- Micron Technology, Inc. v. Innovative Memory Systems, Inc.Some claims unpatentablePTAB · Apr 1, 2020 · IPR2016-00330 · APJ Kevin W Cherry · IPR · Remand
On remand, claims 21, 22, 27, 32, 33, and 38 remain unpatentable; claims 1, 2, 5, 6, 11, 12, 15, 23, 43, 44, 47, and 48 were not shown unpatentable because Tanaka lacks the required …
RulingsRemand decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, the zones contain blocks that are already assigned for address translation. As discussed above, the properly construed remaining language in the claim then requires a controller that can adjust boundaries between zones of assigned blocks “such that blocks from one logical zone are shifted to another logical zone.” Id. Given this analysis and the Federal Circuit’s construction, we agree with Patent Owner that “adjusting blocks that are not yet assigned to logical zones to replace defective blocks that are already assigned to logical zones is not enough to satisfy the claim limitations.” PO Br. 2. Indeed, Federal Circuit noted that our original analysis found that “Tanaka discloses taking” slip op. at 13
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012). While a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2013–00004, Paper 53, at 62 (PTAB Mar. 13, 2014) (Final Written Decision). Patent Owner’s Motion to Exclude contains such improper arguments, and is in the nature of a sur-reply. Moreover, for the reasons discussed above (see supra Section II.B.2), we find Petitioner’s arguments involving “spare” blocks unpersuasive. For these reasons, Patent Owner’s Motion to Exclude Paragraph 24 of Dr. Subramanian’s Reply Declaration as presenting new arguments is denied.” slip op. at 21
Patent outcomesUS 6,901,498 mixed§ 103 obviousnessPatents in suitUS 6,901,498 - Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Institution deniedPTAB · Apr 16, 2019 · IPR2018-01660 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution of IPR on claims 1 and 10, exercising § 314(a) discretion because the General Plastic factors favored denying the follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“challenged claims 1 and 10 of the ’899 patent in the ’392IPR. Prelim. Resp. 10. With respect to factor 2, Patent Owner asserts that Petitioner knew of the two references asserted in its sole ground for challenge in the present proceeding (see Pet. 4–5, 17) at the time of filing the ’392IPR in December of 2017. Prelim. Resp. 11. Patent Owner argues that, at the time of filing the earlier ’392IPR and ’376IPR, “not only was Petitioner aware of both Slemmer and Cohen, it had already developed the obviousness argument based on those references that it relies on in this petition.” Id. According to Patent Owner, in the ’392IPR, Petitioner challenged the ’899 patent based on a combination of Slemmer and Vu (U.S. Patent No. 5,623,601) as evidenced by “many other prior art references that also teach [the handshake limitations missing from Slemmer],” including “U.S. Patent No. 6,389,462 to Cohen.” Prelim. Resp. 11–12 (alteration in original) (citing Ex. 2001, 5, 16, 23). Having reviewed Patent Owner’s arguments and the cited evidence, we agree that Petitioner knew about the prior art now asserted when it first challenged claims 1 and 10, and we are persuaded that factors 1 and 2 weigh in favor of exercising discretion to deny institution of the present proceeding.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’899 patent.” slip op. at 2
Discretionary denialPatents in suitUS 8,725,899 - Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Institution deniedPTAB · Apr 16, 2019 · IPR2018-01668 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution on claims 1 and 24, finding the General Plastic factors favored discretionary denial of the follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Patent Owner, in the ’376IPR, Petitioner challenged the ’266 patent based on a combination of Slemmer and Vu (U.S. Patent No. 5,623,601) as evidenced by “many other prior art references that also teach [the handshake limitations missing from Slemmer],” including “U.S. Patent No. 6,389,462 to Cohen.” Id. at 11–12 (citing Ex. 2001, 5, 20, 28). Having reviewed Patent Owner’s arguments and the cited evidence, we agree that Petitioner knew about the prior art now asserted when it first challenged claims 1 and 24, and we are persuaded that factors 1 and 2 weigh in favor of exercising our discretion to deny institution of the present proceeding on the basis of 35 U.S.C. § 314(a).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’266 patent.” slip op. at 2
Discretionary denialPatents in suitUS 8,266,266 - Nokia Of America Corporation v. Blackberry Ltd.Rehearing deniedPTAB · Oct 19, 2018 · IPR2018-00583 · APJ Aaron W Moore · IPR · Rehearing
The Board denied Nokia’s rehearing request, leaving institution denied for claims 5–17 because Cherian did not disclose the claimed antenna configuration information for the second or third component carrier.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Because Petitioner has not shown that we abused our discretion in denying institution, the Request for Rehearing is denied. 1 37 C.F.R. § 42.108(c) provides that “a genuine issue of material fact created by . . . testimonial evidence will be viewed in the light most favorable to the petitioner . . . for purposes of deciding whether to institute an inter partes review.” This does not require that we institute whenever there is conflicting testimony, or that every fact issue be resolved in the petitioner’s favor. We only need view the issue in the light most favorable to the petitioner. We did so here.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“. . . to ‘the number of Nxcarriers,’ constituting the number of data traffic channels” and that “[e]ach different channel . . . requires . . . a separate antenna port.” Ex. 1008 ¶ 85. This means that the NxParamsCount field would reflect the number of antennas/ports used for all data channels, not “antenna configuration for the second component carrier,” as recited in claims 1 and 14, or “antenna configuration for the third component carrier,” as recited in claim 14. For example, if there were four data channels, the NxParamsCount field would be set to four, even though, according to Dr. Min, the “second component carrier” and “third component carrier” would each have only one antenna. There is no genuine issue of fact warranting institution because we find Petitioner’s evidence insufficient even if we accept it as true.1 IV. CONCLUSION We denied institution because we found Petitioner failed to show how Cherian’s NxParamsCount value discloses “antenna configuration information”––including a number of ports/antennas––for “the second component carrier” or the “third component carrier.” Further review of the Petition and the Min Declaration, in light of Petitioner’s Rehearing Request, does not lead us to a different conclusion.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that Cherian does not disclose each and every element arranged as recited in the claim, as required for anticipation. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 9,253,772 - Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing deniedPTAB · Aug 22, 2018 · IPR2018-00392 · APJ Stephen C Siu · IPR · Rehearing
The Board denied rehearing of its denial of institution on the obviousness ground over Slemmer and Vu, finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). A 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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3
- BurdenDecided for patent owner
“35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 8. These arguments were previously addressed. Decision 6–7. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,725,899 - Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing deniedPTAB · Aug 22, 2018 · IPR2018-00376 · APJ Stephen C Siu · IPR · Rehearing
The Board denied rehearing and upheld denial of institution on the Slemmer and Vu obviousness ground because the petition did not show a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on a petition, the Board reviews 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). A 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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 9. These arguments were previously addressed. Decision 7–8. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“construction for the term ‘TCP connection hand shake completion data,’ which resulted in an incorrect determination.” Req. Reh’g. 5. In particular, Petitioner now proposes a broadest reasonable construction of the term “TCP connection hand shake completion data” to mean “two devices initiating a communication session by the first device sending information to a second device, and the second device then responding to the first device.” Req. Reh’g. 7. Based on this newly proposed construction of the term “TCP connection hand shake completion data,” Petitioner argues that Vu discloses this feature. Req. Reh’g. 6–8. Under 37 C.F.R. § 42.71(d), Petitioner must “identify all matters [Petitioner] believes the Board misapprehended or overlooked.” Petitioner did not present this proposed construction in the Petition. See generally Req. Reh’g.; see generally Pet. We could not have “misapprehended or overlooked” what was not presented.” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,266,266 - Apple Inc. / Fitbit, Inc. v. Valencell, Inc.Some claims unpatentablePTAB · Aug 6, 2018 · IPR2017-00319 · APJ James B Arpin · IPR · Final written decision
Claims 1–2 and 6–13 are unpatentable as obvious; claims 3–5 were not shown unpatentable over the asserted grounds.
RulingsFinal written decision- BurdenFwd mixedMixed
“demonstrated by a preponderance of the evidence that claims 1, 2, and 6–13 of the ’941 patent are unpatentable based on the challenges asserted in the Petition, but that Petitioner fails demonstrated by a preponderance of the evidence that claims 3–5 of the ’941 patent are unpatentable based on the challenges asserted in the Petition. In particular, we determine that:” slip op. at 77
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “physiological information” (Claims 1–13) Petitioner argues that the Specification of the ’941 patent provides an” slip op. at 10
- ExcludeOther
“Although Patent Owner filed objections to evidence submitted with the Petition (Paper 14) and Petitioner filed objections to evidence submitted with Patent Owner’s Preliminary Response (Paper 12) and to evidence submitted with the Patent Owner Response (Paper 23), neither party filed a Motion to Exclude. Consequently, these objections are deemed waived. 37 C.F.R. § 42.64(c) (“A motion to exclude evidence must be filed to preserve any objection.”). Petitioner also filed a list of alleged” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“IV. PROCEDURAL ISSUES Patent Owner objects to the use of inter partes reviews as unconstitutional based, at least, upon the reasons presented in the petition for certiorari that was granted in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. PO Resp. 38; see Reply 21. On April 24, 2018, the U.S. Supreme Court upheld the constitutionality of inter partes review; thus, Patent Owner’s arguments are moot. Oil States Energy Servcs. LLC v. Greene’s Energy Grp., LLC, 138 S.Ct. 1365, 1370 (2018).” slip op. at 78
Patent outcomesUS 8,923,941 mixedClaim constructioncites KSR · GrahamPatents in suitUS 8,923,941 - PTAB · Jul 26, 2018 · IPR2017-01903 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Power Integrations’ rehearing request, leaving institution denied because it did not show Mammano and the SMP3 Datasheet were publicly accessible printed publications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. 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, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 9 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 9 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“we should find that Mammano is a printed publication consistent with the requirements of In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Reh’g Req. 10; see id. at 7–10. We decline to draw now the conclusions argued for the first time in this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments. Thus, Petitioner’s submission of new arguments and evidence in its Request for Rehearing is both improper and unpersuasive.” slip op. at 7
- BurdenDecided for patent owner
“Reh’g Req. 13–14. Although we did not require that Petitioner show “every possible detail,” we did require Petitioner to make a threshold showing. In finding that Petitioner failed to make the necessary threshold showing, we applied the standard clearly set forth by our reviewing court in Blue Calypso, Kyocera Wireless, and SRI International to Petitioner’s arguments and evidence. Inst. Dec. 9. A request for rehearing is not an opportunity to reargue positions, elaborate on previous positions, or to disagree with the analysis or conclusions of the panel. See Nestlé Purina Petcare Co. v. Oil-Dri Corp. of Amer., Case IPR2015-00737, slip op. at 8 (PTAB Feb. 9, 2017) (Paper 39) (“Merely disagreeing with our analysis or conclusions does not serve as a proper basis for a request for rehearing.”).” slip op. at 10
§ 102 anticipation - Apple Inc. v. Andrea Electronics Corp.Some claims unpatentablePTAB · Jul 12, 2018 · IPR2017-00627 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–5, 10–16, 21–23, 25, and 38–46 are unpatentable; claims 6–9, 17–20, 24, and 47 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Although the dictionary defines “periodically” as “from time to time” or “at regular intervals of time,” based on the record before us, we agree with Patent Owner that its proposed construction is how one skilled in the art would have understood that term in the context of the ’345 patent Specification. Turning first to the intrinsic evidence, the Specification explains that “[t]he future and current minimum values are calculated continuously and initiated periodically, for example, every 5 seconds.” Ex. 1001, 8:37–39. Although the Specification later notes that “[i]t will be appreciated that, while specific values are used as in the several equations and calculations employed in the present invention, these values may be different than those shown” (id. at 8:64–67), this passage does not mean that the Specification contemplates arrangements where “periodically” is simply “from time to time.” Rather, we determine that statement from the Specification indicates that the specific amount of time (i.e., every 5 seconds) may vary. Turning now to the extrinsic evidence, the testimony of Dr. Douglas supports our conclusion, explaining that “at regular intervals of time” is the “only . . . definition . . . consistent with the understanding of a person skilled in the art in light of the specification of the ’345 Patent and its use in the particular field of audio signal processing” because [l]ike the “period” of an audio signal itself, which is the amount of time it takes for a signal to repeat itself, “periodically” as recited in claims 6 and 9 and throughout the remainder of the specification of the ’345 Patent refers to actions that occur at regular intervals (e.g., every 5 seconds rather than merely “from time to time”). Ex. 2002 ¶ 48. Moreover, Petitioner’s declarant, Dr. Hochwald testifies that outside of the context of the ’345 patent Specification, “periodically” means “at regular time intervals” (Ex. 2005, 99:13–15), and when asked about that term’s meaning in the context of the ’345 patent Specification, Dr. Hochwald simply noted that “all I can do is read what it says,” which is that “[i]t’s doing something periodically, for example, every five seconds” (id. at 100:4–6). Accordingly, the testimony from Dr. Douglas, as well as that from Dr. Hochwald, supports Patent Owner’s construction. In summary, we adopt Patent Owner’s construction of “periodically,” requiring “at regular intervals of time,” because (1) this is consistent with how this term is used in the context of the ’345 Patent Specification; and (2) this is supported by the testimony of both experts.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Patent Owner responds that, because Helf uses average values (i.e., the average of eight consecutive values), it does not disclose using a minimum value. PO Resp. 17–23. Patent Owner acknowledges that the ’345 patent, itself, uses a “smoothing process [that] produces frequency bins with multiple smoothed magnitude values, ultimately finding the minimum of all of the values,” but contends that “Helf’s averaging process produces a single output representing one average of the original samples.” Id. at 20–21 (underlining omitted) (citing Ex. 1001, 8:14–28; Ex. 2002 ¶¶ 52, 63–72). We disagree with Patent Owner’s characterization of the differences between Helf and the ’345 patent. While Helf may ultimately produce a single minimum value, as discussed above, that value is based on a minimum value of the averages calculated over the given time period. At oral hearing, Patent Owner acknowledged that Helf determines many averages values (i.e., the averages of the eight consecutive frames) and determines a minimum of those values. See, e.g., Tr. 22:2–6. The claim simply requires a “future minimum value,” and does not preclude that value from being a minimum value taken from a set of average values. Indeed, such an interpretation of the claim would be inconsistent with the ’345 patent’s use of smoothed values noted by Patent Owner. Ex. 1001, 8:14–28. The testimony of Dr. Douglas cited by Patent Owner does not convince us otherwise. See Ex. 2002 ¶¶ 52, 63–72 (effectively repeating Patent Owner’s contentions, which are unpersuasive for the reasons set forth above). Accordingly, we are persuaded that Helf’s minimum value (Mk) corresponds to the “future minimum value” recited in claims 4 and 39.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“With respect to its “running minimum estimator,” Helf explains that the “running minimum estimator” is used “when either the speech signal is never absent for more than a second or the background noise itself is never constant in spectral shape.” Ex. 1010, 8:11–15. Helf acknowledges that its “running minimum estimator” is “much less accura[te]” than its “stationary estimator,” which is typically used for background noise estimates. Id. at 8:15–17. As a result, Helf only uses its “running minimum estimator” if “[i]t has been more than 10 seconds since the last update of the background noise spectral estimate due to the Stationary Estimator,” and “[t]he difference, D, between the past background noise estimate, which may have resulted from the Stationary Estimator or the Running Minimum Estimator, and the current Running Minimum Estimator is great.” Id. at 8:32–42. We see no persuasive reason to set Helf’s current background noise estimate (Nk and Ck, considered the “current minimum” by Petitioner) to the minimum estimate (Mk) from the “running minimum estimator” (considered the “future minimum” by Petitioner). The testimony of Dr. Douglas supports this conclusion. See, e.g., Ex. 2002 ¶¶ 119, 120. Addressing the portions of Helf noted above, Dr. Douglas testifies that “Helf only relies on Mk in a ‘worst case’ scenario” and “disfavors the use of Mk, even where Bk is unavailable,” and concludes that “one of ordinary skill would not be motivated to force the use of the disfavored Mk every ten seconds even where the much more accurate Bk estimate is available.” Id. ¶ 119. Dr. Douglas further testifies that “one of ordinary skill would not have been motivated to abandon[] the comparison of D to a threshold” because “one of ordinary skill in the art would recognize that Helf is a signal-dependent system, and it would not abandon its ability to adapt to varying signal conditions in favor of a blind periodic update using a disfavored estimate.” Id. ¶ 120. We credit the testimony of Dr. Douglas over that of Dr. Hochwald in this regard. See Ex. 1004 ¶¶ 157–159; Ex. 2002 ¶¶ 115–120. The testimony from Dr. Douglas is consistent with the disclosure of Helf, while that of Dr. Hochwald is based on conclusory statements. For example, the only portions of Dr. Hochwald’s testimony cited in the Petition in connection with the rationale provided in this challenge are conclusory statements that “[a] person of ordinary skill would have found it obvious to modify Helf to update the background noise estimate after every 10 second period based on the teachings of Martin,” and “[t]he skilled person would have recognized it was beneficial to periodically update the minimum noise value to ensure it accurately reflected the current noise level,” which are contrary to the disclosure of Helf noted above. Ex. 1004 ¶¶ 158, 159.” slip op. at 21
- Expert testimonyPatent owner expert creditedPetitioner expert discountedOther
“We see no persuasive reason to set Helf’s current background noise estimate (Nk and Ck, considered the “current minimum” by Petitioner) to the minimum estimate (Mk) from the “running minimum estimator” (considered the “future minimum” by Petitioner). The testimony of Dr. Douglas supports this conclusion. See, e.g., Ex. 2002 ¶¶ 119, 120. Addressing the portions of Helf noted above, Dr. Douglas testifies that “Helf only relies on Mk in a ‘worst case’ scenario” and “disfavors the use of Mk, even where Bk is unavailable,” and concludes that “one of ordinary skill would not be motivated to force the use of the disfavored Mk every ten seconds even where the much more accurate Bk estimate is available.” Id. ¶ 119. Dr. Douglas further testifies that “one of ordinary skill would not have been motivated to abandon[] the comparison of D to a threshold” because “one of ordinary skill in the art would recognize that Helf is a signal-dependent system, and it would not abandon its ability to adapt to varying signal conditions in favor of a blind periodic update using a disfavored estimate.” Id. ¶ 120. We credit the testimony of Dr. Douglas over that of Dr. Hochwald in this regard. See Ex. 1004 ¶¶ 157–159; Ex. 2002 ¶¶ 115–120. The testimony from Dr. Douglas is consistent with the disclosure of Helf, while that of Dr. Hochwald is based on conclusory statements. For example, the only portions of Dr. Hochwald’s testimony cited in the Petition in connection with the rationale provided in this challenge are conclusory statements that “[a] person of ordinary skill would have found it obvious to modify Helf to update the background noise estimate after every 10 second period based on the teachings of Martin,” and “[t]he skilled person would have recognized it was beneficial to periodically update the minimum noise value to ensure it accurately reflected the current noise level,” which are contrary to the disclosure of Helf noted above. Ex. 1004 ¶¶ 158, 159.” slip op. at 21
Patent outcomesUS 6,363,345 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,363,345 - Apple Inc. v. Andrea Electronics Corp.Some claims unpatentablePTAB · Jul 12, 2018 · IPR2017-00626 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–3, 12–25, 38, and 47 are unpatentable; claims 4–11 and 39–46 are not shown unpatentable, chiefly because the proposed Hirsch–Martin combination was not supported.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“In its Reply, Petitioner contends that, “[i]n this configuration [where W = 1], any purported distinction between windows and sub-windows in Martin vanishes and [Patent Owner]’s argument is irrelevant,” acknowledging that the proposed modification eliminates Martin’s sub-windows. Pet. Reply 5. Petitioner further contends that Patent Owner “incorrectly argues that the use of sub-windows is central to Martin’s algorithm” and “[n]othing in Martin suggests that the use of sub-windows is required.” Id. at 7 (citing Ex. 1023 ¶¶ 6–8). We disagree with Petitioner, and credit the testimony of Dr. Douglas over that of Dr. Hochwald with respect to Martin’s use of sub-windows because, as discussed below, Dr. Hochwald’s testimony is not consistent with the disclosure of Martin, while the testimony of Dr. Douglas is consistent with that disclosure. See, e.g., Ex. 1023 ¶¶ 6–9 (asserting that Martin does not expressly require sub-windows); Ex. 2002 ¶¶ 94–96 (discussing Martin’s use of at least two sub-windows for monotonic determination). As noted above, Martin’s algorithm requires a determination of whether or not “the minimum power of the last W windows with M samples each is monotonically increasing.” Ex. 1006, 1094. We are not persuaded by Petitioner’s argument that one skilled in the art would have found it obvious to modify Hirsch’s system based on a scenario from Martin where W = 1 because such a scenario is counter to the entire purpose of Martin. Even Petitioner’s Declarant, Dr. Hochwald, acknowledges that a single data point (i.e., W = 1) cannot be used to determine whether something is monotonically increasing. See Ex. 2005 69:10–17 (explaining that you need at least two data points to make such a determination, meaning W ≥ 2). Petitioner fails to provide persuasive reasoning as to why one skilled in the art would have modified Hirsch’s teachings in a manner that is contrary to the express disclosure of Martin.” slip op. at 14
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner attempts to cure these deficiencies in its Reply, contending that, “[e]ven where Martin’s algorithm is configured to use multiple sub-windows, it still teaches the claimed ‘future minimum.’” Pet. Reply 8. We do not consider this new argument, as it is a new theory of unpatentability presented for the first time in the Petitioner’s Reply. See Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed Cir. 2016) (“A patent owner . . . is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of [unpatentability].”) (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)). For at least these reasons, Petitioner has failed to establish by a preponderance of the evidence that claims 4–11, 39–42, and 46 are unpatentable over the combined teachings of Hirsch and Martin.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Hirsch is directed to “techniques . . . to estimate the noise spectra or the noise characteristics for noisy speech signals” that “can be combined with a nonlinear spectral subtraction scheme.” Ex. 1005, 153. Hirsch discusses use of “FFT based spectral analysis” (id. at 154), for example, which Petitioner cites as corresponding to the “generating the frequency spectrum of said audio signal thereby generating frequency bins of said audio signal” recited in claim 1 (Pet. 27). Hirsch discusses use of an “adaptive threshold” for each frequency bin to distinguish between speech and noise (Ex. 1005, 153), which Petitioner cites as corresponding to the “setting a threshold for each frequency bin using a noise estimation process” recited in claim 1 (Pet. 27). Hirsch describes comparing spectral components to their corresponding thresholds to determine if speech is present (Ex. 1005, 153), which Petitioner cites as corresponding to the “detecting for each frequency bin whether the magnitude of the frequency bin is less than the corresponding threshold, thereby detecting the position of noise elements for each frequency bin” recited in claim 1 (Pet. 27–28). Based on the record before us, we are persuaded that Hirsch discloses each and every element of claim 1. We also are persuaded that Hirsch discloses each and every element of claim 38 for the reasons discussed above in connection with claim 1, as well as the “subtracting said noise elements . . . from said audio signal” additionally recited in claim 38. With respect to the recited “subtracting,” Petitioner cites Hirsch’s discussion of spectral subtraction. Pet. 25–26 (citing Ex. 1005, 153–155). As Petitioner notes, “[t]he spectral subtraction technique shown in Hirsch subtracts the noise estimate from each sub-band or ‘bin’ and sets any negative values to zero” (id. (citing Ex. 1005, 153)), which “is the same technique used in the ’345 patent” (id. (citing Ex. 1001, 6:58–61, 7:16–27)). Claims 2, 3, 12, 13, 21, and 23 depend from claim 1, and Petitioner cites to relevant portions of Hirsch as disclosing the additional limitations of those claims. See Pet. 28–31. We are persuaded by Petitioner’s unrebutted arguments and evidence related to how Hirsch properly accounts for each and every element of these dependent claims, which we adopt for purposes of this decision. Specifically, we find that Hirsch discloses the additional limitations recited in those claims based on the citations to Hirsch therein and the supporting expert testimony. See id. Based on our review of the record before us, the preponderance of the evidence supports Petitioner’s contentions that claims 1–3, 12, 13, 21, 23, and 38 are anticipated by Hirsch.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“Initially, we agree with Petitioner that one skilled in the art would have considered Martin’s teachings, generally, when reviewing the teachings of Hirsch, as Martin is specifically referenced in Hirsch itself. Nevertheless, we are not persuaded that one skilled in the art would have modified Hisch’s system based on the teachings of Martin in the particular manner proposed by Petitioner. Consistent with Patent Owner’s contentions noted above, Martin describes determining “[t]he noise power estimate is based on the minimum of signal power within a window of L samples” and “[f]or reasons of computational complexity and delay the data window of length L is decomposed into W windows of length M such that M * W = L,” and provides an example where W=4. Ex. 1006, 1094. Martin distinguishes between “slowly varying noise power” and “rapidly varying noise power” to determine its noise power estimate, with a determination of whether the minimum power in successive sub-windows is monotonically increasing central to its estimation. Id. “If the minimum power of the last W windows with M samples each is monotonically increasing we decide on rapid noise power variation” and “the noise power estimate equals the power minimum of the last M samples Pn(i) = PMmin(i = r * M).” Id. “In case of non monotonic power the noise power estimate is set to the minimum of the length L window.” Id. Regardless of whether the noise power calculation is that for “slowly varying noise power” or “rapidly varying noise power,” Martin requires that first a determination is made as to whether or not “the minimum power of the last W windows with M samples each is monotonically increasing.” Id. (emphasis added). To the extent there can be any dispute on this issue, the testimony from Dr. Douglas supports the understanding that at least two subwindows are required to determine which noise power calculation to use. See Ex. 2002 ¶¶ 95, 96. In its Reply, Petitioner contends that, “[i]n this configuration [where” slip op. at 13
Patent outcomesUS 6,363,345 mixed§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,363,345
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.