- Jiawei Technology (HK) Ltd. / Jiawei Technology (USA) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00936 · APJ William V Saindon · IPR · Final written decision
Claims 1–29 are unpatentable as obvious over four combinations of Chliwnyj, Wu, Hung, Xu, and Pu.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner alleged that Petitioner failed to list all real parties in interest and we authorized the parties to brief the issue. Paper 34 (Motion to Terminate); Papers 42, 43 (Opposition); Paper 46 (Reply). We denied Patent Owner’s Motion to Terminate. Paper 56.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). We agree with Petitioner that a person of ordinary skill in the art at the time of the ’477 patent7 would have had a graduate degree in electrical or electronics engineering or physics with experience in circuit design, or a bachelor’s degree in electrical or electronics engineering or physics with at least two years industrial experience and experience in circuit design, and apply that level of skill for purposes of this Decision. See Ex. 1002 ¶ 36.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“engineers in the design of solar lights.” Id. at 13. Patent Owner argues we should give his declarant, Dr. Ducharme, more weight because Dr. Ducharme is allegedly better qualified. Id. We weigh competing testimony of witnesses on an observation-by-observation basis, based on the witness’s skills and experience, as well as the reasoning and evidence they offer with respect to that particular observation. Further, we are not persuaded that Dr. Shackle would not have been a person of ordinary skill in the art at the time of the invention simply for not being a supervisor of engineers designing solar lights. Instead, we find that Dr. Shackle has ample experience in the field of lighting devices to testify in this proceeding. See Ex. 1002 ¶¶ 3–5; Ex. 1050 ¶¶ 30–41; see also Pet. Reply 7–8 (persuasively arguing why Dr. Shackle is qualified to testify).” slip op. at 12
- Prior constructionPrior construction adoptedDecided for patent owner
“phenomenon (varying color) from a particular structure (a circuit having at least two lamps) but did not limit the manner in which the structures were operated to achieve that result. As we stated then, we declined to incorporate any particular way to create varying color because the specification of the ’477 patent does not so limit the term. Id. at 7. For that reason, we construed “varying colour” as “a perceptible changing of color over time.” Id. at 8.” slip op. at 14
Patent outcomesUS 7,196,477 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,196,477 - Captioncall, L.L.C. v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00544 · APJ Lynne E Pettigrew · IPR · Rehearing
Patent Owner’s rehearing request was granted to modify the Ryan–McLaughlin combination analysis and denied otherwise; claims 7–11 remain unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Patent Owner Response, that for a patent to serve as prior art the patent must be enabled as to its own earliest claimed effective filing date in 1994. Req. 1–4; PO Resp. 15–22. We addressed this argument in the Final Decision and additionally examined the evidence of record as to whether Ryan would have enabled one of ordinary skill in the art to make the invention without undue experimentation prior to the date of invention of the challenged patent. Final Dec. 22–25. We are not persuaded that we overlooked or misapprehended Patent Owner’s prior argument or made an erroneous interpretation of law.” slip op. at 3
- ExcludeDecided for petitioner
“transcript is inadmissible because it does not satisfy the requirements that all testimony, other than uncompelled direct testimony, must be in the form of a deposition transcript, 37 C.F.R. § 42.53(a), and that the witness shall be sworn, 37 C.F.R. § 42.53(f)(1). Req. 5. Therefore, according to Patent Owner, the Yamamoto transcript was “not taken, sought, or filed in accordance with these regulations [and] is not admissible.” Id. (citing 37 C.F.R. § 42.61(a)). Rule 42.53, however, is titled “Taking Testimony,” and applies only to testimony taken “during a testimony period set by the Board” for purposes of a particular review proceeding. 37 C.F.R. § 42.53(b); see also 37 C.F.R. § 42.53(c) (providing time limits set by the Board); id. § 42.53(d) (providing notice requirements). As stated in our Final Decision, Petitioner sought to admit the Yamamoto transcript as a deposition taken in the district court proceeding, not as deposition testimony taken in this inter partes proceeding. Final Dec. 32. And based on the parties’ stipulation in district court, we treated the Yamamoto transcript as sworn deposition testimony taken in the district court. Id. at 32–33 (citing Ex. 1067 ¶ 5). Petitioner filed the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b), establishing that the Yamamoto transcript reasonably could not have been obtained earlier and that its consideration was in the interests of justice. Paper 59, 7–8. Therefore, Petitioner’s filing of the Yamamoto transcript complied with Board rules, and we properly relied on it in determining the public accessibility of Yamamoto. See Final Dec. 35–38. Having reviewed Patent Owner’s Request, we are not persuaded we misapprehended or overlooked any matter relating to the admissibility of the Yamamoto transcript.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“disclosure in the ’578 patent of “voice pattern.” Id. at 7–9. We disagree that our reliance on the “Brief Summary of the Invention,” which refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 12 (quoting Ex. 1001, 2:44–46 (emphasis added)). Rather, in our Final Decision, we determined that the ’578 patent contemplated software trained to a “voice pattern of the call assistant,” as set forth in the “Brief Summary of the Invention,” as well as software “specifically trained to the voice of [a] particular call assistant,” as described in the context of a particular relay embodiment shown in Figure 1. Final Dec. 12 (quoting Ex. 1001, 2:44–46; Ex. 1002, 5:44–47). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’578 patent did not indicate expressly how training occurs. Id. Giving the claim language its broadest reasonable construction in light of the specification, we concluded we would not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant. Id.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,213,578 - Captioncall, L.L.C. v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00543 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board granted rehearing only to modify its analysis of combining Ryan and McLaughlin, denied rehearing otherwise, and maintained that claims 1 and 2 are unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“function. Ex. 1005, 4:19–28. According to Mr. Occhiogrosso, whose testimony we credit on this point, it was well known in the field of speech recognition at the time of the invention that speaker-dependent speech recognition (e.g., trained to the voice of a particular speaker) performed better than untrained, speaker-independent speech recognition. Ex. 1019 ¶¶ 23, 25; Ex. 1036 ¶ 55. This is reflected in Ryan’s teaching that the accuracy of a relay that uses speech recognition software may be improved if a call assistant re-voices the remote user’s words into a terminal with voice recognition software designed to recognize the call assistant’s voice. Ex. 1005, 4:33–38. Thus, McLaughlin teaches the use of automated equipment at a relay, Ex. 1009, 29:20–22, and Ryan teaches a computer with speech recognition software as one form of automated equipment that can be used at a relay, Ex. 1005, 4:33–38. McLaughlin also notes the use of computerized speech recognition in another context, i.e., translation of voice mail messages from voice to text. Ex. 1012, 26:59–62. A person of ordinary skill in the art would have recognized that Ryan’s intermediate re-voicing solution—using voice recognition software trained to the voice of a call assistant at a relay— would address the shortcomings of applying voice recognition directly to a remote caller’s voice, acknowledged by McLaughlin. See Ex. 1036 ¶ 55. As Mr. Occhiogrosso explains, combining the teachings of Ryan and McLaughlin to achieve the claimed invention involves nothing more than directing the captioned telephone device of McLaughlin to connect to a re-voicing relay, as taught in Ryan, rather than a conventional relay. Ex. 1036 ¶ 54; see Reply 12. For these reasons, we are persuaded that a person of ordinary skill in the art would have combined the teachings of Ryan and McLaughlin, using Ryan’s re-voicing relay in place of McLaughlin’s relay, along with McLaughlin’s captioned telephone device.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“use of trained voice recognition software. Id. at 54–55. In particular, Patent Owner submits that McLaughlin acknowledges the shortcomings of automated speech recognition technology and, therefore, would have discouraged one of ordinary skill in the art from attempting to design the relay claimed in the ’104 patent. Id. at 54 (citing Ex. 1012, 26:54–62). McLaughlin, however, refers to the limitations of speech recognition in the context of translating voice mail messages to text for deaf users, not in connection with relay services discussed in another section of McLaughlin. See Ex. 1012, 26:54–62. Moreover, as discussed previously, we credit the testimony of Mr. Occhiogrosso that it was well known in the field of speech recognition at the time of the invention that speaker-dependent speech recognition (e.g., trained to the voice of a particular speaker), such as that used in Ryan’s re-voicing technique, performed better than untrained, speaker-independent speech recognition, such as would be used in the voice mail application described in McLaughlin. See Ex. 1019 ¶¶ 23, 25; Ex. 1036 ¶ 55. On the facts presented here, we are not persuaded that McLaughlin’s statement regarding limitations of speech recognition technology sufficiently teaches away from the combination of Ryan’s re-voicing scheme with McLaughlin’s relay system to establish nonobviousness. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“determined that the ’104 patent contemplated software trained to a “voice pattern of the call assistant,” as set forth in the “Brief Summary of the Invention,” as well as software “specifically trained to the voice of [a] particular call assistant,” as described in the context of a particular relay embodiment shown in Figure 1. Final Dec. 9 (quoting Ex. 1002, 2:54–56, 6:17–20). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’104 patent did not indicate expressly how training occurs. Id. Giving the claim language its broadest reasonable construction in light of the specification, we concluded we would not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant. Id.” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,555,104 - Captioncall, LLC v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00549 · APJ William V Saindon · IPR · Rehearing
Patent Owner’s rehearing request was denied as to the unpatentability outcome for claims 1–5 and 7, but granted to correct “captioned” to “voice-to-text.”
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“regarding secondary considerations, but found it to be unsupported by facts or data and determined that “his testimony has little probative value.” Final Dec. 30–31. Patent Owner complains that we improperly disregarded the testimony of its declarant here because “[t]here is no rule requiring documentary, rather than testimonial, evidence of how a system operates.” Req. Reh’g 5–6. We cited proper authority in the Final Decision for why we gave Mr. Ludwick’s testimony little probative value.2 Final Dec. 31 (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) and Fed. R. Evid. 702); see also 37 C.F.R. § 42.65 (“testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Liebermann’s disclosure of “party call” compelling. Req. Reh’g 10–14. For example, Patent Owner argues that Petitioner never rebutted Patent Owner’s theory that Liebermann’s “party call” was centrally-switched, versus switched by the Liebermann device as alleged by Petitioner. Id. at 10–12. Patent Owner complains that we placed the burden of proof on it for this reason. Id. at 11. This is incorrect. We made clear in our Decision that Petitioner has the burden of proof. See, e.g., Final Dec. 1 (“we determine that Petitioner has shown, by a preponderance of the evidence . . . .”); id. at 32 (determining that “Petitioner has shown, by a preponderance of the evidence . . . that the subject matter of claim 1 . . . would have been obvious”). We considered Patent Owner’s argument regarding a centrally switched party call mechanism (see, e.g., Final Dec. 18) and found it unconvincing; this does not mean we placed any burden on Patent Owner. Further, we provided an explanation for why Patent Owner’s argument was unpersuasive—namely, that the disclosure of Liebermann provided factual support for Petitioner’s position but not Patent Owner’s. See Final Dec. 18.” slip op. at 7
- Expert testimonyPatent owner expert discountedDecided for petitioner
“regarding secondary considerations, but found it to be unsupported by facts or data and determined that “his testimony has little probative value.” Final Dec. 30–31. Patent Owner complains that we improperly disregarded the testimony of its declarant here because “[t]here is no rule requiring documentary, rather than testimonial, evidence of how a system operates.” Req. Reh’g 5–6. We cited proper authority in the Final Decision for why we gave Mr. Ludwick’s testimony little probative value.2 Final Dec. 31 (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) and Fed. R. Evid. 702); see also 37 C.F.R. § 42.65 (“testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”).” slip op. at 4
§ 103 obviousnessPatents in suitUS 6,603,835 - Captioncall, L.L.C. v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00542 · APJ Lynne E Pettigrew · IPR · Rehearing
Patent Owner’s rehearing request was granted to modify the rationale for combining McLaughlin and Ryan, denied in all other respects, and claims 1 and 2 remain unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Thus, McLaughlin teaches the use of automated equipment at a relay, Ex. 1009, 29:20–22, and Ryan teaches a computer with speech recognition software as one form of automated equipment that can be used at a relay, Ex. 1004, 4:33–38. McLaughlin also notes the use of computerized speech recognition in another context, i.e., translation of voice mail messages from voice to text. Ex. 1009, 26:59–62. A person of ordinary skill in the art would have recognized that Ryan’s intermediate re-voicing solution—using voice recognition software trained to the voice of a call assistant at a relay— would address the shortcomings of applying voice recognition directly to a remote caller’s voice, acknowledged by McLaughlin. See Pet. 26–27; Ex. 1018 ¶ 36; Ex. 1040 ¶ 62. As Mr. Occhiogrosso explains, combining the teachings of McLaughlin and Ryan to achieve the claimed invention involves nothing more than directing the captioned telephone device of McLaughlin to connect to a re-voicing relay, as taught in Ryan, rather than a conventional relay. Ex. 1040 ¶ 55; see Reply 11. For these reasons, we are persuaded that a person of ordinary skill in the art would have combined the teachings of McLaughlin and Ryan, using Ryan’s re-voicing relay in place of McLaughlin’s relay, along with McLaughlin’s captioned telephone device.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“use of trained voice recognition software. Id. at 55–57. In particular, Patent Owner submits that McLaughlin acknowledges the shortcomings of automated speech recognition technology and, therefore, would have discouraged one of ordinary skill in the art from attempting to design the relay claimed in the ’740 patent. Id. at 55 (citing Ex. 1009, 26:54–62). McLaughlin, however, refers to the limitations of speech recognition in the context of translating voice mail messages to text for deaf users, not in connection with relay services discussed in another section of McLaughlin. See Ex. 1009, 26:54–62. Moreover, as discussed previously, we credit the testimony of Mr. Occhiogrosso that it was well known in the field of speech recognition at the time of the invention that speaker-dependent speech recognition (e.g., trained to the voice of a particular speaker), such as that used in Ryan’s re-voicing technique, performed better than untrained, speaker-independent speech recognition, such as would be used in the voice mail application described in McLaughlin. See Ex. 1018 ¶¶ 22, 36; Ex. 1040 3 “TDD” stands for “telecommunication device for the deaf.” Final Dec. 3. ¶ 56. On the facts presented here, we are not persuaded that McLaughlin’s statement regarding limitations of speech recognition technology sufficiently teaches away from the combination of Ryan’s re-voicing scheme with McLaughlin’s relay system to establish nonobviousness. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“disclosure in the ’740 patent of “voice pattern.” Id. at 8–11. We disagree that our reliance on the “Brief Summary of the Invention,” which refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 9 (quoting Ex. 1001, 2:45-47 (emphasis added)). Rather, in our Final Decision, we determined that the ’740 patent contemplated software trained to a “voice pattern of the call assistant,” as set forth in the “Brief Summary of the Invention,” as well as software “specifically trained to the voice of [a] particular call assistant,” as described in the context of a particular relay embodiment shown in Figure 1. Final Dec. 9–10 (quoting Ex. 1001, 2:45– 47, 6:34–37). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’740 patent did not indicate expressly how training occurs. Id. at 10. Giving the claim language its broadest reasonable construction in light of the specification, we concluded we would not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant. Id.” slip op. at 7
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,319,740 - L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentablePTAB · Nov 23, 2015 · IPR2014-00839 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–5 and 8 are unpatentable as obvious over the EFA Manual and Thomas, with Greene also applied to claim 3.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“anomaly in the electric field” in claim 1 of the ’864 patent to mean “detect an electric field that rises and peaks above a threshold or background and then falls.” PO Resp. 53. Patent Owner argues that the claims and written description of the ’864 patent indicate that a voltage anomaly is identified as the sensor moves past the anomaly. Id. at 53–55. Therefore, according to Patent Owner, an anomaly is represented by a rise in the electric field as the sensor moves closer to the anomaly, a peak when the sensor is near the anomaly, and a fall when the sensor moves past the anomaly. Id. In the Decision on Institution, we determined that Patent Owner’s proposed construction would improperly limit the claims to just one of the examples disclosed in the Specification, and we see no reason now to deviate from that determination. Dec. on Inst. 6 (citing Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007)). Specifically, the ’864 patent states that an anomaly can be “represented for example by a rise-peak-fall in the alert pitch, a corresponding visual spike in raw voltage plot 1206, a high signal strength value in signal strength display field 1322 or a combination thereof.” Ex. 1001, col. 19, ll. 18–23 (emphasis added). Thus, the ’864 patent indicates that a rise-peak-fall in the audible alert or a visual spike are just examples of ways to identify an anomaly. The ’864 patent states that a voltage anomaly also can be identified by an electric field that exceeds a threshold or a high signal strength value. Id. at col. 16, ll. 36–43, col. 17, ll. 31–32, col. 19, ll. 18–23, col. 20, ll. 27–30.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“2. mobile Patent Owner proposes construing the term “mobile” in claim 1 of the ’864 patent to mean “designed to operate while in motion.” Prelim. Resp. 5; PO Resp. 57. Patent Owner argues that the written description of the ’864 patent supports this construction because it states that “the sensor system 100 may detect an energized manhole cover . . . when moving at speeds of up to 10 mph.” Prelim. Resp. 6; Ex. 1001, col. 10, ll. 42–48. We agree that the written description indicates that a mobile apparatus operates while in motion, but Patent Owner does not identify specific evidence showing that a mobile apparatus must be “designed” to operate in motion. Prelim. Resp. 5– 7; PO Resp. 57. Therefore, we determine that the broadest reasonable interpretation of the term “mobile apparatus” in claim 1 of the ’864 patent is “apparatus that operates while in motion.”” slip op. at 8
- Skill levelOther
“a. Level of Ordinary Skill in the Art Patent Owner argues that a person of ordinary skill in the art would not have combined the cited teachings of the EFA Manual and Thomas because it was not known at the time of filing of the ’864 patent that an electric field sensor could be used to identify a stray voltage anomaly. PO Resp. 13–16. Patent Owner’s argument is not persuasive. Patent Owner’s declarant, Dr. Fugate, admits that a person of ordinary skill in the art at the time of filing of the ’864 patent would have known that an electric field sensor could be used to identify a stray voltage anomaly. Ex. 1024, 126:10– 127:1; Tr. 61:4–7. Further, as discussed above, Thomas teaches that electric current flowing through an object generates an anomaly in an electric field, and, thus, it would have been obvious to one of ordinary skill in the art reading Thomas that an electric field sensor could be used to identify a stray voltage anomaly. See supra Section II.B.2; Pet. 38–41; Ex. 1005, col. 7, ll. 6–10; Ex. 1021 ¶¶ 75, 76. Patent Owner also argues that “Petitioners’ sole reason for combining the EFA Manual and Thomas relies solely on the false premise that a skilled artisan would have known about the private Sarnoff experiments on stray voltage detection using electric fields,” but “Petitioners failed to show that the skilled artisan would have known about this work.” PO Resp. 16. Patent Owner’s argument is not persuasive. Thomas teaches mounting an electric field sensor on a motor vehicle and using the sensor to identify anomalies in electric fields while the vehicle is in motion. Ex. 1005, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. As such, Thomas itself would have provided one of ordinary skill in the art with a reason to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas and use the sensor to identify anomalies in electric fields while the vehicle is in motion. Pet. 24– 28, 38–41; Ex. 1021 ¶¶ 49–53, 55–58. Therefore, Petitioner’s reason for combining the cited teachings of the EFA Manual and Thomas is not dependent on whether one of ordinary skill in the art would have known about any private Sarnoff experiments.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. Reasons for Combinations Petitioner identifies evidence indicating that it would have been obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–28, 38–41; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1021 ¶¶ 49–53, 55–58. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 48–49; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1021 ¶¶ 89–91; see KSR, 550 U.S. at 416.” slip op. at 15
Patent outcomesUS 8,598,864 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,598,864 - Square, Inc. v. Unwired Planet LLCAll claims unpatentablePTAB · Nov 19, 2015 · IPR2014-01164 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1–7 and 11–17 as anticipated by DeLorme, and claims 7–10 or 1–6 and 11–16 as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“its combinations of teachings of the applied references. See, e.g., PO Resp. 34–39. As the Federal Circuit has explained, While it is always preferable for the factfinder below to specify the level of skill it has found to apply to the invention at issue, the absence of specific findings on the level of skill in the art does not give rise to reversible error “where the prior art itself reflects an appropriate level and a need for testimony is not shown.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding that the Board was not required to set forth express findings as to level of skill in art and quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Circ. 1985)). Here, we are persuaded that the prior art adequately reflects an appropriate level of skill. Additionally, Mr. Proctor proposes a definition for a person of ordinary skill in the art—a person with an engineering degree, either computer science or electrical engineering, and around two years of experience working in the wireless communications industry. Ex. 2003, 55:14–56:3. Patent Owner does not dispute Mr. Proctor’s proposed definition. Ex. 2002 ¶¶ 21–23. We agree that this definition is reasonable.” slip op. at 30
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Regarding Dr. Chatterjee’s testimony, Dr. Chatterjee acknowledges that some amount of TRIPS functionality would be available via mobile devices. Ex. 2002 ¶ 48. Dr. Chatterjee, however, is vague with respect to his opinion of which functionalities would be too difficult to implement. See e.g., id. ¶¶ 48, 52, 53, 58. Dr. Chatterjee testifies regarding significant challenges, but does not tie these challenges persuasively to his opinion that DeLorme’s disclosure is inadequate. For example, Dr. Chatterjee testifies that “although distributed computing was known at the relevant time, distributed computing technologies at that time, e.g., the Common Object Request Broker Architecture (CORBA) and Microsoft’s Distributed Component Object Model (DCOM), were difficult to deploy.” Id. ¶¶ 50, 51 (citing Ex. 2014, 14; Ex. 2016, 10). Dr. Chatterjee, however, does not testify persuasively regarding (1) how CORBA and DCOM relate to the elements recited in claim 1 of the ’433 Patent, or (2) how the challenges with implementing CORBA and DCOM undermine the explicit disclosure in DeLorme of TRIPS using stored preferences to narrow search results.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“combine DeLorme and Trask. PO Resp. 51. Petitioner, in reliance on the testimony of Mr. Proctor, asserts that a person of ordinary skill would have found it obvious to combine DeLorme’s system of taxi service providers and Trask, because Trask enhances DeLorme’s system to maximize available taxis and minimize delays by accounting for the location of the taxi. Pet. 56–57 (citing Ex. 1012 ¶¶ 181–184). In the Decision to Institute, we credited Mr. Proctor’s statements, as they are consistent with the teachings of DeLorme and Trask. Inst. Dec. 21. For example, Trask teaches tracking the present position of taxis (Ex. 1007, 2:25–30) and comparing the locations of vehicles with customer requests to determine the most appropriate vehicle to dispatch (id. at 2:31–42).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Patent Owner further asserts that Mr. Proctor’s deposition testimony establishes that he improperly relied on hindsight bias and his declaration is not sufficient to establish obviousness. PO Resp. 41–47. Mr. Proctor testified that a person of ordinary skill in the art would have combined Baker and Hall in various ways depending on their objectives. Ex. 2003, 161:10– 162:13. Patent Owner points to a question posed by its counsel asking “[a]nd this example that you just gave me—is how you would combine their teachings if your objective were to create something like the ’433 patent; is that right?” PO Resp. 43–44 (citing Ex. 164:4–12). We disagree that Mr. Proctor’s testimony in the affirmative to this question is an admission that he used hindsight bias, because Patent Owner’s contentions rely on incorrect characterizations of Mr. Proctor’s testimony. Patent Owner additionally alleges that Mr. Proctor belatedly identified the level of skill in the art (PO Resp. 47), which is not persuasive for the same reasons discussed with respect to DeLorme and Trask. We credit the testimony of Mr. Proctor regarding the combination of Baker and Hall as consistent with the teachings of these references.” slip op. at 35
Patent outcomesUS 7,376,433 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,376,433 - PTAB · Oct 1, 2015 · IPR2014-00714 · APJ Kevin W Cherry · IPR · Final written decision
The Board canceled claims 11, 74, and 81 and denied substitute claims 154–156 because they broadened claim scope, lacked written-description support, and were not shown patentable over Mostov.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“A petition for inter partes review must identify “all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Generally, a party does not become a “real party-in-interest” merely through association with another party in an unrelated endeavor. Id. A party also is not considered a real party in interest in an inter partes review solely because it is a joint defendant with a petitioner in a patent infringement suit or is part of a joint defense group with a petitioner in the suit. Id. Whether a party who is not a named participant in a given proceeding is a “real party-in-interest” to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term “real party-in-interest” to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. Here, even assuming this contention is timely, Patent Owner has failed to provide any evidence, besides the mere fact that the other parties are co-defendants in a lawsuit or alleged infringers, to support the contention that Petitioner has failed to name all of the real parties in interest. That one fact, without any further proof of control or involvement by these parties in this proceeding, is insufficient to establish that Petitioner has failed to name” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“ii. Petitioner’s Expert Patent Owner asks that we “dismiss [Petitioner’s] Expert Declaration and disqualify [Petitioner’s Declarant] for making and using a false writing.” PO Resp. 9. Patent Owner contends that Petitioner’s Declarant falsely claimed that certain patent applications were patents by listing them under the heading “Patents” in his Resume. Id. at 8–9. A Patent Owner Response is not the proper vehicle to seek to exclude testimony. See 37 C.F.R. § 42.64(c). Moreover, even if it were the proper vehicle, we are not persuaded that the alleged “falsehood” that Patent Owner identified—listing patent applications, which are clearly identified as such, under a heading titled “Patents”—is, in any way, misleading. Thus, we decline Patent Owner’s request that we dismiss Dr. Vishwanath’s testimony.3 C. Motion to Amend As discussed above, in the Motion to Amend, Patent Owner requests” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“i. Level of Ordinary Skill in the Art Neither party puts forward a succinct definition of the level of ordinary skill in the art. Petitioner’s declarant, however, has put forward a detailed discussion of various references dated before April 20064 (the date Patent Owner now alleges is the priority date) related to subject matter of the ’990 patent. See Ex. 1005 ¶¶ 20–74, 94–99. We have reviewed that discussion and the references cited in those paragraphs. We have found it accurately reflects the teachings of the references. Moreover, we agree with Petitioner’s declarant that the references are analogous to the claimed invention, and, as such, represent the level of skill in the relevant art at the time of the invention. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board did not err in concluding that the level of ordinary skill was best determined by the references of record); In re Oelrich, 579 F.2d 86, 91(CCPA 1978) (“[T]he PTO usually must evaluate . . . the level of ordinary skill solely on the cold words of the literature.”); see 4 We accept this date as the priority date only for the sake of argument. also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.”’).” slip op. at 13
- ScopeMotion to amend, deniedDenied
“We agree with Petitioner and find, based on the Patent Owner’s own arguments, that these terms improperly broaden the scope of the claims. As Patent Owner explains, the added language is broad enough to include the removed items, and is intended to reflect the entire genus of “monitoring equipment” and “communications devices” that “are capable of communication and capable of receiving signals.” Mot. to Amend 4, 5. Thus, the claim has been broadened to not only include the listed species that have been removed, but anything falling within the claimed genus. Accordingly, we find that this amendment impermissibly broadens the claim. As for the second change in the claim language, we find that Patent Owner has failed to show why removal of the entire passage “wherein, the communication device receives a signal via any of one or more products listed in any of the plurality of product grouping categories,” would not impermissibly broaden the scope of claim 154. The deletion of this limitation necessarily broadens the claim in that limitation’s aspect. See In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997) (“For example, a reissue claim that deletes a limitation or element from the patent claims is broader in that limitation’s aspect.”). Given that Patent Owner has entirely deleted this limitation and Patent Owner bears the burden of showing entitlement to the amendment, it was incumbent on Patent Owner to explain why removing this entire passage from claim 154 would not broaden the scope of the claim. See In re Bennett, 766 F.2d 524, 526 (Fed. Cir. 1985) (en banc) (“[A] claim is broadened if it is broader in any respect than the original claim, even though it may be narrowed in other respects.”).” slip op. at 17
§ 102 anticipation - PTAB · Sep 17, 2015 · IPR2015-00531 · APJ Patrick M Boucher · IPR · Order
The Board terminated the proceedings as to MediaTek Inc. and MediaTek USA, Inc., vacated the scheduling orders, and continued the proceedings as to Bandspeed, Inc.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“IPR2015-01581, and IPR2015-01582 (“the related proceedings”). In each of the related proceedings, a petition was filed by Qualcomm Incorporated on July 12, 2015, with a motion to join a respective one of these proceedings. Papers 1, 2 in each of the related proceedings. We note that the joinder motions in the related proceedings were filed before the instant motions to terminate were filed in these proceedings. Patent Owner opposes the joinder motions in the related proceedings. Paper 8 in each of the related proceedings. If the joinder motions are not granted, the related proceedings are barred under 35 U.S.C. § 315(b). See 35 U.S.C. § 315(c). Patent Owner has not yet filed a preliminary response in any of the related proceedings, the deadline for which is October 28, 2015, nor sought to expedite the related proceedings by filing a waiver under 37 C.F.R. § 42.107(b). It is thus 2 Citations are to IPR2015-00314. premature to decide the joinder motions in the related proceedings. See 35 U.S.C. § 315(c). Nevertheless, we discern no compelling interest to be served by delaying termination of these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc., both of which have settled with Patent Owner. See 35 U.S.C. § 317 (“An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner unless the Office has decided the merits of the proceeding before the request for termination is filed” (emphasis added)). These proceedings are at an early stage, and no motions are pending in any of these proceedings. Under these circumstances, we determine that it is appropriate to terminate these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc. We exercise the discretion afforded under 35 U.S.C. § 317(a) to decline, at this time, to terminate these proceedings with respect to Patent Owner. Because no petitioner remains in these proceedings, we vacate the Scheduling Order in each proceeding (Paper 13 in IPR2015-00314, IPR2015-00316, and IPR2015-00531; and Paper 15 in IPR2015-00315). If necessary, we will revisit scheduling for these proceedings after decisions on the joinder motions are made in the related proceedings. If appropriate, we will also revisit the Motions to Terminate as to Patent Owner after ruling on the motions for joinder in the related proceedings.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The Joint Motions to Seal are granted to the extent that they request that the agreement be treated as business confidential information and be kept separate from the patent files under 37 C.F.R. § 42.74(c) but otherwise denied. The requests should not have been filed as “Motions to Seal,” which has other meaning, under 37 C.F.R. § 42.14, with respect to the underlying document in the context of the proceeding, e.g., expungement or made public under certain circumstances.” slip op. at 3
NonePatents in suitUS 8,542,643 - International Business Machines Corp. v. Intellectual Ventures I LLCRehearing grantedPTAB · Aug 24, 2015 · IPR2014-01516 · APJ Hyun J Jung · IPR · Rehearing
The Board granted rehearing only to reconsider constructions of “selecting” and “comparing,” but denied modification of its decision denying institution on claims 1–16.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We grant Petitioner’s request insofar as we have reconsidered our interpretation of the challenged claim terms, but we decline to modify our previous decision.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“reasonable interpretation of “selecting the file based on whether content of the file matches a file type indicated by a name of the file” in view of the Specification of the ’298 patent includes “a sequence of linked examinations of the indicated file type and file content that demonstrates a mismatch.” Also, as we determined previously, the portions of Chen relied on in the Petition describe examining the file content and file extension, but not comparing the file content to the file extension. Dec. 11. Thus, after considering our previous analysis in view of Petitioner’s proposed interpretation, we determine that Petitioner has not demonstrated Chen discloses “selecting the file based on whether content of the file matches a file type indicated by a name of the file,” as recited by independent claims 1, 10, and 16. Accordingly, we are not persuaded to modify our decision denying institution based on Petitioner’s challenge of claims 1, 2, 6, 7, 9–11, and 16 as anticipated by Chen and Petitioner’s challenge of claims 3–5, 8, and 12– 15 as obvious over Chen and either Ji, Korn, Kim, or admitted prior art, which do not address the deficiency regarding the “selecting” step.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Id. at 3. In the cited portion, the ’298 patent states that “the retrieved file is examined to determine whether the file structure is as expected for a file of the indicated type.” Ex. 1004, 7:5–7. The ’298 patent also states that “[a]lternatively, files can be checked to ensure that they actually contain the type of data described by the file type marker.” Id. 7:9–10. The ’298 patent, thus, supports Petitioner’s interpretation that “a selection based on whether a file content matches the file type indicated by the file name may be accomplished by a direct comparison between two items,” because it describes a direct comparison. The same portions of the ’298 patent, however, do not support Petitioner’s interpretation that the “selecting” step also includes “a sequence of linked examinations of the indicated file type and file content that demonstrates a mismatch” because it does not describe an examination of file type and a separate examination of file content that, when linked, demonstrate a mismatch. We determine that, in view of the Specification of the ’298 patent, one of ordinary skill in the art would interpret the “selecting” step of independent claims 1, 10, and 16 to include examining files “to determine whether the file structure is as expected for a file of the type indicated,” checking files “to ensure that they actually contain the type of data described by the file type marker,” and other, similar alternatives. Petitioner provides no reasoning that the Specification of the ’298 patent further describes separate examinations that demonstrate a mismatch. Petitioner’s arguments, therefore, do not persuade us that the broadest, reasonable interpretation of the “selecting” step in view of the Specification of the ’298 patent further includes “a sequence of linked examinations of the indicated file type and file content that demonstrates a mismatch.” Finally, an interpretation of the “selecting” step that includes “a sequence of linked examinations of the indicated file type and file content that demonstrates a mismatch” would render meaningless, or superfluous, the term “matches” as recited by independent claims 1, 10, and 16. Separate examinations of file type and file content that demonstrate a mismatch allows for no matching at all. Thus, Petitioner does not persuade us to adopt this particular interpretation of the “selecting” step.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“reasonable interpretation of “selecting the file based on whether content of the file matches a file type indicated by a name of the file” in view of the Specification of the ’298 patent includes “a sequence of linked examinations of the indicated file type and file content that demonstrates a mismatch.” Also, as we determined previously, the portions of Chen relied on in the Petition describe examining the file content and file extension, but not comparing the file content to the file extension. Dec. 11. Thus, after considering our previous analysis in view of Petitioner’s proposed interpretation, we determine that Petitioner has not demonstrated Chen discloses “selecting the file based on whether content of the file matches a file type indicated by a name of the file,” as recited by independent claims 1, 10, and 16. Accordingly, we are not persuaded to modify our decision denying institution based on Petitioner’s challenge of claims 1, 2, 6, 7, 9–11, and 16 as anticipated by Chen and Petitioner’s challenge of claims 3–5, 8, and 12– 15 as obvious over Chen and either Ji, Korn, Kim, or admitted prior art, which do not address the deficiency regarding the “selecting” step.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,757,298
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.