• Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentable
  PTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  • 101 substituteMixed

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  Patent outcomesUS 7,134,087 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · Enfish
  Patents in suitUS 7,134,087
• Mobile Tech, Inc. v. Invue Security Products Inc.All claims unpatentable
  PTAB · Dec 5, 2019 · IPR2018-01138 · APJ Stacey G White · IPR · Final written decision

  Claims 1–10, 12–45 are unpatentable: claims 1–10, 12–15, 17–32, 34–43, and 45 as obvious over Rothbaum and Denison; claims 16, 33, and 44 over Rothbaum, Denison, and Ott.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Here, the same RPI issue was raised in the prior decisions, the RPI issue was actually litigated by the parties (replete with discovery and dispositive motions on this issue), and our determination that the RPI identification was proper was essential to the prior decisions (especially because Patent Owner has sought to have the proceedings terminated due to an allegedly improper identification of RPIs). As such, we agree with the parties’ assertion that collateral estoppel applies to the RPI issue in this case, and we conclude that no exception to collateral estoppel applies. Thus, we determine that collateral estoppel prevents the relitigation of the RPI issue in this proceeding. Accordingly, for the reasons given in the 1900 IPR Decision and in the Order on Patent Owner’s Motion to Terminate from IPR2017-00344, we determine that Petitioner identified all RPIs in this proceeding, as required by 35 U.S.C. § 312(a)(2).” slip op. at 15

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner’s declarant, Thaine Allison III, testifies that a person of ordinary skill in the art would have had a four year technical degree (e.g. B.S. engineering) with a minimum of three years of experience in using, provisioning, designing or creating, or supervising the design or creation, of such theft prevention devices, and other related security devices. Extended experience in the industry could substitute for a technical degree. A [person of ordinary skill in the art] would have known how to research the technical literature in fields relating to theft prevention, including in retail and other environments, as well as security in general. Also, a [person of ordinary skill in the art] may have worked as part of a multidisciplinary team and drawn upon not only his or her own skills, but also taken advantage of certain specialized skills of others in the team, e.g., to solve a given problem. For example, designers, engineers (e.g., mechanical or electrical), and computer scientists or other computer programmers may have been part of a team. Ex. 1019 ¶ 20; see Pet. 14 (citing Ex. 1019 ¶¶ 18–21). Based on the evidence of record, including the testimony of Mr. Allison, the subject matter at issue, and the prior art of record, we adopt the level of ordinary skill in the art set forth in the Decision on Institution, which is that a person of ordinary skill in the art would have had a four-year technical degree or equivalent experience with a minimum of two years of professional technical experience in the field of theft prevention devices or related security devices. Dec. on Inst. 10; see also PO Resp. 17–18 (agreeing with statement of level of ordinary skill in the Decision on Institution). We apply this level of ordinary skill in the art in our analysis below.” slip op. at 6

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

    “usable in only a single retail store,” “unique to the single retail store and the programming station,” “a ‘housing’ with ‘a port,’” “logic control circuit,” and “‘invalidating’ the ‘key.’” Pet. 8–14. Patent Owner seeks construction of “single security code” and “invalidates the single security code,” and Patent Owner provides arguments responsive to Petitioner’s proposed construction of “usable in only a single retail store.” PO Resp. 12–17. Based on the issues before us, we discern a need to provide express construction for “single security code,” “unique to the single retail store and the programming station,” and “invalidating the single security code.” No other term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor slip op. at 8

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

    “Id. at 38. Petitioner responds by arguing that Patent Owner is not addressing the combination proposed in the Petition, which is “modifying Rothbaum’s system (used in a retail store) to have an electronic-key system instead of a mechanical-key system. It isn’t a vending machine.” Reply 4. Thus, Petitioner’s argument focuses on incorporating the teachings regarding Denison’s key into the retail security system of Rothbaum. Therefore, Patent Owner’s arguments that are directed to the features of Denison’s vending machines are not responsive to the proposed combination because the vending machine is not part of the proposed modified system. Mr. Allison’s testimony supports Petitioner by explaining that a [person of ordinary skill in the art] would have found it obvious that a retail store employing the modified Rothbaum system would not share or use the system (or individual parts of the system, for example, the programming station / “external computing device,” the electronic keys, and the security device / “strip or housing 12”) with another retail store because doing so would compromise the integrity of the security system. Ex. 1019 ¶ 116. We credit Mr. Allison’s testimony and find that one of ordinary skill in the art would have found it obvious to improve security by using Denison’s operation limits to limit the use of the security code to a single store because such a limit would reduce the possibility that unauthorized individuals would gain access to the code by, for example, obtaining a key from one store and using it in another store. See Ex. 1019 ¶¶ 113, 116. We determine that the findings made in our analysis of claim 1 of the ’762 patent along with our findings regarding the “usable in only a single retail store” limitation also support a finding of unpatentability of claim 17 of the ’472 patent. We are careful to view the claim as a whole and not just its constituent parts. We determine that the findings noted above as to prior related cases along with the findings we make in this Decision as to the disputed limitation are sufficient to establish the unpatentability of claim 17 as a whole. The prior findings were essential to determining the patentability of the prior challenged claims and the parties had a full and fair opportunity to litigate those claims. Therefore, we determine that Petitioner has shown by a preponderance of the evidence that claim 17 of the ’472 patent would have been obvious over Rothbaum and Denison. As noted above, our analysis equally applies to claims 1 and 39 of the ’472 patent. Therefore, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 17, and 39 are unpatentable.” slip op. at 26

  Patent outcomesUS 9,659,472 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,659,472
• Apple Inc. v. Corephotonics Ltd.All claims unpatentable
  PTAB · Dec 3, 2019 · IPR2018-01140 · APJ Marc S Hoff · IPR · Final written decision

  Claims 1 and 13 are unpatentable as anticipated by Ogino; claims 14 and 15 are unpatentable as obvious over Ogino and Chen II.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “claims 1 and 13 of the ’032 Patent are anticipated by Ogino. Petitioner has also demonstrated, by a preponderance of the evidence, that claims 14 and 15 of the ’032 Patent are unpatentable over the combination of Ogino and Chen II. The chart below summarizes our conclusion. References Claims Claims Claims 35. Shown Not shown Challenged U.S.C. Unpatent- Unpatentable able Ogino 1 and 13 1 and 13 § 102 Ogino, Chen 14 and 15 14 and 15 § 103 II 1 and 13-15” slip op. at 40

  • Skill levelSkill level board ownDecided for petitioner

    “that Ogino and Chen II disclose substantially different lens systems. PO Resp. 36. As Petitioner points out, both Ogino and Chen II describe mobile phone camera systems with all lenses being aspheric; a first lens with a meniscus shape with positive refractive power; a second lens with negative refractive power; a third lens with a meniscus shape and with a negative refractive power; a fourth lens with a meniscus shape with positive refractive power; and a fifth lens with a meniscus shape and with a negative refractive power. Pet. Reply 22; Pet. 41–44. We agree with Petitioner that such a skilled artisan, possessing an applicable college degree, approximately three years experience in designing multi-lens optical systems, “experience in analyzing, tolerancing, adjusting, and optimizing multilens systems, and experience with lens design software such as CodeV, Oslo, or Zemax,” would have the appropriate knowledge to perform routine modifications to a lens design. Pet. Reply 24; Pet. 7; PO Resp. 12. Patent Owner’s expert Dr. Moore testified that such a skilled artisan “would be able to use the computer program [i.e. CodeV or Zemax] to optimize lens designs.” Pet. Reply 24; Ex. 1025, 29:25–30:9. Dr. Moore testified that the skilled artisan would “tell the [lens design] program that you want to vary certain parameters of a lens . . . . And then the program, through a fairly complicated algorithm, then actually goes through and varies them and determines how to make a better lens. You determine as a lens designer what you’re trying to improve.” Ex. 1025, 28:13–23.” slip op. at 38

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “We are unpersuaded by Patent Owner’s argument that the skilled artisan would have understood that third, fourth, and fifth lenses also contribute to vignetting in Ogino. PO Resp. 38. We credit Petitioner’s argument that Dr. Moore’s conclusion regarding vignetting in the third, fourth, and fifth lenses is unreliable because it is based on assumptions not specified in Ogino. Pet. Reply 16; Ex. 1026 ¶ 11. For example, Ogino does not provide lens diameters or vignetting apertures for the lens assembly of Example 6 that would vignette the light beams on the third, fourth or fifth lens elements. Pet. Reply 17; Ex. 1026 ¶ 11. Additionally, Dr. Sasián testifies that vignetting is a result of the second lens. Pet. Reply 17–18; Pet. 54; Ex. 1003, 59.” slip op. at 36

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

    “Effective Focal Length (EFL) Petitioner asserts that while the specification of the ’032 Patent does not offer an express definition for the term “effective focal length,” “its meaning is well known in the art, as exemplified in Li (Ex. 1007), which states that “[t]he focal length of a lens assembly [is] also referred to as the effective focal length [(]EFL).” Pet. 9–10 (internal parentheses omitted); Ex. 1007, 2:59–61. Patent Owner, in response, does not dispute Petitioner’s construction of “effective focal length,” stating that the Petition does not turn on the construction of the term. PO Resp. 20. Having reviewed the evidence of record, we agree with Petitioner that Li supports construing the term “effective focal length” as “the focal length of a lens assembly.” We adopt this construction.” slip op. at 10

  Patent outcomesUS 9,402,032 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,402,032
• Google LLC v. Agis Software Development, LLCAll claims unpatentable
  PTAB · Dec 2, 2019 · IPR2018-01080 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1, 2, 5–7, 14, 15, 17, 21–25, 27, 28, 30, 32–34, 36, 37, 40–43, 45, 49, and 54 are unpatentable as obvious.

  RulingsFinal written decision

  • Skill levelOther

    “A. Level of Ordinary Skill” slip op. at 9

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

    “improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Reaching this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. I. Obviousness over Fumarolo, Sheha, and Lazaridis” slip op. at 19

  Patent outcomesUS 9,408,055 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,408,055
• NEC Corporation / Nokia Corporation et al. v. Neptune Subsea IP LimitedAll claims unpatentable
  PTAB · Nov 25, 2019 · IPR2018-01157 · APJ Jason W Melvin · IPR · Final written decision

  Claims 13–20 are unpatentable as obvious over Yamamoto and Nishimoto; the Chowdhury and Webb grounds, with or without Tanaka162, do not establish unpatentability.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableDecided for petitioner

    “III. CONCLUSION For the foregoing reasons, we determine Petitioner has shown by a preponderance of the evidence that each of claims 13–20 is unpatentable.” slip op. at 26

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

    “The parties submit and we agree that there is no need to construe any term to resolve the issues in this decision. See Pet. 7–9; PO Resp. 6; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

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

    “e. Summary For the reasons described above, we find that a person of ordinary skill in the art at the time of invention would have had reason to combine Yamamoto’s and Nishimoto’s teachings as asserted by Petitioner and that the combination teaches all of claim 13’s limitations. Accordingly, Petitioner has shown by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Yamamoto and Nishimoto.” slip op. at 21

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

    “tunable compensators is a contingent argument, applicable only if one reads claim 13 to require a certain transmission rate. PO Resp. 21–25. We do not read Petitioner’s argument as so constrained. Rather, we understand Petitioner to argue that a desire for higher transmission speeds would drive skilled artisans to use solutions such as Nishimoto’s tunable compensators, particularly in light of Nishimoto’s guidance regarding the ability to achieve high speeds with the system. See Pet. 21–23. In that regard, we agree with Petitioner that the increase in transmission rates from Yamamoto’s to Nishimoto’s disclosures would have given skilled artisans reason to consider Nishimoto’s teachings. Pet. Reply 16–18 (citing Ex. 1005 8:9–11; Ex. 1007, 12:37–39). As Petitioner points out, Nishimoto specifically discloses that higher-speed transmissions were more sensitive to dispersion. Pet. Reply 17 n.9. Thus, we find the desire for higher transmission speeds and the need for techniques such as taught by Nishimoto would have given skilled artisans reasons to combine Nishimoto’s disclosure regarding dispersion compensation with Yamamoto’s system to achieve Yamamoto’s goals regarding the dispersion maps for multiple channels. Further, Petitioner does not rest entirely on the desire for high-speed operation. Petitioner argues also that using Nishimoto’s adjustable compensators and feedback control would “yield an improved WDM system capable of automatic compensation for degradation of the optical signal waveform caused by both wavelength dispersion and polarization mode dispersion of the optical transmission path, resulting in further reduced size and cost.” Pet. 16 (citing Ex. 1003 ¶¶ 99, 101; Ex. 1007, 3:41–60, 4:3–58, Figs. 17, 20, 21), 29–30 (quoting Ex. 1007, Abstract, 3:37–40, 6:56–64, 7:53–56, 11:41–46, 17:53–55, 17:59–60; citing Ex. 1003 ¶¶ 114–115); accord id. at 14 (quoting Ex. 1007, 3:19–25). Patent Owner recognizes that basis for the combination but argues that the record lacks evidence to support Petitioner’s claim of reduced size and cost. PO Resp. 25–26. Patent Owner does not contest that the modification would give Yamamoto’s system the ability to automatically compensate for signal degradation from dispersion. Nishimoto discloses that as transmission speeds increase, “changes in wavelength dispersion characteristics due to temperature changes of optical fiber; and the influence by polarization mode dispersion” both “can not be neglected,” therefore requiring a system for automatically compensating for wavelength dispersion and polarization mode dispersion,” as taught by Nishimoto. Ex. 1007, 1:34–41. We find that a skilled artisan would have had reason to make the combination because the system would gain capability for automatic compensation. Regarding reduced size and cost resulting from the combination, Patent Owner does not provide any contrary evidence and we conclude that Nishimoto’s statements regarding the benefit of its invention also would have motivated skilled artisans to make the combination. See Ex. 1007, 3:17–26 (“to thereby provide a dispersion compensating apparatus of reduced sizes at a reduced cost”).” slip op. at 18

  Patent outcomesUS 8,351,798 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,351,798
• Google LLC v. Agis Software Development, LLCAll claims unpatentable
  PTAB · Nov 19, 2019 · IPR2018-01079 · APJ Christa P Zado · IPR · Final written decision

  Claims 1 and 3–9 are unpatentable as obvious over Kubala and Hammond; the Board did not find them unpatentable over the Hammond, Johnson, and Pepe combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art in the field” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “2. Terms to be Construed Expressly Petitioner proposes that we construe as means-plus-function under 35 U.S.C. § 112, ¶ 6, the terms in claim 1 that include the word “means,” i.e., limitations 1.2 and 1.5 to 1.9. Pet. 10–12. Patent Owner agrees these terms should be construed as means-plus-function, and further argues we should adopt the constructions entered in the district court proceeding for the purposes of consistency across proceedings. Prelim. Resp. 9–14.10” slip op. at 11

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

    “creating a forced message alert”) (emphasis added); see also Ex. 1001, 10:14–17 (claim 6, “creating the forced message alert on said sender PDA/cell phone by attaching a voice or text message to a forced message alert application software packet to said voice or text message”) (emphasis added). Accordingly, by the very language of the claims, a message is forced because it is attached to a forced message alert software packet. Nothing in the claim language indicates that what makes the message forced is forcing its display without any action on the part of the recipient.” slip op. at 25

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

    “Accordingly, we are persuaded that “implementing Hammond’s” slip op. at 38

  Patent outcomesUS 8,213,970 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,213,970
• Mallinckrodt Pharmaceuticals Ireland Limited v. Biovie, Inc.All claims unpatentable
  PTAB · Nov 13, 2019 · IPR2018-00974 · APJ Kristi L R Sawert · IPR · Final written decision

  Claims 1–14 are unpatentable: Robertson anticipates claims 1–3 and 5, and Fimiani combined with Robertson or Angeli renders claims 1–14 obvious; the motion to amend is denied.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the understanding of a person of ordinary skill in the art, and thus begin with the level of ordinary skill in the art. The ordinarily skilled artisan is a “legal construct” that “presumes that all prior art references in the field of the invention are available to this hypothetical skilled artisan.” In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “1. The preamble of claim 1 The preamble of claim 1 recites “[a] method for treating a patient diagnosed with ascites due to liver cirrhosis.” Ex. 1001, 8:25–26.6 5 See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018 to require a federal district court claim construction approach) (now codified at 37 C.F.R. § 42.100(b) (2019)). 6 Before institution, Petitioner argued that the preamble is not limiting. See Pet. 11–12 (contending that the “preamble of claim 1 is merely a” slip op. at 15

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

    “1. Claim 1 We find that Robertson teaches explicitly each and every limitation of claim 1. As to the preamble, we agree with Petitioner that Robertson discloses “treating a patient diagnosed with ascites due to liver cirrhosis,” as interpreted above. Supra § III.C.1. Robertson teaches administering terlipressin to a patient having “Child-Pugh C cirrhosis due to previous alcohol consumption complicated by recurrent encephalopathy, diuretic-resistant ascites, and hepatocellular carcinoma.” Ex. 1004, 2125. We credit and rely on Dr. Gow’s unrebutted testimony that “Child-Pugh C cirrhosis is a form of liver cirrhosis” and, therefore, an ordinarily skilled artisan would understand that the 59-year-old man’s ascites was due to liver cirrhosis. Ex. 1002 ¶ 75. We also note that Patent Owner admits that Robertson’s patient was diagnosed with ascites due to cirrhosis and that “terlipressin was used to treat the patient’s HRS.” See PO Resp. 34 (citing Ex. 1004, 2125). Robertson also discloses that the patient’s serum creatinine concentration was reduced, thus indicating an improvement in renal function. Ex. 1004, 2125–2126; see also Ex. 1001, 1:60–67, 3:40–46, 7:20–40 (all identifying “a reduction in serum creatinine concentration” as an indicator for improved renal function). Accordingly, Robertson discloses “treating a patient diagnosed with ascites due to liver cirrhosis,” as claimed.” slip op. at 25

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

    “4. Conclusion as to obviousness over Fimiani and Robertson or Angeli In sum, we find that the combination of Fimiani and Robertson or Angeli teaches or suggests each and every element of claims 1–14. We find that an ordinarily skilled artisan would have been motivated to combine Fimiani with Robertson or Angeli, and would have had a reasonable expectation of success in achieving the claimed invention. We also find that Patent Owner has failed to persuasively show secondary considerations of non-obviousness. Thus, after carefully considering the arguments and evidence, we determine that the record as a whole weighs in favor of a conclusion of obviousness, especially given the disclosures of the art of record in this case and strength of the obviousness case based on the first three Graham factors.” slip op. at 58

  Patent outcomesUS 9,655,945 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,655,945
• Zscaler, Inc. v. Symantec CorporationAll claims unpatentable
  PTAB · Nov 13, 2019 · IPR2018-00920 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious over Nortel, Nortel and Stone, Alles and Lin, or Alles, Lin, and Stone.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Jakobsson’s testimony, which is supported by evidence cited above, and determine the Petition and supporting evidence show that a person of ordinary skill in the art would have understood Nortel’s processing rules comprise software instructions to perform specific functions, and that a person of ordinary skill would have considered software instructions to perform specific functions to be applications. We rely on Nortel’s teaching of a processor group configured with processing rules to provide service policies such as security functions, and Dr. Jakobsson’s testimony and his supporting evidence that a person of ordinary skill in the art would have understood that security functions are provided by software applications, to determine that Nortel and the knowledge of a person of ordinary skill in the art teaches “a plurality of application processing hardware modules, each configured with an application for processing data packets” as recited in claim 1 and the corresponding limitation of 13. Ex. 1004, 3:5–9, 23:1–29, Fig. 6A; Ex. 1003 ¶¶ 80–85 (citing Ex. 1004, 3:5–9, 9:12–14, 9:16–19, 14:28–15:2, 15:4–6, 23:3–6, Fig. 6A; Ex. 1012, 4, 6; Ex. 1013, 4).” slip op. at 12

  • BurdenFwd all claims unpatentableUnpatentable

    “For the reasons given above, we determine that the Petition and supporting evidence show, by a preponderance of the evidence, that Nortel in view of the knowledge of a person of ordinary skill in the art would have rendered claims 1 and 13 obvious.” slip op. at 20

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

    “applications includes parallel transmitting of the identified data packets to each of the identified application processor modules.” Claim 14 recites a similar limitation. Petitioner, relying on testimony of Dr. Jakobsson, contends the cited art renders these limitations obvious because it would have been obvious to a person of ordinary skill in the art to apply Stone’s teaching of parallel transmission to Nortel’s ISN, such that the switch fabric transmits data packets in parallel to the packet service cards. Pet. 37–38 (citing Ex. 1004, 21:1–5, 22:31–32, 23:1–29, Figs. 4, 6A; Ex. 1005, 12:58– 13:18, Fig. 4; Ex. 1003 ¶¶ 160–162), 42. Petitioner, relying on testimony of Dr. Jakobsson, contends a person of ordinary skill in the art would have applied Stone’s parallel data transfer to the switch fabric of Nortel for the benefit of increasing the speed of transmitting a subscriber’s data packets to the appropriate service cards. Pet. 43–46 (citing Ex. 1005, 11:59–61; Ex. 1003 ¶¶ 192–199). Dr. Jakobsson testifies that a person of ordinary skill in the art would have been motivated to transfer data packets in parallel between Nortel’s switch fabric and packet service cards in order to increase the operating speed and efficiency of the system. Ex. 1003 ¶¶ 190–192 (citing Ex. 1012, 8; Ex. 1005, 11:59–61). We credit Dr. Jakobsson’s testimony and determine the Petition and supporting evidence articulates a reason with a rational underpinning that a person of ordinary skill in the art would have applied Stone’s teaching of transferring data packets in parallel, to transfer data packets in parallel between Nortel’s switch fabric and packet service cards, for the benefit of increasing speed as taught by Stone. We determine that the Petition and supporting evidence show by a preponderance of the evidence that the combination of Nortel and Stone would have rendered claims 2 and 14 obvious.” slip op. at 24

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

    “For purposes of this decision, we determine no terms need an explicit construction to resolve a controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy). We address claim interpretation to the extent necessary within the unpatentability analysis.” slip op. at 7

  Patent outcomesUS 9,525,696 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,525,696
• Ruckus Wireless, Inc. / Arris Solutions, Inc. et al. v. XR Communications LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Nov 12, 2019 · IPR2018-01018 · APJ Terrence W Mcmillin · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

  • Expert testimonyPatent owner expert discountedDecided for patent owner

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

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

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

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

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

  Patent outcomesUS 7,729,728 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,729,728
• Lectrosonics, Inc. v. Zaxcom, Inc.All claims unpatentable
  PTAB · Nov 7, 2019 · IPR2018-00972 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–14 are unpatentable over Strub-based grounds; the Board grants the motion to amend, allowing substitute claims 15–28.

  RulingsFinal written decision

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

    “We agree with Petitioner that the “combined” limitation encompasses the multitrack embodiment of the ’307 patent. Both independent claims 1 and 12 recite that the “local audio data” is “combined with said remotely recorded audio data.” In view of Mr. DeFilippis’s testimony that the “combined” limitation allows “multiple individually recorded audio tracks to be combined into one or more multi-track audio files” (Ex. 2086 ¶ 18), we determine that claims 1 and 12 do not require the claimed “local audio data” and “remotely recorded audio data” to be derived from the same source. Furthermore, every occurrence of the term “combined” in the ’307 patent specification outside of the claims refers to the combination of audio into a multi-track file. See,e.g., Ex. 1001, 4:12–14 (“This accuracy allows multiple individually recorded audio tracks to be combined into one or more multi-track audio files electronically post-recording.”), 5:6–7 (“the multiple audio recordings are combined to create one single recording”), 16:40–44 (“[T]he local audio device of each performer . . . may be combined to create one or more multitrack audio files that are stored with master timestamps generated by the receiver/recorder's internal master timecode generator.”), 19:2–4 (“[A]ll of the individual audio files may be combined to provide one or more comprehensive audio files.”). Although we agree with Patent Owner that the ’307 patent specification describes an embodiment of a through the replacement of data, we are not persuaded that the recited “combined” limitation is limited to that embodiment, but rather also encompasses the multi-track embodiment of the ’307 patent. Id. at 4:15–18. Thus, we determine that the limitation “said local audio data is retrieved during or subsequent to said audio event and is combined with said remotely recorded audio data” does not require that the local and remote audio data originate from the same source because the ’307 patent specification contemplates a broader definition—one that includes the combination of local audio data and remotely recorded audio data to create a multi-track audio file. See Ex. 1001, 4:12–14, 5:6–7, 16:40–44, 19:2–4; Ex. 2086 ¶ 18. Based on the foregoing, we construe the “combining” limitation as broad enough to encompass combining local audio data and remotely recorded audio data, without a requirement that the local audio data and remotely recorded audio data are the same. In other words, we construe the “combining” limitation to encompass the disclosed multitrack embodiment in the ’307 patent specification, where separate audio tracks are combined to form a multitrack audio file. See Ex. 1001, 4:12–14, 5:6–7, 16:40–44, 19:2– 4.” slip op. at 9

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

    “and in a condition to be worn.” Pet. Reply 1–2 (quoting Ex. 2110, 1628). This definition is consistent with the plain meaning of “wearable,” and we find no credible evidence on the record that requires a narrower definition. Furthermore, we are not persuaded that Petitioner’s expert, Mr. Tinsman, provides a definition consistent with Patent Owner’s narrow definition. Rather than defining “wearable,” Mr. Tinsman explains that the term “bodypack” is “[s]omething relatively small and lightweight.” Pet. Reply 2 (citing Ex. 2109, 41:18–22). Further, when describing “wearable” as “unobtrusive, easily hidden,” Mr. Tinsman clarifies this description as “[y]ou know, reasonable to carry around.” Ex. 2109, 47:20–22. We determine that no other express claim construction analysis of any” slip op. at 12

  • Skill levelSkill level petitioner adoptedOther

    “of the ’307 patent, would have “a Bachelor’s degree in electrical engineering or a related subject and two to five years working with audio and wireless communications systems.” Pet. 8 (citing Ex. 1011 ¶ 24). Patent Owner’s expert, Mr. DeFilippis, similarly opines that a person of ordinary skill in the art would have a “Bachelor’s degree in electrical engineering and two years of experience working with audio and wireless communications systems either in industry or in graduate school.” Ex. 2086 ¶ 13. We adopt Petitioner’s and Patent Owner’s proffered level of ordinary skill in the art as it is agreed upon and consistent with the prior art of record. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Specifically, we adopt that a person of ordinary skill in the art, at the time of the ’307 patent, would have had a Bachelor’s degree in electrical engineering and two or more years of experience working with audio and wireless communications systems. Pet. 8 (citing Ex. 1011 ¶ 24); Ex. 2086 ¶ 13. To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 13

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

    “We are not persuaded by Patent Owner’s argument. Petitioner identifies a first local audio device disclosed by Strub as “a small, lightweight, wearable recording unit.” Pet. 19 (quoting Ex. 1003, 4:29–31; citing Ex. 1003, 4:29–31, 14:59–15:11, 16:66–17:24, 38:65–39:11, 66:33– 51, 67:54–68:10, 72:10–19, Figs. 1, 8A–8C, 9A, 9B; Ex. 1011 ¶ 46). Petitioner further identifies the first local audio device as including position position data or biometric data, and time data. Pet. 20 (citing Ex. 1003, 12:39–52, 35:53–61, 37:55–62, 63:41–60; Ex. 1011 ¶ 47). Finally, Petitioner identifies Strub’s disclosure of other recording devices to which local audio data is transmitted via transmitter 309 or wired connections. Pet. 27 (citing Ex. 1003, 12:4–39, 66:7–25, Fig. 3). In summary, Strub discloses a local audio device that records local audio and transmits the local audio to other remote devices. Ex. 1001, Fig. 1, 105–108, 8:50–53, 12:4–39, 66:7–25). Therefore, Petitioner has identified two devices in Strub—a local audio device and a remote audio device that receives the transmitted audio. Ex. 1003, 12:4–39, 66:7–25, Fig. 3. Petitioner has also identified the claimed local audio as the audio that is stored by a local audio device and transmitted to a remote audio device. Id. Furthermore, Patent Owner’s argument that Strub fails to disclose “that the same local audio is stored at both the wearable local audio device as local audio data and the remote receiver/recorder as remotely recorded audio data and that the local audio data is combined with the remotely recorded audio data” is not persuasive because it is inconsistent with our claim construction discussed above. See Section II.B.1; PO Resp. 32. We do not construe the limitation “said local audio data may be retrieved after said locally recording and combined with said remotely recorded audio data” to require that the local audio data and remotely recorded audio data be the same data. Id. Accordingly, we agree with Petitioner that Strub discloses the disputed element because Strub discloses local audio devices transmitting recordings to other recording units and the recording units timestamping the recorded audio and synchronizing, i.e., combining, processing. Ex. 1003, 13:50–67. Patent Owner further argues that Strub does not disclose a local audio device “wearable by a creator of said locally generated audio.” PO Resp. 34–35. Patent Owner argues that Strub’s device is not “small, lightweight, unobtrusive, easily hidden, not visible, and designed to be worn on the body of a creator of audio (i.e., performer)” based on its claim construction. Id. at 34; see Section II.B.2. Mr. DeFilippis, Patent Owner’s expert, opines that Strub’s system “would require a computer that could compare content from multiple mpeg sources in real time and multiplex the results to a recording,” and the “hardware and software to do this could not be incorporated into a back pack, let alone a bodypack.” Id. at 34–35 (citing Ex. 2086 ¶ 43).” slip op. at 20

  Patent outcomesUS 9,336,307 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,336,307

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.