• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Dec 3, 2018 · IPR2017-01390 · APJ Jeffrey W Abraham · IPR · Final written decision

  The Board held that claims 1–18 were not shown unpatentable because the prior art did not establish the claimed volume concentration in the formed magnetic layer.

  RulingsFinal written decision

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

    “define the term “volume concentration.” In the context of the ’331 patent, “volume concentration” refers to the volume concentration of the magnetic particles in the formed magnetic layer.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(1) a bachelor’s degree in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience in the field of magnetic recording, or (2) a Master’s degree or higher in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, with an emphasis in magnetic recording, and at least three years of experience in the field of magnetic recording. Pet. 12; Ex. 1017 ¶ 60. Although Patent Owner does not expressly define the appropriate level of skill in the art in the Patent Owner Response or its Supplemental Response, Patent Owner’s declarant, Dr. Bain, presents a definition of a person of ordinary skill in the art in his declaration that is nearly identical to Petitioner’s definition. Ex. 2001 ¶ 44. In view of this, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 16

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

    “information, is not sufficient evidence to establish that Mori discloses the “volume concentration” recited in claim 1. Patent Owner does not dispute that there is some magnetic alloy present “in the magnetic layer” of Mori. The relevant question, however, is how much and how Mori’s disclosed values were determined. Unlike the term “volume concentration,” for which the parties offered undisputed evidence regarding accepted meanings of the term in the art (i.e., packing fraction and pigment volume concentration), we have not been directed to similar evidence regarding the phrase “fill rate”/“filling rate” in Mori. Thus, although Mori states “[t]he filling rate by volume of the strongly magnetic alloy powder in the magnetic layer can be equal to or higher than 30%” (Ex. 1003 ¶ 11 (emphasis added)), Petitioner has not offered sufficient evidence demonstrating that the term “filling rate” in Mori refers to a final product-based value. As a result, we find that this language in Mori does not establish, by a preponderance of evidence, that Mori discloses the “volume concentration” recited in claim 1.” slip op. at 21

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “For all of the foregoing reasons, we find that Petitioner has failed to demonstrate, by a preponderance of evidence, that the combined teachings of Aonuma and Mori disclose or suggest “[a] dual layer magnetic recording medium comprising . . . a magnetic upper recording layer formed over [a] lower support layer, the magnetic upper recording layer comprising a volume concentration of at least about 35% of a primary magnetic particulate pigment,” as recited in independent claims 1 and 16. Ex. 1001, 11:14–20, 12:25–31. Claims 2–15, 17, and 18 depend from claim 1 or claim 16, and, therefore, include the “volume concentration” limitation of claims 1 and 16. As a result, we find that Petitioner has failed to demonstrate that Aonuma and Mori disclose or suggest each limitation of claims 1–18, and, therefore, has not demonstrated by a preponderance of evidence that claims 1–18 are unpatentable as obvious over Aonuma and Mori.” slip op. at 26

  Patent outcomesUS 7,115,331 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,115,331
• Fujifilm Corporation v. Sony CorporationSome claims unpatentable
  PTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 15 and 17 are unpatentable as anticipated by Ishikawa; the petitioner did not show claims 1–11, 16, and 18–20 unpatentable over Aonuma or Aonuma and Abe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 8

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

    “the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the purposes of the Decision on Institution, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 9

  • Expert testimonyPetitioner expert creditedMixed

    “considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015 ¶ 45). The Talke Declaration does not address this discrepancy, and Dr. Talke stated during his deposition that reducing the stylus load would reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q: Would reducing the contact pressure for the stylus instrument reduce the scratching of the magnetic tape surface by the stylus? A: Yes, it would, but you have to remember the other problem is the diameter and size of the stylus.”). Moreover, Petitioner provides evidence that it was not uncommon to use stylus-type profilometers to measure the properties of magnetic tape, even after Bhushan was published in 1996. See Reply 6. In particular, Petitioner points to Saliba,6 which describes using a stylus-type profilometer, under identical conditions to those used in Ishikawa, to measure the surface characteristics (including peak-to-valley roughness) of the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner further points to Ohno,7 which also describes using “a stylus type 3D profilometer in accordance with JIS B0601” to measure the surface roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015 ¶ 45 (Ishikawa explaining that surface roughness characteristics were measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba explaining that surface roughness characteristics where measured “in accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the 6 US Patent No. 6,558,774 B1, issued May 6, 2003 (Ex. 1027). 7 U.S. Patent App. Pub. No. US 2005/0175866 A1, published Aug. 11, 2005 (Ex. 1028). evidence establishes that a stylus-type profilometer is a suitable device for measuring the surface characteristics of magnetic tape.” slip op. at 19

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

    “We agree with Petitioner that Ishikawa teaches “peak-to-valley roughness less than about 325 nm” as recited in claim 15. Pet. 24–25; Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five example embodiments of its magnetic tape, and reports the measurements of a number of characteristics of the backcoat layer for each example, including peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses that peak-to-valley roughness Rz was measured using a stylus-type profilometer under the following conditions: Stylus: diameter: 1.5 to 2.5 μm; curvature: 60º Contact pressure: 50 to 300 μN Cut-off length: 80 μm Sampling length: 80 μm Assessment length: 400 μm Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five examples ranged from 58 to 87 nm, as shown in the annotated portion of Ishikawa Table 1 from the Petition, reproduced below: Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa Table 1 shows the results for the measured characteristics of the backcoat layer of Examples 1–5, with the peak-to-valley roughness Rz values highlighted by a red box. Id. Because Ishikawa teaches that the backcoating layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents examples of magnetic tape with backside surfaces having a peak-to-valley roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness less than about 325 nm” as recited in claim 15.” slip op. at 16

  Patent outcomesUS 7,029,774 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01267 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  The Board held claims 1–13 and 15–20 not shown unpatentable over Law and Sasaki because the evidence did not establish the claimed surface properties.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 17–18 (citing Ex. 1003 ¶ 65). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art. B.” slip op. at 8

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

    “reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the purposes of the Institution Decision, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The evidence, however, does not establish that a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0 necessarily results from reducing the size and prevalence of the protrusions on the backside surface of Law’s magnetic tape. As Petitioner agrees, Law and Sasaki do not discuss skew and kurtosis values. See Pet. 29 (stating that Law does not expressly disclose skew or kurtosis values); Reply 23 (recognizing that neither Law nor Sasaki contain express disclosures of skew and kurtosis); Tr. 18:22–23 (Petitioner’s counsel noting that there are no reported skew and kurtosis values in Law or Sasaki). Thus, Petitioner relies on Mr. Isobe’s testimony to establish that reducing the protrusions on Law’s backside surface would result in a skew less than about 0.5 and a kurtosis less than about 4.0. See Pet. 45–49; Ex. 1003 ¶¶ 79–81, 170–174. In that regard, Mr. Isobe testified as follows:” slip op. at 17

  • Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable

    “At best, the evidence establishes that reducing protrusions in Law’s backside coating may result in the surface approaching a Gaussian distribution (namely, a skew of 0 and a kurtosis of 3). See Ex. 1003 ¶ 171 (“By reducing the number of peaks the overall surface may become closer to a Gaussian distribution, which by definition has a skew of zero.” (emphasis added)), ¶ 174 (“As the frequency of large protrusions is reduced, the skew of the backcoat surface approaches 0 and the kurtosis becomes closer to 3.” (emphases added)). There is no evidence of record, however, that establishes the skew and kurtosis values of Law’s backside coating before reducing the protrusions as Petitioner proposes. While it is possible that reducing Law’s protrusions could result in skew and kurtosis values within the claimed range, it is also possible that reducing the protrusions could result in a surface that approaches a Gaussian distribution but still has a skew above 0.5 and a kurtosis above 4.0. See Ex. 2026 ¶¶ 36–60, 77–83, 90; see also PAR Pharm., 773 F.3d at 1195 (Inherency “may not be established by probabilities or possibilities.”). Thus, even if reducing the protrusions on Law’s backside coating caused the surface to approach a Gaussian distribution, that is not sufficient to establish that it necessarily results in a skew less than about 0.5 and a kurtosis less than about 4.0 as claimed. The skew and kurtosis values recited in claims 1 and 20 are not simply properties possessed by any backside coating that otherwise satisfies the structural limitations. Instead, they are recited as limitations on which magnetic recording media fall within the scope of the claims. The evidence of record does not establish that reducing the protrusions in Law’s backside coating, as taught by Sasaki, “would have naturally led to a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0” as Petitioner contends. Pet. 45. Accordingly, on the record before us, we find that Petitioner has not established that claims 1 and 20 would have been obvious over the combined teachings of Law and Sasaki.” slip op. at 21

  Patent outcomesUS 7,029,774 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Nokia Of America Corporation v. Blackberry Ltd.Rehearing denied
  PTAB · 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 anticipation
  Patents in suitUS 9,253,772
• RPX Corporation v. Spycurity LLCRehearing denied
  PTAB · Oct 10, 2018 · IPR2018-00304 · APJ Aaron W Moore · IPR · Rehearing

  The Board denied RPX’s rehearing request, finding no abuse of discretion in denying institution because the Petition lacked a reasoned basis to substitute Dial-Up for Crawford’s call-back connection.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters that were misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

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

    “Why the Petition Failed The Decision found that Petitioner’s combination failed due to the “absence of articulated, rational reasoning to support the substitution of the Dial-Up method of connection for the ‘call back’ described in Crawford.” Decision 14. In other words, the Decision found that Petitioner failed to provide a sufficient rationale for substituting the Dial-Up connection for the conventional, point-to-point modem connection described in the Crawford embodiment that used the ring pattern to cause the user system to call the backup system. That problem remains, as the Request for Rehearing does not address the issue. The combination thus fails before one reaches the question of where in the combination a connection to the Internet might be found. This alone is a sufficient reason to deny the Request for Rehearing.” slip op. at 3

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

    “Why the Petition Failed The Decision found that Petitioner’s combination failed due to the “absence of articulated, rational reasoning to support the substitution of the Dial-Up method of connection for the ‘call back’ described in Crawford.” Decision 14. In other words, the Decision found that Petitioner failed to provide a sufficient rationale for substituting the Dial-Up connection for the conventional, point-to-point modem connection described in the Crawford embodiment that used the ring pattern to cause the user system to call the backup system. That problem remains, as the Request for Rehearing does not address the issue. The combination thus fails before one reaches the question of where in the combination a connection to the Internet might be found. This alone is a sufficient reason to deny the Request for Rehearing.” slip op. at 3

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

    “Claim Construction Petitioner’s argument that we construed the claims to “require[e] that the connection between the host system and the Internet itself be made via the Internet” (Req. Reh’g 2) is incorrect. Petitioner appears to confuse the fact that we found the claims satisfied by such an arrangement in the combination to mean that we required the claims to have that arrangement. Our Decision understood the Petition’s combination to contemplate Dial-Up IP being used to connect to the Internet and then to the backup service over the Internet (e.g., via relay.cs.net). See Decision 12. That understanding was drawn from the Petition, which states, for example, “Crawford, in view of Dial-Up IP, teaches creating a connection between the customer computer . . . and the Internet (through an ISP server) using a communication device . . . connected to the host system.” Petition 34 (emphasis added). Critically, however, the arrangement considered in the Decision included a “connection between the host system and the Internet,” as claimed, specifically an Internet link between the user and the backup system. Because we found the Internet connection claim language would be satisfied in the version of the combination we considered, Petitioner has no reasoned basis for complaining about the constructions.” slip op. at 4

  Claim construction§ 103 obviousness
  Patents in suitUS 5,809,118
• Dexcom, Inc. v. Waveform Technologies, Inc.Some claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-01051 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4–12, and 15–19 were held unpatentable as obvious over Hagiwara; claims 2, 3, 13, and 14 were not shown unpatentable. The motion to amend was granted in part.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “j. Conclusion Regarding Obviousness Based on Hagiwara (Proposed Substitute Claims) We conclude that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara. We conclude that Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 21, 24 and 25 are unpatentable as obvious in view of Hagiwara. 2. Remaining Grounds of Unpatentability Asserted by Petitioner (Proposed Substitute Claims) In view of our determination that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara, we do not reach Petitioner’s remaining grounds of unpatentability as to these claims. Regarding proposed substitute claims 24 and 25, Petitioner’s contentions regarding the Handbook, Wilson, and Say do not remedy the deficiencies in Petitioner’s contentions regarding Hagiwara, as discussed above. Accordingly, we conclude that a preponderance of the evidence does not show that proposed substitute claims 24 and 25 are unpatentable as obvious based on Hagiwara in view of the Handbook, Wilson, or Say. H.” slip op. at 71

  • ExcludeOther

    “As discussed above, we do not reach the Wilson-Based Grounds with respect to claims 1, 4–12, and 15–19 of the ’574 patent. As for claims 2, 3, 13, and 14, we determine that Petitioner has not shown unpatentability based on the Wilson-Based Grounds, even if Exhibit 1037 and the corresponding portions of Petitioner’s Reply (Paper 37) are not excluded, because Petitioner does not offer Exhibit 1037 to cure the deficiency we noted in Wilson. See Section II.F, supra. For this reason, we dismiss as moot Patent Owner’s motion.” slip op. at 72

  • Expert testimonyPetitioner expert discountedPatent owner expert discountedDecided for patent owner

    “sensor would not have been a motivation to combine Hagiwara’s embodiments” because Hagiwara’s catheter prevents damage to the sensor during insertion and because a sensor with a side sensor window creates a greater risk of damage and vascular injury and reduces exposure to blood, as compared with a sensor with an end sensor window. PO Resp. 20–25. We have considered Patent Owner’s arguments, but, for the reasons discussed above, we are persuaded that Petitioner has established a motivation to combine, notwithstanding the conflicting expert testimony regarding the disadvantages of a side sensor window versus an end sensor window. Neither of the expert opinions on this topic is supported by objective facts or data. Ex. 1006 ¶ 155;13 Ex. 2008 ¶¶ 54–57, 87–95; Ex. 2009, 92:8–97:12. For this reason, we give little or no weight to either side’s expert testimony 13 Dr. Vachon cites “WO 01/13102, Vadgama” (Ex. 1006 ¶ 155), however, this reference was not submitted as an exhibit in this proceeding. on this topic. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires the fact finder to credit unsupported assertions of an expert witness). As discussed above, however, there is no disagreement that a side sensor window was a known alternative to an end sensor window. Ex. 1006 ¶¶ 73, 155; Tr. 43:22–44:3. That undisputed fact, together with Petitioner’s other evidence, is sufficient to establish a motivation to combine.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art For purposes of our Institution Decision, we accepted the definition of a person of ordinary skill in the art (“POSITA”) provided by Petitioner’s declarant, Dr. Vachon. Dec. 11 (citing Ex. 1006 ¶ 28). That definition is: a person having a bachelor’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field and at least three years of experience relating to biosensor research and development, or a master’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field, and at least one year of experience relating to biosensor research and development. Id. Patent (https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_ to_amend_11_2017.pdf); Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017); Bosch Automotive Service Solutions, LLC v. Iancu, Order on Petition for Panel Rehearing, No. 2015-1928 (Fed. Cir. Mar. 15, 2018). Owner’s declarant accepts and applies this definition of a POSITA for purposes of his opinions. Ex. 2008 ¶ 30. Neither party’s declarant indicates that any proffered opinion would change depending on the level of ordinary skill in the art. Therefore, consistent with our Institution Decision, we adopt Dr. Vachon’s definition of a POSITA. Ex. 1006 ¶ 28. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 20

  Patent outcomesUS 7,529,574 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,529,574
• Sumitomo Electric Industries, Ltd. v. United Technologies CorporationNo claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-00966 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–4, 8–13, 16, and 17 were not shown unpatentable under either § 103 ground because SEI did not establish a sufficient reason to combine the references.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingNo construction neededDecided for petitioner

    “We disagree. As the Federal Circuit has observed, “[a] preamble is not a claim limitation if the claim body ‘defines a structurally complete invention . . . and uses the preamble only to state a purpose or intended use for the invention.’” Georgetown Rail, 867 F.3d at 1236 (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The fact that the claims were amended to include storage tanks and recirculation loops actually cuts against UTC’s position, as the claim as amended describes a structurally complete invention and reliance on the preamble for this structure is unnecessary. UTC also points to the fact that the Examiner amended the preamble during prosecution, from merely reciting a “flow battery” to a “redox flow battery.” PO Resp. 15. While “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art” (Catalina Mktg., 289 F.3d at 809) may be a reason to view the preamble as limiting, UTC directs us to no evidence here that the Examiner intended the amendment to distinguish the claims from the prior art. Indeed, as UTC acknowledges in its Response, a person of ordinary skill in the art would have understood the ’243 patent to use “‘redox flow battery’ and ‘flow battery’ to mean the same thing.” PO Resp. 13 (emphasis added). If, as UTC concedes, the Examiner’s amendment merely substituted one synonym for another, the amendment could not have changed the scope of the claim or distinguished over the prior art. For these reasons, we conclude that the preamble of the claims is not limiting, and, therefore, we need not construe the term redox flow battery.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “SEI contends that the person of ordinary skill should not be limited to only a degree in chemistry or chemical engineering, because the claimed features of the flow batteries are not directed to chemistry. Pet. Reply 7. We agree, and adopt SEI’s definition of the relevant educational background. While the parties differ as to the number of years of experience in working with flow batteries, we do not consider the difference (one versus two years) to be significant. We find that a person of ordinary skill in the art at the time of invention would be a person with a degree in chemistry, physics, chemical engineering, electrical engineering, or mechanical engineering, who has at least one year of experience designing or testing flow batteries so as to obtain functional knowledge of their structure and operation. We have reviewed the level of skill reflected in the prior art and consider it consistent with this definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “evidence. Our Rule 42.64 provides that a motion to exclude is necessary to preserve any objection, and refers to those objections as “objections to the admissibility” of evidence. See 37 C.F.R. § 42.64(a), (c). The Board’s Trial Practice Guide further explains that a motion to exclude “must explain why the evidence is not admissible.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767. In other words, objections to the timing of late-arising evidence or procedural infirmities are not proper for a motion to exclude. For this reason, the objections raised in UTC’s motion to exclude are improper. First, UTC argues that Exhibit 1066 is untimely under 37 C.F.R. § 42.63(b), which requires a translation of a foreign-language document to be filed with the document. Mot. 5. By UTC’s reasoning, because the Supplemental Declaration revisits Mr. Yagaeshi’s prior translation, but was not submitted with the foreign-language document, it violates the Board’s rules. Id. As this is clearly a procedural objection to the timing of the evidence, as opposed to its admissibility, we deny the motion to exclude on this basis. In any event, even if it were procedurally proper, we would not exclude the Supplemental Declaration on this basis. The Board’s Rule requires only that the original foreign-language document be accompanied by a translation, and there is no dispute that is what happened here. We see nothing in Rule 42.63(b) that prohibits a party to revisit, or even modify, its translation at a later date, given sufficient notice and opportunity to respond by the opposing party. Here, we granted UTC the opportunity to submit its own responsive declaration and address the translation issue at the oral hearing, and UTC did so.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “character as a minus sign, which is consistent with Mr. Yagaeshi’s original translation, makes more grammatical sense in the context of the sentence. We take note of the fact that SEI only changed its position on the translation—and asked Mr. Yagaeshi to correct his prior translation—once UTC made arguments based on the original translation that might be detrimental to SEI’s case. While it is conceivable that SEI only became aware of the alleged error once UTC called attention to it in the Response, we consider it fair to hold SEI to its original interpretation, especially given that that original interpretation is in agreement with Mr. Baldwin’s translation, which has remained consistent since at least 2016. For these reasons, we will interpret the disputed passage of JP228 to read “the potential was negative 0.4V.”” slip op. at 19

  Patent outcomesUS 9,166,243 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,166,243
• LG Electronics, Inc. / LG Electronics U.S.A. Inc. et al. v. Fundamental Innovation Systems International LLCInstitution denied
  PTAB · Jun 28, 2018 · IPR2018-00460 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution on all challenged claims because the same challenge had already been denied in the ZTE/Samsung IPR, and dismissed LG’s joinder motion as moot.

  RulingsInstitution decision

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

    “grounds, arguments, and supporting evidence as the petition in the ZTE/Samsung IPR. Pet. 2 (“This petition is substantially identical to IPR2018-00110.”); Mot. 1 (“[Petitioner’s] Petition is substantively identical to the petition in the ZTE/Samsung IPR—challenging the same claims of the ’550 Patent on the same grounds while relying on the same prior art, arguments, and evidence.”). On May 8, 2018, we denied institution in the ZTE/Samsung IPR. ZTE/Samsung IPR, Paper 12, 13. In view of the identity of the challenge between the present Petition and that filed in the ZTE/Samsung IPR, and for the reasons set forth in the decision denying institution in the ZTE/Samsung IPR, which we hereby incorporate by reference, we likewise do not institute inter partes review in this proceeding. See id. at 7–13.” slip op. at 2

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

    “III. DISMISSING MOTION FOR JOINDER As noted above, Petitioner seeks to join, as a Petitioner, in the ZTE/Samsung IPR. Mot. 1. Because the ZTE/Samsung petition was denied, however, Petitioner’s Motion for Joinder is moot. See 35 U.S.C. § 315(c).” slip op. at 3

  None
  Patents in suitUS 8,624,550
• Hamilton Beach Brands, Inc. v. F’Real Food, LLCRehearing denied
  PTAB · Apr 25, 2018 · IPR2017-00765 · APJ Lora M Green · IPR · Rehearing

  The Board denied Hamilton Beach’s rehearing request and maintained its denial of institution, citing follow-on petition concerns and its discretion under §§ 314(a) and 325(d).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with those principles in mind.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner

    “The Board has discretion not to institute an inter partes review. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”); see also 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”). When exercising that discretion, the Board may take into account whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see Conopco, Inc. v. The Proctor & Gamble Co., Case IPR2014-00628, slip op. 5– 10 (PTAB October 20, 2014) (Paper 21) (declining to institute because substantially the same arguments previously were presented to the Board). The issue of whether substantially the same arguments were raised previously in IPR2016-01105 arises in the present case. In addition, when determining whether to exercise our discretion not to institute a trial proceeding under 35 U.S.C. § 314(a), we seek to balance the equities between the parties, i.e., Petitioner’s desire to be heard against Patent Owner’s interest in avoiding harassment through repeated challenges. 5 Exhibit 1002 in IPR2016-01105. 6 U.S. Patent Publication No. 2002/0189460 A1, filed April 11, 2002, published December 19, 2002, to Brown et al. (“Brown”). Exhibit 1003 in IPR2016-01105. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (post-grant proceedings conducted under the AIA “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). In circumstances such as the present case, the Board considers the potential inequity of a petitioner filing serial attacks against the same claims of a patent, while benefiting from patent owner’s arguments and/or the Board’s decision in prior cases. See, e.g., Nautilus Hyosung Inc. v. Diebold, Inc., Case IPR2017-00426 slip op. at 12–16 (PTAB June 22, 2017) (Paper 17) (citing Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-00034, slip op. at 6–11 (PTAB April 13, 2017) (Paper 9); Baker Hughes Inc. v. LiquidPower Specialty Prods., Inc., Case IPR2016-01896, slip op. at 9–11 (PTAB March 31, 2017) (Paper 10); Duk San Neolux Co., Ltd. v. Idemitsu Kosan Co., Ltd., Case IPR2017-00197, slip op. at 4–11 (PTAB March 31, 2017) (Paper 10); NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134, slip op. at 8 (PTAB May 4, 2016) (Paper 9); Toyota Motor Corp. v. Cellport Sys., Inc., Case IPR2015- 01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7)); see also Conopco, Case IPR2014-00628, slip op. at 11–12. Therefore, we must balance the parties’ competing interests when determining whether to exercise our discretion and decline to institute. Id.” slip op. at 5

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner

    “An important reason for denying institution in the instant proceeding was that Petitioner had the advantage of Patent Owner’s preliminary response in IPR2016-01105, as well as the claim construction and analysis set forth in the decision denying institution in that proceeding. That is, Petitioner had the benefit of that information in crafting the challenges set forth in the instant proceeding, and, thus, was able to address Patent Owner’s arguments made in its preliminary response in IPR2016-01105, as well as address the concerns of the Board set forth in the decision denying institution in IPR2016-01105. Consideration of these factors is consistent with the principles set forth in General Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, 15−19 (PTAB Sept. 6, 2017) (Paper 19) (“General Plastics”) (designated precedential Oct. 18, 2017) (setting forth a non-exhaustive list of factors to be considered in determining whether to institute a follow-on petition, including whether the same petitioner previously filed a petition directed to the same claims of the same patent, and whether, at the time of filing of the second petition, the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition). We noted further that Sato “was published nearly 30 years ago,” and Karkos issued on December 26, 2000. Dec. 11. We determined that Petitioner had not established that those references were not available to Petitioner when it filed the petition in IPR2016-01105. Id. We declined to provide a second chance merely because Petitioner’s “highly experienced searchers” did not find those references before the filing of the petition in IPR2015-01105. Id. (citing Pet. 6). That determination was another factor that informed our decision to exercise our discretion and decline to institute inter partes review in the instant proceeding. See, e.g., General Plastics at 16 (noting that other factors to be considered in granting a follow-on petition are whether at the time of filing of the first petition petitioner knew of the prior art asserted in the second petition or should have known of it, and whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent). Finally, we noted that we were “troubled by the implications of Petitioner’s overarching premise – that it is cost-effective and appropriate to wait for a claim construction and institution decision by the Board, and then launch a follow-on patent challenge in reliance on additional references that challenge the same patent claims already addressed by the Board.” Dec. 13 (citing Pet. 7‒8). As noted in the Decision denying institution, however, “[s]uch tactics increase the costs to Patent Owner and impose unnecessary demands on the finite resources of the Board.” Id.; see, e.g., General Plastics at 16 (noting another factor to be considered is the finite resources of the Board).” slip op. at 7

  • Other 314aInstitution denied discretionary otherDecided for patent owner

    “The Board has discretion not to institute an inter partes review. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”); see also 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”). When exercising that discretion, the Board may take into account whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see Conopco, Inc. v. The Proctor & Gamble Co., Case IPR2014-00628, slip op. 5– 10 (PTAB October 20, 2014) (Paper 21) (declining to institute because substantially the same arguments previously were presented to the Board). The issue of whether substantially the same arguments were raised previously in IPR2016-01105 arises in the present case. In addition, when determining whether to exercise our discretion not to institute a trial proceeding under 35 U.S.C. § 314(a), we seek to balance the equities between the parties, i.e., Petitioner’s desire to be heard against Patent Owner’s interest in avoiding harassment through repeated challenges. 5 Exhibit 1002 in IPR2016-01105. 6 U.S. Patent Publication No. 2002/0189460 A1, filed April 11, 2002, published December 19, 2002, to Brown et al. (“Brown”). Exhibit 1003 in IPR2016-01105. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (post-grant proceedings conducted under the AIA “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). In circumstances such as the present case, the Board considers the potential inequity of a petitioner filing serial attacks against the same claims of a patent, while benefiting from patent owner’s arguments and/or the Board’s decision in prior cases. See, e.g., Nautilus Hyosung Inc. v. Diebold, Inc., Case IPR2017-00426 slip op. at 12–16 (PTAB June 22, 2017) (Paper 17) (citing Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-00034, slip op. at 6–11 (PTAB April 13, 2017) (Paper 9); Baker Hughes Inc. v. LiquidPower Specialty Prods., Inc., Case IPR2016-01896, slip op. at 9–11 (PTAB March 31, 2017) (Paper 10); Duk San Neolux Co., Ltd. v. Idemitsu Kosan Co., Ltd., Case IPR2017-00197, slip op. at 4–11 (PTAB March 31, 2017) (Paper 10); NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134, slip op. at 8 (PTAB May 4, 2016) (Paper 9); Toyota Motor Corp. v. Cellport Sys., Inc., Case IPR2015- 01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7)); see also Conopco, Case IPR2014-00628, slip op. at 11–12. Therefore, we must balance the parties’ competing interests when determining whether to exercise our discretion and decline to institute. Id.” slip op. at 5

  Discretionary denial
  Patents in suitUS 7,520,658
• Netflix, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentable
  PTAB · Feb 28, 2018 · IPR2016-01701 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 3–5, 9, 11, 13–18, and 20 are unpatentable as obvious under § 103 over the instituted prior-art combinations.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1), “available media” (claim 9), or “a media” (claim 14). Ex. 1001, 18:31, 19:13, 20:4. In IPR2014-00407, which was directed to related U.S. Patent No. 8,359,007 (“the ’007 patent”), we construed “an available media” to mean “content accessible from a source of audio, video, and/or textual information,” but noted that the term is “not limited to a single file, song, or video, and may encompass, at a minimum, a collection of audio or video files.” Samsung Electronics Co. v. Affinity Labs of Texas, LLC, Case IPR2014-00407, slip. op. at 6 (PTAB July 21, 2014) (Paper 15, 6). This construction was supported by dependent claims 12 and 13 of the ’007 patent, which recite that “the available media” may be a “collection of audio files” (claim 12) or a “collection of video files” (claim 13). Id. Patent Owner did not subsequently contest this construction in IPR2014-00407. See Samsung Electronics Co. v. Affinity Labs of Texas, LLC, Case IPR2014- 00407, slip. op. at 6 (PTAB July 20, 2015) (Paper 48) (Final Written Decision); Affinity Labs of Texas, LLC v. Samsung Electronics Co., 669 F. App’x 576 (Fed. Cir. 2016) (Rule 36 affirmance). Because the ’007 patent and the ’802 patent each claim benefit to the same parent application through a line of continuing applications, we must interpret the same terms within these patents consistently. NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (“Because NTP’s patents all derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.”). Moreover, neither party provides citations to intrinsic or extrinsic evidence in this proceeding to suggest a different construction of “an available media” should apply to the ’802 patent. Thus, upon review of the record as a whole, we construe “an available media,” as well as the related terms “available media” and “media,” to include “content accessible from a source of audio, video, and/or textual information,” and note that the terms are not limited to a single file, song, or video, and may encompass, at a minimum, a collection of audio or video files.” slip op. at 5

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

    “The claims of the ’802 patent do not define what a “segment” of an available media is, and the written description of the ’802 patent does not use the terms “segments,” “segment files,” or “independent segment files.” The Specification does note, however, that “an audio file may be formatted, segmented, compressed, modified, etc. for the purpose of providing or communicating the audio invention.” Ex. 1001, 3:26–29. This disclosure supports a construction of “segments,” “segment files,” and “independent segment files” that encompasses portions of an audio file. As noted above, however, the term “an available media” is not limited to an individual song or video file. And, when “an available media” includes a collection of audio or video files, the term segment—which is generally defined as “[e]ach of the parts into which something is or may be divided”—is broad enough to include individual songs, videos, or Internet radio stations within this collection.6 See, e.g., Ex. 3001. Thus, applying the 6 Although Patent Owner indicates that it disagrees with this construction, it does not direct our attention to any portion of the claims, written description, broadest reasonable construction standard, we construe the terms “segments,” “segment files,” and “independent segment files,” when used in conjunction with the terms “available media” or “a media,” to include both individual songs, videos, and/or Internet radio stations in a media collection, as well as individual parts of a single song, video, or Internet broadcast.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “We are not persuaded by these arguments. First, the district court has determined that the claims of the ’802 patent are not in means-plus-function format, and neither party in this proceeding contends that the claims should be interpreted in this manner. Pet. Reply 11. Nor does Patent Owner contend that the prior art asserted in the Petition fails to disclose the claim limitations in question (“collection of instructions” and “delivery resource”). Thus, we do not agree that Petitioner’s failure to identify corresponding structure requires dismissal of the Petition. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). Second, even if Dr. Mir could not identify the precise contours of several claim limitations before the district court, Petitioner and Dr. Mir correctly concluded that the Board, applying the broadest reasonable construction standard in this proceeding, would adopt constructions of the terms “segment(s)” and “an available media” that would, in combination, encompass parts of an individual song or video, as well as individual songs or videos within a broader media collection. Pet. 21, 41–43, 50. Petitioner and Dr. Mir also provide multiple citations to show where the disputed limitations are taught or suggested in the recited prior art. Patent Owner does not explain why Dr. Mir’s constructions, either express or implied, for the terms in question are incorrect, or why Dr. Mir’s citations to record evidence do not support his conclusions.7 Thus, we do not consider Dr. Mir’s prior testimony to be grounds for denying the Petition or ignoring his uncontested testimony. See Pet. Reply 12 (“Dr. Mir did not ‘guess’ as to the meanings of claim terms. Rather, he was aware of a spectrum of technologies invoked by each ambiguous claim term, and identified elements in the prior art he knew was within the broadest reasonable interpretation of those terms.”).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “years of experience in the field of computer networking and/or multimedia networks, particularly as those systems relate to media streaming technology.” Pet. 17 (citing Ex. 1007 ¶ 41). Patent Owner does not address the level of ordinary skill in the art relevant to the ’802 patent. Because Petitioner’s uncontested definition of the level of ordinary skill in the art is reasonable and consistent with the art of record, we adopt it for purposes of this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art of record may reflect the level of ordinary skill in the art).” slip op. at 11

  Patent outcomesUS 9,094,802 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,802

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.