• NXP USA, Inc. v. Impinj, Inc.Some claims unpatentable
  PTAB · Dec 13, 2021 · IPR2020-01063 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1, 3–6, 8, 19, and 20 are unpatentable under §103; claims 2, 7, and 9 were not shown unpatentable because the proposed combinations were inadequately supported.

  RulingsFinal written decision

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

    “Importantly, the Specification states that “[t]he [backscattered] combination is a code that is made from at least a portion of the first code, a portion of the second code, and in some embodiments include even more codes.” Id. at 14:34–37. Thus, the Specification makes clear that something labeled a “code” can consist of a plurality of data items also each labeled as a “code.” Mr. Fischer testifies, consistent with this, that “a code may comprise codes,” and explains, as an example, “an EPC code may comprise a company prefix code, an object class code, and a serial number code.” Ex. 1030 ¶ 2018; see Pet. Reply 1 (citing the same).” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Ex. 1003 ¶¶ 78–79; see Pet. 13. Patent Owner does not propose a different definition. See PO Resp. 12 (“While Patent Owner does not necessarily agree with this definition, it will accept Petitioner’s definition for the purpose of this response.”). Patent Owner’s expert, Dr. Durgin, for purposes of his opinion testimony, adopts Mr. Fischer’s definition. Ex. 2001 ¶ 24. We determine that the definition offered by Mr. Fischer comports with the technical level of the ’431 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). We apply Mr. Fischer’s description of the person of ordinary skill in the art.” slip op. at 12

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

    “We agree that the Graham factors must be considered in an obviousness analysis, but we do not agree that the law requires the rigid application of Graham v Deere for which Patent Owner impliedly advocates. We do consider all of the Graham factors in our analysis, which is what Graham v. Deere and KSR require. Further, Patent Owner’s contention, at its core, is that Petitioner’s arguments and evidence are not persuasive. See PO Resp. 29 (“In the instant case, Petitioner has failed to provide persuasive evidence or argument concerning what differences exist between Schuessler and the claimed invention, what modification of Schuessler Petitioner proposes, and why the proposed modification would have been obvious.” (emphasis added; Patent Owner’s italicizing omitted)). We acknowledge that the Petition does, as Patent Owner notes (PO Resp. 29–30), assert that both Schuessler and Gen2 disclose or teach certain limitations. However, Petitioner’s articulated challenges explicitly or impliedly address the underlying factual matters identified in Graham adequately and clearly enough for an analysis of those challenges to be conducted and for Patent Owner to respond, as it has.” slip op. at 22

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

    “Patent Owner’s arguments are unavailing. The applicant’s disclosure of Bailey to the examiner does not negate the applicability of its teachings in this proceeding. We find the Petitioner’s recitation of the benefits of encryption to constitute an adequate and persuasive reason why a person of ordinary skill in the art would be motivated to combine Bailey with Schuessler and Gen2. Bailey identified a problem to be solved by its teachings—“EPC tags are vulnerable to counterfeiting or other types of cloning attacks.” Ex. 1023 ¶ 7. Mr. Fischer credibly and persuasively testifies regarding “the well-known problems associated with skimming and cloned tags” and that persons of ordinary skill in the art “viewed ‘[m]itigating the risk of tag cloning [as] an essential security goal in an RFID system.’” Ex. 1003 ¶¶ 246–249 (quoting Ex. 1024, 4). In contrast, Dr. Durgin applies an inappropriately rigid and narrow analysis, unpersuasively opining, for example, that there is nothing about Schuessler’s payload-length problem “that would lead a person of ordinary skill in the art to look to Bailey to fix deficiencies in Schuessler.” Ex. 2001 ¶ 106.” slip op. at 39

  Patent outcomesUS 8,390,431 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,390,431
• NXP USA, Inc. v. Impinj, Inc.Other
  PTAB · Dec 13, 2021 · IPR2020-01062 · APJ Ken B Barrett · IPR · Final written decision

  The Board granted cancellation of claims 1–15, 19–20, and 22–24; allowed substitute claims 26–29, 31–38, and 40–44; and denied substitute claims 30 and 39 for lack of written-description support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Ex. 1003 ¶¶ 78–79; see Pet. 10. In the Institution Decision, we adopted Mr. Fischer’s definition for purposes of that decision. Institution Decision (Paper 7) 9–10. Patent Owner states that it “accepts that definition for the purposes of this proceeding.” Rev’d MTA 24. Mr. Fischer’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Mr. Fischer’s definition of the person of ordinary skill in the art.” slip op. at 14

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

    “Petitioner proposes constructions for “code” and “Electronic Product Code (EPC).” Opp. to Rev’d MTA 6. Patent Owner asserts that “the limitations of the substitute claims do not require construction and should, instead, be construed in accordance with their ordinary meaning.” Rev’d MTA 24. According to Patent Owner, the addition of certain features of the proposed substitute claims renders moot Petitioner’s arguments concerning the meaning of the term “code.” Id. Additionally, Petitioner argues that the content of the recited codes— an EPC and a code different from the EPC—constitutes “printed matter” (non-functional descriptive material) and, therefore, are not entitled to patentable weight. Opp. to Rev’d MTA 7–10; Pet. Sur-reply 5–6. We need not reach this issue. Even if we construed the specifically recited codes as being non-functional descriptive material, Petitioner, for reasons discussed below, has not shown that the claimed subject matter is unpatentable. Also, the parties do not identify any other issue in this case that turns on whether the two recited codes are non-functional descriptive material. See, e.g., Opp. to Rev’d MTA 11–12 (Petitioner arguing that the relied-on prior art discloses codes in the form of an EPC and a TID (i.e. a code other than the EPC)). On this record, we determine that no claim terms require express construction.” slip op. at 14

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

    “A patent claim is indefinite when that claim, “viewed in light of the specification and prosecution history, [does not] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. BioSig Instruments, Inc., 572 U.S. 898, 910 (2014).” slip op. at 12

  • ScopeDecided for patent owner

    “Motion to Amend, that “[c]onstruing ‘a first and second memory bank’ to mean, for example, two memories instead of ‘a memory’ also impermissibly broadens the claims.” Opp. to Rev’d MTA 4 n.1 (citing Ex. 1032 ¶¶ 3024– 3027); see also Pet. Sur-reply 1–2 (“the scope of the proposed claims is impermissibly broadened to encompass logical memory banks storing codes in more than one memory.”); Tr. 7:12–13 (“That’s improper because it enlarges the scope of claims to include two memories instead of just one.”). Petitioner’s argument appears to assume that the proposed substitute claims require two memories (as opposed to the recited “memory bank[s]”) and that, because two memories are quantitatively more than one memory, the claims have been broadened. We disagree with Petitioner’s arguments. The arguments are contingent upon a construction of two memory banks being the same scope as two memories. See Opp. to Rev’d MTA 4 n.1 (“Construing . . . impermissibly broadens the claims.”). Petitioner has not offered any persuasive argument or evidence that the two different terms—“memory” and “memory bank” are coextensive or that the more general term “memory” can encompass two of the more specific “memory bank[s].” Further, even if the proposed substitute claims required two memories rather than two memory banks, adding the requirement of a second memory (or, as written in the proposed claims, two memory banks rather than “a memory” as in the issued claim) is further limiting the claims and, therefore, is not broadening the scope. See Hockerson-Halberstadt, Inc., 183 F.3d at 1374. We agree with Patent Owner that the amended language regarding two memory banks does not impermissibly broaden the scope relative to the original claims.” slip op. at 18

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 8,134,451
• Cisco Systems, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Dec 6, 2021 · IPR2021-00961 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Cisco did not show a reasonable likelihood that any challenged claim was unpatentable over Traversat alone or Traversat and Guo.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We determine that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’014 patent is unpatentable. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2

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

    “Claims 1, 18, and 19 recite “wherein the connected services layer is configured to support establishment of the service connection based on a service name of the connected services layer, a service name of the remote connected services layer, and a service connection identifier for the service connection.” Ex. 1001, 14:37–42, 16:38–43, 16:65–17:3 (emphasis added). Claims 1, 18, and 19 also recite “wherein the connected services layer is configured to: send, toward a server, a service connection request message comprising the service name of the connected services layer and the service name of the remote connected services layer of the remote endpoint.” Id. at 14:42–47, 16:43–48, 17:3–8 (emphasis added). Because the former limitation refers to “a service name” and the latter limitation refers to “the service name,” those limitations together require a service connection request message that includes the same “service name of the remote connected services layer” that is used to establish the service connection. Id. at 14:37–47, 16:38–48, 16:65–17:8 (emphasis added); see Tech. Consumer Prods., Inc. v. Lighting Sci. Grp. Corp., 955 F.3d 16, 22 (Fed. Cir. 2020) (“No other heat sink is specified in the claim. Consequently, ‘the heat sink’ that is used in the calculation of the height-to-diameter ratio is the same heat sink that is annularly coupled to the heat spreader.”).” slip op. at 6

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

    “We agree that Petitioner does not show sufficiently that Traversat’s discovery query message includes the service name of the remote connected services layer, but for a different reason than the one articulated by Patent Owner. As discussed above, claim 1 requires a service connection request message that includes the same “service name of the remote connected services layer” that is used to establish the service connection. See Section II.B. On this record, Petitioner does not show sufficiently that Traversat’s discovery query message includes the same service name of the remote connected services layer that is used to establish the service connection.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 9,357,014
• Intel Corporation v. Acqis LLCInstitution denied
  PTAB · Dec 2, 2021 · IPR2021-01099 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution on claims 1–22 under § 325(d), finding substantially the same arguments had been presented to the Office and no material Office error was shown.

  RulingsInstitution decision

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

    “Under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. If the petitioner fails to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8, 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). slip op. at 7

  Discretionary denial
  Patents in suitUS 9,529,769
• ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Oct 6, 2021 · IPR2021-00697 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, principally failing to explain why Nilsson’s wide-band filter would be implemented as a filter bank.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We determine that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’060 patent is unpatentable. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2

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

    “teaches a filter bank. As discussed above, Petitioner asserts that Nilsson teaches a wide-band filter. Pet. 33–34 (citing Ex. 1005, 11:21–25, Fig. 5). Petitioner, though, does not identify any portion of Nilsson that indicates the wide-band filter is a filter bank. See id. Petitioner instead asserts that filter banks were “well-known in the art” and that Nilsson’s wide-band filter “can be implemented as a filter bank.” Id. at 34 (citing Ex. 1003 ¶ 109) (emphasis added). But “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Here, even if Petitioner is correct that a person of ordinary skill in the art could have implemented Nilsson’s wide-band filter as a filter bank, Petitioner does not explain why a person of ordinary skill in the art would have done so. See Pet. 33–34; Ex. 1003 ¶¶ 108–109. Petitioner’s mere statement that Nilsson’s wide-band filter “corresponds” to a filter bank does not explain why a person of ordinary skill in the art would have implemented Nilsson’s wide- band filter as a filter bank or otherwise understood it to be a filter bank. See Pet. 34; Ex. 1003 ¶ 109. As a result, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claims 1 and 10 would have been obvious over Nilsson and Iser.” slip op. at 7

  § 103 obviousness
  Patents in suitUS 9,294,060
• ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments LLC D/B/A Brazos Licensing And DevelopmentInstitution denied
  PTAB · Oct 5, 2021 · IPR2021-00694 · APJ John D Hamann · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “Accordingly, Petitioner has not demonstrated a reasonable likelihood of success in challenging independent claim 1 as being anticipated by Hwang. In addition, the Petition does not present any information with respect to dependent claims 2, 3, 6, 8–10, 12, 13, and 15 that addresses the deficiencies discussed above. Pet. 55–73. Thus, Petitioner has not demonstrated a reasonable likelihood of success in challenging claims 2, 3, 6, 8–10, 12, 13, and 15 as being anticipated by Hwang.” slip op. at 20

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

    “Petitioner argues that “[n]o claim terms need to be construed by the Board at this time.” Pet. 23. Patent Owner does not identify any claim terms for construction. Prelim. Resp. 24–25. Accordingly, we determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10

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

    “We find that this sentence from Hwang is unavailing. Simply put, this sentence fails to disclose anything about how Hwang manages a mobile station’s active set with respect to establishing a new link. Ex. 1005 ¶ 30. Instead, this sentence explicitly discloses that a hard handover is used for the uplink synchronous timing procedure, but does not disclose that a hard 9 Patent Owner sometimes argues that “the Petition fails to establish it is more likely than not” that Hwang discloses the disputed limitation. See, e.g., Prelim. Resp. 25. This is not the standard, however, for deciding whether to institute an inter partes review. See 35 U.S.C. 314(a). Rather, we apply here a reasonable likelihood standard in evaluating the Petition. Id. handover is used for establishing a new link. Id. Notably, the sentence Petitioner relies upon is immediately preceded by the following sentence: “[I]n order to improve the method of controlling the handover, a hard handover means of the uplink synchronous timing essentially required in the uplink synchronous transmission scheme should be added together with the related art soft handover method.” Id. (emphasis added). In other words, Hwang discloses using both soft and hard handovers. See, e.g., id. at code (57), ¶¶ 30, 53, 64. Hwang characterizes its use of both soft and hard handovers for its data flow procedure of a preferred embodiment as follows: The data flow shown in F[igure] 7 can be classified into 1) a soft handover procedure for setting the radio link in the target base station 333 as shown in step 501, 2) a hard handover procedure for converting the synchronous mode, and 3) a soft handover procedure for releasing the radio link of the source base station 335 as shown in step 539. Id. ¶ 64. Similarly, the sentence Petitioner quotes from paragraph 30 discloses using Hwang’s hard handover procedure for converting the synchronous mode, and using Hwang’s soft handover procedures for setting and releasing radio links. Compare id. ¶ 30, with id. ¶ 64.” slip op. at 15

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

    “VI. REMAINING GROUNDS Petitioner argues that the combination of (i) Hwang, Kim, and TS25.301 renders dependent claims 4 and 5 obvious; (ii) Hwang and Kim renders dependent claim 7 obvious; and (iii) Hwang and Miklos renders dependent claims 11 and 14 obvious. Pet. 73–90. For these grounds, Petitioner relies on its showing for independent claim 1 from which claims 4, 5 7, 11, and 14 depend. Id. As we find above, however, the Petition fails to show a reasonable likelihood that Hwang teaches independent claim 1. See supra Section V(B). Petitioner’s showing for the remaining grounds do not cure the deficiencies discussed above. See Pet. 73–90. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of success in challenging these dependent claims as being obvious over these additional grounds.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,489,929
• Hologic, Inc. / Varex Imaging Corp. et al. v. University Of South Florida Board Of TrusteesInstitution denied
  PTAB · Sep 27, 2021 · IPR2021-00656 · APJ Debra K Stephens · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 2–6, 9–11, 16, or 17 unpatentable over Stewart or Freedman and Cade.

  RulingsInstitution decision

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

    “(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition (35 U.S.C. § 314(a)). Petitioner challenges claims 2–6, 9–11, 16, and 17 as unpatentable under both 35 U.S.C. § 102 and 35 U.S.C. § 103 (Pet. 3). Based on our review of the record, we conclude that Petitioner is not reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a “person of ordinary skill in the art (‘POSITA’) at the time of the alleged invention would have at least three years’ experience developing software for computer workstations, and at least one year of this experience in a clinical environment” (Pet. 8 (citing Ex. 1003 ¶ 27)). The prior art itself demonstrates 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) (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))). Based on the present record and the disclosure in the ’937 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine the definition offered by Petitioner—as interpreted by the panel— comports with the qualifications a person would have needed to understand and implement the teachings of the ’937 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10

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

    “We look to the Specification in interpreting the limitation. None of the terms in the above limitation is defined expressly in the ’937 Patent (see generally Ex.1001). The Specification describes, however, “a case may contain single-view or standard four-view mammograms (left and right medio-lateral, ML, left and right cranio-caudal, CC)” (id. at 5:2–5). Thus, the ’937 Patent distinguishes a “case” from a “mammogram” –– a mammogram is one slice of the case, not all the slices of a breast mammography (case). The ’937 Patent further describes an “analysis window,” in which “decimated views 41, 42 of the original images are provided in the upper section [and] . . . the lower part two windows 43, 44 display selected sections . . . at high resolution” (id. at 5:21–25). Thus, the analysis window provides, on one side, a view of an original image (e.g., left CC) in one form (e.g., decimated view 41), and a view of that original image in another form (e.g., high-resolution view 43) (id.; see also id. at Fig. 3). On the other side, the analysis window also provides a view of an original image (e.g., right CC) in one form (e.g., decimated view 42), and a view of that original image in another form (e.g., high-resolution view 44). Based on the record before us, “a mammogram image” is an image that is originally taken (“original image”), i.e., the left or right medio-lateral images, etc. The ’937 Patent further describes “[t]his arrangement enables the physician to keep the overview . . . while looking at the high-resolution sections” (id. at 5:25–28). “The overview images are lower-resolution, reduced-sized images and are displayed in a short-time period” (id. at 7:6– 8). “[A] common practice is to scan through the image in the decimated view but pan in the high-resolution view for a thorough and slow examination of certain regions of interest” (id. at 5:34–38). Thus, the ’937 Patent describes “display[ing] a mammogram image in a different form in each window,” e.g., both a lower-resolution, reduced-size (decimated) view of an original image and a higher-resolution view of that image in a window. Additionally, the ’937 Patent describes real-time grayscale adjustment of the window (id. at 5:39–40). In light of the disclosure of the ’937 Patent, we determine that the limitation “display a mammogram image in a different form in each window with grayscale values, along with the illumination characteristics of said monitor, appears to a user as a mammogram in each window under a predetermined illumination state” means the original mammogram image is displayed in a different form (i.e., different resolution) in each window “with grayscale values that, along with the illumination characteristics of said monitor, appears to a user as a mammogram in each window under a predetermined illumination state.” For similar reasons, we determine “transforming the image into a plurality of varying-resolution forms, each form having a different set of greyscale values; and . . . displaying the forms on the display means, each form displayed within a different sector of the display means,” as recited in claim 3 (Ex. 1001, 9:67–10:3) means the original mammogram image is displayed in a different form within a different sector of the display means. We further determine, “transforming the image into a plurality of varying-resolution forms, each form having a different set of greyscale values; and . . . displaying a first form on the first monitor and a second form on the second monitor,” as recited in claim 17 (id. at 10:61–65) means the original image is transformed into a plurality of varying-resolution forms, having different set of greyscale values, and displaying a first and a second form on a first and a second monitor, respectively. b) Other terms We determine we do not need to expressly construe any other terms for purposes of this Decision (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.”))).” slip op. at 13

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

    “Petitioner, however, has not shown reasonably where, or how, those cited portions of Stewart disclose different forms of a mammogram image are displayed in multiple respective windows, i.e., “a plurality of windows . . . display[ing] a mammogram image in a different form in each window,” as recited in claim 2. In particular, Petitioner has not reasonably shown, or explained how, either of Stewart’s split screen option or tile mode displays different forms of the original image (see generally Pet.). Nor has Petitioner shown Stewart’s split screen option or tile mode displays those different forms of the original image in respective windows. Petitioner points out (Pet. 29) that Stewart describes the “tile presentation mode maximizes the number of simultaneous images displayed without compromising image quality” (Ex. 1005, 95, Fig. 7). That description, however, discloses displaying multiple (i.e., different) images in multiple windows, rather than displaying different forms of an image in multiple windows. Further, Petitioner contends that Stewart’s “split screen option allows an image set to span either (1) two display monitors, (2) one display monitor, (3) one-half display monitor (two image sets per display monitor), or (4) one-quarter display monitor (four image sets per display monitor)” ((Pet. 28 (quoting Ex. 1005, 95)). That description, however, like the description of tile mode, describes displaying multiple images in multiple windows instead of different forms of an image in multiple windows. For example, the split screen option displays one image split over more than one monitor –– not one image in different forms over more than one monitor. Additionally, although Petitioner contends Stewart describes “images are transformed into different forms having varying resolutions” (Pet. 31 (citing Ex. 1005, 95 (“images are stored with a greater bit depth (12-bits) than they may be displayed (8-bits)”)), that portion of Stewart does not describe that different forms of a mammogram image are displayed in multiple windows. Rather, the cited disclosure in Stewart describes a mammogram image stored in a different form. In particular, the cited description of Stewart discloses an image is stored with “a greater bit depth” than displayed (Ex. 1005, 95). That portion of Stewart does not describe that images are displayed in a plurality of different bit depths, i.e., “a plurality of windows” having “a different form” of a mammogram image “in each window.” Furthermore, Petitioner’s expert declaration of Dr. Bryan P. Bergeron does not explain reasonably how, or show where, the cited portions of Stewart describe displaying different forms of an image in multiple windows. Dr. Bergeron states that, in Stewart, “not only can the initial presentation of images appear in various grayscale values, but also further displays of images can do the same” (Ex. 1003 ¶ 55). Dr. Bergeron further states that “pursuant to the monitor characteristics and the window and level settings for display, images are transformed into forms, which may be shown in various windows, and each having a predetermined illumination state” (id. ¶ 56). Dr. Bergeron’s declaration describes different images being displayed in some particular form, i.e., at some display setting. None of Dr. Bergeron’s statements establish or explain how different forms of an image are displayed in multiple windows on the same monitor.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,630,937
• Google LLC v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · May 11, 2021 · IPR2020-00447 · APJ Scott Raevsky · IPR · Final written decision

  Claim 1 is unpatentable as anticipated by Liu; the Board did not reach the obviousness ground over Liu and Chitprasert.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Lastly, we disagree that Dr. Rodriguez’s testimony is conclusory and unsupported. See PO Resp. 10. We agree, rather, with Petitioner that Patent Owner “has not identified where or how Dr. Rodriguez’s testimony is inconsistent with the record.” Reply 16. And Patent Owner did not cross-examine Dr. Rodriguez or submit rebuttal testimony of its own. In short, we are persuaded that Dr. Rodriguez’s testimony is supported by Liu’s disclosure of modifying the output of inverse DCT module 209. Compare, e.g., Ex. 1002 ¶¶ 108, 110–111, with Ex. 1005, 7:4–9, 2:55–57, 8:40–49, 9:61–74. We have reviewed Patent Owner’s contrary arguments and given them due consideration, but they do not sufficiently rebut Petitioner’s persuasive showing and evidence.” slip op. at 15

  • BurdenUnpatentable

    “contorted reading of Liu.” Reply 8. This is easiest to see in Patent Owner’s assertion that Liu only modifies the output of spatial bitstream output module 213 or inverse quantizer 207. PO Resp. 9. Liu actually teaches that its “layered decoder can stop decoding . . . [at] any one of the decoding modules.” Ex. 1005, 7:5–7 (emphasis added), cited in Ex. 1002 ¶¶ 75, 76, 87, 88, 97, 108. In that same vein, Liu’s system “can process a compressed input bitstream in any state of compression.” Id. at 2:55–57 (emphasis added), cited in Ex. 1002 ¶ 73. And Liu’s “selective interconnection path selectively connects the output of one of the decoding modules”—i.e., any decoding module—“to the input of the decoded bitstream processor.” Id. at 3:12–14 (emphasis added), cited in Ex. 1002 ¶¶ 78, 92. What is more, Liu’s “blocks of differences” from inverse DCT module 209 “are fed to the output bus 134 for connection to the output selector 215,” which “selects the output of one of the decoding modules” and “feeds this bitstream” to decoded bitstream processor 118. Id. at 8:40–49, 9:61–64, cited in Ex. 1002 ¶ 108. These disclosures expressly teach that Liu selects the output of inverse DCT module 209 for modification. At the very least, we agree with Dr. Rodriguez that one of ordinary skill in the art would have understood that Liu selects the output of inverse DCT module 209 for modification. See Ex. 1002 ¶ 108; Paulsen, 30 F.3d at 390 (Prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.”).” slip op. at 12

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

    “We agree with Petitioner that Patent Owner’s “argument rests on a contorted reading of Liu.” Reply 8. This is easiest to see in Patent Owner’s assertion that Liu only modifies the output of spatial bitstream output module 213 or inverse quantizer 207. PO Resp. 9. Liu actually teaches that its “layered decoder can stop decoding . . . [at] any one of the decoding modules.” Ex. 1005, 7:5–7 (emphasis added), cited in Ex. 1002 ¶¶ 75, 76, 87, 88, 97, 108. In that same vein, Liu’s system “can process a compressed input bitstream in any state of compression.” Id. at 2:55–57 (emphasis added), cited in Ex. 1002 ¶ 73. And Liu’s “selective interconnection path selectively connects the output of one of the decoding modules”—i.e., any decoding module—“to the input of the decoded bitstream processor.” Id. at 3:12–14 (emphasis added), cited in Ex. 1002 ¶¶ 78, 92. What is more, Liu’s “blocks of differences” from inverse DCT module 209 “are fed to the output bus 134 for connection to the output selector 215,” which “selects the output of one of the decoding modules” and “feeds this bitstream” to decoded bitstream processor 118. Id. at 8:40–49, 9:61–64, cited in Ex. 1002 ¶ 108. These disclosures expressly teach that Liu selects the output of inverse DCT module 209 for modification. At the very least, we agree with Dr. Rodriguez that one of ordinary skill in the art would have understood that Liu selects the output of inverse DCT module 209 for modification. See Ex. 1002 ¶ 108; Paulsen, 30 F.3d at 390 (Prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.”).” slip op. at 12

  Patent outcomesUS 6,329,934 unpatentable
  § 102 anticipation
  Patents in suitUS 6,329,934
• Square, Inc. v. 4361423 Canada Inc.All claims unpatentable
  PTAB · May 6, 2021 · IPR2019-01654 · APJ Kevin C Trock · IPR · Final written decision

  Claims 8–21 and 29–42 are unpatentable under § 103 over Valliani and Vrotsos, with claims 14, 21, 35, and 42 also unpatentable over Bryant; other grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Patent Owner’s expert, Mr. Zatkovich, agrees with Dr. Shamos that a person of ordinary skill in the art “in the field of the challenged claims would have been someone with good working knowledge of device interfaces and the integration of devices involving digital and analog signals.” Ex. 2004 ¶ 14. Mr. Zatkovich testifies that a person of ordinary skill in the art “may have a Bachelor of Science in Electrical Engineering or Computer Engineering, or the equivalent and have at least one to two years of relevant experience in the fields of embedded systems and mobile communication device interfaces, or otherwise equivalent industry experience in the relevant field.” Id. The parties’ description of a person of ordinary skill is essentially the same and is consistent with the subject matter of the ’107 patent. We agree with the parties’ description of a person of ordinary skill in the art at the time of the claimed invention, with the exception of the qualifier “at least” to keep the description from extending to a level beyond that of ordinary skill. Accordingly, for purposes of this Final Written Decision, a person of ordinary skill in the art is a person with a bachelor’s degree in electrical or computer engineering or equivalent having two years of relevant experience in the fields of embedded systems and mobile communication device interfaces, or otherwise equivalent industry experience in the field. B.” slip op. at 9

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

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017); see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (applying Vivid Techs. in the context of an inter partes review). Here, neither party proposes an express construction for any claim terms. We agree that no claim terms require express construction, and use the ordinary and customary meaning of the terms. However, to the extent that the arguments of the parties reflect a particular understanding of the claim language, we discuss each party’s understanding in our analysis of the arguments below. C.” slip op. at 10

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

    “Here, we find that Petitioner’s explanation of combining the teachings of Vrotsos and Valliani to 1) incorporate Vrotsos’ smartcard read head with Valliani’s smartcard reader/writer unit to create a more predictable and successful portable transaction device; 2) combine the functionality of Vrotsos’ processor 303 with Valliani’s electronics 210 to convert the stored smart card information into a format suitable for transmission to Valliani’s device 10; and 3) incorporate Vrotsos’ teaching of a communication device transmitting recorded information to a remote transaction server with Valliani’s teaching of device 10 to enable Valliani’s remote host system 75 to successfully process a commercial transaction, articulate sufficient rationales for combining the teachings of Valliani and Vrotsos in the manner proffered by Petitioner. We therefore find that Petitioner has shown persuasively by a preponderance of the evidence that one of ordinary skill in the art at the time of the invention would have been motivated to combine the teachings of Valliani and Vrotsos in the manner proffered by Petitioner. iii. Conclusion as to Claim 8 Based upon consideration of the entire record, we are persuaded by Petitioner’s arguments and evidence, notwithstanding Patent Owner’s arguments and evidence, and determine that Petitioner has demonstrated by a preponderance of the evidence that independent claim 8 is unpatentable under 35 U.S.C. § 103(a) as obvious over Valliani and Vrotsos.” slip op. at 52

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

    “Given this background in the art and the level of ordinary skill, Patent Owner’s criticism that Petitioner has not sufficiently explained how to combine Valliani and Vrotsos or how the two references would work together is unavailing. For example, Patent Owner argues that “Valliani’s PCMCIA interface requires a 68-pin electrical connection using a parallel communication protocol,” while “Vrotsos can use a 4 pin RS-232 connection and a serial communication protocol” (id. at 27–28). Patent Owner’s argument is nonresponsive to Petitioner’s proposed combination. Petitioner is not proposing to physically combine Vrotsos’ 4-pin connector and serial communication protocol with Valliani’s 86-pin connector and parallel communication protocol. “[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973).” slip op. at 50

  Patent outcomesUS 9,818,107 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,818,107
• Square, Inc. v. 4361423 Canada Inc.All claims unpatentable
  PTAB · May 6, 2021 · IPR2019-01653 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1–7 and 22–28 are unpatentable as obvious over Valliani and Vrotsos, with claims 7 and 28 also relying on Bryant; the Proctor grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Patent Owner’s expert, Mr. Zatkovich, agrees with Dr. Shamos that a person of ordinary skill in the art “in the field of the challenged claims would have been someone with good working knowledge of device interfaces and the integration of devices involving digital and analog signals. Ex. 2004 ¶ 14. Mr. Zatkovich testifies that a person of ordinary skill in the art “may have a Bachelor of Science in Electrical Engineering or Computer Engineering, or the equivalent and have at least one to two years of relevant experience in the fields of embedded systems and mobile communication device interfaces, or otherwise equivalent industry experience in the relevant field.” Id. The parties’ description of a person of ordinary skill is essentially the same and is consistent with the subject matter of the ’107 patent. We agree with the parties’ description of a person of ordinary skill in the art at the time of the claimed invention, with the exception of the qualifier “at least” to keep the description from extending to a level beyond that of ordinary skill. Accordingly, for purposes of this Final Written Decision, a person of ordinary skill in the art is a person with a bachelor’s degree in electrical or computer engineering or equivalent having two years of relevant experience in the fields of embedded systems and mobile communication device interfaces, or otherwise equivalent industry experience in the field.” slip op. at 9

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

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017); see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (applying Vivid Techs. in the context of an inter partes review). Here, neither party proposes an express construction for any claim terms. We agree that no claim terms require express construction, and use the ordinary and customary meaning of the terms. However, to the extent that the arguments of the parties reflect a particular understanding of the claim language, we discuss each party’s understanding in our analysis of the arguments below.” slip op. at 10

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

    “Owner’s criticism that Petitioner has not articulated how combining Valliani and Vrotsos would physically happen or how the two references would actually work together is unavailing. For example, Patent Owner argues that “Valliani’s PCMCIA interface requires a 68-pin electrical connection using a parallel communication protocol,” while “Vrotsos can use a 4 pin RS-232 connection and a serial communication protocol” (id. at 27–28). Patent Owner’s argument is nonresponsive to Petitioner’s proposed combination. Petitioner is not proposing to physically combine Vrotsos’ 4-pin connector and serial communication protocol with Valliani’s 86-pin connector and parallel communication protocol. “[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983); “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973). Rather, Petitioner is proposing adding the functionality of Vrotsos’s processor 303 to the controller of Valliani’s electronics 210 to convert the recorded information into a format suitable for transmission to Valliani’s device 10. See, e.g., Pet. 31, 35–36. Dr. Shamos testifies that “Vrotsos discloses at least two different ways of converting information read from a smartchip card into a format suitable for transmission to [a] wireless communication device.” Ex. 1003 ¶¶ 71–72, 95–97. Dr. Shamos also testifies that a person of ordinary skill in the art “would have known to use a controller (either a specialized hardware circuit or software running on a processor, either of which is the claimed controller) to perform the claimed conversion. Vrotsos discloses a specific configuration that provides the same function described by Valliani to include such a controller.” Id. ¶ 77. Also, to the extent necessary, Petitioner is proposing incorporating Vrotsos’s teachings of a communication device transmitting recorded information to a remote transaction server to Valliani’s device 10 in order to enable Valliani’s remote host system 75 to process the commercial transaction. See Pet. 39–40; see also Ex. 1003 ¶¶ 104–108. As Dr. Shamos testifies, “[t]he system in Vrotsos sends transaction transmission to a server over a wireless communications network using wireless protocols and such transaction transmission includes transaction data from the card 230.” Id. ¶ 107. Dr. Shamos also testifies that a person of ordinary skill in the art: would have been motivated to apply the teachings of Vrotsos to Valliani’s system so that Valliani’s host system 75 could verify the card’s known PIN and process the commercial transaction. This would be impossible without a transmission from the mobile device to the remote server that includes either the account number to look up the known token PIN or the token PIN previously saved on the magnetic stripe 220. The application of Vrotsos’s teachings would have been straightforward to a [person of ordinary skill in the art] and would have achieved predictable results (i.e., allowing the remote host to verify the card data while protecting that card data from the user of the PDA). Transmission of card data to a remote server for authorizing (processing) a transaction was a necessary step in credit card processing and would have been obvious in light of the transmission of the fingerprint token PIN in the same manner. Thus, this limitation 1.e.4 is disclosed by both Valliani and Vrotsos and would have been obvious in view of Valliani and Vrotsos. Ex. 1003 ¶ 114.” slip op. at 51

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached

    “Appointments Clause Patent Owner argues that the appointment of Administrative Patent Judges (“APJs”) of the Patent Trial and Appeal Board by the Secretary of Commerce “is not constitutional under the Appointments Clause.” PO Resp. 38. Patent Owner also argues that the Federal Circuit’s “attempted cure of the Constitutional violation” in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), “is insufficient, because it does not give a constitutionally appointed principal officer the power to review APJ decisions.” PO Resp. 39. We decline to consider Patent Owner’s constitutional challenge as the Federal Circuit addressed this issue in Arthrex, 941 F.3d at 1325. E. Due Process Patent Owner argues that “subjecting a patent effectively filed before September 16, 2012 (when the relevant provisions of the AIA went into effect), as is the case here, to IPR is an impermissibly retroactive, unconstitutional taking” and “violates the Due Process Clause of the Fifth Amendment.” PO Resp. 39. We decline to consider Patent Owner’s constitutional challenge as the Federal Circuit addressed this issue in Celgene Corp. v. Peter, 931 F.3d 1342, 1362–63 (Fed. Cir. 2019).” slip op. at 67

  Patent outcomesUS 9,818,107 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,818,107

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.