- Samsung Display Co., Ltd. / Funai Electric Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentablePTAB · Dec 27, 2016 · IPR2015-01416 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 2, and 4–10 are unpatentable as obvious over Fujii, Fujii and Nakamura, or Fujii and Tsutsui, as applicable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In essence, Patent Owner’s construction of the term “light shield area” as requiring an observable effect on the quantity of light leakage in order to improve the quality of the display to the user imports a term of degree into claims that recite this feature. “When a ‘word of degree’ is used [in a claim], . . . the patent [must provide] ‘some standard for measuring that degree.’” Enzo Biochem v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)). “The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). “When a claim term ‘depend[s] solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention,’ without sufficient guidance in the specification to provide objective direction to one of skill in the art, the term is indefinite.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014) (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)). The phrases “observable” and “quality to the user” are highly subjective and, on their face, provide little guidance to one of skill in the art. These phrases are not recited explicitly in the claims themselves. Patent Owner has not directed us to any disclosure in the written description, nor can we find such a disclosure, relevant to determining a standard for 11 measuring the necessary degree of observability or quality.3 Consequently, we decline to adopt Patent Owner’s construction of the term “light shield area” because it would inject unnecessary ambiguity into the claims that recite this feature. Instead, we maintain our initial determination that “light shield area” should be accorded its plain and ordinary meaning (i.e. area that shields light), which, in our view, is a broad, yet reasonable construction in light of the Specification and claims of the ’275 patent.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Patent Owner relies on Allergan for the proposition that Fujii’s criticism of blocking light means that it cannot be relied on as prior art in this case. PO Resp. 26 (citing Allergan, Inc. v. Sandoz Inc. 796 F.3d 1293, 1305-06 (Fed. Cir. 2015)). Patent Owner asserts that, “[i]n Allergan, the court found that the prior art criticized the claimed formulation [BAK] because the reference taught one of ordinary skill in the art to minimize the amount of a particular claimed element in order to avoid certain problems. PO Resp. 26 (citing Allergan, 796 F.3d at 1305–06.). However, Patent Owner does not explain that, in Allergan, “the prior art taught that BAK should be minimized in ophthalmic formulations to avoid safety problems.” Allergan, 796 F.3d at 1305. In Allergan, “the prior art [also] taught that BAK would not increase the permeability of bimatoprost, but might instead decrease it.” Id. at 1306. Thus, in Allergan, the prior art taught that the formulation at issue caused safety problems and caused the opposite effect than the one desired by the patent at issue. Here, in contrast, Fujii teaches that the metal auxiliary terminals will cause the exact effect desired (or intended result) in the ’275 patent, even though that same effect, i.e. blocking light, is disfavored by the Fujii inventors. In fact, Fujii suggests that the light blockage above the maximum width would block light and “darken[] the screen.” Ex. 1003, 16:11–32. This disclosure is Fujii is supported by the testimony of Dr. Chiang. Ex. 1008 ¶ 52 (testifying that chromium wiring materials disclosed in Fujii may be used as opaque light shield areas used to darken a screen). 15 Also relevant to Patent Owner’s argument presented here is its’ assertion in its claims construction argument that light shield areas must have an observable effect or “there would be no point in providing the light shield areas.” PO Resp. 20. Were we to accept that logic, then we would also apply the same logic here that there would be no point in reducing darkening in Fujii unless the darkening described was an observable effect. “A finding that two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). While Fujii suggests limiting the width of the metal auxiliary electrodes to avoid darkening of the screen and maintaining a consistent gap between the top and bottom substrates, it also teaches one of ordinary skill that widening of the metal auxiliary electrodes shields light to the screen. See, e.g., Ex. 1003, 16:29–33 (disclosing that “[w]hen the width of the metal auxiliary electrode 56 is increased to further reduce the wiring resistance, the display opening factor of the liquid crystal device is reduced darkening the screen”). Finally, in our claim construction section above, we construed “light” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find that Fujii explicitly states that “the invention [of Fujii] can also be applied to an active matrix liquid crystal display,” and further states that the electrodes could be replaced by “scanning signal . . . or video signal lines.” Ex. 1003, 1:7–12, 12:54–67. As mentioned previously, Fujii states that the auxiliary electrodes may cause a darkening of the panel. Id. at 16:29–33. This is the same effect that the inventors of the ’275 patent were trying to achieve. Ex. 1001, 2:39–43. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. A person of ordinary skill is a person of ordinary creativity, not an automaton. Id. at 421. Thus, because Fujii explicitly contemplates that its teachings may be applied to an active matrix liquid crystal display, and Fujii shares a common objective with the inventors of the ’275 patent— namely, resolving uneven brightness or darkening of a panel—Fujii provides sufficient teachings such that one of ordinary skill in would implement the claimed light shield areas in an active matrix crystal display. Pet. 19; Pet. Reply 9. Patent Owner does not address separately Petitioner’s contentions and supporting evidence with respect to claims 2 and 4, which depend from claim 1. We have reviewed Petitioner’s proposed ground of obviousness by Fujii against claims 1, 2, and 4, and we agree with and adopt Petitioner’s 20 analysis. Based on the record developed during trial, Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 4 would have been obvious over Fujii.” slip op. at 20
- ExcludeMotion to exclude, deniedDenied
“III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude the ’163 patent introduced by Petitioner with its Reply as improper reply evidence and as irrelevant. Mot. to Exclude 1. Petitioner relies on the ’163 patent to support Dr. Watts’s purported admission that “in the embodiment of the ’275 patent where light shield areas are comprised of strips of light shield material (as shown in blue 27 coloration in Figure 6), the strips are on the order of 10–20 microns wide.” Pet. Reply 11 n.2. This issue is moot because this Final Written Decision does not cite to or rely upon the ’163 patent. In addition, we do not rely on any assertion by Petitioner that light shield material in the ’275 patent is on the order of 10–20 microns wide. For that reason, we do not address the matter on the merits and dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 27
Patent outcomesUS 5,850,275 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,850,275 - Samsung Display Co., Ltd. / Funai Electric Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentablePTAB · Dec 27, 2016 · IPR2015-01417 · APJ Bryan F Moore · IPR · Final written decision
Claims 2, 3, 5, and 6 are unpatentable: claims 3, 5, and 6 as anticipated by Takizawa; claim 2 as obvious over Takizawa and Hoshino; and claims 2, 3, and 6 as anticipated by Hoshino.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner
“The Federal Circuit “counsels the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.” Id. Additionally, “‘words or expressions of manifest exclusion’ or ‘explicit’ disclaimers in the specification are necessary to disavow claim scope.” Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Whether the order of the steps recited in a method claim must be performed in a particular order is properly a part of claim construction. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1371–72 (Fed. Cir. 2003). Generally, steps may be performed in any order so long as “nothing in the intrinsic evidence” compels otherwise. Id. at 1370. “Interactive Gift recites a two-part test for determining if the steps of a method claim that do not otherwise recite an order, must nonetheless be performed in the order in which they are written.” Altiris, 318 F.3d 1369 (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)). “First, we look to the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written.” Id. “If not, we next look to the rest of the specification to determine whether it directly or implicitly requires such a narrow construction.” Id. at 1370. (citation omitted). If not, the sequence in which such steps are written is not a requirement.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Takizawa does require forming an etch-stop (or channel protection layer, referred to as “the protecting film 18” in Takizawa) prior to (and as a necessary prerequisite to) forming the operative semiconductor of the TFT. Ex. 1003 at 15:1–32. However, Takizawa still performs only five patterning steps. In fact, Patent Owner admits that Takizawa performs only five etching/patterning steps. Tr. 40:23–41:9 (“there are five steps in Takizawa”); Ex. 2025 ¶ 49. Patent Owner suggests that to meet the claims limitations, step (c) must be performed before, in a separate and distinct manner from step (d). PO Resp. 47–48. Petitioner states that, although Takizawa may not perform step (c) of claim 1 before step (d), this claim do not require a specific order of steps. Pet. Reply 16. Patent Owner’s argument is premised on construing claim 1 to require performing step (c) of the claim before step (d). As we explained above in the claim construction section, we did not so limit this claim; thus, we are not persuaded by Patent Owner’s argument. See supra Section II.A.2. Patent Owner does not address separately Petitioner’s contentions and supporting evidence with respect to claims 3, 5, and 6. See generally PO Resp. 47–48. We have reviewed Petitioner’s proposed ground of anticipation by Takizawa against claims 3, 5, and 6, and we agree with and adopt Petitioner’s analysis. Based on the record developed during trial, Petitioner has shown by a preponderance of the evidence that Takizawa anticipates claims 3, 5, and 6.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner concludes that one of ordinary skill in the art would have recognized that the TFT array operates best when the ACBL receives a consistent voltage, which is provided by driving circuitry through the ACBL terminal. Thus, to create a properly operating device, [a person of ordinary skill in the art] would seek out methods of providing a reference voltage to the capacitive electrodes and would incorporate the ACBL terminal of Hoshino into the Takizawa device in order to do so. Pet. 29; Ex. 1012 ¶ 70. We agree and adopt this stated rationale because it provides specific motivation to make the combination. We credit Petitioner’s declarant who testifies that “the [a person of ordinary skill in the art] would know how to etch the ACBL contact hole and gate bus line 24 contact hole in the same photolithography step because Hoshino provides an example of doing so.” Ex. 1012 ¶ 70. Hoshino itself provides the “how” to achieve the claims limitation.” slip op. at 24
Patent outcomesUS 5,966,589 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,966,589 - Kamstrup A/S v. Apator Miitors ApsAll claims unpatentablePTAB · Dec 20, 2016 · IPR2015-01403 · APJ John F Horvath · IPR · Final written decision
Claims 1–13 are unpatentable: claims 1, 2, 6, and 7 are anticipated by Nielsen; the remaining claims are unpatentable on the listed obviousness grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest reasonable interpretation, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The only term Petitioner asks us to construe is the term “seal” recited in claim 8. Pet. 21. Petitioner argues the term means a “legal” or “tamper-evident” seal. Id. Patent Owner does not dispute this interpretation, and does not ask us to construe any claim terms. We decline to construe the term “seal” because it is not necessary to resolve any controversy. See Vivid Techs., 200 F.3d at 803. We need not expressly construe any other term, as the terms are deemed to have their plain and ordinary meaning.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In his Declaration, Mr. Skallebæk indicated his position as Senior Vice President for Petitioner. Ex. 1018 ¶ 1. He further declared that he had read the Petition and the Exhibits thereto, and swore that all statements in the Declaration were true and correct, and signed the Declaration. Id. ¶ 2. In his deposition, Mr. Skallebæk testified that although he receives an annual salary from Petitioner, his compensation is independent of the outcome of this proceeding. Ex. 2007, 16:10–17:20. The evidence does not show that Mr. Skallebæk has any other financial interest in the outcome of the case. We duly note the interest of Mr. Skallebæk as an Officer of Petitioner in our consideration and weighing of his testimony. See Ethicon Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir. 1998). We do not consider the fact that someone else first drafted Mr. Skallebæk’s Declaration, which he reviewed and signed, to diminish the credibility of his testimony in any way.” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“In his Declaration, Mr. Drachmann declares a “mechanics6” file was attached to the first Tunheim email and a “UFM++venture” file was attached to both the Bjerngaard and second Tunheim emails. Ex. 2008 ¶¶ 5–10. Although the body of the first Tunheim email refers to a mechanical meter assembly and indicates a sample is attached, there are no indicia in either the body or header of the email indicating a file is attached, let alone a file entitled “mechanics6.” See Ex. 2009, 1, 3. Thus, the only evidence that the “mechanics6” file was attached to the first Tunheim email is the Drachmann Declaration. See Ex. 2008 ¶ 5. Moreover, the only evidence that the first Tunheim email was actually sent to Mr. Tunheim is the Drachmann Declaration. Id. ¶ 5. A similar analysis of the Bjerngaard and second Tunheim emails leads to a similar conclusion, i.e., that the only evidence that a “UFM++venture” file was attached to these emails, or that these emails were sent to their intended recipients is the Drachmann Declaration. Id. ¶¶ 6–7; Ex. 2010 1, 3; Ex. 2011 1, 3. Patent Owner has provided no evidence corroborating Mr. Drachmann’s testimony on these points, such as a reply email from Mr. Tunheim or Mr. Bjerngaard, or a declaration from Mr. Tunheim or Mr. Bjerngaard stating he had received the emails on the dates indicated. See Ex. 2008 ¶¶ 5–7. Moreover, even assuming the first and second Tunheim emails and the Bjerngaard email were sent on the dates indicated and included the “mechanics6” and “UFM++venture” files as attachments, this evidence by itself is insufficient to prove conception of the invention prior to March 22, 2010, because it does not show that the inventors were in possession of every element of the claims. For example, each of independent claims 1, 12, and 13 requires “a housing for the transducers and electronic circuit,” and neither the “mechanics6” file nor the “UFM++venture” file shows transducers located within a housing as required by the claims. See Ex. 2009, 4; Ex. 2010, 4–24; Ex. 2011, 54–74. As Petitioner correctly notes, although the devices are referred to as ultrasonic flowmeters in Exhibits 2010 and 2011, “the presence of ‘at least one ultrasonic transducer’ actually inside the device is not apparent in any of the Exhibits themselves, and could be located elsewhere in the fluid flow and still be fully consistent with the content of the Exhibits.” Pet. Reply 2–3. Patent Owner also relies on the “mechanics7” drawings to prove prior conception of independent claims 1, 12, and 13. See Ex. 2008 ¶¶ 14, 21, 22. Although these drawings show the transducers within the housing, Patent Owner presents no evidence indicating these drawings were shown to another person. See Coleman, 754 F.2d at 359 (“Conception must be proved by corroborating evidence which shows that the inventor disclosed to others his completed thought expressed in such clear terms as to enable those skilled in the art to make the invention”) (emphasis added) (internal quotations and citation omitted).” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“D. Unpatentability of Claims 1, 2, 6, and 7 over Nielsen Petitioner argues Nielsen teaches all the limitations of claims 1, 2, 6, and 7, and therefore, anticipates these claims. Pet. 49–53. Nielsen discloses an ultrasonic flow meter that can be used as either a water or gas meter. Ex. 1016 ¶ 28. The flow meter includes flow meter housing 120 with measuring tube 114, and an attached water tight casing that encloses printed circuit board 202 and transducers 206.5 Id. ¶ 35. Nielsen’s casing consists of top part 134 hermetically sealed to bottom membrane 132 via soldering, laser welding, or glue. Id. ¶¶ 35, 44. The bottom membrane 132 includes first and second recesses 236 for seating transducers 206, and flow meter housing 120 includes first and second holes for receiving the first and second recesses. Id. ¶ 38. Bracing 116 is provided to lock the casing to housing 120 via one or more screws. Id. ¶ 40. 5 Petitioner maps Nielsen’s flow meter housing 120 (which includes measuring tube 114) to the claimed “flow channel,” and Nielsen’s water-tight casing (which contains a circuit board and transducers) to the claimed “housing.” See Pet. 50; Ex. 1016 ¶ 35. Figure 2 of Nielsen is reproduced below. Figure 2 is an exploded view of an ultrasonic flow meter as taught by Nielsen. Petitioner demonstrates, by a preponderance of evidence, that Nielsen discloses each of the limitations required by claims 1, 2, 6, and 7. See Pet. 49–53. Based on Nielsen’s disclosure, discussed supra, we find Petitioner’s analysis persuasive and adopt it as our own. Patent Owner does not contest” slip op. at 10
Patent outcomesUS 8,893,559 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,893,559 - Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.Some claims unpatentablePTAB · Dec 15, 2016 · IPR2015-01457 · APJ Jameson Lee · IPR · Final written decision
Claims 2–5, 8, 9, 15–18, and 22–24 are unpatentable as obvious over Ejzak and Cisco or Intel; claim 10 was not shown unpatentable over either combination.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“First, the above-reproduced figure does not appear in the Specification of the ’640 patent. Rather, it is a creation of the Patent Owner. The figure creates the impression that a “part” necessarily is a “device.” Patent Owner, however, does not provide adequate support for such a narrow reading of 14 “part.” Although a “device” is a “part” of a telecommunications network, that does not mean a “part” has to be a “device.” Even Dr. Akl, Patent Owner’s expert, testified only that a “device” is a “part” of a telecommunications network and not that a “part” of a telecommunications network has to be a “device.” Ex. 2006 ¶ 56. Second, the figure also creates the impression that neither a domain nor a region would identify a device. But Patent Owner does not provide adequate support for such a narrow reading of “domain” and “region.” In that regard, Dr. Akl, Patent Owner’s expert, testifies only that a “device” is neither a “domain” nor a “region,” not that a “domain” or a “region” would not or could not identify a “device.” Id. By assuming that a “part” of a telecommunications system has to be a “device,” and by assuming that neither “domain” nor “region” would identify one or more devices, Patent Owner sees an alleged contradiction in allowing media connectivity setting to be as we have construed it, and the phrase that immediately follows the claim term—“identifying one or more other devices.” Because of that alleged contradiction, Patent Owner contends that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunication network.”” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Claim 10 recites, among other limitations, an additional requirement of determining from said bypass mode data that said media gateway “must” be bypassed in said media path. That is in contrast with the language of claim 9, which also depends from claim 8, and which recites, among other limitations, the additional requirement of determining from said bypass mode data that said media gateway “may” be bypassed in said media path. Neither Petitioner nor Patent Owner proposes an express construction for the word “must.” In the circumstances here, the plain and ordinary meaning of “must” in the English language applies. There is no indication that one with ordinary skill in the art would understand the word as conveying something different. The Specification of the ’640 patent does not set forth a special definition of “must.” Also, consistent with the plain and ordinary meaning of “must,” the Specification of the ’640 patent distinguishes between “must” and “may”: It may be determined from the retrieved bypass mode data that the media gateway may be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication setup request message. It may be determined from the retrieved bypass mode data that the media gateway must be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication session setup request message. Ex. 1101, 12:35–42 (emphasis added). 34 We determine that “must,” when applied to an action, such as bypassing a media gateway as recited in claim 10, eliminates not taking that action as a possibility and precludes the not taking of that action. In that regard, the different language used between claims 9 and 10 further supports the distinction between the absolute nature of “must” as used in claim 10 and the permissive nature of “may” as used in claim 9. In that regard, as is noted by Patent Owner, Petitioner’s witness, Mr. Bress, agrees that the permissive nature of “may” does not meet the absolute requirement of “must.” PO Resp. 43 (citing Ex. 2004, 123:7–124:5).” slip op. at 34
- Skill levelDecided for patent owner
“Level of Ordinary Skill in the Art Petitioner asserts: As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the 18 telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). C.” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“49 media gateways. In that connection, we credit the testimony of Petitioner’s witness, Mr. Bress, over the testimony of Patent Owner’s witness, Mr. Akl, in part because Mr. Bress discusses and explains more of the disclosure of Ejzak. Patent Owner’s argument that it is possible to obtain the media connectivity setting of the ensuing device by requesting the ensuing device for such information (PO Resp. 38) is ineffective with respect to claim 4, which does not specify from where the information is retrieved. Retrieving information from the ensuing device nonetheless still is retrieving. With respect to claim 5 which requires retrieving the information from within the given media gateway, not the ensuing device, we have determined that Petitioner has not stablished that Ejzak necessarily discloses retrieving such information from within the storage of the given gateway. Patent Owner’s argument that the claim limitation of “retrieving ensuing device connectivity data for an ensuing device” would not have been regard by one with ordinary skill in the art as an obvious variant of Ejzak’s determining the IP realm for the next segment of the media path is not supported by sufficient reasoning and explanation directed to Ejzak’s disclosure of provisioning IP realms of media gateways as identified and explained by Petitioner. Between the testimony of respective expert witnesses of Petitioner and Patent Owner, we credit the testimony of Mr. Bress, Petitioner’s witness, over that of Mr. Akl, Patent Owner’s witness. Mr. Bress’s testimony, in our view, is more thorough, whereas Mr. Aky’s testimony, in our view, focuses more on what a prior art 50 disclosure literally states without enough explanation as to the understanding by one with ordinary skill in the art of the teachings associated with that language.” slip op. at 49
Patent outcomesUS 8,687,640 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,687,640 - Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.All claims unpatentablePTAB · Dec 15, 2016 · IPR2015-01456 · APJ Jameson Lee · IPR · Final written decision
Claims 1, 6, 7, 11–12, 19–21, and 25–31 are unpatentable as obvious over Ejzak and Cisco and over Ejzak and Intel.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionTerm construed board ownDecided for petitioner
“discussed below, Patent Owner is unpersuasive in arguing (PO Resp. 18–19) that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunications network.” (Emphasis added). Specifically, we determine that the requirement of “identifying one or more other devices” does not exclude information describing domains or regions of a telecommunications network from satisfying the claimed “at least one media connectivity setting identifying one or more other devices.” Patent Owner presents its argument as follows: A “device” is a “part” of a telecommunications network, such as an endpoint or media gateway. Ex. 1001 [’640 Patent] at 11:46 (“a device (endpoint device or media gateway)”); see also Ex. 2006 [Akl Declaration] at ¶ 56. A “device” is neither a “domain” nor a “region” of a telecommunications network. Ex. 2006 [Akl Declaration] at ¶ 56; see also Ex. 2004 [Bress Transcript 1] at 137:15–18 [footnote omitted] and 142:7–11 [footnote omitted]. The following figure demonstrates the relationships between parts, domain, and regions and their associated media connectivity settings:” slip op. at 14
- Skill levelSkill level board ownOther
“As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“37), and based on our discussion of media gateway above, we find that each pair of ALG and associated BG in Ejzak constitutes a media gateway.6 This was a determination first made in the initial decision (Dec. Inst. 21), and Patent Owner put forth no contrary position in the Patent Owner Response. Tr. 48:7–18. Petitioner additionally argues that it would have been obvious to one with ordinary skill to combine each pair of ALG and associated BG in a single physical device, in view of Ejzak alone, because it was well-known in the art that the signaling and media functions of the ALG and BG could be implemented in a single physical device. Pet. 20–21.7 That contingent argument is unnecessary, because none of the claims requires the media gateway to be in the form of a single physical device, such as a unified 6 In particular, each ALG and associated BG pair is a distributed mode SBC (Session Border Controller). 7 Petitioner cites to Cisco and Intel, respectively, as teaching that signaling and media functions can be performed by a single physical device. Pet. 21. In particular, Cisco discloses that SBCs come in two different models, a distributed model and a unified model, and that in the unified model the signaling and media functions are performed not by separate units but by a single operative unit. Ex. 1010, 2. model SBC. Even if we assume that a single physical device is required by the claims, then for reasons expressed by Petitioner, we determine that it would have been obvious to one with ordinary skill in the art, based on the disclosure of Ejzak, to implement Ejzak’s ALG and corresponding BG in a single physical device.8 In that regard, Cisco was cited by Petitioner to show what was well known to one with ordinary skill in the art. In any event, for the reasons indicated by Petitioner on pages 21–25 of the Petition, Cisco would have suggested to one with ordinary skill in the art to implement Ejzak’s ALG and corresponding BG in a single physical device.9” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“In summary, traversed-realm attribute is information about a preceding BG or media gateway including the BG, and that information identifies devices in a traversed IP realm which are accessible from that BG or media gateway. Ejzak discloses limitation [1e]. For limitation [1f], which recites “to enable bypass of said media gateway in said media path if an ensuing device in said outbound signaling path determines that such bypass should be conducted,” Petitioner provides persuasive explanation on pages 16–17, 29–30, and 36–37 of the Petition. For instance, Petitioner explains that in Ejzak, if there is a match between a preceding BG’s IP realm and the next IP realm, one or more BGs may be bypassed. Pet. 16, 30. Petitioner cites to “Case 1,” described in Ejzak, as one example. Pet. 16–17. Ejzak describes: An example of case 1, using FIG. 1 as reference, is that upon receiving an SDP offer from the direction of UA1, ALG3 determines that R4 125 and R1 107 are instances of the same IP realm. ALG3 substitutes the connection and port information from UA1 into the outgoing SDP offer and deletes the traversed-realm instances for R2 113 and R3 119 from the SDP before forwarding. After the end-to-end SDP offer/answer transaction is completed, the media path will bypass BG1 105, BG2 111, and BG3 117. Ex. 1003 ¶ 74. Petitioner also relies on “Case 3,” described in Ejzak, as another example. Pet. 17, 30. Ejzak describes:” slip op. at 27
Patent outcomesUS 8,687,640 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,687,640 - Alarm.Com Inc. v. Vivint, Inc.Institution deniedPTAB · Nov 23, 2016 · IPR2016-01091 · APJ James B Arpin · IPR · Institution
The Board denied institution on claims 1–21, exercising its discretion because this third petition used earlier responses and decisions to refine challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Patent Owner contends that Petitioner used our decisions in the earlier cases as a roadmap for attempts to remedy deficiencies in its earlier petitions. Prelim. Resp. 4–5, 15–16. Patent Owner points to Petitioner’s discussion of its earlier unsuccessful challenges to claims 1–21 of the ’513 patent as evidence of Petitioner’s improper use of our decisions in an effort to perfect its present challenges. Id. We agree. Further, Petitioner acknowledges that the instant Petition attempts to refine the construction of the term “message profile containing outgoing message routing instructions” in view of our construction of that term in our decision to institute review in challenges, based on Shetty, to claims in Case IPR2016-00116. Pet. 17 n.5. Petitioner also provides no explanation as to why claims 1–21 of the ’513 patent could not have been challenged over Shetty and Joao, alone or in combination with Britton and or Garton, in the ’129 petition or in a contemporaneously filed petition. Thus, the instant Petition is essentially a composite response to our decisions in those earlier proceedings. Petitioner also offers no other explanation for the length of time that elapsed between the time it learned of the referenced art here asserted, i.e., at least November 2, 2015, and the filing date of the instant Petition, i.e., May 24, 2016. Because the instant Petition was filed only about one week prior to the raising of the Section 315(b) bar against further challenges to claims 1–21 of the ’513 patent, we can discern no other motivation apart from the information to be gleaned from Patent Owner’s preliminary responses and our decisions on institution in the related cases. See Prelim. Resp. 16–17.” slip op. at 10
Discretionary denialPatents in suitUS 6,717,513 - Alarm.Com Inc. v. Vivint, Inc.Institution deniedPTAB · Nov 17, 2016 · IPR2016-01080 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution for claims 3, 16, 24, 32, 42, and 43 because serial petitions, prior decisions, and inconsistent-decision risks favored exercising discretion.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“received both Vivint’s preliminary responses and our decisions in Cases IPR2015-02004, IPR2016-00116, and IPR2016-00155, explaining why its earlier challenges to claims 3, 16, 24, 32, 42, and 43 were deficient, before filing the instant Petition. In addition, Alarm.com had received Vivint’s preliminary responses and our decisions in other cases in which the applied Shetty and Britton references were asserted. Thus, the instant Petition is essentially a composite response to our decisions in those earlier proceedings. Alarm.com also offers no other explanation for the length of time that elapsed between the time it learned of the referenced art here asserted, i.e., at least November 5, 2015, and the filing date of the instant Petition, i.e., May 20, 2016. Because the instant Petition was filed only about two weeks prior to the raising of the Section 315(b) bar against further challenges to claims 3, 16, 24, 32, 42, and 43 of the ’601 patent, we can discern no other motivation apart from the information to be gleaned from Vivint’s preliminary responses and our decisions on institution in the related cases.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“B. Conclusion For the reasons discussed above, and given the limited resources of the Board, we exercise our discretion not to institute review in this proceeding. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. IV. ORDER Accordingly, it is ORDERED that the Petition is denied and no trial or inter partes review is instituted for claims 3, 16, 24, 32, 42, or 43 of the ’601 patent on any asserted ground.” slip op. at 14
Discretionary denialPatents in suitUS 6,147,601 - Amit Agarwal v. Immersion CorporationInstitution deniedPTAB · Sep 19, 2016 · IPR2016-00807 · APJ Minn Chung · IPR · Institution
Institution was denied for all challenged claims because the petition did not show a reasonable likelihood of prevailing on either asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A claim is anticipated only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind. 2. Overview of Rosenberg (Ex. 1002)” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind. 2. Overview of Rosenberg (Ex. 1002)” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“35 U.S.C. § 103(a) over the combination of Rosenberg and Simon. Pet. 17– 20. Claims 5 and 15 depend from claims 1 and 12, respectively, and further recite “wherein the display signal is configured to display a keypad comprising a plurality of softkeys.” Claims 7 and 17 depend from claims 1 and 12, respectively, and further recite “wherein the plurality of softkeys comprises one softkey for each digit from 0 to 9.” Similar to its challenges based on anticipation discussed above, Petitioner relies on Rosenberg as disclosing all of the limitations of underlying independent claims 1 and 12. Id. at 17. Simon is relied upon by Petitioner only to teach the additionally recited limitations of claims 5, 7, 15, and 17. Id. at 17–19. Hence, Simon cannot and does not remedy the above-identified deficiencies in Petitioner’s analysis of challenged independent claims 1 and 12. Accordingly, on this record, the information presented in the Petition does not demonstrate a reasonable likelihood of Petitioner prevailing in its challenge to claims 5, 7, 15, and 17 under 35 U.S.C. § 103(a) as obvious over the combination of Rosenberg and Simon.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim interpretation is needed” (Pet. 1), and Patent Owner does not propose any claim constructions in this case (Prelim. Resp. 10). Having considered the arguments and evidence presented, we determine that no claim terms require express interpretation for purposes of this Decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,773,356 - Silergy Corporation v. Monolithic Power Systems, Inc.All claims unpatentablePTAB · Sep 14, 2016 · IPR2015-00804 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–8 and 10 are unpatentable: claims 1–5 and 10 are anticipated by Sirinorakul; claims 6–7 are obvious over Sirinorakul or Sirinorakul and Eslamy; claim 8 is obvious over Sirinorakul and Khor.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party’s proposed construction adds clarity to the term beyond that provided by the express language of claim 1. Silergy’s construction introduces into the term two requirements—“contacts the solder ball” and “more wettable to a solder ball”—that appear elsewhere in claim 1, making their inclusion in the construction redundant. As for Monolithic’s construction, we see no reason to limit the attachment area to materials deposited during the photoresist process. As discussed above, the inventor’s use of the word “includes” as a transitional phrase signifies that additional steps may be part of “forming the attachment area and non-attachment area,” even after the photoresist process. For these reasons, we reconfirm our determination in the Decision on Institution that the language of claim 1 is sufficiently clear, and that the term attachment area requires no express construction.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“Although not every process claim is limited to the performance of its steps in the order written, the language of the claim, the specification and the prosecution history” may in some instances compel a particular order. Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999). First, the claim language must be examined “to determine if, as a matter of logic or grammar, they must be performed in the order written.” Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). If not, we look to the specification and prosecution history to determine whether an order is directly or implicitly required. Id. slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Taking the latter argument first, Monolithic’s contentions lack merit in view of our conclusion regarding the order of the steps of claim 1. Monolithic’s argument is premised on its contention that in claim 1, the contacting must occur before reflowing begins. As discussed above, the language of claim 1 permits the contacting step to take place before, or during, the reflowing step. Figure 9B of Sirinorakul depicts contact between plated layer 64 and solder ball 42 “during the reflow process.” Ex. 1004, 4:42. Monolithic does not dispute that plated layer 64 is an attachment area; nor does it dispute that there is contact with solder ball 42 during reflow. Tr. 76:7–17 (“[I]n each of those figure Bs in the embodiments disclosed in the [Sirinorakul] prior art reference, it shows during the reflow process. . . . Here it’s showing the contact occurs during reflow.”) (emphasis added). Even if lead-free solder layer 72 is not part of the attachment area—an argument we address below—Figure 9B of Sirinorakul does not show solder layer 72 during reflow, or that there is any other object blocking contact between plated layer 64 and solder ball 42. We, therefore, find the disputed contacting step to be satisfied because plated layer 64 (the attachment area) contacts solder ball 42 during reflow.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We have reviewed Silergy’s undisputed evidence as to claims 6 and 7, and we determine that a preponderance of the evidence supports Silergy’s position. Although Sirinorakul does not disclose the modified photoresist process required by claims 6 and 7, we credit Dr. Baker’s unchallenged testimony that it would have been within the level of ordinary skill in the art to modify a photoresist process to mask the non-attachment area instead, and that the skilled artisan would have recognized this as a predictable variation. Ex. 1003 ¶ 36. Mr. McAlexander does not provide testimony to the contrary. Ex. 2001 ¶ 52. Although it does not address the merits of the obviousness ground, Monolithic instead generally contends that Silergy failed to prove obviousness, as it did not address all factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). PO Resp. 41–43. We disagree. As set forth above, Silergy and Dr. Baker set forth the scope and content of Sirinorakul; the differences between Sirinorakul and claims 6 and 7 (namely, the reversal of the photoresist masking); and the level of ordinary skill in the art (see Ex. 1003 ¶¶ 26–27). Neither party introduced evidence of objective indicia of nonobviousness. Consequently, Monolithic’s argument on this point lacks merit.” slip op. at 22
Patent outcomesUS 8,361,899 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,361,899 - Toyota Motor Corporation v. Blitzsafe Texas, LLCRehearing deniedPTAB · Aug 31, 2016 · IPR2016-00419 · APJ Hung H Bui · IPR · Rehearing
The Board denied Toyota’s rehearing request, leaving in place the denial of institution for claims 49–57, 62–64, 66, 68, 70, 71, 73–80, 94, 95, 97, 99–103, 106, 109–111, 113, 115, and 120 because Ohmura did …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We have reviewed Petitioner’s request for rehearing and carefully considered Petitioner’s arguments. However, we are not persuaded that the Board misapprehended or overlooked Petitioner’s arguments presented with respect to the patentability of claims 49–57, 62–64, 66, 68, 70, 71, 73–80, 94, 95, 97, 99–103, 106, 109–111, 113, 115, and 120 of the ’342 patent.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In contrast, all challenged claims of the ’342 patent require (1) “the portable device” to play (i.e., decode) an audio file, and (2) “the integration subsystem” to receive “audio generated by the portable device.” As explained in the Decision, we referred to the requirement that audio generated by the portable device as the result of playing the audio file as “the audio generated by the portable device” limitation, which was consistent with Dr. Thomas Matheson’s Declaration at ¶¶ 50–53. Decision 23; see also Matheson’s Declaration (Ex. 1120 ¶¶ 50–53).” slip op. at 5
- Strike new argumentNew argument disregardedDenied
“Second, Petitioner identifies numerous portions of Ohmura, for the first time, that it did not identify in the Petition or Reply. In particular, Petitioner contends the Board “misapprehended or overlooked the cited portions of Ohmura that disclose the functions of the construed ‘integration subsystem.’” See Req. Reh’g 10. However, we could not have misapprehended or overlooked portions of Ohmura that were not presented in the Petition or Reply. A request for rehearing is not an opportunity to present new arguments.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“As explained in the Decision, we rejected Petitioner’s proposed construction of “integration subsystem” because Petitioner’s proposed construction required the claimed “integration subsystem” to be a microprocessor or processor programmed to perform a method for wirelessly integrating a portable device for use with a car audio/video system, shown in FIG. 24. Decision 13–15. Instead, we construed the term “integration subsystem” as performing the functions as expressly defined by the Specification of the ’342 patent. Id. at 15 (citing Ex. 1101, 8:64–9:3).” slip op. at 7
Claim constructionPatents in suitUS 8,155,342
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.