• Ruckus Wireless, Inc. / Arris Solutions, Inc. et al. v. XR Communications LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Nov 12, 2019 · IPR2018-01018 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claim 16 is unpatentable as obvious over Reudink and Antonio; the motion to amend with substitute claim 18 is denied for lack of written-description support and obviousness.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends: [A] POSITA[5] would have had Bachelor of Science in Electrical Engineering, or an equivalent field, as well as three to four years of experience in the field of wireless communications; or a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in the field of wireless communications. Pet. 30 (citing Ex. 1006 (Negus Decl.) ¶ 29). In its Response, Patent Owner does not address this issue. See generally PO Resp. In its Motion to Amend, the Patent Owner states, “Patent Owner agrees with Petitioner’s expert regarding the level of ordinary skill in the art, although someone with less education but more experience, or more education but less experience could also have met this standard.” Mot. to Amd. 15 (citing Ex. 2006 (Short Decl.) ¶ 24). At oral argument in IPR2018-01017, the attorney for the Patent Owner confirmed that there was no dispute with regard to the level of skill in the art. Ex. 3002, 34:22–24. We determine that the aforementioned argument is applicable to this proceeding because the ’728 patent is related to the patent challenged in IPR2018-01017 (see supra § I.A). Based on the evidence and because it is consistent with the prior art of record, we adopt the level of ordinary skill in the art as proposed by Petitioner.” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “proposed amendment “an access point compliant with IEEE 802.11 standards.” In the Motion to Amend, Patent Owner cites column 4, lines 38 through 44, of the ’728 patent in support of this amendment. See Mot. to Amd. 7.11 The cited passage in the ’728 patent states: “the examples presented herein are directed towards wireless IEE[E] 802.11 type network configurations, wherein the client device is capable of roaming within the coverage area of the smart antenna and the client device is configured to establish an association with an access point over a main beam.” Ex. 1001, 4:38–44 (emphasis added). This passage relates to the capability and configuration of the client device not the access point. See Ex. 2006 (Short Decl.) ¶ 40 (citing this same passage in support of the statement that “a [POSITA] would understand that the receiving device can be 802.11 compatible.”) (emphases added). 11 In this section of the Motion to Amend, Patent Owner does not even clearly assert that the Specification of the ’728 patent provides written description support for this amendment. See Mot. to Amd. 7 (“[T]he access point may be compliant with 802.11 standards.”) (emphasis added). The declaration of Patent Owner’s technical witness, Dr. Short, filed in support of the motion to amend provides nothing more than a verbatim recitation of this sentence and a citation to same passage in the ’728 patent with no reasoning or explanation. See Ex. 2006 ¶ 36. As the cited passage does not support his statement, we give no weight to this portion of Dr. Short’s declaration. See 37 C.F.R. § 42.65(a). And, we find that Patent Owner’s ambiguous assertion lacks evidentiary support.” slip op. at 38

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

    “been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. Pet. 24–27 (citing Ex. 1006 (Negus Decl.) ¶ 451). The Petition states: A POSITA at the time of Reudink and Antonio would have been motivated to combine the teachings of Reudink and Antonio. Reudink sends a direction message to remote stations indicating if a beam is acceptable for communication and, if not, that the remote station should search for another beam. Acquiring a beam can thus take some time and may be a problem in cases where beam acquisition is time critical, such as for a mobile remote station. Modifying the direction message of Reudink to include the “add beam set” and “drop beam set” from Antonio’s HDM would speed up beam handoffs for mobile users in the Reudink wireless system and also reduce signaling load on the network. Ex. 1006 ¶ 451. Making this combination is within the ordinary creativity and routine skill of a POSITA because Reudink and Antonio are both directed to problems associated with determining and communicating the preferred beams to be used to establish communications between a remote station and a base station in a wireless multi-beam communication system. Ex. 1006 ¶ 439. Both Reudink and Antonio consider multi-beam communication systems applicable to wireless communications, with both fixed and mobile remote stations. Ex. 1006 ¶ 440. Pet. 24–25. We agree that a person of ordinary skill in the art would have been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. In its Response, Patent Owner does not dispute Petitioner’s showing with regard to motivation to combine the relevant teachings of Reudink and Antonio. See generally PO Resp. We find the Petition motivation to combine the relevant teachings of Reudink and Antonio.” slip op. at 33

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

    “Pet. 24–25. We agree that a person of ordinary skill in the art would have been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. In its Response, Patent Owner does not dispute Petitioner’s showing with regard to motivation to combine the relevant teachings of Reudink and Antonio. See generally PO Resp. We find the Petition motivation to combine the relevant teachings of Reudink and Antonio. Conclusion regarding Unpatentability of Claim 16 After consideration of the arguments and evidence presented by the parties, we find that a preponderance of the evidence establishes Reudink and Antonio teach all the limitations of claim 16 and that Petitioner has established there was a motivation to combine the relevant teachings of Reudink and Antonio. We conclude that claim 16 would have been obvious in light of Reudink and Antonio.” slip op. at 33

  Patent outcomesUS 7,729,728 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,729,728
• Packers Plus Energy Services Inc. / Packers Plus Energy Services (USA) Inc. v. Baker Hughes Oilfield Operations, LLCAll claims unpatentable
  PTAB · Nov 5, 2019 · IPR2018-01030 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 5, 6, and 10–13 are unpatentable, principally because King’s second embodiment anticipates them; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends, relying on the testimony of Mr. Gonzalez, that a person of ordinary skill in the art would have had a bachelor’s degree in petroleum or mechanical engineering, or other science or technical degree applicable in the oil and gas industry, and at least three years of experience in drilling and completions of oil and gas wells, including experience in well fracturing simulations. Pet. 23 (citing Ex. 1025 ¶¶ 41–43). Petitioner further contends that the artisan’s level of education necessary may increase or decrease depending on years of experience, and conversely the years of experience may increase or decrease depending on level of education. Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill or propose an alternative. PO Resp. 4. On the record before us, we are persuaded to adopt Mr. Gonzalez’s assessment of a person with ordinary skill in the art because it is consistent with the problems and solutions in the prior art of record. We further find that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8

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

    “In applying a broadest reasonable construction, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Additionally, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 13

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

    “We start with whether “profile” is limited to a feature or element that makes contact with the ball. We agree with Petitioner that “profile” is not limited to features that make contact. Claim 1 recites “a profile disposed at the second portion configured to increase resistance to extrusion of a runnable member past the pluggable seat in comparison to the same pluggable seat without the profile.” Ex. 1001, 4:7–10 (emphasis added). Claim 11 recites a profile disposed at a second portion of the seat having a second diameter that is smaller than the first diameter and positioned downstream of the first portion, downstream being defined as a direction that the ball is moved into seating engagement with the seat, the profile being configured to require greater pressure required to extrude the ball past the first portion. Ex. 1001, 4:41–47. Consistent with Petitioner’s proposed construction (Pet. 22; Ex. 1025 ¶ 48), and contrary to Patent Owner’s contentions and the testimony of Mr. Watson (see, e.g., PO Resp. 14–16; Ex. 2010 ¶ 45), claims 1 and 11 recite that the “profile” is configured “to increase resistance” and “to require greater pressure,” respectively. Ex. 1001, 4:7–10, 4:41–47. Claims 1 and 11 also include recitations relating to seating, such as “seatable thereagainst” and “seating engagement,” but these recitations pertain to “a first portion” and defining the position of “a second portion,” i.e., “downstream,” respectively. Id. at 3:57, 4:3, 4:44. No similar terms are recited with respect to “profile.” Id. at 3:55–4:10, 4:33–47.” slip op. at 18

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

    “Regarding the first of Patent Owner’s assertions, consistent with Petitioner’s contentions and the testimony of Mr. Gonzalez and contrary to Patent Owner’s assertion and the testimony of Mr. Watson, Haugen describes an apparatus and method of operation for the release of concentric tubing strings used in well operations. Ex. 1003, at code (57). We agree with Petitioner that the ’829 Patent Specification does not limit the field of endeavor to “fracturing” or “sliding sleeves” and claim 1 does not recite that the “frustoconical surface” of the first portion prevents extrusion. Pet. Reply 17. Indeed, the ’829 Patent describes the field broadly as “industries concerned with earth formation boreholes, such as hydrocarbon recovery and gas sequestration.” Ex. 1001, 1:6–7. “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR at 417.” slip op. at 35

  Patent outcomesUS 8,365,829 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,365,829
• Valve Corporation v. Ironburg Inventions Ltd.Rehearing denied
  PTAB · Oct 30, 2019 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Rehearing

  The Board denied Valve’s rehearing request, leaving claims 1–24 not shown unpatentable because Valve did not establish that Burns was a prior art printed publication.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). Therefore, Valve must demonstrate that we misapprehended or overlooked matters previously argued and specifically identify the location in its papers at which it made the argument that we misapprehended or overlooked in order to justify modifying our Final Decision. It has failed to do so. Instead, Valve asks us to reconsider and reweigh evidence and” slip op. at 3

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As explained in detail, in our Final Decision, we do not consider Exhibit 1003 to be the same as the document accessible using the 1 The cited pages of Exhibit 1040 (pp. 171–179) refer to a copy of the Burns article provided by the Examiner during prosecution of an unrelated but commonly owned patent that appears to have been retrieved from the “Wayback Machine” web archive. See Ex. 1040, 172 (referring to “WAYBACK MACHINE”). However, neither the cited pages nor the Examiner’s Notice of References Cited lists the Webarchive URL. See id. at 165, 171–179 (listing only URL to xboxer360.com domain as source of Burns article). Webarchive URL. Final Dec. 17–29. The URL listed on Exhibit 1003 refers to a URL on the xboxer360.com domain, not the Webarchive URL on the web.archive.org domain. Ex. 1003, 1–10. Contrary to Valve’s contentions otherwise, URLs are not prior art materials themselves, but merely addresses that might permit a user to access information via the internet. Valve also wholly fails to identify any specific argument or evidence that it advanced during the trial that we misapprehended or overlooked in reaching our decision on the issue of whether Valve had proven that Exhibit 1003 was a prior art printed publication.” slip op. at 4

  • ExcludeNot reached

    “Ironburg filed a Motion to Exclude Evidence (Paper 30, “Mot.” or “Motion”). Valve opposed the Motion (Paper 31, “Opp.” or “Opposition”). Ironburg filed a Reply in support of the Motion (Paper 32, “Mot. Reply”).” slip op. at 3

  § 102 anticipation
  Patents in suitUS 9,352,229
• Nitro Fluids, L.L.C. v. Cameron International CorporationRehearing denied
  PTAB · Oct 15, 2019 · IPR2019-00804 · APJ Jon B Tornquist · IPR · Rehearing

  The Board denied the rehearing request and maintained denial of institution for claims 1–15 under § 325(d) based on Kajaria and Guidry.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single 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, an opposition, or a reply. 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 exists where a “decision [i]s 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).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential in relevant part) and determined that the balance of these factors favored denial of the Petition under 35 U.S.C. § 325(d). Dec. 11–23. As part of this analysis, we determined that: Kajaria was previously presented to the office during prosecution and was the basis for a rejection by the Examiner; Petitioner and the Examiner relied on the same disclosures of Kajaria to support their arguments; Petitioner did not sufficiently point out how the Examiner erred in his evaluation of Kajaria; and the declaration testimony of Mr. Ely did not warrant reconsideration of the prior art previously analyzed by the Examiner. Id. at 12–22.” slip op. at 3

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

    “fracturing tree, wherein the single outlet is coupled to the fracturing tree by a single fluid conduit that is the only fluid conduit connecting the skid apparatus in fluid communication with the well at which the one fracturing tree is positioned. Ex. 1001, 7:6–30.” slip op. at 3

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

    “obviousness ground relies solely on modification of distribution modules 42. Req. Reh’g 14. According to Petitioner, the Petition specifically alleges that “it would have been obvious to modify any module, including specifically module 40, to use a single manifold, to support only a single valve group, for delivery of fluid to a single well, via a single fluid conduit.” Id. (citing Pet. 35–42, 49–52, 56–57; Ex. 1002 ¶¶ 92, 96, 99, 102, 103, 122, 124–126, 128, 138). We did not misunderstand or misapprehend this argument; indeed, we noted its logical appeal. Dec. 21 n.10. We instead declined to credit the inference underpinning this argument, i.e., that a single-manifold embodiment would use a single fluid conduit, because the only reference of record having a single distribution module coupled to a single manifold had two fluid conduits extending from the distribution module to the well. Id. Accordingly, we are not persuaded that we misunderstood or overlooked Petitioner’s obviousness arguments.” slip op. at 11

  § 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,903,190
• Ruckus Wireless, Inc. / Arris Solutions, Inc. et al. v. XR Communications, LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Oct 10, 2019 · IPR2018-01017 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, 4–7, 17, 18, 20–23, 33, and 35–38 are unpatentable as obvious over Reudink and Antonio; the motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends, relying on the testimony of Dr. Negus, that a person of ordinary skill in the art would have had a Master’s degree in Electrical Engineering, or an equivalent field, and two years of experience in the field of wireless communications or a Bachelor of Science in Electrical Engineering, or an equivalent field, and three to four years of experience in the field of wireless communications. Pet. 27–28 (citing Ex. 1006 ¶ 29). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill or propose an alternative. See generally PO Resp. We adopt Dr. Negus’s assessment of a person with ordinary skill in the art because it is consistent with the problems and solutions in the prior art of record. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 9

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

    “Accordingly, we agree with Petitioner that the aforementioned limitation should be given its plain and ordinary meaning and no further express construction is needed, except we conclude that the language of the claims does not require identifying the current beam, as Patent Owner proposes.8” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “are persuaded that Reudink teaches “configuring said first device to determine if said associated second device should operatively associate with a different beam downlink transmittable using said smart antenna” as recited in limitation 1c. Ex. 1001, 10:63–11:2 (emphasis added). We credit and give significant weight to the testimony of Dr. Negus (Ex. 1006) over Dr. Short (Ex. 2002; Ex. 2004),11 because Dr. Negus’s testimony is consistent with the portions of Reudink he quotes expressly in his testimony reproduced above, as well as with other of Reudink’s disclosure. As background, as set forth in the summary of Petitioner’s contentions and Dr. Negus’s testimony above with respect to limitations 1a and 1b, Reudink 10 The acronyms “POSA” and “POSITA” appearing in this Decision refer to a person having ordinary skill in the art. 11 Patent Owner asserts it relies on two Declarations of Dr. Short for the challenged claims, i.e., Exhibit 2002 and Exhibit 2004. Tr. 39:22–25. Patent Owner refers to Exhibit 2002 as “Short Decl.” and Exhibit 2004 as “Ex. 2004” in its Patent Owner Response. PO Resp. 2, 14. As explained below, in its Motion to Amend, Patent Owner refers to “Ex. 2003” as “Short Decl.,” but this is a typographical error and Patent Owner in its Motion to Amend appears to rely on Exhibit 2004 and refers to it using the same name used for Exhibit 2002 in its Patent Owner Response. See supra § II.E.2. We have considered Patent Owner’s evidence presented in Exhibits 2002 and 2004 to the fullest extent possible in view of Patent Owner’s arguments and explanations. Patent Owner, however, is required to explain clearly the relevance of all the evidence Patent Owner relies on in its Patent Owner Response. See 37 C.F.R. §§ 42.22; 42.23 (2019); see also Paper 13, 5 (“Patent Owner is cautioned that any arguments for patentability not raised in the response may be deemed waived.”) synch bursts and attempts to measure the signal strength.” Ex. 1009, 12:14– 15. Reudink continues by describing “[t]he RS preferably logs the carrier numbers and the beam numbers that produce a strongest receive signal strength, for example a first and second most preferred carrier and beam combination may be determined.” Id. at 12:24–32; see also id. at 15:42–43 (“[E]ach or ones of the RSs may include signal quality measurement apparatus.”) Reudink’s remote station reports this information in a reverse MBAACH message including a user identifier annotated in blue and a message report annotated in green. Id. at 12:29–41, Fig. 13. Reudink teaches “[t]he received direction message of a preferred embodiment may instruct the RS that the identified best carrier, angle and beam is acceptable for communication or, if unavailable, perhaps to look for another BS or RF carrier.” Id. at 12:55–59. Next, Reudink teaches subsequent identification of a preferred antenna beam based on changing conditions including interference, optimizing network capacity and quality, and movement of remote stations. Ex. 1009, at code (57) (“A preferred embodiment control channel is taught which provides for the initial and subsequent identification and use of a most preferred antenna beam for establishing communications” (emphasis added)), 2:64–3:9 (“the multiple beam antennas of the BSs of the present invention may provide antenna beams which substantially overlap, such as to allow redundancy and/or to provide the ability for RSs to change to different channels, such as based on interference conditions” (emphasis added)), 3:46–59 (describing that Reudink’s system determines which remote stations may operate simultaneously with tolerable co-channel interference and provides desired quality/priority of service). Reudink respect to limitations 1a and 1b for subsequent identification of preferred antenna beams. Id. at 16:2–5, Fig. 5A (describing “an algorithm operable to cause RSs to periodically identify and provide BS antenna beam selection information to the network”), 16:23–26 (describing with respect to the aforementioned algorithm that “[a] preferred embodiment technique providing identification of a BS antenna beam and/or RS antenna beam according to the present invention is described in detail above with respect to the MBAACH” (emphasis added)), 16:62–65, Fig. 5B (describing “an algorithm operable to cause BSs to periodically measure signal attributes associated with RSs in communication therewith (or for which communication therewith is possible)”). Additionally, Reudink teaches tracking and determining a preferred beam for remote stations that change position. For instance, Reudink teaches that its determinations of a preferred antenna beam are made in “time critical” situations, “such as where ones of the RSs are likely to change position and/or where propagation conditions are subject to material change.” Ex. 1009, 11:36–39; see also id. at 11:2–3 (describing “initial assignment and subsequent tracking of the best serving base station and the most preferred antenna beam associated therewith”) (emphasis added). Consistent with Petitioner’s contentions and Dr. Negus’s testimony, therefore, a person of ordinary skill in the art would understand that Reudink’s determination is whether said associated second device should operatively associate with a different beam downlink transmittable. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1361 n.3 (Fed. Cir. 2008) (“What a prior art reference discloses or teaches is determined from the perspective of one of ordinary skill in the art.”); In re Hedges, 783” slip op. at 28

  Patent outcomesUS 7,062,296 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,062,296
• Cisco Systems, Inc. v. XR Communications LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Oct 3, 2019 · IPR2018-00763 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claim 16 is unpatentable as obvious over Alastalo and Antonio, and over Alastalo, Antonio, and the WTEC Report; the motion to amend proposing claim 18 is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[A] Person of Ordinary Skill In The Art (“POSITA”) is someone knowledgeable concerning wireless communication systems employing beamforming technologies. That person would have (i) a master’s degree in electrical engineering, and (ii) two years of smart antenna design experience. Lack of work experience can be remedied by additional education, and vice versa. Pet. 17 (citing Ex. 1003 (Winters Decl.) ¶ 18). In its Response, Patent Owner does not address this issue. See generally PO Resp. In its Motion to Amend, the Patent Owner states, “Patent Owner agrees with Petitioner’s expert that one of ordinary skill would be a person having a master’s degree in electrical engineering and two years of smart antenna design experience, wherein lack of work experience can be remedied by additional education and vice versa.” Mot. to Amd. 15 (citing Ex. 2006 (Short Decl.) ¶ 24). The attorneys for the parties agreed at the oral argument that there was no dispute regarding the level of ordinary skill in the art. Tr. 7:14–16 (Petitioner’s attorney); 14:25–15:1 (Patent Owner’s attorney). Based on the evidence and because it is consistent with the prior art of record, we adopt the level of ordinary skill in the art as proposed by the parties.” slip op. at 10

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

    “proceeding and the prior art assertions presented herein, the only term that might require construction is ‘phased array antenna.’” Pet. 17 (emphasis added). The Patent Owner’s Response states: “[t]he term ‘phased array antenna’ does not require construction in order to resolve the parties’ dispute.” Resp. 7. In the Response, Patent Owner further asserts that no claim construction is necessary. Id. And, in relation to its Motion to Amend, Patent Owner proposes no claim construction and asserts no claim 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §103. Because the ’728 patent has an effective filing date before the effective date of the applicable AIA amendment, we refer to the pre-AIA version of 35 U.S.C. §103. claim construction in its Opposition to the Motion to Amend. See generally MTA Opp. At oral argument, the attorneys for the parties agreed that there was no dispute regarding claim construction. Tr. 11:12–14 (Petitioner’s attorney); 15:1–2 (Patent Owner’s attorney). We determine that no terms require construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that only those terms that are in controversy need to be expressly construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Response to motivation to combine. See generally PO Resp. Patent Owner argues that the deposition testimony of Petitioner’s technical witness, Dr. Winters, establishes that “Dr. Winters did not offer opinions sufficient to show a motivation to combine. To the contrary, Dr. Winters testified . . . he merely concluded that the ordinary artisan would have ‘considered the technologies that were available,’ and as part of the process ‘would look at the possibility of combining Antonio and Alastalo.’” PO Resp. 1 (citing Ex. 2003 (Winters Deposition Transcript) 41:17–23). We find that the deposition testimony of Dr. Winters confirms rather than contradicts Dr. Winters’s declaration. In his declaration, Dr. Winters stated, “[a] POSITA would have been motivated to combine the teachings of Alastalo and Antonio to produce the obvious, beneficial, and predictable result of providing alternative communication beams and reducing call dropping rates in Alastalo’s wireless communication system.” Ex. 1003 ¶ 43. These conclusions are well-supported with explanations and reasoning that are based on the teachings of Alastalo and Antonio. Id. ¶¶ 44–51. The testimony that Patent Owner cites is: look at the possibility of combining Antonio and Alastalo. A. Yes. A person -- a POSITA would at that time have considered the technologies that were available. Ex. 2003, 41:17–23. We do not discern how agreeing “that a person of skill in the art would look at the possibility of combining Antonio and Alastalo” and stating that “a POSITA would at the time have considered the technologies that were available” contradicts Dr. Winters’s testimony that a motivation to combine the teachings of Alastalo and Antonio existed. To the contrary, this testimony confirms and supports Dr. Winters’s statements in his declaration relating to motivation to combine the relevant teachings of these references. We have reviewed Dr. Winter’s declaration and his deposition transcript and find that are consistent and fully support Petitioner’s arguments relating to motivation to combine the relevant teachings of Alastalo and Antonio.” slip op. at 25

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

    “Pet. 43. We agree with Petitioner that one of ordinary skill would have been motivated to combine the teachings of Alastalo and Antonio in order to provide alternative communication beams and to reduce call dropping rates. We find the Petition contains a reasonable and well-supported rationale and explanation showing the existence of a motivation to combine the relevant teachings of Alastalo and Antonio. As noted previously, Patent Owner directs all its arguments in the Response to motivation to combine. See generally PO Resp. Patent Owner argues that the deposition testimony of Petitioner’s technical witness, Dr. Winters, establishes that “Dr. Winters did not offer opinions sufficient to show a motivation to combine. To the contrary, Dr. Winters testified . . . he merely concluded that the ordinary artisan would have ‘considered the technologies that were available,’ and as part of the process ‘would look at the possibility of combining Antonio and Alastalo.’” PO Resp. 1 (citing Ex. 2003 (Winters Deposition Transcript) 41:17–23). We find that the deposition testimony of Dr. Winters confirms rather than contradicts Dr. Winters’s declaration. In his declaration, Dr. Winters stated, “[a] POSITA would have been motivated to combine the teachings of Alastalo and Antonio to produce the obvious, beneficial, and predictable result of providing alternative communication beams and reducing call dropping rates in Alastalo’s wireless communication system.” Ex. 1003 ¶ 43. These conclusions are well-supported with explanations and reasoning that are based on the teachings of Alastalo and Antonio. Id. ¶¶ 44–51. The testimony that Patent Owner cites is: look at the possibility of combining Antonio and Alastalo. A. Yes. A person -- a POSITA would at that time have considered the technologies that were available. Ex. 2003, 41:17–23. We do not discern how agreeing “that a person of skill in the art would look at the possibility of combining Antonio and Alastalo” and stating that “a POSITA would at the time have considered the technologies that were available” contradicts Dr. Winters’s testimony that a motivation to combine the teachings of Alastalo and Antonio existed. To the contrary, this testimony confirms and supports Dr. Winters’s statements in his declaration relating to motivation to combine the relevant teachings of these references. We have reviewed Dr. Winter’s declaration and his deposition transcript and find that are consistent and fully support Petitioner’s arguments relating to motivation to combine the relevant teachings of Alastalo and Antonio.” slip op. at 25

  Patent outcomesUS 7,729,728 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,729,728
• Aruba Networks, Inc. v. XR Communications LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Oct 1, 2019 · IPR2018-00726 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claim 16 is unpatentable as obvious over Hovers and Jetzek because the combined teachings establish every limitation, motivation to combine, and a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art of the ’728 patent at the time of the alleged invention (“POSA”) would have had either a Bachelor’s degree in electrical engineering with at least three to four years of experience in the field of wireless communications, or a Master’s degree in electrical engineering with at least two years of experience in the field of wireless communications technology or other communication-related technology. Pet. 11 (citing Ex. 1009 (Acampora Decl.) ¶ 71). Patent Owner does not address this issue. See generally PO Resp. We find Petitioner’s contention to be reasonable and consistent with the prior art of record. We adopt the level of ordinary skill in the art as proposed by Petitioner.” slip op. at 9

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

    “II. ANALYSIS A. Claim Construction Neither party raises any issues relating to claim construction. Pet. 6–7; see generally PO Resp. We determine that no terms require construction for purposes of this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (providing that only those terms that are in controversy need to be expressly construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

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

    “And, even if Patent Owner’s argument is correct, “obviousness must be determined in light of all the facts, and . . . a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (emphasis added); see also PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact.”). We find, on the complete record, that Petitioner’s reasoning demonstrates, by a preponderance of the evidence, that a person having ordinary skill in the art would have been motivated to modify Hover’s with Jetzek’s teachings as proposed by Petitioner. Petitioner establishes, and Patent Owner does not contest, that Hovers and Jetzek teach all the limitations of claim 16. Petitioner provides well-supported and numerous reasons for combining the relevant teachings of Hover and Jetzek that Patent Owner fails to squarely address. We also are persuaded that Petitioner shows a person having ordinary skill in the art would have had a reasonable expectation of success and Patent Owner’s arguments and evidence do not undermine Petitioner’s showing. Weighing all the evidence and arguments presented by the parties, we conclude that a preponderance of the evidence establishes that claim 16 is unpatentable based on Hovers and Jetzek.” slip op. at 39

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner moves to exclude “Exhibit 2012, and portions of the record that reference this exhibit, including portions of Patent Owner’s Sur-Reply (Paper No. 30 at 16–17).” Motion to Exclude 1.8 However, this evidence is offered by Patent Owner in support of an argument that the Board has rejected because it is not based on a recited claim limitation. The Board has not relied on Exhibit 2012 or any portion of the record relating to Exhibit 2012 in reaching this decision. Update to Office Trial Practice Guide, 83 Fed. Reg. 39989 (Aug. 13, 2018) (available at https://go.usa.gov/xU7GP) at 17 (“In the Board’s experience, consideration of the objected-to evidence is often unnecessary to resolve the patentability of the challenged claims, and 8 Within five business days of service of Exhibit 2012 and Patent Owner’s Sur-Reply, Petitioner filed a timely objection as required pursuant to 37 C.F.R. § 42.64(b)(1). See Paper 31. the motion to exclude is moot.”). As such, we do not believe it is necessary or appropriate for us to exclude Exhibit 2012 or the related arguments. Therefore, we deny the Motion to Exclude.” slip op. at 40

  Patent outcomesUS 7,729,728 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,729,728
• Aruba Networks, Inc. v. XR Communications, LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Sep 4, 2019 · IPR2018-00725 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, 4–7, 17, 18, 20–23, 33, and 35–38 are unpatentable as obvious over Hovers and Jetzek.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a person of ordinary skill in the art at the time of the alleged invention of the ’296 patent would have had either a Bachelor’s degree in electrical engineering with at least three to four years of experience in the field of wireless communications, or a Master’s degree in electrical engineering with at least two years of experience in the field of wireless communications. Ex. 1012 ¶ 72. Patent Owner does not dispute Petitioner’s proffered level of ordinary skill or propose an alternative. See generally PO Resp.; Tr. 6:4–5, 8:3–5. On the record before us, we are persuaded to adopt Dr. Acampora’s assessment of a person with ordinary skill in the art because it is consistent with the problems and solutions in the prior art of record. We further find that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (recognizing that “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art).” slip op. at 9

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

    “C. Claim Construction In this inter partes review, we construe claim terms according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2017).6 Neither party provides an express construction for any claim term. Pet. 6–7; see generally PO Resp; Tr. 6:4–5, 8:3–5. We determine that no claim terms need to be construed expressly to resolve the parties’ controversies. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 1695 (April 30, 2018) (noting that “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))).” slip op. at 10

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

    “both parties, we are persuaded by Petitioner’s explanation that the Petition articulates reasoning for modifying Hovers in the manner proposed by Petitioner. In addition, we credit Dr. Acampora’s testimony over that of Dr. Short because Dr. Acampora’s testimony is consistent with the evidence of record. For instance, we credit Dr. Acampora’s testimony that a person having ordinary skill in the art would have had reason to use Jetzek’s handoff algorithm, for example, to conserve bandwidth and promote “efficient use of system resources.” Ex. 1012 ¶¶ 80, 83, 89 (citing, e.g., Ex. 1004, 3:20–4:2, 19:8–13, 20:1–4). Consistent with Dr. Acampora’s testimony (id.), Jetzek teaches that “[a]n advantage of hard handoff, therefore, is a reduced need for system resources.” Ex. 1004, 3:20–4:2; see also id. at 2:1–3 (describing that in a hard handoff, “there is no overlap in time between transmissions received from an original, serving base station and transmissions received from a new, target base station”). Jetzek further teaches that “[i]n rural areas, for example, line of sight links between mobile stations and base stations are rather frequent” so “even in case of hard handoff, a reliable handoff will be performed.” Id. at 19:8–13. Also consistent with Dr. Acampora’s testimony (Ex. 1012 ¶¶ 80, 83, 89), Jetzek teaches that “system capacity will most likely be increased by implementation of the present invention, since the present invention offers the possibility to control soft and hard handoff whereby efficient use of system resources is promoted.” Id. at 20:1–4.” slip op. at 25

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “When considering whether a claim would have been obvious “the knowledge of such an artisan is part of the store of public knowledge that must be consulted.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). Based on the record before us, we agree with Petitioner (Pet. 2–3, 14–16, 20–36; Pet. Reply 15–18) and we credit and give significant weight to Dr. Acampora’s testimony (Ex. 1012 ¶¶ 22–28, 33, 48–57, 74, 76–78, 80– 92; Ex. 1017 ¶¶ 3–12; Ex. 2004, 71:20–73:13, 96:2–97:21), over Dr. Short’s testimony (Ex. 2003 ¶¶ 48–55) because, based on the record before us, Dr. Short’s testimony does not take into account the knowledge of one having ordinary skill in the art regarding GSM set forth in Dr. Acampora’s initial declaration. See, e.g., Ex. 1012 ¶¶ 33, 48; Ex. 1011, 316–317; see also Ex. 1017; Ex. 1018, 39–42, 60, 62; Ex. 1019, 39–40, 46–56; Ex. 1020, 1, 37–38, 44–47, 50–55.” slip op. at 39

  Patent outcomesUS 7,062,296 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,062,296
• Garmin International, Inc. / Garmin USA, Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 28, 2019 · IPR2018-00565 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 4, 5, 7–14, 56–58, 140, 144, and 146 were not shown unpatentable under § 103 over the instituted combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 9

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

    “The ’576 patent does not include an explicit definition for “interpreting.” See generally Ex. 1001. We note, however, that claims 1 and 13 recite “a “microprocessor capable of . . . interpreting . . . said movement data.” With this language in mind, the ’576 patent discloses that the device “employs a user-programmable microprocessor which receives, interprets, stores and responds to the movement data.” Id. at 2:13–15; see also id. at Abstract (making substantially similar statement). These disclosures indicate that “interpreting” is distinct from receiving, storing, and responding to the data, and are consistent with claims 1 and 13, which recite “interpreting” distinctly from receiving, storing, and responding. Furthermore, the ’576 patent discloses that microprocessor 32 “receives the signals generated by the movement sensor 30 for analysis and subsequent processing” and “analyzes and responds to the movement data signals from the sensor 30.” Id. at 4:52–57 (emphases added). Therefore, in the context of the claims and the Specification of the ’576 patent, we determine that the ordinary and customary meaning of the phrase “interpreting . . . said movement data” is “analyzing the movement data.”” slip op. at 11

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We note, however, that Federal Circuit has recently held that “the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, No. 2018-1167, 2019 WL 3418549, at *16 (Fed. Cir. July 30, 2019). The Federal Circuit addressed arguments made under both the due process and takings clauses of the Fifth Amendment in so holding. Id. at *11–16. We discern no other argument from Patent Owner in this case other than those expressly rejected by the Federal Circuit. Thus, in view of Celgene, we find Patent Owner’s argument unpersuasive.” slip op. at 13

  • BurdenNot shown unpatentable

    “On balance, we are not persuaded on the full record that Stewart discloses that processor 52 controls the comparing function. Accordingly, we determine that Petitioner has not met its burden of establishing that Stewart’s processor 52 interprets movement data. Regarding the limitation of the microprocessor being capable of “detecting a first user-defined event based on the movement data and at least one of the user-defined operational parameters regarding the movement data,” Petitioner asserts that Stewart discloses a processor detecting an event, such as a spearing movement in football, based on acceleration data and a defined/predetermined threshold. Pet. 25 (citing Ex. 1004, 5:4–7, 14:6–11). Petitioner also asserts that it would have been obvious to one of ordinary skill in the art to modify Stewart’s system to enable user adjustment of the predetermined threshold to accommodate different users as taught by Rush. Id. at 25 (citing Ex. 1010 ¶¶ 59). As an initial point, we note that Petitioner relies on the same disclosures from Stewart (i.e., Ex. 1004, 5:4–7, 14:6–11) for disclosing both interpreting data and detecting an event, but does not provide a sufficient explanation of how these same disclosures teach two different claim limitations. Moreover, we disagree that Stewart expressly discloses that processor 52 detects an event such as spearing. Stewart merely discloses that it may be “possible to determine if a football player is improperly using his helmet (e.g., illegal spearing)” without specifying that such determination is performed by processor 52. See Ex. 1004, 14:4–14). As discussed above, Stewart’s disclosure with respect to the accelerometer responses exceeding a predetermined threshold indicates that this processing is accomplished by a receiver remote from the self-contained helmet system and, thus, is not performed by the processor. See id. at 14:6–9 (disclosing that when correlating accelerometer responses “with desirable punches exceeding a predetermined threshold,” the responses are “processed and scored at a ringside receiver”). For these reasons, we determine that Petitioner has not shown that the combination of Stewart and Rush teaches or suggests the detecting limitation of claim 1.” slip op. at 21

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,059,576
• Garmin International, Inc. / Garmin USA, Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 28, 2019 · IPR2018-00564 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 20–26, 29, 104–107, 110, 113–122, 126–128, 134–138, and 175 were not shown unpatentable because the asserted combinations failed to teach claim 20’s interpreting and detecting limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 9

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

    “The ’576 patent does not include an explicit definition for “interpreting.” See generally Ex. 1001. We note, however, that claim 20 recites “interpreting, using a microprocessor.” With this language in mind, the ’576 patent discloses that the device “employs a user-programmable microprocessor which receives, interprets, stores and responds to the movement data.” Id. at 2:13–15; see also id. at Abstract (making substantially similar statement). These disclosures indicate that “interpreting” is distinct from receiving, storing, and responding to the data. Furthermore, the ’576 patent discloses that microprocessor 32 “receives the signals generated by the movement sensor 30 for analysis and subsequent processing” and “analyzes and responds to the movement data signals from the sensor 30.” Id. at 4:52–57 (emphases added). Therefore, in the context of the Specification of the ’576 patent, we determine that the ordinary and customary meaning of the phrase “interpreting . . . said physical movement data” is “analyzing the physical movement data.”” slip op. at 11

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “In general, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments,” and “[a] finding that the agency lacks jurisdiction to decide constitutional questions is especially likely when the constitutional claim asks the agency to act contrary to its statutory charter.” Riggin v. Office of Senate Fair Emp’t Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003). But see Am. Express Co. v. Lunenfeld, Case CBM2014-00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“[F]or the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment.”). We note, however, that Federal Circuit has recently held that “the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, No. 2018-1167, 2019 WL 3418549, at *16 (Fed. Cir. July 30, 2019). The Federal Circuit addressed arguments made under both the due process and takings clauses of the Fifth Amendment in so holding. Id. at *11–16. We discern no other argument from Patent Owner in this case other than those expressly rejected by the Federal Circuit. Thus, in view of Celgene, we find Patent Owner’s argument unpersuasive.” slip op. at 12

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

    “detecting limitation”), Petitioner asserts that Stewart discloses a processor detecting an event, such as a spearing movement in football, based on acceleration data and a predetermined threshold. Pet. 22–23 (citing Ex. 1004, 5:4–7, 14:6–11). Noting that Stewart does not disclose expressly that the predetermined threshold is set by user commands, Petitioner argues that Rush discloses a monitoring device that detects axial loads, such as a spearing movement, in which the threshold value for detecting the spearing movement can be adjustable to accommodate users of different ages and sizes. Id. at 23 (citing Ex. 1006, 3:13–18, 9:48–50, 9:54–58). Thus, according to Petitioner, it would have been obvious to one of ordinary skill in the art to modify Stewart’s system to enable user adjustment of the predetermined threshold to accommodate different users as taught by Rush. Id. at 23–24 (citing Ex. 1010 ¶¶ 61, 62). In this analysis, Petitioner maps Stewart’s predetermined threshold to the recited user-defined operational parameters. This claim limitation, however, recites at least one of the user-defined operational parameters. In other words, the detection of a first user-defined event must be based on at least one of the same user-defined operational parameters upon which the interpretation of the movement data was based. But, as discussed above, Petitioner maps the user-defined operational parameters of the interpreting limitation to Stewart’s user-defined time commands that cause the processor to start and stop the recording of movement data. Pet. 20. By inconsistently relying on different parameters in Stewart to satisfy the claimed user-defined operational parameters, Petitioner has not met its burden of establishing that the combination of Stewart and Rush meets the subject matter of claim 20. In addition, we disagree that Stewart expressly discloses that processor 52 detects an event such as spearing. Stewart merely discloses that it may be “possible to determine if a football player is improperly using his helmet (e.g., illegal spearing)” without specifying that such determination is performed by processor 52. See Ex. 1004, 14:4–14. Furthermore, as discussed above, Stewart’s disclosure with respect to the accelerometer responses exceeding a predetermined threshold indicates that this processing is accomplished by a receiver remote from the self-contained helmet system and, thus, is not performed by the processor. See id. at 14:6– 9 (disclosing that when correlating accelerometer responses “with desirable punches exceeding a predetermined threshold,” the responses are “processed and scored at a ringside receiver”). For these reasons, we determine that Petitioner has not shown that Stewart teaches or suggests the detecting limitation of claim 20.” slip op. at 23

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,059,576

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.