent Owner Response, and Petitioner’s Reply, as well as the relevant evidence discussed therein. For the reasons that follow, we determine Petitioner has shown, by a preponderance of the evidence, that the challenged claims would have been obvious in view of the asserted combined teachings of the asserted references.” slip op. at 5

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

    “We agree with Petitioner’s arguments, as supported by testimony from Mr. Beard, that the combination of Layman and Beard teaches or suggests the uncontested limitations recited in claim 1 as well as the additional limitations recited in dependent claims 2 and 3, and we adopt those assertions as our findings. See Pet. 35–43, 50–51. For example, Petitioner points to Layman’s power management system 28 (electronic unit) connected to an infusion pump system (product), including pump circuits 34 (load), and to power sources (both an AC power source and a battery) through an electrical circuit as meeting the preamble of claim 1. Id. at 35– 37. Petitioner argues Layman’s disclosure of processor 42 providing a control signal to turn power to pump circuits 34 on or off in response to a signal received from switch 38 meets the recited microchip that controls “the flow of power from the power source to activate the load.” Id. at 38. Petitioner contends Layman’s switch 38 is not a serial element in the power circuit because switch 38 merely sends a signal to processor 42, which controls whether the pump is powered on, and that switch 38, therefore, teaches the recited switch. Id. at 38–39. Petitioner relies on Beard for teaching a touch sensor used to activate the battery capacity display. Id. at 39–40. We find the disclosures in Rathmann and APA relied upon by Petitioner teach or suggest the additional limitations recited in claims 19 and 20, respectively, id. at 52–55, and that a person having ordinary skill in the art would have had reason to combine Rathmann’s asserted teachings as proposed, id. at 30–34. We discuss the disputed limitations of independent claim 1 and the rationale for combining the asserted teachings from Layman and Beard in more detail below.” slip op. at 8

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

    “All of Patent Owner’s challenges to Petitioner’s rationale assume the proposed combination replaces Layman’s battery with the battery disclosed in Beard. See, e.g., PO Resp. 8 (“While the Petition suggests replacing Layman’s battery with that of Beard would be desirable . . . .”) Petitioner does not suggest such a replacement. Rather, Petitioner asserts “[a] POSITA would have been especially motivated to combine Layman with Beard’s power-saving touch switch activated display in light of Layman’s stated desire for features that extend battery life and increase the time between battery replacements.” Pet. 28 (emphasis added). Petitioner reiterated its position, asserting that Patent Owner’s arguments do “not address Petitioner’s motivation arguments,” which are no “more than an obvious substitution of elements that were well known in the prior art.” Pet. Reply 2. Petitioner merely proposes incorporating Beard’s teaching of a touch switch activated display into Layman’s system. Pet. Reply 7 (arguing “the Petition analyzed whether one of ordinary skill would have found it obvious to incorporate a touch-sensor activated display such as in Beard into Layman’s system”). As discussed above, Petitioner has presented reasons with rational underpinning as to why a person having ordinary skill in the art would look to integrate Beard’s touch sensor activated display with Layman. We find Petitioner’s arguments persuasive, and we adopt those reasons as the rationale for combining the cited teachings of Beard with the cited teachings of Layman.” slip op. at 12

  Patent outcomesUS 7,265,494 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,265,494
• Kamstrup A/S v. Apator Miitors ApsAll claims unpatentable
  PTAB · Dec 20, 2016 · IPR2015-01403 · APJ John F Horvath · IPR · Final written decision

  Claims 1–13 are unpatentable: claims 1, 2, 6, and 7 are anticipated by Nielsen; the remaining claims are unpatentable on the listed obviousness grounds.

  RulingsFinal written decision

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

    “reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest reasonable interpretation, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The only term Petitioner asks us to construe is the term “seal” recited in claim 8. Pet. 21. Petitioner argues the term means a “legal” or “tamper-evident” seal. Id. Patent Owner does not dispute this interpretation, and does not ask us to construe any claim terms. We decline to construe the term “seal” because it is not necessary to resolve any controversy. See Vivid Techs., 200 F.3d at 803. We need not expressly construe any other term, as the terms are deemed to have their plain and ordinary meaning.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In his Declaration, Mr. Skallebæk indicated his position as Senior Vice President for Petitioner. Ex. 1018 ¶ 1. He further declared that he had read the Petition and the Exhibits thereto, and swore that all statements in the Declaration were true and correct, and signed the Declaration. Id. ¶ 2. In his deposition, Mr. Skallebæk testified that although he receives an annual salary from Petitioner, his compensation is independent of the outcome of this proceeding. Ex. 2007, 16:10–17:20. The evidence does not show that Mr. Skallebæk has any other financial interest in the outcome of the case. We duly note the interest of Mr. Skallebæk as an Officer of Petitioner in our consideration and weighing of his testimony. See Ethicon Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir. 1998). We do not consider the fact that someone else first drafted Mr. Skallebæk’s Declaration, which he reviewed and signed, to diminish the credibility of his testimony in any way.” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “In his Declaration, Mr. Drachmann declares a “mechanics6” file was attached to the first Tunheim email and a “UFM++venture” file was attached to both the Bjerngaard and second Tunheim emails. Ex. 2008 ¶¶ 5–10. Although the body of the first Tunheim email refers to a mechanical meter assembly and indicates a sample is attached, there are no indicia in either the body or header of the email indicating a file is attached, let alone a file entitled “mechanics6.” See Ex. 2009, 1, 3. Thus, the only evidence that the “mechanics6” file was attached to the first Tunheim email is the Drachmann Declaration. See Ex. 2008 ¶ 5. Moreover, the only evidence that the first Tunheim email was actually sent to Mr. Tunheim is the Drachmann Declaration. Id. ¶ 5. A similar analysis of the Bjerngaard and second Tunheim emails leads to a similar conclusion, i.e., that the only evidence that a “UFM++venture” file was attached to these emails, or that these emails were sent to their intended recipients is the Drachmann Declaration. Id. ¶¶ 6–7; Ex. 2010 1, 3; Ex. 2011 1, 3. Patent Owner has provided no evidence corroborating Mr. Drachmann’s testimony on these points, such as a reply email from Mr. Tunheim or Mr. Bjerngaard, or a declaration from Mr. Tunheim or Mr. Bjerngaard stating he had received the emails on the dates indicated. See Ex. 2008 ¶¶ 5–7. Moreover, even assuming the first and second Tunheim emails and the Bjerngaard email were sent on the dates indicated and included the “mechanics6” and “UFM++venture” files as attachments, this evidence by itself is insufficient to prove conception of the invention prior to March 22, 2010, because it does not show that the inventors were in possession of every element of the claims. For example, each of independent claims 1, 12, and 13 requires “a housing for the transducers and electronic circuit,” and neither the “mechanics6” file nor the “UFM++venture” file shows transducers located within a housing as required by the claims. See Ex. 2009, 4; Ex. 2010, 4–24; Ex. 2011, 54–74. As Petitioner correctly notes, although the devices are referred to as ultrasonic flowmeters in Exhibits 2010 and 2011, “the presence of ‘at least one ultrasonic transducer’ actually inside the device is not apparent in any of the Exhibits themselves, and could be located elsewhere in the fluid flow and still be fully consistent with the content of the Exhibits.” Pet. Reply 2–3. Patent Owner also relies on the “mechanics7” drawings to prove prior conception of independent claims 1, 12, and 13. See Ex. 2008 ¶¶ 14, 21, 22. Although these drawings show the transducers within the housing, Patent Owner presents no evidence indicating these drawings were shown to another person. See Coleman, 754 F.2d at 359 (“Conception must be proved by corroborating evidence which shows that the inventor disclosed to others his completed thought expressed in such clear terms as to enable those skilled in the art to make the invention”) (emphasis added) (internal quotations and citation omitted).” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “D. Unpatentability of Claims 1, 2, 6, and 7 over Nielsen Petitioner argues Nielsen teaches all the limitations of claims 1, 2, 6, and 7, and therefore, anticipates these claims. Pet. 49–53. Nielsen discloses an ultrasonic flow meter that can be used as either a water or gas meter. Ex. 1016 ¶ 28. The flow meter includes flow meter housing 120 with measuring tube 114, and an attached water tight casing that encloses printed circuit board 202 and transducers 206.5 Id. ¶ 35. Nielsen’s casing consists of top part 134 hermetically sealed to bottom membrane 132 via soldering, laser welding, or glue. Id. ¶¶ 35, 44. The bottom membrane 132 includes first and second recesses 236 for seating transducers 206, and flow meter housing 120 includes first and second holes for receiving the first and second recesses. Id. ¶ 38. Bracing 116 is provided to lock the casing to housing 120 via one or more screws. Id. ¶ 40. 5 Petitioner maps Nielsen’s flow meter housing 120 (which includes measuring tube 114) to the claimed “flow channel,” and Nielsen’s water-tight casing (which contains a circuit board and transducers) to the claimed “housing.” See Pet. 50; Ex. 1016 ¶ 35. Figure 2 of Nielsen is reproduced below. Figure 2 is an exploded view of an ultrasonic flow meter as taught by Nielsen. Petitioner demonstrates, by a preponderance of evidence, that Nielsen discloses each of the limitations required by claims 1, 2, 6, and 7. See Pet. 49–53. Based on Nielsen’s disclosure, discussed supra, we find Petitioner’s analysis persuasive and adopt it as our own. Patent Owner does not contest” slip op. at 10

  Patent outcomesUS 8,893,559 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,893,559
• Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.Some claims unpatentable
  PTAB · Dec 15, 2016 · IPR2015-01457 · APJ Jameson Lee · IPR · Final written decision

  Claims 2–5, 8, 9, 15–18, and 22–24 are unpatentable as obvious over Ejzak and Cisco or Intel; claim 10 was not shown unpatentable over either combination.

  RulingsFinal written decision

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

    “First, the above-reproduced figure does not appear in the Specification of the ’640 patent. Rather, it is a creation of the Patent Owner. The figure creates the impression that a “part” necessarily is a “device.” Patent Owner, however, does not provide adequate support for such a narrow reading of 14 “part.” Although a “device” is a “part” of a telecommunications network, that does not mean a “part” has to be a “device.” Even Dr. Akl, Patent Owner’s expert, testified only that a “device” is a “part” of a telecommunications network and not that a “part” of a telecommunications network has to be a “device.” Ex. 2006 ¶ 56. Second, the figure also creates the impression that neither a domain nor a region would identify a device. But Patent Owner does not provide adequate support for such a narrow reading of “domain” and “region.” In that regard, Dr. Akl, Patent Owner’s expert, testifies only that a “device” is neither a “domain” nor a “region,” not that a “domain” or a “region” would not or could not identify a “device.” Id. By assuming that a “part” of a telecommunications system has to be a “device,” and by assuming that neither “domain” nor “region” would identify one or more devices, Patent Owner sees an alleged contradiction in allowing media connectivity setting to be as we have construed it, and the phrase that immediately follows the claim term—“identifying one or more other devices.” Because of that alleged contradiction, Patent Owner contends that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunication network.”” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Claim 10 recites, among other limitations, an additional requirement of determining from said bypass mode data that said media gateway “must” be bypassed in said media path. That is in contrast with the language of claim 9, which also depends from claim 8, and which recites, among other limitations, the additional requirement of determining from said bypass mode data that said media gateway “may” be bypassed in said media path. Neither Petitioner nor Patent Owner proposes an express construction for the word “must.” In the circumstances here, the plain and ordinary meaning of “must” in the English language applies. There is no indication that one with ordinary skill in the art would understand the word as conveying something different. The Specification of the ’640 patent does not set forth a special definition of “must.” Also, consistent with the plain and ordinary meaning of “must,” the Specification of the ’640 patent distinguishes between “must” and “may”: It may be determined from the retrieved bypass mode data that the media gateway may be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication setup request message. It may be determined from the retrieved bypass mode data that the media gateway must be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication session setup request message. Ex. 1101, 12:35–42 (emphasis added). 34 We determine that “must,” when applied to an action, such as bypassing a media gateway as recited in claim 10, eliminates not taking that action as a possibility and precludes the not taking of that action. In that regard, the different language used between claims 9 and 10 further supports the distinction between the absolute nature of “must” as used in claim 10 and the permissive nature of “may” as used in claim 9. In that regard, as is noted by Patent Owner, Petitioner’s witness, Mr. Bress, agrees that the permissive nature of “may” does not meet the absolute requirement of “must.” PO Resp. 43 (citing Ex. 2004, 123:7–124:5).” slip op. at 34

  • Skill levelDecided for patent owner

    “Level of Ordinary Skill in the Art Petitioner asserts: As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the 18 telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). C.” slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “49 media gateways. In that connection, we credit the testimony of Petitioner’s witness, Mr. Bress, over the testimony of Patent Owner’s witness, Mr. Akl, in part because Mr. Bress discusses and explains more of the disclosure of Ejzak. Patent Owner’s argument that it is possible to obtain the media connectivity setting of the ensuing device by requesting the ensuing device for such information (PO Resp. 38) is ineffective with respect to claim 4, which does not specify from where the information is retrieved. Retrieving information from the ensuing device nonetheless still is retrieving. With respect to claim 5 which requires retrieving the information from within the given media gateway, not the ensuing device, we have determined that Petitioner has not stablished that Ejzak necessarily discloses retrieving such information from within the storage of the given gateway. Patent Owner’s argument that the claim limitation of “retrieving ensuing device connectivity data for an ensuing device” would not have been regard by one with ordinary skill in the art as an obvious variant of Ejzak’s determining the IP realm for the next segment of the media path is not supported by sufficient reasoning and explanation directed to Ejzak’s disclosure of provisioning IP realms of media gateways as identified and explained by Petitioner. Between the testimony of respective expert witnesses of Petitioner and Patent Owner, we credit the testimony of Mr. Bress, Petitioner’s witness, over that of Mr. Akl, Patent Owner’s witness. Mr. Bress’s testimony, in our view, is more thorough, whereas Mr. Aky’s testimony, in our view, focuses more on what a prior art 50 disclosure literally states without enough explanation as to the understanding by one with ordinary skill in the art of the teachings associated with that language.” slip op. at 49

  Patent outcomesUS 8,687,640 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,687,640
• Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.All claims unpatentable
  PTAB · Dec 15, 2016 · IPR2015-01456 · APJ Jameson Lee · IPR · Final written decision

  Claims 1, 6, 7, 11–12, 19–21, and 25–31 are unpatentable as obvious over Ejzak and Cisco and over Ejzak and Intel.

  RulingsFinal written decision

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

    “discussed below, Patent Owner is unpersuasive in arguing (PO Resp. 18–19) that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunications network.” (Emphasis added). Specifically, we determine that the requirement of “identifying one or more other devices” does not exclude information describing domains or regions of a telecommunications network from satisfying the claimed “at least one media connectivity setting identifying one or more other devices.” Patent Owner presents its argument as follows: A “device” is a “part” of a telecommunications network, such as an endpoint or media gateway. Ex. 1001 [’640 Patent] at 11:46 (“a device (endpoint device or media gateway)”); see also Ex. 2006 [Akl Declaration] at ¶ 56. A “device” is neither a “domain” nor a “region” of a telecommunications network. Ex. 2006 [Akl Declaration] at ¶ 56; see also Ex. 2004 [Bress Transcript 1] at 137:15–18 [footnote omitted] and 142:7–11 [footnote omitted]. The following figure demonstrates the relationships between parts, domain, and regions and their associated media connectivity settings:” slip op. at 14

  • Skill levelSkill level board ownOther

    “As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “37), and based on our discussion of media gateway above, we find that each pair of ALG and associated BG in Ejzak constitutes a media gateway.6 This was a determination first made in the initial decision (Dec. Inst. 21), and Patent Owner put forth no contrary position in the Patent Owner Response. Tr. 48:7–18. Petitioner additionally argues that it would have been obvious to one with ordinary skill to combine each pair of ALG and associated BG in a single physical device, in view of Ejzak alone, because it was well-known in the art that the signaling and media functions of the ALG and BG could be implemented in a single physical device. Pet. 20–21.7 That contingent argument is unnecessary, because none of the claims requires the media gateway to be in the form of a single physical device, such as a unified 6 In particular, each ALG and associated BG pair is a distributed mode SBC (Session Border Controller). 7 Petitioner cites to Cisco and Intel, respectively, as teaching that signaling and media functions can be performed by a single physical device. Pet. 21. In particular, Cisco discloses that SBCs come in two different models, a distributed model and a unified model, and that in the unified model the signaling and media functions are performed not by separate units but by a single operative unit. Ex. 1010, 2. model SBC. Even if we assume that a single physical device is required by the claims, then for reasons expressed by Petitioner, we determine that it would have been obvious to one with ordinary skill in the art, based on the disclosure of Ejzak, to implement Ejzak’s ALG and corresponding BG in a single physical device.8 In that regard, Cisco was cited by Petitioner to show what was well known to one with ordinary skill in the art. In any event, for the reasons indicated by Petitioner on pages 21–25 of the Petition, Cisco would have suggested to one with ordinary skill in the art to implement Ejzak’s ALG and corresponding BG in a single physical device.9” slip op. at 24

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

    “In summary, traversed-realm attribute is information about a preceding BG or media gateway including the BG, and that information identifies devices in a traversed IP realm which are accessible from that BG or media gateway. Ejzak discloses limitation [1e]. For limitation [1f], which recites “to enable bypass of said media gateway in said media path if an ensuing device in said outbound signaling path determines that such bypass should be conducted,” Petitioner provides persuasive explanation on pages 16–17, 29–30, and 36–37 of the Petition. For instance, Petitioner explains that in Ejzak, if there is a match between a preceding BG’s IP realm and the next IP realm, one or more BGs may be bypassed. Pet. 16, 30. Petitioner cites to “Case 1,” described in Ejzak, as one example. Pet. 16–17. Ejzak describes: An example of case 1, using FIG. 1 as reference, is that upon receiving an SDP offer from the direction of UA1, ALG3 determines that R4 125 and R1 107 are instances of the same IP realm. ALG3 substitutes the connection and port information from UA1 into the outgoing SDP offer and deletes the traversed-realm instances for R2 113 and R3 119 from the SDP before forwarding. After the end-to-end SDP offer/answer transaction is completed, the media path will bypass BG1 105, BG2 111, and BG3 117. Ex. 1003 ¶ 74. Petitioner also relies on “Case 3,” described in Ejzak, as another example. Pet. 17, 30. Ejzak describes:” slip op. at 27

  Patent outcomesUS 8,687,640 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,687,640
• Samsung Electronics Co., Ltd. / Samsung Display Co., Ltd et al. v. Surpass Tech Innovation LLCAll claims unpatentable
  PTAB · Sep 6, 2016 · IPR2015-00887 · APJ Beth Z Shaw · IPR · Final written decision

  Claims 1–5 are unpatentable under § 103 as obvious over the instituted combinations of Janssen ’708 with Horii or APA, and Kubota for claims 4–5.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We adopt Petitioner’s proposed constructions for the terms “date lines” and “insulated with each other,” as we determine them to be consistent with the broadest reasonable construction. See Pet. 14–15. We interpret “date lines” as “data lines.” Id. We interpret “insulated with each other” to mean “spaced apart from and parallel to each other.” Id. We preliminarily interpreted these phrases the same way when we instituted trial. Dec. 7. These interpretations are consistent with the Specification’s figures and description of gate lines and data lines being orthogonally crossed. Ex. 1001, 1:45–45, Figs. 1A, 1B, 4–7; Ex. 1013 ¶¶ 33–34. We agree that when reading the description of gate lines and data lines being “orthogonally crossed,” and when viewing the figures of the ’550 patent, a person of ordinary skill in the art would understand that because of the insulation, these lines are not in physical contact with each other. Pet. 15 (citing Ex. 1013 ¶¶ 33–34). We determine that we need not construe any other limitations of the challenged claims.” slip op. at 7

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

    “As stated in KSR, “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Here, a person of ordinary skill in the art would have recognized that the gate drivers of Horii would have made the device of Janssen ’708 functional. Thus, we agree with and adopt Petitioner’s reasoning for the combination of Horii and Janssen ’708. See Pet. 41–42; Ex. 1013 ¶ 60.” slip op. at 11

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Thus, based on the totality of the evidence before us, we are not persuaded that Janssen ’708 is directed to a lamp display as Patent Owner argues. See PO Resp. 15–28. We find that Janssen ’708 is relevant prior art to the field of LCD technology.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We give Dr. Liu’s testimony substantial weight because this testimony is consistent with both Janssen ’708’s disclosure of video displays and with other evidence of record. As Dr. Liu explains, and as disclosed by Exhibits 1005, 1007, 1022–1024, 1026, 1027, and 1029–1031, thin film transistors are predominantly used to electronically access individual pixels (to charge or discharge the voltages on the pixel electrodes and thereby adjust their brightness) in a LCD device. Ex. 1020 ¶ 11. The amount of current that a thin film transistor conducts in the ON state (or conductive state) is very low (less than one thousandth of an ampere). Id. This very low amount of current is only adequate to charge or discharge a small capacitive load, such as a liquid crystal cell capacitance, and is insufficient to adequately drive a resistive load, such as an incandescent lamp. Id. Incandescent lamps are resistive devices that inherently require a relatively large amount of current (from a few tenths of amperes to tens of amperes) to produce a suitable light output. Id. A single thin film transistor, or even multiple thin film transistors, cannot source such a high level of current. Id. We find that Dr. Liu’s testimony outweighs the other equivocal evidence presented by Patent Owner. In particular, Dr. Liu explains that a person of ordinary skill in the art would understand that Janssen ’708 shows an active matrix liquid crystal display (“AMLCD”) driving circuit for an LCD pixel because a person of ordinary skill in the art would have understood that, by the time the application underlying Janssen ’708 was filed in 2001, the “video display” disclosed in Janssen ’708 with a row-column matrix of pixels is an AMLCD display that uses thin-film transistors” slip op. at 16

  Patent outcomesUS 7,420,550 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,420,550
• Toyota Motor Corporation v. Blitzsafe Texas, LLCRehearing denied
  PTAB · Aug 31, 2016 · IPR2016-00419 · APJ Hung H Bui · IPR · Rehearing

  The Board denied Toyota’s rehearing request, leaving in place the denial of institution for claims 49–57, 62–64, 66, 68, 70, 71, 73–80, 94, 95, 97, 99–103, 106, 109–111, 113, 115, and 120 because Ohmura did …

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We have reviewed Petitioner’s request for rehearing and carefully considered Petitioner’s arguments. However, we are not persuaded that the Board misapprehended or overlooked Petitioner’s arguments presented with respect to the patentability of claims 49–57, 62–64, 66, 68, 70, 71, 73–80, 94, 95, 97, 99–103, 106, 109–111, 113, 115, and 120 of the ’342 patent.” slip op. at 2

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

    “In contrast, all challenged claims of the ’342 patent require (1) “the portable device” to play (i.e., decode) an audio file, and (2) “the integration subsystem” to receive “audio generated by the portable device.” As explained in the Decision, we referred to the requirement that audio generated by the portable device as the result of playing the audio file as “the audio generated by the portable device” limitation, which was consistent with Dr. Thomas Matheson’s Declaration at ¶¶ 50–53. Decision 23; see also Matheson’s Declaration (Ex. 1120 ¶¶ 50–53).” slip op. at 5

  • Strike new argumentNew argument disregardedDenied

    “Second, Petitioner identifies numerous portions of Ohmura, for the first time, that it did not identify in the Petition or Reply. In particular, Petitioner contends the Board “misapprehended or overlooked the cited portions of Ohmura that disclose the functions of the construed ‘integration subsystem.’” See Req. Reh’g 10. However, we could not have misapprehended or overlooked portions of Ohmura that were not presented in the Petition or Reply. A request for rehearing is not an opportunity to present new arguments.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “As explained in the Decision, we rejected Petitioner’s proposed construction of “integration subsystem” because Petitioner’s proposed construction required the claimed “integration subsystem” to be a microprocessor or processor programmed to perform a method for wirelessly integrating a portable device for use with a car audio/video system, shown in FIG. 24. Decision 13–15. Instead, we construed the term “integration subsystem” as performing the functions as expressly defined by the Specification of the ’342 patent. Id. at 15 (citing Ex. 1101, 8:64–9:3).” slip op. at 7

  Claim construction
  Patents in suitUS 8,155,342
• LG Electronics Inc. v. Core Wireless Licensing S.A.R.L.Institution denied
  PTAB · Aug 22, 2016 · IPR2016-00986 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on claim 15 under § 314(a), finding the second petition an unjustified serial challenge that fixed deficiencies in the first petition; joinder was dismissed as moot.

  RulingsInstitution decision

  • Other 314aInstitution denied discretionary otherInstitution denied

    “IPR2015-01986. Rather, Petitioner states: “For purposes of this Petition, Petitioner has followed the constructions adopted by the Board in IPR2015- 01986, set forth below. These constructions are relevant to claim 15, either directly or through its dependence on claim 14.” Pet. 12–13. Petitioner no longer relies on Sony or Shiroshita, which we described in the Institution Decision of IPR2015-01986 as not adding to the disclosure of MMS Spec. More importantly, Byers has been added to the combination of MMS Specs. and Nokia, to account for the full extent of the limitation in claim 15 that was at issue in IPR2015-01986, as we have construed it in the Institution Decision of IPR2015-01986. The same is true with respect to Rochkind. Petitioner does not indicate when or how it first became aware of Byers and Rochkind, and does not represent that either Byers or Rochkind reasonably was unavailable to Petitioner at the time of filing of its first petition. These facts suggest this is a case of undesirable incremental- petitioning, where a petitioner relies on a Board decision in a prior proceeding involving the same parties, the same patent, and the same claim, to mount a second attack against a claim after an unsuccessful first attack, by fixing deficiencies, noted by the Board, that should not have been in the first petition.” slip op. at 11

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

    “5. Conclusion For all of the reasons discussed above, and given the limited resources of the Board, we exercise our discretion not to institute review in this proceeding with respect to claim 15. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a). B. Petitioner’s Motion for Joinder Because we do not institute inter partes review of claim 15 on any ground of unpatentability, Petitioner’s Motion for Joinder, which seeks joinder of the instant proceeding with IPR2015-01986, is moot. III. ORDER It is ORDERED that the Petition is denied and no trial or inter partes review is instituted for claim 15 of the ’049 patent on any ground; and” slip op. at 15

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “B. Petitioner’s Motion for Joinder Because we do not institute inter partes review of claim 15 on any ground of unpatentability, Petitioner’s Motion for Joinder, which seeks joinder of the instant proceeding with IPR2015-01986, is moot. III. ORDER It is ORDERED that the Petition is denied and no trial or inter partes review is instituted for claim 15 of the ’049 patent on any ground; and FURTHER ORDERED that Petitioner’s Motion for Joinder is dismissed as moot.” slip op. at 15

  Discretionary denial
  Patents in suitUS 8,165,049
• Mitek Systems, Inc. v. Rothschild Mobile Imaging Innovations, LLCAll claims unpatentable
  PTAB · Jul 20, 2016 · IPR2015-00622 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–31 are unpatentable as obvious: claims 1–3, 7–10, 12–13, 15–16, 19–23, 25–26, 30–31 over Fukunaga and Safai; remaining claims over the specified combinations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the Board must articulate the basis on which it concludes that it would have been obvious to make the claimed invention. In practice, this requires that the Board explain the reasons one of ordinary skill in the art would have been motivated to select the references and to combine them to render the claimed invention obvious.” (emphasis added, internal citation and quotation marks omitted)). A technical expert need not articulate the Graham factors to offer testimony on obviousness so long as our findings are guided by those factors. Although the ultimate conclusion of obviousness of a claimed invention is based on all underlying inquiries outlined in Graham, that ultimate conclusion of obviousness is a question of law with respect to which we do not rely on expert testimony. As we explain above, we have considered the evidence, including Dr. Essa’s testimony, and make our findings in the context of the Graham factors. Moreover, Dr. Essa explains in a cogent and persuasive manner in paragraphs 37, 40, and 44 of his Declaration why a person of ordinary skill in the art at the time of the alleged invention of the ’163 patent would have been motivated to modify the components that operate as an input module of the user terminal (e.g., camera-equipped cellular phone) described in Fukunaga to enable a user to input storage location information regarding each captured image; to include a storage address as part of the “additional information” Fukunaga attaches to an image; and to modify the transmission components of the user terminal of Fukunaga to transmit the inputted associated information with the digital image to the external server for storage, based on the disclosure of Safai, and in view of the fact that Fukunaga and Safai are similarly directed to systems and techniques for storing and retrieving digital images in a server. We are persuaded by Dr. Essa’s reasoning that the modification of Fukunaga to enable a user to input storage location information in the manner described by Safai would have provided the benefits of allowing a user to control and specify the location that each image is stored, providing organization and management for image files and associated information, and helping to facilitate retrieval of such information. See id. ¶ 37. We also are persuaded by Dr. Essa’s reasoning that a skilled person would have been motivated to look to Safai to modify Fukunaga’s disclosed system and processes to associate a storage address with an image, as disclosed by Safai (see, e.g., Ex. 1004, 11:22–26), particularly given that Fukunaga already discloses associating other information with the an image (see, e.g., 6:48–7:17), and then to transmit the inputted associated information with the digital image file to the external server for storage. Ex. 1010 ¶¶ 40, 44. As Dr. Essa explains, “associating a storage location with an image would have informed the server that stores the image of the precise location to store the image, which may, for example, facilitate image organization and retrieval,” and transmitting that information to the external server for storage would allow the server to store that data for later use in retrieving the image and associated information. Id. We agree further that one skilled in the art would have understood that modifying Fukunaga’s system in such a way would “have been a common sense and predictable modification that was within the realm of knowledge of [such a person] at the time of the alleged invention.” Id. ¶ 40.” slip op. at 39

  • Skill levelOther

    “2. Level of Ordinary Skill in the Art The Petition does not take a position on the level of ordinary skill in the art, although Dr. Essa states his opinion in his Declaration. See Ex. 1010 ¶ 11. Patent Owner does not take a position on the level of ordinary skill. With regard to the level of ordinary skill in the art, we determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 21

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

    “We disagree with Patent Owner’s assertion. Although we construed “storage location information” in the Decision to Institute, we did not separately construe the complete phrase “storage location information being indicative of a storage location on a separate external computing device.” See Dec. 8–10. Substituting the construction of “storage location information” provided in our Decision to Institute into the recited limitation, we do not obtain Patent Owner’s asserted “marked-up version,” but instead obtain: an input module disposed on the camera device for inputting information identifying where data may be stored regarding each captured image, the information identifying where data may be stored being indicative of a storage location on a separate external computing device for storing each digital image after transfer from the digital imaging camera device. Patent Owner does not articulate, nor can we discern, any meaningful difference between “the information identifying where data may be stored being indicative of a storage location on a separate external computing device” and Patent Owner’s suggested construction. To the extent that Patent Owner suggests elsewhere in its Response that the claims require the “storage location information” to indicate a particular location within the recited “separate external computing device”—such as a specific folder within the file system of a “service server” (see PO Resp. 25)—we agree with Petitioner both that the claims and Specification of the ’163 patent do not require indication of an “exact location within” an external device and that even the adoption of Patent Owner’s proposed construction would not so limit the claim scope (Reply 2). Accordingly, we determine that there is no need to construe expressly “storage location information being indicative of a storage location on a separate external computing device” except as follows directly from our construction of “storage location information” provided in the Decision to Institute. Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We conclude that “inciting or providing a cue” is consistent with the Specification. For example, the Specification states that “[t]he prompting step includes displaying at least one question to the user or audibly producing at least one question to the user.” Ex. 1001, 2:41–43. In another example, “the display module may include an audio output device for audibly prompting a user to input information regarding the captured image.” Id. at 2:6–8. Thus, “prompting” means “inciting or providing a cue.” We note, however, that the parties’ respective proposals do not capture the actual dispute as to the meaning of “prompting.” Rather, Patent Owner, in distinguishing Fukunaga (discussed below), argues that Fukunaga describes a user selecting a menu if voice information is to be attached to an image. PO Resp. 35–36. At the oral argument, although Patent Owner would not commit to precise language it would use to make this distinction, Patent Owner essentially argued that the prompting must be automatic, or without any action on the part of the user between capturing an image and prompting the user to input information. Tr. 36:4–37:25. We find no such requirement in the ordinary meaning of “prompting,” as evidenced by Patent Owner’s dictionary definition. Patent Owner also does not point to evidence in the Specification that would support its position. In its most detailed example, describing a user taking pictures of his wife and child during a trip to Las Vegas, the Specification explains that [a]t end of taking pictures or alternatively, immediately after taking each individual picture, the user goes back to the device 100, 200 and using either keystroke input via input module 124 or voice recognition software via a microphone, or any other input means the user is prompted to provide . . . information regarding the pictures, i.e., the images taken (step 304)[, including a file location to store the pictures].” slip op. at 13

  Patent outcomesUS 7,450,163 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,450,163
• Mitek Systems, Inc. v. Rothschild Mobile Imaging Innovations, LLCAll claims unpatentable
  PTAB · Jul 15, 2016 · IPR2015-00621 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–10 are unpatentable under § 103: claims 1, 3, 4, and 7–9 over Nybo and Leonardos; claims 5–6 with Alattar; and claims 2, 9–10 with Miyawaki.

  RulingsFinal written decision

  • Skill levelOther

    “skill in the art, although Dr. Essa expresses an opinion on this subject in his Declaration. See Ex. 1012 ¶ 12. Patent Owner does not take a position on the level of ordinary skill in the art. With regard to the level of ordinary skill 3 At oral argument, counsel for Patent Owner acknowledged having notice, upon institution of trial, of the Board’s determination that Petitioner had shown enough from Nybo alone to account for limitations the Petition relies on Leonardos to show. Tr. 48:14–25, 50:4–13. 4 The record does not contain any evidence of secondary considerations. in the art, we determine that no express finding is necessary, on this record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 13

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

    “Only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 1. “parsing” and “extract” In the Institution Decision, we construed “parsing” and “extract” in this manner: parsing — The broadest reasonable interpretation of “parsing” requires the information that is parsed be previously gathered, collected, or organized in some tangible form, such that it can be broken down from that state. extract — A common term in the English language and requires no construction, given our construction of “parsing,” other than to say that where information has been “parsed” from a larger set of information, it has been “extracted” from the set. Inst. Dec. 6–8. Subsequent to institution of trial, neither party challenged our construction of “parsing” and “extract.” We adopt these same constructions based on the full record.” slip op. at 7

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

    “that “coding” is derived from “encoding.” For instance, Patent Owner does not provide an explanation as to why “encoding” in the originally filed claims was subsequently changed to “coding.” On this record, the evidence is insufficient to support a conclusion that, in the context of the Specification, “coding” means the same as “encoding” or that “coding” and “encoding” are interchangeable. Patent Owner submitted no testimony of any technical witness indicating that one with ordinary skill in the art would have regarded “coding” and “encoding” as necessarily having the same meaning. Thus, we are unpersuaded that whatever the Specification describes about “encoding” similarly applies to and limits “coding.” Even assuming that “coding” and “encoding” are interchangeable, “[a]bsent claim language carrying a narrow meaning, [we] should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.” In re Bigio, 381 F.3d at 1325; Liebel-Flarsheim, 358 F.3d at 906–09. Patent Owner has shown no such disclaimer or disavowal sufficient to limit “coding” to processes that require a form transformation. It is well settled that a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See SuperGuide Corp., 358 F.3d at 875; In re Van Geuns, 988 F.2d at 1184. Although the Specification does describe preferred embodiments wherein that which is subjected to coding is converted from one form to another, e.g., voice to wireless signal, numbers to alphabets, Patent Owner has not pointed to anything in the Specification that conveys or otherwise indicates that form transformation is important. The Specification does not use the word “form,” and no relative advantage or disadvantage is discussed in the Specification for coding with form transformation versus coding without form transformation.” slip op. at 10

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

    “As explained below, we are not persuaded by the entirety of Petitioner’s arguments above. However, also as explained below, those parts of Petitioner’s arguments which we find persuasive are sufficient to demonstrate, notwithstanding Patent Owner’s arguments, that Nybo discloses or renders obvious elements 1(d) and 1(e). The record does not support, and we are unpersuaded by, Petitioner’s contention that the index of unique identifiers referred to in paragraph 58 of Nybo corresponds to unique identifiers referred to in paragraph 44 of Nybo. Although paragraph 44 of Nybo states that various identification data may be used alone or in combination to “uniquely identify” a digital image, the index referred to in paragraph 58 of Nybo, which is a list of unique identifiers, is created for and directed to data structures 122 that contain the images and associated information. Ex. 1007 ¶¶ 44, 58. The two are not the same, particularly in light of Nybo’s disclosure that the use of an index of unique identifiers for data structure 122 merely is optional, to provide quicker access to data structure 122. In that regard, Nybo states: Alternatively, the database 150 may be located at a remote location accessible by the system 100 through a computer network such as the Internet 210. The data structure 122 may be indexed to provide more efficient access to the data structure 122. Id. ¶ 87 (emphasis added). That deficiency in Petitioner’s argument is inconsequential, because” slip op. at 24

  Patent outcomesUS 7,991,792 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,991,792

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.