Trials@uspto.gov
`571-272-7822
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`
`
`Paper 79
`Entered: November 30, 2015
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00552
`Patent 6,754,195 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
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`
`
`
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`
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`571-272-7822
`
`
`
`
`Paper 79
`Entered: November 30, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00552
`Patent 6,754,195 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00552
`Patent 6,754,195 B2
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`I.
`BACKGROUND
`The procedural history of this case is pertinent to this Final Written
`Decision. On June 2, 2014, Marvell Semiconductor, Inc. (“Petitioner”) filed
`two separate Corrected Petitions to institute inter partes review of claims 1–
`23 of U.S. Patent 6,754,195 B2 (“the ’195 patent”) pursuant to 35 U.S.C.
`§§ 311–319. (We will refer to the Corrected Petition in each case as the
`“Petition.”) The Petition in this case (Paper 6)1 relied principally on a patent
`to Webster2 and an article by Castro.3 The second Petition, Paper 7 in case
`IPR2014-00553 (“IPR-553”), relied principally on articles by Boer4 and
`Wu,5 and a patent to Böhnke.6
`Intellectual Ventures I LLC (“Patent Owner”) filed a Preliminary
`Response in each case (Paper 14 here; Paper 15 in IPR-553) on September 5,
`2014. On December 3, 2014, we entered a single Institution Decision on
`both Petitions. Paper 16. The Institution Decision granted Petitioner’s
`request in this case and instituted inter partes review of claim 1 of the ʼ195
`patent, based upon the combination of Webster and Castro, and claims 2–23,
`based upon the combination of Webster, Castro, and one or more additional
`
`
`1 Unless otherwise indicated, paper and exhibit numbers refer to the record
`in this proceeding.
`2 U.S. Patent No. 7,274,652 B1 (Sept. 25, 2007).
`3 J. Castro et al., “Downlink OFDM Techniques in 3rd Generation TDMA
`Based Mobile” (IEEE 1998).
`4 Jan Boer, “OFDM in the 2.4 GHz Band,” IEEE HRb Study Group, doc. no.
`IEEE 802.11-00/188 (IEEE 2000).
`5 Jean-Lien C. Wu, “An Adaptive Multirate IEEE 802.11 Wireless LAN”
`(IEEE 2001).
`6 U.S. Patent No. 6,567,374 B1 (May 20, 2003).
`2
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`prior art references. Id. In the same Institution Decision, for IPR-553, we
`concluded that the teachings Petitioner relied upon from Boer, Wu, and
`Böhnke were not distinguishable from the teachings of Webster and Castro.
`Id. Accordingly, we exercised our discretion under 35 U.S.C. § 315(d) to
`deny the request to institute a review in IPR-553.
`During the initial conference call for this case, Patent Owner disclosed
`its contention that Webster, a prior art reference to the ʼ195 patent under
`35 U.S.C. § 102(e), should be disqualified as prior art under the provisions
`of 35 U.S.C. § 103(c) applicable to this pre-AIA patent. Prior to the AIA, 35
`U.S.C. § 103(c)(1) provided, in relevant part:
`Subject matter developed by another person, which qualifies as
`prior art only under one or more of subsections (e), (f), and (g)
`of section 102 of this title, shall not preclude patentability under
`this section where the subject matter and the claimed invention
`were, at the time the claimed invention was made, owned by the
`same person or subject to an obligation of assignment to the
`same person.
`
`Patent Owner requested authorization to file a motion to compel
`additional discovery relating to this contention. Petitioner opposed the
`request. Paper 19. The Board authorized the motion, the motion was
`granted (Paper 29), and depositions of Mr. Webster, his co-inventor, Mr.
`Seals, and production of documents by their former employer, Intersil, went
`forward. Transcripts of those depositions were entered in the record of this
`proceeding as Exhibits 2024 (Webster Decl.) and 2025 (Seals Decl.). In
`addition, the record includes two declarations of Mr. Webster (Exs. 1021,
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`2038), and a declaration (Ex. 2069)7 and supplemental declaration (Ex.
`2090)8 of Intersil’s corporate patent counsel, Mr. Bernkopf. In addition, a
`declaration of Annette Vonder Mehden, a paralegal employed by Patent
`Owner’s counsel, has been filed by Patent Owner. Ex. 2093.
`In light of Patent Owner’s challenge to the status of Webster as prior
`art under 35 U.S.C. § 103(c), Petitioner sought rehearing of our decision
`denying the Petition in IPR-553. IPR-553 Paper 18. We granted that
`request and, on February 20, 2015, instituted an inter partes review of
`claims 1–23 of the ʼ195 patent in IPR-553 based on Wu, Böhnke, and other
`art of record. IPR-553 Paper 19.
`The two cases were consolidated for oral argument (along with a third
`case, IPR2015-00548, involving the same parties and related technology).
`Oral Hearing for the three cases was held on September 11, 2015. A
`transcript of the argument is entered in the record of this case as Paper 78
`(“Hearing Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is entered pursuant to 35 U.S.C. § 328(a).
`For the reasons that follow, we conclude that Patent Owner has
`proven, by a preponderance of the evidence, that Webster is not available as
`prior art to the ʼ195 patent under the provisions of 35 U.S.C. § 103(c). We
`therefore conclude that Petitioner has failed to demonstrate, by a
`
`
`7 Exhibit 2070 is a version of this declaration with confidential information
`redacted.
`8 Exhibit 2091 is a version of this supplemental declaration with confidential
`information redacted.
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`preponderance of the evidence of record in this case, that claims 1–23 of the
`ʼ195 patent are unpatentable. We express no views here on the challenges to
`patentability of the ʼ195 patent in IPR-553 as those will be addressed in a
`Final Written Decision we are issuing concurrently in IPR-553.
`
`II. DISCUSSION
`
`A. The ʼ195 Patent
`Although a detailed understanding of the ʼ195 patent is not necessary
`for this Decision, some familiarity with the technology is helpful.
`The ʼ195 patent is entitled “Wireless Communication System
`Configured to Communicate Using a Mixed Waveform Configuration.” The
`patent names as co-inventors Mark A. Webster and Michael J. Seals. The
`ʼ195 patent is directed to communications involving wireless protocols. As
`the Background of the Invention explains, the Institute of Electrical and
`Electronics Engineers (IEEE) defined a family of standards known as 802.11
`for communication over wireless local area networks (WLAN) in the 2.4 and
`5 Gigahertz (GHz) bands. Ex. 1001, col. 1, ll. 22–25. Examples are the
`standard wireless protocols known as 802.11a and 802.11b. Id. at ll. 25–32.
`Systems incorporating these standards were incompatible and could not
`work together. Id. at ll. 32–34.
`A new standard referred to as 802.11g was proposed as a high data
`rate extension of the 802.11b standard at 2.4 GHz. Developing this new
`standard presented several significant technical challenges. Id. at ll. 35–41.
`For example, it was desired that devices using the new standard be able to
`communicate at data rates higher than the standard 802.11b rates in the 2.4
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`GHz band. In some configurations, it was desired that devices using the
`802.11b protocol and new 802.11g devices be able to coexist in the same
`WLAN environment or area without significant interference or interruption
`from each other. It also was desired that 802.11g and 802.11b devices be
`able to communicate with each other at the standard 802.11b rates. Id. at
`ll. 41–51.
`As discussed infra, the named inventors, Webster and Seals, were part
`of a team at Intersil that worked with IEEE developing the new standard and
`addressing the problems outlined above. The ʼ195 patent resulted from this
`work.
`
`B. The Asserted Grounds
`The Board instituted trial on the following grounds:
`References
`Basis
`
`Claim(s)
`Challenged
`
`§ 103(a)
`§ 103(a)
`
`§ 103(a)
`
`7 and 8
`
`§ 103(a)
`
`23
`
`1
`2–6 and 9–23
`
`Webster and Castro
`Webster, Castro, IEEE 802.11a, and
`IEEE 802.11b
`Webster, Castro, IEEE 802.11a, IEEE
`802.11b, and Jamal9
`Webster, Castro, and Agee10
`
`As the above indicates, the Webster patent11 is relied upon as the
`principal reference in each of the patentability challenges to the ʼ195 patent
`in this trial. Webster’s availability as prior art is, therefore, potentially
`dispositive of those challenges.
`
`9 Rahman Jamal et al., Filters (CRC Press 1999).
`10 U.S. Patent No. 6,128,276 (Oct. 3, 2000).
`11 The same Webster is named as a co-inventor of the ʼ195 patent.
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`C. The Status of Webster As Prior Art Under 35 U.S.C. § 103(c)
`Webster is relied on as prior art under 35 U.S.C. § 102(e) and
`therefore is subject to the provisions of § 103(c). Because Webster is the
`principal reference in all challenges, if Webster is disqualified as prior art
`under § 103(c), those challenges all fail. See supra.
`In an inter partes review, the burden of proof is on the Petitioner to
`prove unpatentability by a preponderance of the evidence. Dynamic
`Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015). This burden never shifts to the Patent Owner. Id. However, the
`burden of production, a separate burden, does shift once the Petitioner comes
`forward with evidence establishing prior art. Id. at 1379–80. Thus, to
`prevail on this dispositive issue, Patent Owner must overcome Webster by
`establishing that § 103(c) applies to the fact of this case.
`First, Patent Owner must establish the date on which the invention of
`the ʼ195 patent was made. See 35 U.S.C. § 103(c) (“the subject matter and
`the claimed invention were, at the time the claimed invention was made,
`owned by the same person or subject to an obligation of assignment to the
`same person” (emphasis added)). The parties agree that this date is July 6,
`2001, the date on which the provisional application that led to the ʼ195
`patent was filed. Hearing Tr. 130:17–19.
`Next, Patent Owner must establish that as of that date, both the ʼ195
`patent and the Webster patent were either “owned by the same person or
`subject to an obligation of assignment to the same person.” 35 U.S.C.
`§ 103(c)(1). The application for the Webster patent was filed on June 2,
`2000. PO Resp. 9 (citing Ex. 1004). One day prior, the named inventors,
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`Mark A. Webster, Steven D. Halford, and Richard D. Roberts, executed
`assignments of the application to Intersil Corporation. Id. (citing Ex. 2008).
`
`The parties stipulate that at the time of this assignment, Intersil
`Corporation was a wholly owned subsidiary of Intersil Holding, which, in
`May 2001, changed its name to Intersil Corporation. Ex. 2068. At the same
`time, Intersil Corporation changed its name to Intersil Communications, Inc.
`Id. Finally, a new company, Intersil Americas, Inc. was created in
`November 2000. Id. This complex corporate structure is summarized in the
`following chart provided by Patent Owner:
`
`
`
`The above chart presented by Patent Owner illustrates the corporate
`relationship among certain Intersil entities on the dates specified. A vertical
`relationship in the chart represents 100% ownership by the entity appearing
`below. PO Resp. 6. For convenience, and to avoid confusion due to the
`corporate name changes, the parties refer to Intersil Corporation (and Intersil
`Communications, Inc.) as “Intersil Sub 1.” They refer to Intersil Americas,
`Inc. as “Intersil Sub 2.” We will, therefore, adopt those names for this
`Decision. The information in the chart is not disputed by the parties with
`one exception: Petitioner disputes that Intersil Sub 1 was a “direct wholly-
`owned subsidiary” of Intersil Communications on July 6, 2001, when the
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`provisional application was filed. Ex. 2068, 1. We discuss this contention
`infra.
`As noted, the Webster patent was assigned in writing to Intersil
`
`Corporation (Intersil Sub 1) on June 1, 2000. Thus, the undisputed evidence
`demonstrates that as of July 6, 2001, Intersil Sub 1 owned the Webster
`patent by virtue of a written assignment. Pet. Reply 1 (admitting that “the
`[Webster] Patent was owned by Intersil Sub 1 as of the July 6, 2001 priority
`date of [the] ʼ195 Patent”). Patent Owner must therefore show that Webster
`and Seals, co-inventors named in the ʼ195 patent, either assigned or had an
`obligation to assign their patent to the “same person” as the Webster patent
`as of July 6, 2001.
`
`Despite the granting of additional discovery from Intersil, Webster,
`and Seals, Patent Owner has not been able to prove the existence of a written
`agreement assigning the ʼ195 patent prior to May 8, 2002. On that date,
`Webster and Seals assigned the ʼ195 patent application, which was filed two
`days later, on May 10, 2002, to Intersil Sub 2. Ex. 2010. However, while
`there is some evidence to the contrary, we determine that Patent Owner has
`demonstrated that both Webster and Seals were employed by Intersil Sub 1
`on July 6, 2001, the invention date of the ’195 patent.
`
`The contradictory evidence is a declaration of Mr. Webster executed
`January 28, 2015, in which he identifies his employer as Intersil Americas
`Inc. (Intersil Sub 2). Ex. 1021 ¶ 7. In a subsequent declaration, executed
`February 18, 2015, and at his deposition, Mr. Webster clarifies this
`statement. Ex. 2038 ¶ 26. He explains in this declaration that he based this
`earlier statement on looking at the corporate name in the May 8, 2002,
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`assignment assigning the Webster patent application to Intersil Americas
`(Sub 2). He assumed that the assignee’s name in the agreement was also his
`employer. Id. At his deposition he testified that he did not understand the
`legal or corporate relationship between Intersil Corporation (Sub 1) and
`Intersil Americas, Inc. (Sub 2). Ex. 2058, 51:18–21. We find this
`explanation credible, especially in light of the complex corporate
`organization of Intersil and fact that Mr. Webster is not a lawyer. Id. 53:23–
`24. We therefore find credible the evidence, including Mr. Webster’s
`testimony (Ex. 2038 ¶ 28), Mr. Seals’ pay stub (Ex. 2060), 2001 W-2 form
`(Ex. 2061),12 and related testimony and documentation, that both Webster
`and Seals were employed by Intersil Sub 1 when the invention of the ʼ195
`patent was made on July 6, 2001.
`
`Specifically, we find credible the testimony of Intersil’s Chief
`Intellectual Property Counsel, Mr. Bernkopf, in his declaration and
`supplemental declaration, among other things, linking the employer
`identification number (EIN) appearing on Mr. Seals’ W-2 with Intersil Sub
`1. Ex. 2069 ¶ 17; Ex. 2090 ¶¶ 6–9. Likewise, we find credible the
`documentary evidence to the same effect from the Florida Department of
`State attached to the Declaration of Annette Vonder Mehden. Ex. 2093,
`Exs. A–D.
`
`Patent Owner, however, has been unable to prove the existence of a
`written employment agreement that contractually would require either Mr.
`Webster or Mr. Seals to assign his patent rights to Intersil. Webster testified
`
`12 Exhibit 2077 is a version of the W-2 form with confidential information
`(Mr. Seals’ social security number) redacted.
`10
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`that he had no recollection of signing an employment agreement. Ex. 2058,
`53:17–22. Seals testified that while it was “likely” he signed such an
`agreement, he could not say “definitively.” Ex. 2059, 25:7–9. Accordingly,
`there is insufficient evidence that, as of July 6, 2001, a written agreement
`existed obligating Webster and Seals to assign their invention to Intersil Sub
`1 or any other Intersil entity.
`
`That determination is not dispositive of the § 103(c) issue, however,
`for Patent Owner further contends that even in the absence of a written
`agreement, Intersil Sub 1 owned the subject matter of the ʼ195 patent by the
`terms of employment of Webster and Seals. PO Resp. 15–17. In support,
`Patent Owner cites testimony from the co-inventors as to their understanding
`that their employer owned their inventions. Petitioner responds that such a
`“vague recollection” is insufficient evidence of a contractual obligation. Pet.
`Reply 3. We agree with Petitioner that Patent Owner has failed to prove the
`existence of an express agreement between the co-inventors Webster and
`Seals of the ʼ195 patent to assign their rights to Intersil. Patent Owner has
`been unable to produce a written agreement, and the understandings of
`Webster and Seals are insufficient evidence that an agreement existed and of
`its terms.
`
`Patent Owner’s second argument is based on the common law right of
`an employer in the inventions of an employee who was employed to invent.
`PO Resp. 17–24. See United States v. Dubilier Condenser Corp., 289 U.S.
`178 (1933). In Dubilier Condenser, the Supreme Court distinguished
`between individuals who were employed to make inventions and those
`whose employment is general. In the words of the Court:
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`One employed to make an invention, who succeeds, during his
`term of service, in accomplishing that task, is bound to assign to
`his employer any patent obtained. The reason is that he has
`only produced that which he was employed to invent. His
`invention is the precise subject of the contract of employment.
`
`289 U.S. at 187. Patent Owner contends that “[e]ven if no contract had
`existed, Intersil nonetheless owned the inventions of the ʼ195 patent.” PO
`Resp. 17. The parties agree that Florida common law applies to the
`resolution of this issue. Hearing Tr. 120:17–20. Patent Owner, therefore,
`relies on Florida case law and a Federal Circuit decision applying Florida
`law to support its theory that an implied-in-fact contract of assignment
`existed between Webster and Seals and their employer, Intersil Sub 1. PO
`Resp. 18–24.
`In State v. Neal, 12 So. 2d 590 (Fla. 1943), Dr. Neal was employed as
`
`an assistant in animal nutrition at the University of Florida. Initially, at
`least, his employment was general. He was assigned to study the
`digestibility coefficients and feeding value of dry citrus waste (refuse from
`grapefruit and orange canning factories). The project was extended to
`include methods by which the dried citrus wastes could be made available as
`dairy feed. Id. at 590.
`
`The problem was to find a better method of excluding the moisture.
`While working on the project, Dr. Neal developed a method and set out to
`have it patented. After conferring with representatives of the University, he
`proceeded to Washington, D.C., where he employed an attorney and applied
`for a patent on his discovery. He applied for the patent in his own name, and
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`when it issued, assigned his application to Citrus Patents Co., one of several
`parties who were working on a similar project. Id. at 590–91.
`
`A lower court held that the contract between Dr. Neal and his
`employer was a general contract of employment. It did not contemplate a
`contract to invent the processing question. Therefore, Citrus Patents was a
`bona fide purchaser of the invention. Id. at 591. The Supreme Court of
`Florida reversed. The Supreme Court held that while the contract was
`general in its inception, once the special project was set up and Dr. Neal was
`placed in charge, the contract was for the express purpose of accomplishing
`the result that it accomplished. Id. Citing an earlier Florida decision, State
`Bd. of Education v. Bourne, 7 So. 2d 836 (1942), the Court concluded that
`while there was not an express contract to invent the process, the
`circumstances showed an “unequivocal inference” that Dr. Neal’s
`employment was for that express purpose. 12 So. 2d at 592 (quoting
`Bourne). In reaching this conclusion, the Court looked at a number of
`factors in the relationship between Dr. Neal and the project, including the
`fact that he was placed in charge, gave the major portion of his time to it,
`employed the laboratories and other facilities of his employer, and had his
`expenses paid including expenses for obtaining the patent by his employer.
`Id. at 591.
`In Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403 (Fed Cir.
`
`1996), the Federal Circuit applied Florida law to resolve a similar ownership
`dispute. In Teets, the General Electric Aircraft Company asked DRB
`Industries, a division of Chromalloy, to devise a method of manufacturing
`the leading edge for a new composite fan blade for a turbine. DRB assigned
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`Teets to be the chief engineer on the project. At the time, he was an
`employee at will and had no written employment contract addressing
`ownership of the inventive work. Id. at 405–06. Teets and others worked on
`the project, which resulted in a solution to the problem (a hot-forming
`process or HFP) and a patent application naming Teets as a co-inventor. Id.
`at 406.
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`Teets later asserted ownership of the patent application and, after a
`bench trial, the District Court concluded that Teets solely owned the process.
`Id. On appeal, the Federal Circuit reversed. After reviewing the relevant
`case law, including Dubilier, Neal, and Bourne, the Federal Circuit
`concluded that the District Court had committed legal error by focusing on
`“irrelevant facts” to find no implied contract. Id. at 408.
`
`The Federal Circuit noted that the specific goal of the project was to
`develop a one-piece leading edge for the fan blade. GE had approached
`DRB to propose ways to apply the leading edge to the turbine blades. GE
`specifically and repeatedly expressed a desire for a one-piece solution. Id. at
`408. Teets had been assigned as chief engineer on the project and spent
`about 70% of his time on it. After taking on the project and attempting
`several solutions, Teets developed the solution. He reduced the invention to
`practice using the DRB’s resources and employees, DRB’s shop tools and
`materials, and on DRB’s time. DRB paid for the prosecution of the patent
`application. More importantly, Teets repeatedly acknowledged DRB’s role
`in the development of the process. The Federal Circuit concluded that these
`“undisputed facts” showed an implied-in-fact contract of assignment of the
`invention between Teets and DRB. Id.
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`The Federal Circuit summarized its reasoning as follows:
`DRB specifically directed Teets to devise a one-piece leading
`edge for GE. Having directed Teets to that task, compensated
`him for his efforts, paid for the refinement of the process, and
`paid for the patent protection, Chromalloy owns the patent
`rights in the HFP. The Florida Supreme Court’s decision in
`Neal governs this case and compels the conclusion that Teets
`entered an implied-in-fact contract to assign patent rights to
`Chromalloy.
`
`Id.
`
`Patent Owner points to numerous similarities between the facts of this
`case and those that persuaded the Federal Circuit to reverse the lower court
`in Teets. PO Resp. 20–26. For example, the specific goal of the project was
`to develop new technologies that would approve improve data rates of the
`802.11b wireless standard, the subject matter of the ʼ195 patent. Ex. 2038
`¶ 10. Webster’s role in this project was a “technical lead.” Ex. 2058,
`21:15–24. Seals was recruited specifically to work on products using 802.11
`technology. Ex. 2059, 11:25–12:6. Approximately 90% of Seals’s work at
`Intersil was devoted to 802.11 products. Id. at 12:19–22.
`
`Intersil provided Webster and his project team with the tools and the
`resources to perform his work. Ex. 2038 ¶ 11. Most of the work was
`performed at Intersil facilities in Florida. Id. Intersil provided Webster with
`an office, computer, computer network access, servers, software to run
`simulations, and paid all travel fees and related expenses for him to attend
`IEEE meetings. Id. Simulations also were run by Seals on a work computer
`provided him by Intersil using software provided by Intersil. Exhibit 2059,
`20:13–21:9.
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`The team was tasked with the particular project that led to the ʼ195
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`patent. Ex. 2059, 19:15–20:4. The members of the project team all were
`employees of Intersil Corporation. Ex. 2058, 24:23–25. The assignments of
`the team and projects were made by Intersil. Ex. 2059, 19:25–20:4. The
`project related to improving products that Intersil was planning to sell.
`Ex. 2059, 22:10–23. Intersil also paid all costs associated with filing the
`application for the ʼ195 patent. Ex. 2058, 28:23–29:7; Ex. 2059, 23:17–25.
`
`Patent Owner relies on the testimony from both Webster and Seals to
`establish an “unequivocal inference” of an implied in fact contract to assign
`their inventions to their employer. PO Resp. 19–24. For example, Webster
`testified that part of his responsibilities as an engineer was to invent in the
`area of 802.11. Ex. 2058, 26:9–11. Intersil specifically assigned Webster to
`work on the project that led to the ʼ195 patent. Id. at 21:14–18. Webster
`performed his work on the ʼ195 patent project primarily at Intersil’s facilities
`in Florida. Id. at 23:11–18. Intersil provided him with the tools and
`resources necessary to perform his work. Id. at 23:19–24:4.
`
`Webster testified that Intersil fully compensated him for his inventive
`work. He received his salary and bonuses for each patent application he
`submitted and an additional bonus when a patent issued. Id. at 17:5–23.
`Webster testified that Intersil paid all expenses for prosecuting the ʼ195
`patent application. Id. at 28:23–29:7. Webster has executed seventeen
`patent assignments in favor of Intersil. Ex. 2038 ¶¶ 22–24.
`
`Seals testified that he was hired specifically to work on 802.11
`products. Ex. 2059, 11:25–12:10. Intersil specifically assigned him to the
`team tasked with the project that led to the ’195 patent. Id. at 19:24–20:7.
`16
`
`
`
`IPR2014-00552
`Patent 6,754,195 B2
`
`
`
`He devoted about 90% of his time to working on 802.11 products. Id. at
`12:19–22. Seals performed his work on the ’195 patent project primarily at
`Intersil’s facilities in Florida. Ex. 2059, 21:13–19. Intersil provided him
`with the necessary tools and resources for his work. Id. at 20:13–21:9.
`
`Seals’ compensation included an annual salary, a bonus for each
`patent application that he submitted, and an additional bonus for each patent
`that issued. Id. at 17:15–18:4. He testified that he understood his salary was
`full compensation for his inventive work. Id. at 18:13–16. Intersil paid all
`travel and related expenses for Seals to attend IEEE meetings around the
`world. Id. at 21:20–22:9.
`
`Petitioner denies that there was any obligation to assign the patent
`under Florida law. Pet. Reply 4–8. Petitioner contends that Patent Owner
`has failed to prove which Intersil entity employed the inventors. Id. at 5.
`We are not convinced by this argument. We determine that the
`preponderance of the evidence, including the testimony of the co-inventors
`and the documentary evidence provided by Mr. Seals, Intersil, and the
`declarants Bernkopf and Vonder Mehden, demonstrates that Intersil
`Corporation (Intersil Sub1) employed both Webster and Seals in 2001. See
`supra.
`
`
`Next, Petitioner contends that with no written agreement Patent
`Owner cannot show there is an “unequivocal inference” that Webster and
`Seals were hired for the “express purpose” of making the invention of the
`ʼ195 patent. Pet. Reply 5–8. We are not convinced by this argument. In the
`cases relied on by Patent Owner, the outcome did not turn on whether or not
`there was a written agreement. Instead, the Court looked to the facts of the
`17
`
`
`
`IPR2014-00552
`Patent 6,754,195 B2
`
`
`
`employer-employee relationship in each of the cases without regard to
`whether there was a written agreement. We determine that the facts recited
`above concerning Intersil’s employment of Webster and Shields meet this
`standard.
`
`Petitioner relies heavily on the Florida District Court of Appeals’
`decision in City of Cocoa v. Leffler, 803 So. 2d 869 (Fla. Dist. Ct. App.
`2002). Pet. Reply 6. This reliance is misplaced. The invention in that case
`involved removal of hydrogen sulfide gas from drinking water. The City
`created an in-house design team to improve upon a proposed system that
`used aeration. During experimentation with aeration designs, a system
`malfunction led to a buildup of bacteria, which was effective in removing
`hydrogen sulfide from the water. The team ultimately developed a system
`using bacteria for removing hydrogen sulfide from the water and applied for
`patents on the process. When three of the team members, including Leffler,
`refused to assign their rights to the City, the City sued. 803 So. 2d at 870–
`71. After reviewing the relevant case law, including Bourne and Neal, the
`Court concluded that, on the facts before it, there was no “unequivocal
`inference” that Leffler had been given the task of producing the invention.
`Id. at 873.
`We are not persuaded that Leffler is applicable to the facts of this case.
`
`Unlike the invention here, the invention in Leffler was serendipitous. Id. at
`873–74 (“The evidence was overwhelming that the invention was the
`unanticipated result of a system malfunction.”). The team leader in Leffler
`testified that he never told team members to invent new technology and
`never anticipated that anything would be invented. Id. at 871–72. Leffler
`18
`
`
`
`IPR2014-00552
`Patent 6,754,195 B2
`
`
`
`agreed with other team members that the discoveries leading to the invention
`were “a surprise.” Id. at 872.
`
`Leffler also testified that he often worked on the project beyond
`normal working hours, for which he was not compensated. Id. The majority
`of the parts and materials used in the testing were provided by sources
`outside the City. Id. Leffler objected to the City paying for the patent. Id.
`The trial court determined that Leffler had no history of inventing and the
`City did not expect him to invent anything. Id. As the Court summarized:
`“All of the witnesses agreed that Leffler was not asked or instructed to
`invent anything and the inventions were a surprise.” Id. at 873.
`We are persuaded that these facts, among others, distinguish Leffler
`
`from this case. We are not persuaded, either, by Petitioner’s characterization
`of Mr. Webster’s role as “managerial.” Pet. Reply 6. The record
`demonstrates that apart from certain administrative duties such as selecting
`team members, his assignment was technical in nature.
`
`Nor are we persuaded by Petitioner’s argument that the ʼ195 patent
`would have been owned by the “wrong Intersil sub,” namely, Intersil Sub 2.
`Pet. Reply 8–13. As discussed above, we are persuaded by the evidence that
`both inventors were employed by Intersil Sub 1 in July 2001, and therefore
`their obligation to assign the patent was to Intersil Sub 1 and not Intersil
`Sub 2. We therefore do not need to reach the question of whether Intersil
`Sub 1 and Intersil Sub 2 are the “same person” under § 103(c). PO Resp. 9–
`
`19
`
`
`
`IPR2014-00552
`Patent 6,754,195 B2
`
`
`
`13. Consequently, the dispute over whether Intersil Sub 2 was a “direct
`wholly-owned subsidiary” of Intersil Sub 1 is moot. See infra.13
`
`Finally, we address a new argument presented at the oral hearing.
`Petitioner alleged existence of a conflict between the written assignment
`executed by Webster and Seals in May 2002 (Ex. 2010) and the claim that
`their employer held the rights to the ʼ195 patent in July 2001. Hearing Tr.
`131:6–132:22. We are not convinced there is such a conflict. The written
`assignment does not contain a covenant that the inventors “had the rights” in
`the patent as Petitioner’s counsel stated. Hearing Tr. 132:6–8. Instead, the
`covenant states “I have full right to co
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