• Apple Inc. v. MPH Technologies OYSome claims unpatentable
  PTAB · Nov 4, 2020 · IPR2019-00823 · APJ John D Hamann · IPR · Final written decision

  Claims 1, 3, 5–8, and 10 are unpatentable as obvious; claims 2, 4, 9, and 11 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted Petitioner’s proposed definition for one having ordinary skill in the art at the time of the invention of the ’494 patent as one who would have had “a Bachelor’s (B.S.) degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, as well as at least 2–5 years of academic or industry experience in the field of Internet security.” Dec. on Inst. 7–8 (citing Pet. 17; Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute our adoption of Petitioner’s definition, nor otherwise address the level of ordinary skill at the time of the invention of the ’494 patent. See generally PO Resp.; see also Ex. 2002 ¶ 22. Because Petitioner’s definition of the level of skill in the art is consistent with the ’494 patent and the asserted prior art, we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s definition in our analysis below. IV.” slip op. at 8

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

    “A. Unique Identity In the Petition, Petitioner argues that “unique identity” means “one or more parameters that uniquely identify a secure connection.” Pet. 18. In our Decision on Institution, “we concluded that no express claim construction of the term ‘unique identity’ [wa]s necessary” because in its Preliminary Response “Patent Owner d[id] not argue that RFC3104 or Grabelsky fails to disclose this term and, therefore, this term is not in controversy.” Dec. on Inst. 9 (citations omitted). In the subsequent papers, the parties confirm “that there is no reason to construe this term” because “Patent Owner does not dispute that some form of a unique identity is found in the primary reference.” PO Resp. 20; see also Pet. Reply 8 (agreeing that this term need not be construed). Accordingly, we find that no express construction of “unique identity” is needed. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 9

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

    “Specification support its proposed construction for this term. First, we find that Patent Owner conflates “mobility” with “mobile computer.”5 The Specification states that “the term mobility . . . meant moving from one network to another,” rather than the term “mobile computer” having this meaning. Ex. 1001, 4:34–38 (emphasis added). Moreover, the Specification uses the term “mobility” as a capability or condition. For example, the Specification uses the term “mobility” as follows: (i) certain “protocols are not well suited to mobility”; (ii) “[t]he intermediate host might be a Mobile IP home agent, that provides mobility for the connection between the mobile terminal and the home agent . . . .”; (iii) a disclosed “method solves the mobility problem, at the cost of adding extra headers to packets”; and (iv) “[o]ne example of a change in the [security association (‘SA’)] between the first computer and the intermediate computer is the change of addresses for enabling mobility.” Ex. 1001, 5:7–8, 5:17–21, 5:33–34, 7:56–58 (emphases added). In other words, mobility is a capability a mobile computer has, rather than being synonymous with mobile computer. As such, these passages from the Specification support Petitioner’s construction” slip op. at 17

  • Strike new argumentNot reached

    “Lastly,12 we find that Patent Owner’s remaining arguments for this limitation are premised on either its (i) proposed construction (i.e., a mobile computer is “a computer that moves from one network to another as opposed to a computer that is only capable of a static secure connection”), which we do not adopt; or (ii) inapposite argument that the mobile computer needs to 12 We need not, and thus do not, reach whether Petitioner’s arguments for this limitation in its Reply (Pet. Reply 8–14) are new arguments, as Patent Owner argues in its Sur-Reply (PO Sur-Reply 13–24), because we do not rely on them, but instead, we rely on Petitioner’s arguments, and citations to the record evidence, from the Petition. maintain the same secure connection. See PO Resp. 25–51. Thus, we find these arguments unavailing. Likewise, Dr. Borella’s declaration testimony is not helpful to our analysis as his “declaration employs the assumption that the ‘mobile computer’ recited in the claims moves from one network to another,” which is contrary to our construction, as we discuss above. Ex. 2010 ¶ 42; supra Section IV(B) (construing mobile computer).” slip op. at 37

  Patent outcomesUS 9,712,494 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,712,494
• Microsoft Corporation v. Ipa Technologies, Inc.Some claims unpatentable
  PTAB · Oct 15, 2020 · IPR2019-00812 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1, 15, and 17–25 are unpatentable as obvious over Kiss and FIPA97, or over Kiss, FIPA97, and Cohen.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “A. Level of Ordinary Skill” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). As discussed above, the challenged independent claims 1 and 29 do not recite all of the limiting features required by Patent Owner’s proposed construction of “goal satisfaction plan.” Thus, unless one of the established exceptions, such as lexicography or disavowal, applies, the challenged claims are not restricted as Patent Owner contends. See, e.g., GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“the specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal”) (citation omitted). Here, Patent Owner does not argue lexicography or disavowal. Nor does Patent Owner explain any other reason why the Specification limits “goal satisfaction plan” as it contends. Thus, claim construction in this case is governed by the general principle that “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide, 358 F.3d at 875; see also WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1323–24 (Fed. Cir. 2018) (“It is well established that claims are not limited to preferred embodiments, unless the specification clearly indicates otherwise.” (citing Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“[T]his court has repeatedly cautioned against limiting claims to a preferred embodiment.”))). Accordingly, none of the embodiments in the Specification cited by Patent Owner limits “goal satisfaction plan” as Patent Owner contends.” slip op. at 19

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “http://drogo.cselt.stet.it/fipa. FIPA published FIPA 97 Version 1.0 on its website at the conclusion of the Munich meeting on October 10, 1997, or shortly thereafter. See Ex. 1049 ¶ 20. In the several months leading up to the Munich meeting, persons of ordinary skill in the art would have known about the FIPA website through the widely distributed AgentWeb newsletters and the Software Agents mailing list, which provided website information or direct links to drafts of the specification and meeting announcements and reports. See Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2; Ex. 1094; Ex. 1082, 1; Ex. 1083, 1. Therefore, people working in the field would have been sufficiently familiar with FIPA’s activities and its website to look for FIPA 97 Version 1.0 on the FIPA website when it was posted after the Munich meeting. Indeed, both Dr. Finin, who was affiliated with FIPA, and Dr. Lieberman, who worked in the software agent field, testify that they accessed FIPA 97 Version 1.0 on the FIPA website in late 1997. Id. ¶ 21; Ex. 1050 ¶ 146.” slip op. at 47

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “we consider any relevant evidence of secondary considerations of non-obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art at the time of the invention, the totality of the evidence submitted, including objective evidence of non-obviousness, may lead to a conclusion that the challenged claims would not have been obvious to one of ordinary skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Patent Owner presents evidence of two such considerations: (1) industry praise (Resp. 120–141) and (2) long-felt but unresolved need (id. at 141–145), both involving the software product called “Siri” from Apple Inc. For the reasons explained below, we determine that Patent Owner’s proffered evidence of secondary considerations is not entitled much weight because Patent Owner does not establish a sufficient nexus between the evidence of non-obviousness and the challenged claims of the ’115 patent.” slip op. at 73

  Patent outcomesUS 6,851,115 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,851,115
• Polygroup Limited Mco v. Willis Electric Co., Ltd.Some claims unpatentable
  PTAB · Oct 8, 2020 · IPR2016-01612 · APJ Jeremy M Plenzler · IPR · Remand

  On remand, claims 1, 3, 4, 6, 8, and 9 of the ’186 patent were held unpatentable; other remanded challenged claims were not, and substitute claims 29 and 30 were allowed.

  RulingsRemand decision

  • RemandOther

    “On appeal, the U.S. Court of Appeals for the Federal Circuit vacated our Original Decision in part and remanded the cases for further proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934 (Fed. Cir. 2019). After conferring with the parties, we permitted additional briefing to address the issues on remand from the Federal Circuit. Paper 196.” slip op. at 2

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

    “electrical connection in a single step (e.g., “‘when’ the mechanical connection is made, an electrical connection is also made”) as Patent Owner alleges. Rather, claim 1 requires “a first trunk electrical connector” and “a second trunk electrical connector” with “the second tree portion [being] electrically connectable to the first tree portion such that a portion of the first trunk electrical connector of the first trunk portion contacts a portion of the second trunk electrical connector of the second trunk portion.” Although the claim also requires that “the second tree portion is mechanically coupleable to the first tree portion about a central vertical axis,” the claim permits that mechanical connection to be independent of the electrical connection. Giving claim 1 its proper reading, there is no dispute that Miller teaches first and second trunk electrical connectors or that its tree portions are coupleable about a central vertical axis as outlined in the Petition. See Pet. I 45–48.” slip op. at 14

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

    “Petitioner contends that one skilled in the art would have modified Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner reasons, for example, that “[i]t would have been obvious . . . to enhance the mechanical and electrical connections between the electrical contacts sets and wiring assemblies of Miller[] with the detachable electrical connectors of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66 (citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable connectors of Lessner provide a quick-connect engagement allowing the builder to easily and quickly attach the wires to the terminals on the trunk connector during assembly,” which “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts.” Id. at 66. Petitioner’s contentions as to why one skilled in the art would have modified Miller’s teachings are unpersuasive. As discussed above, Petitioner cited Miller’s plug and socket connectors as corresponding to the recited trunk connectors. Petitioner’s proposed modification in the Miller alone challenge adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing greater “ease and speed of assembly and disassembly” as alleged. Petitioner’s additional reasoning that the proposed modification “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts” is equally unpersuasive. The only difference resulting from the modification is that the plug and socket connectors could be removed from their respective wiring assemblies. That is, it provides for removal of one connector by providing yet another connector, which fails to provide a benefit because Miller’s plug and socket connectors are loose, rather than fixed within the trunk portions like Patent Owner’s connectors. For at least these reasons, Petitioner has failed to establish unpatentability of claim 7 of the ’186 patent by a preponderance of the evidence.” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner

    “D. Secondary Considerations As explained in the Original Decision, Patent Owner provides evidence related to non-obviousness of the claims. Original Decision 43–60. Considering that evidence, as explained in the Original Decision, relative to the fact that Miller alone teaches each element of these claims in a single embodiment16, we determine that Patent Owner’s evidence does not outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9. For the reasons set forth above, Petitioner has established by the preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable. Petitioner has failed to establish by the preponderance of the evidence that claim 7 is unpatentable.” slip op. at 21

  Patent outcomesUS 8,454,187 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,454,187
• Polygroup Limited Mco v. Willis Electric Co., Ltd.Some claims unpatentable
  PTAB · Oct 8, 2020 · IPR2016-01610 · APJ Jeremy M Plenzler · IPR · Remand

  On remand, claims 1, 3, 4, 6, 8, and 9 of the ’186 patent were held unpatentable; other remanded challenged claims were not shown unpatentable, and substitute claims 29 and 30 were allowed.

  RulingsRemand decision

  • RemandMixed

    “On appeal, the U.S. Court of Appeals for the Federal Circuit vacated our Original Decision in part and remanded the cases for further proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934 (Fed. Cir. 2019). After conferring with the parties, we permitted additional briefing to address the issues on remand from the Federal Circuit. Paper 196.” slip op. at 2

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

    “and the second wire are detachably connected to the first trunk electrical connector of the first trunk portion.” Petitioner acknowledges that “Miller does not expressly teach that the wiring assembly is ‘modular’ or ‘separably connected.’” Pet. II 65. Petitioner contends that “assemblies for providing a detachable connection between electrical contact sets and wiring harnesses were well-known in the art.” Id. (citing Ex. 1006 ¶¶ 261–67). Petitioner contends that “Lessner teaches a ‘quick-disconnect electrical connector for receiving and releasably retaining a male tab connector’ and a [person of skill in the art (POSA)] would recognize that it may be used to create detachable connections between the electrical contacts of a connector or plug, and the wires of a wiring assembly.” Id. (citing Ex. 1008, 1:10–11; Ex. 1006 ¶¶ 261–67). Petitioner contends that one skilled in the art would have modified Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner reasons, for example, that “[i]t would have been obvious . . . to enhance the mechanical and electrical connections between the electrical contacts sets and wiring assemblies of Miller[] with the detachable electrical connectors of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66 (citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable connectors of Lessner provide a quick-connect engagement allowing the builder to easily and quickly attach the wires to the terminals on the trunk connector during assembly,” which “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts.” Id. at 66. Petitioner’s contentions as to why one skilled in the art would have modified Miller’s teachings are unpersuasive. As discussed above, Petitioner cited Miller’s plug and socket connectors as corresponding to the recited trunk connectors. Petitioner’s proposed modification in the Miller alone challenge adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing greater “ease and speed of assembly and disassembly” as alleged. Petitioner’s additional reasoning that the proposed modification “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts” is equally unpersuasive. The only difference resulting from the modification is that the plug and socket connectors could be removed from their respective wiring assemblies. That is, it provides for removal of one connector by providing yet another connector, which fails to provide a benefit because Miller’s plug and socket connectors are loose, rather than fixed within the trunk portions like Patent Owner’s connectors. For at least these reasons, Petitioner has failed to establish unpatentability of claim 7 of the ’186 patent by a preponderance of the evidence.” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedUnpatentable

    “D. Secondary Considerations As explained in the Original Decision, Patent Owner provides evidence related to non-obviousness of the claims. Original Decision 43–60. Considering that evidence, as explained in the Original Decision, relative to the fact that Miller alone teaches each element of these claims in a single embodiment16, we determine that Patent Owner’s evidence does not outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9. For the reasons set forth above, Petitioner has established by the preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable. Petitioner has failed to establish by the preponderance of the evidence that claim 7 is unpatentable.” slip op. at 21

  • BurdenNot shown unpatentable

    “The figure reproduced above is a portion of Miller’s Figure 2, which is a front, partial section view of its artificial tree, along with Petitioner’s annotations noting Miller’s electrical connections (circled in red). Pet. I 29. As seen above, Petitioner cites Miller’s plug and socket connection as the electrical connection recited in the claims. See Pet. I 33 (“Miller also teaches that wires 22 of trunks 3, 5 are electrically connectable via plug and socket connectors of Fig. 2.”), 42, 57–58 (presenting similar contentions for claims 20 and 28). The problem with Petitioner’s contentions that rely on Miller alone is that the electrical connection in Miller is independent of the mechanical connection of tree portions (i.e., the mechanical connection does not result in the electrical connection in the manner claimed). For at least this reason, Petitioner’s challenges to claims 10, 20, and 28 based on Miller alone fail.” slip op. at 23

  Patent outcomesUS 8,454,186 mixed
  § 103 obviousness
  Patents in suitUS 8,454,186
• Ingenico Inc. v. Ioengine, LLCSome claims unpatentable
  PTAB · Sep 21, 2020 · IPR2019-00879 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1, 2, 4–8, 13–16, 19–21, 24, 25, and 27–29 are unpatentable as anticipated by Iida; claims 3, 10–12, and 26 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In the Decision on Institution, we determined that Petitioner’s proposed description of the qualifications of a person of ordinary skill in the art aligned with the technology and claims of the ’969 patent. Inst. Dec. 24. Patent Owner does not challenge this determination and states that it has applied the Board’s adopted definition of one of ordinary skill in the art. PO Resp. 2. Dr. Butler testifies that the adopted level of art in the art would not have any effect on the opinions presented in his declaration, even though Dr. 6 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf. Butler had previously presented a different proposed qualifications. Ex. 2011 ¶ 13. Accordingly, for the reasons given in the Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill, which is that a person of ordinary skill in the art should have:” slip op. at 11

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

    “1. “interactive user interface” In the Decision on Institution, we construed the term “interactive user interface” (“IUI”) as “a display with which a user may interact to result in the portable device taking action responsively.” Inst. Dec. 19. The parties have presented additional arguments in additional briefing on the term’s construction, which we have further considered, and, as discussed below, we modify the interpretation of the term. See PO Resp. 7–16; Pet. Reply 1–3. a. Petitioner’s Assertions In the Petition, Petitioner asserts that the term “interactive user interface” should be interpreted as “a display with which a user may interact to result in the computer taking action responsively.” Pet. 14. Petitioner argues that this proposed interpretation is consistent with the plain and ordinary meaning of the term. Id. at 13. Petitioner also contends that although the term “interactive user interface” is not used in the ’969 patent specification, the specification consistently describes the terminal output component as a “display mechanism,” and the interactive user interface is presented on the terminal output component in the claims. Id. (citing Ex. 1001, 4:40). Petitioner contends that a number of displays in the ’969 patent respond to text inputs from an input component to elicit a responsive action, and refers to an example of the input of registration information in screen 515 in Figure 5, where, if the input is successful, follow-up screen 517 is produced, but otherwise there is an error message. Id. at 13–14 (citing Ex. 1001, 9:52–54, 7:53–56). In its Reply, Petitioner asserts that the ordinary meaning of the term “interactive user interface” is “a presentation (display) with which a user may interact to result in the computer (portable device) taking action responsively.” Pet. Reply 1. This is similar to the construction that Petitioner previously proposed in the Petition, however, Petitioner now proposes that the “computer” can be considered to be a “portable device,” and a “display” can also be considered to be a “presentation. See Pet.14. According to Petitioner, the claims require that the interactive user interface be presented on the terminal output component. Pet. Reply 1. Petitioner argues that the specification describes that it is a portable device that responds to user interaction with the IUI, such as the interaction with a login screen text box. Id. at 2 (citing Ex. 1046, 52:11–55:13; Ex. 1001, 7:55–56). Petitioner asserts that the claims require that it is the portable device that responds to user interaction, with the “fourth program code” executing in response to user interaction with the interactive user interface. Id. Petitioner compares the claim of the parent ’047 patent, which was narrowed to refer to “the interactive user interface is configured to enable the user to cause the portable device processor to execute program code stored on the portable device memory,” to the claims here. Id. Petitioner also asserts that “‘[p]resentation’ is used and described in the ’969 patent as corresponding to a ‘display.’” Id. at 1.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “2. Analysis A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference” slip op. at 32

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “obviousness, we need not determine whether Patent Owner’s evidence of objective indicia of nonobviousness weighs even further against a conclusion of obviousness. See Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1343 (Fed. Cir. 2018) (holding, in affirming Board decision determining that petitioner had not shown unpatentability, that “objective indicia of nonobviousness” “need not [be] addressed” because the court “affirmed the Board’s findings regarding the failure of the prior art to teach or suggest all [claim] limitations”); Palo Alto Networks, Inc. v. Finjan, Inc., 748 F. App’x 317, 324 (Fed. Cir. 2018) (non-precedential) (affirming Board decision holding that petitioner failed to establish unpatentability due to a lack of disclosure of a claim limitation, without reaching secondary considerations, and holding that “it was not necessary for the Board to consider” expert testimony “limited to the issue of secondary considerations”).” slip op. at 78

  Patent outcomesUS 9,059,969 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,059,969
• Ingenico Inc. v. Ioengine, LLCSome claims unpatentable
  PTAB · Sep 21, 2020 · IPR2019-00929 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 55, 57–63, 67–72, 74, 77, 78, 81–87, 89, 92–98, 100, 103, 104, 106–112, 116–121, 123, and 126–129 are unpatentable; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the Board’s adopted definition of a POSITA. PO Resp. 3; Ex. 2139 ¶¶ 12, 13. Both parties’ experts state, however, that their opinions would not change based upon which party’s definition of a POSITA is adopted. Ex. 2139 ¶ 13; Ex. 2110, 240:24–241:6.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “For these reasons, we find that Petitioner has shown by a” slip op. at 40

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

    “meet claims 74, 89, 100, and 123 because Davis “does not have two different devices on the client side.” PO Resp. 63–64. Patent Owner’s argument does not persuasively rebut Petitioner’s obviousness case, which relies on Iida, not Davis, to teach two devices on the client side—Iida’s digital camera 12 (a portable device) and terminal 14. Pet. 13–16, 60; Ex. 1003 ¶ 57, Figs. 1A, 1B. Furthermore, in Petitioner’s combination, a digital certificate is substituted for Iida’s user ID and password. Pet. 61. Patent Owner does not dispute Petitioner’s contention that Iida discloses transmitting a user ID and password stored in memory 48 of camera 12 to image server 18 through terminal 14. Id. at 43–44 (addressing claim 71; citing Ex. 1003 ¶¶ 110, 113). Accordingly, Petitioner persuades us that the combination of Iida and Davis discloses the limitations of claims 74, 89, 100, and 123 (and claims 71, 86, 97, and 120 from which they depend).” slip op. at 89

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “First, Patent Owner has not argued that the licensed products are coextensive with the claims of the ’703 Patent, accordingly, there is no presumption of a nexus. See Lectrosonics, Paper 33 at 33.” slip op. at 94

  Patent outcomesUS 9,774,703 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,774,703
• Samsung Electronics Co., Ltd v. Uusi, LLC D/B/A NartronSome claims unpatentable
  PTAB · Sep 17, 2020 · IPR2016-00908 · APJ Kamran Jivani · IPR · Remand

  Claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 are unpatentable as obvious; claims 37–39 were not shown unpatentable.

  RulingsRemand decision

  • RemandOther

    “Appeals for the Federal Circuit, which vacated our Decision and remanded the matter to us. Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed. Cir. 2019). As to the earlier instituted claims, the Court instructed that we should consider “whether Samsung has shown that there would have been a reasonable expectation of success in combining the teaching of Gerpheide with the teachings of Ingraham [I]/Caldwell to arrive at the claimed invention.” Id. at 697. The Court further instructed us to “consider the patentability of claims 37, 38, and 39” (id.) because, on April 24, 2018, the Supreme Court of the United States held that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). Pursuant to the Federal Circuit’s instruction in this case and in light of SAS Inst., Inc., we modified our Decision on Institution to institute review of claims 37–39 of the ’183 patent as obvious over Ingraham I, Caldwell, and Gerpheide. Paper 40. We further held a teleconference on August 15, 2019, with respective counsel for the parties, to hear their proposals on how to proceed with this trial. Paper 41, 2. Having considered the parties’ proposals, we authorized the parties to submit concurrent briefs and subsequent responses addressing the following issues (id. at 6):” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contends that a person having ordinary skill in the art at the time of the invention would have had a minimum of: (1) a bachelor’s degree in electrical engineering, or equivalent thereof; and (2) “two to three years of experience in the relevant field, which includes touch systems technology.” Pet. 3 (citing Ex. 1002 ¶ 19). Patent Owner’s witness, Dr. Cairns, opines that a person of ordinary skill “in the art of capacitive touch sensors would have had at least a bachelor’s degree in physics or electrical engineering or equivalent industry experience in the field.” Ex. 2002 ¶ 14. In our Final Written Decision, we noted that the levels of ordinary skill proposed by the parties do not differ significantly, but adopted Petitioner’s proposed definition as more representative, indicating that our analysis would be the same under either definition. Paper 35, 9–10. On remand, neither party disputes the definition adopted in the Final Written Decision. Furthermore, no argument presented by the parties on remand would be affected by adopting one of the proposed definitions over the other. We maintain here the definition adopted in the Final Written Decision.” slip op. at 14

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

    “transition term[s]” should be considered in determining the meaning of a claim term, but asserts without further support that the presence of a semicolon after “supply voltage” and the use of the transition term “wherein” do not compel the preliminary construction. Id. As we addressed in denying Petitioner’s Request for Rehearing, claim 37 employs the open-ended transition term “comprising” followed by a colon to indicate that a list elements follows, and employs semicolons to separate the elements of that list. Paper 17, 5. The first element of the list, element 37a, describes an oscillator and includes the supply voltage limitation preceded by a comma and the transition term “wherein.” Id. Element 37a then ends with a semicolon and the claim proceeds to element 37b, which recites a microcontroller. Id. Petitioner thus nominally acknowledges consideration of punctuation, but advances a construction that asks us to disregard punctuation affirmatively recited in the claim. To do so would be “inconsistent with the punctuation [patentee] chose for this claim.” In re Pelz, 379 F. App’x 975, 978 (Fed. Cir. 2010). Likewise, as to Petitioner’s assertion that we read an additional limitation into the claim (Pet. Br. 10), we observe that, if the claim is limited to a particular exemplary embodiment, such a limitation results from the claim being drafted to cover only that embodiment. While we confirmed in the Decision on Institution that the use of the term supply voltage is consistent with its use in the Specification (Dec. on Inst. 9), the limitation of the claim to the oscillator is based on the language of the claim, not on definition or disavowal. Therefore, even accepting, for the sake of argument, that there is no disavowal or definition in the Specification of “supply voltage,” the term refers in independent claim 37 to supply voltage of the oscillator.” slip op. at 18

  • Expert testimonyOther

    “We disagree with Patent Owner’s arguments because they are not responsive to the combination of teachings at issue in the references before us. Patent Owner focuses on particular features of Gerpheide that it alleges either “would not work . . . in the proposed Caldwell-Ingraham system” or “can only work” in the presence of a component Patent Owner argues that “neither Ingraham nor Caldwell uses.” PO Br. 1–2, 12–13. These arguments are based on a mistaken premise that one or more components or physical configurations of Gerpheide must be incorporated into the combination of Ingraham I and Caldwell in order to show a reasonable likelihood of success. Under the Federal Circuit’s construction of the “selectively providing” limitation, the combination of Ingraham I, Caldwell, and Gerpheide need not incorporate the specific features of Gerpheide identified by Patent Owner. Petitioner asserts, supported by evidence from Dr. Subramanian, that the Ingraham I-Caldwell combination would have been modified based on Gerpheide “to provide features that adjust[] the oscillator signal frequency provided to the input portions 13 to negate the effect of interference on the input portions 13 and touch sensing circuits.” Pet. 26–27. This modification would not require any of the particular components or configurations of Gerpheide highlighted by Patent Owner. Thus, even if one or more of Patent Owner’s arguments as to the infeasibility of incorporating particular aspects of Gerpheide were correct, Patent Owner’s arguments do not address Gerpheide’s particular teaching of adjusting oscillator signal frequency to negate the effect of interference, and therefore, Patent Owner’s arguments are not responsive to the proposed combination and evidence relied upon by Petitioner. In view of the above, we find that Petitioner has shown that the skilled artisan would have combined Gerpheide with Ingraham/Caldwell as proposed with a reasonable expectation of success in achieving the claimed subject matter.” slip op. at 26

  Patent outcomesUS 5,796,183 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 5,796,183
• Nuna Baby Essentials, Inc. / Nuna International B.V. v. Britax Child Safety, Inc.Some claims unpatentable
  PTAB · Sep 2, 2020 · IPR2019-00663 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 12, 14–16, 18, and 19 are unpatentable as obvious over Yamazaki and Washimi; claims 3–11, 13, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Nuna Baby argues that a person of ordinary skill in the art has “a Bachelor’s Degree in Mechanical Engineering or a related subject and two or more years of experience working with child safety seats . . . [l]ess work experience may be compensated for by a higher level of education, such as a Master’s Degree, and vice versa.” Pet. 5–6 (citing Ex. 1003 ¶ 23). Britax’s definition is mostly similar, “a bachelor’s degree in mechanical engineering or other similar subjects and either a Master’s degree in mechanical engineering, or two or more years of experience in the field of child safety seats.” PO Resp. 20 (citing Ex. 2010 ¶ 28). Britax explains that “for individuals with different educational backgrounds, a person could still be of ordinary skill in the art provided that person’s additional experience compensates for any differences in that person’s education.” Id. (citing Ex. 2010 ¶ 29). We do not find a significant difference in these definitions proposed by the parties for the level of ordinary skill in the art. Both definitions allow for an undergraduate or higher professional degree and alternatively a reasonable period of time and work experience in the field of child safety seats. For purposes of this decision and on the record currently before us, we adopt Britax’s proposed definition. We emphasize that adopting Nuna Baby’s definition would not alter the outcome of this Decision.” slip op. at 8

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

    “B. Untensioned configuration Nuna Baby proposes that the term, “untensioned configuration,” as recited in claim 1, “must be construed to mean ‘a not fully tensioned configuration.’” Pet. 6–7 (citing Ex. 1003 ¶ 29). Britax contends that this term should simply be given its plain and ordinary meaning which “is clear not only to a person of ordinary skill in the art but also to a lay person.” PO Resp. 21–2 (citing 2010 ¶ 47). This term is not reasonably in dispute, nor does any part of our Decision turn on a specific construction of this term. We find the claim language clear on its face and therefore agree with Britax that “untensioned configuration” should be given its plain and ordinary meaning—that is, not tensioned, as understood by a person of ordinary skill in the art.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “lack of sufficient tension on seatbelts securing child seats in vehicles was a problem and that “[l]oose installation errors are common.” Ex. 1003 ¶ 40 (citing Ex. 1010, 14). Based on this testimony, Nuna Baby argues that one of ordinary skill in the art would have been motivated to improve Yamazaki and looked to Washimi because it teaches that tensioning both lap and shoulder belts reduces the likelihood that the lap belt will loosen. Pet. 10 ‒- 11 (citing Ex. 1012 ¶ 38; Ex. 1003 ¶ 41). Mr. Bowman explains that Washimi expressly describes the benefit of tensioning both lap and shoulder belts so “‘the webbing 60 will not follow the tilting movement of the seat main body 20, thus preventing the lap webbing 66 from becoming loose.’” Ex. 1003 ¶ 41 (quoting Ex. 1012 ¶ 38). Mr. Bowman’s testimony on these points is mostly unrebutted on this record. See, e.g., Ex. 2010 ¶ 81 (Dr. Kent asserting that “Bowman seem[s] to disregard or ignore that the tightening mechanism 11 disclosed in Yamazaki is attached to the seat base that is configured only to receive a child seat.”). We find Mr. Bowman’s testimony credible, namely that a person of ordinary skill in the art would have known that child safety seats, such as “Yamazaki’s child seat and tensioning mechanism were ready for improvement because even as late as 2009, the industry regarded tightly securing a child seat to a car to be a common source of error.” Id. ¶ 42 (citing Ex. 1010, 14, 26). In addition, Mr. Bowman points to probative evidence in Washimi explaining that securing both lap and shoulder belts provides for a more secure attachment of the child safety seat. Ex. 1003 ¶ 41 (citing Ex. 1012 ¶ 38). For the reasons articulated by Mr. Bowman, we are persuaded that one of ordinary skill in the art “[i]n view of the ‘interrelated teachings’ of Yamazaki and Washimi, the effects of the demands known to the design community, and the background knowledge possessed by a [person having ordinary skill in the art] it would have been obvious to modify Yamazaki’s system to include Washimi’s belt configuration for the tensioning mechanism.” Id. ¶ 43. On the full record now before us, we are persuaded that Nuna Baby has shown by a preponderance of the evidence that all the limitations of claim 1 are disclosed in the combination of Yamazaki and Washimi. We weigh this evidence of obviousness against Britax’s evidence of secondary considerations of non-obviousness, infra, before reaching our final determination as to patentability.” slip op. at 28

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “Our comparison of the independent claims to the description of the Frontier® 90 and Frontier® CLICKTIGHT child seats in the product user guides is more consistent with Britax’s assertions. Claim 1, for example, recites a child seat and various structures such as “a seat base defining a seat portion and backrest portion.” Ex. 1001, 14:31–33. Claim 1 provides functional and structural limitations explaining how the child seat is secured by a seat belt “positioned around at least one of the front side of the backrest portion.” Id. at 14:43–44. As components of the child seat, claim 1 further recites specific limitations that pertain to the “CLICKTIGHT” features, starting with “a tensioning mechanism attached to the backrest portion of the seat base.” Id. at 14:49–50. The independent claims are mostly similar and all recite elements of a “child seat,” as a whole, including the tensioning mechanism and its features of capturing and securing both the lap and shoulder belts of a vehicle seat “to secure the child seat to the car in a tensioned configuration.” Id. at 14:59–60. Thus, the claims do not recite simply a component of a child seat but mostly the product as a whole, and so we do not find Nuna Baby’s argument that the claims mainly recite a component of the child seat products persuasive. Reply 21–22 (citing Fox Factory, 944 F.3d at 1373). In addition, it is a reasonably simple comparison to read the claims in conjunction with the user guides for the Frontier® 90 and Frontier® CLICKTIGHT child seats to which Britax refers. For example, a comparison of page 10 of the Frontier 90 user guide describing installation of the child seat, including the “CLICKTIGHT” feature for securing both lap and shoulder belts, tracks right along with the child seat and tensioning mechanism as recited in claim 1.11 We acknowledge that neither Britax nor Dr. Kent have undertaken an exemplary comparison of the claims and products as Nuna Baby argues. See Reply 21 (Nuna Baby arguing that “[n]either PO nor its expert address the numerous limitations of any of the independent claims in narrative or claim chart form”). However, the claims are reasonably straightforward and descriptive and the product user guides are quite clear as to the relevant corresponding structure and function of the commercial products. We determine that Britax has shown sufficiently in this proceeding that the Frontier® 90 and Frontier® CLICKTIGHT child seats are sufficiently coextensive with the claims to be entitled to a presumption of nexus. To the extent we determine that Britax has met their burden to show sufficiently a presumption of nexus, as discussed below, this is in some ways inconsequential because, as explained below, we do not determine that the weak evidence of praise and long-felt need outweighs the substantial evidence of non-obviousness, including Yamazaki and Washimi.” slip op. at 58

  Patent outcomesUS 9,187,016 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,187,016
• Clearone, Inc. v. Shure Acquisition Holdings, Inc.Some claims unpatentable
  PTAB · Aug 14, 2020 · IPR2019-00683 · APJ Christa P Zado · IPR · Final written decision

  Claims 1–5, 7–33, and 35–40 are unpatentable; claims 6 and 34 were not shown unpatentable. The motion to amend was granted for substitute claims 57–67.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMixed

    “establish that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). For the reasons discussed below, Petitioner’s Motion is dismissed as moot, and Patent Owner’s Motion is denied-in-part and dismissed-in-part.” slip op. at 10

  • Skill levelOther

    “C. Level of Ordinary Skill in the Art To establish the level of ordinary skill in the art, we look to various” slip op. at 19

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

    “For the foregoing reasons, we determine the term “rotationally offset” slip op. at 23

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “date it becomes publicly accessible. In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018). “A reference is considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id.” slip op. at 24

  Patent outcomesUS 9,565,493 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 9,565,493
• Apple, Inc. v. Uusi, LLC D/B/A NartronSome claims unpatentable
  PTAB · Aug 4, 2020 · IPR2019-00358 · APJ Minn Chung · IPR · Final written decision

  Claims 94, 96, 101–106, 115, and 116 are unpatentable as obvious; claims 37–39, 97–99, and 107–109 were not shown unpatentable.

  RulingsFinal written decision

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

    “§ 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we instituted an inter partes review of the challenged claims. Paper 12 (“Inst. Dec.”). In the Institution Decision, we determined Petitioner demonstrated a reasonable likelihood that it would prevail as to at least one 1 As discussed below, we agree with Patent Owner that claim 117 is not challenged in this proceeding. challenged claim, and we instituted trial on all claims and all grounds in the Petition. Inst. Dec. 67–68.” slip op. at 2

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

    “The ‘183 patent grew out of a “study” which the inventor performed to determine the optimal scan frequencies for close-proximity touch arrays. The ‘183 patent describes this study, and then reports its conclusion: “higher frequencies” are optimal. The ‘183 patent’s “switching circuit” incorporates the “use of higher frequencies,” as suggested by the study.” slip op. at 36

  Patent outcomesUS 5,796,183 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,796,183

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.