Rohde & Schwarz GmbH & Co KG v. Tektronix Inc

1. Case Identification

• Case #: IPR2018-00647
• Patent #: 8,675,719
• Filed: February 23, 2018
• Petitioner(s): Rohde & Schwarz GmbH & Co., KG
• Patent Owner(s): Tektronix, Inc.
• Challenged Claims: 1-10, 12-15

2. Patent Overview

• Title: Multi-Domain Test and Measurement Instrument
• Brief Description: The ’719 patent discloses a test and measurement instrument featuring a time domain channel and a separate frequency domain channel. The instrument is configured to acquire and process signals in both domains simultaneously, allowing for control over different acquisition parameters for each channel.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 3-5, 8, 10, 12-15 under 35 U.S.C. §102

• Prior Art Relied Upon: Hansen (Patent 4,802,098).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hansen, which teaches a "digital bandpass oscilloscope" for observing both time and frequency domain plots, discloses every limitation of the challenged claims. Hansen describes a time domain channel for processing an input signal to display its time-dependent behavior and a frequency domain channel to perform spectrum analysis for a frequency domain display. Petitioner contended Hansen's architecture meets the key limitation of claim 1 that "the time domain channel and frequency domain channel are not used to process the same signal sequentially," because Hansen's signal path bifurcates into parallel processing streams for time and frequency analysis after initial shared processing, rather than one feeding into the other. For dependent claims, Petitioner argued Hansen teaches features such as time-aligning acquisitions by drawing from a common data set in memory (claim 3) and using different acquisition parameters like sample rates for each channel (claims 4, 5, and 13).

Ground 2: Obviousness of Claim 2 over Hansen in view of Pickerd

• Prior Art Relied Upon: Hansen (Patent 4,802,098), Pickerd (Patent 6,681,191).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that claim 2 adds a "trigger system" to the instrument of claim 1. While Hansen does not expressly disclose a trigger, Pickerd teaches a frequency domain analysis system with trigger circuitry that generates a pulse to initiate the acquisition of a waveform record. This allows acquisition to start reproducibly from a specific reference position, such as a zero-crossing event.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Pickerd's conventional trigger system with Hansen's oscilloscope because including a trigger was a standard and commercially necessary feature for oscilloscopes at the time. This modification would provide the predictable advantage of enabling accurate, gated acquisitions based on events in either the time or frequency domain channel.
  • Expectation of Success: A POSITA would have a high expectation of success in integrating the well-understood trigger circuitry of Pickerd into the signal processing architecture of Hansen, as it was a routine design choice.

Ground 3: Obviousness of Claims 6, 7, and 9 over Hansen in view of Witte

• Prior Art Relied Upon: Hansen (Patent 4,802,098), Witte ("Spectrum & Network Measurements," a textbook).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claim 6 (adding an "input port"), claim 7 (contemporaneous processing), and claim 9 (a "housing"). Petitioner argued that to the extent Hansen lacks an explicit disclosure of an input port or housing, the Witte textbook shows these are fundamental, conventional components of any test and measurement instrument. Hansen's architecture inherently discloses contemporaneous processing through its shared initial signal path.
  • Motivation to Combine: A POSITA would combine Hansen's oscilloscope with the basic teachings of Witte as a matter of standard design. It would have been obvious to include an input port to receive a signal for analysis and to place the instrument's components within a housing for protection, portability, and user access to controls. These additions represent the application of known solutions to achieve predictable results.
  • Expectation of Success: Integrating a standard input port and encapsulating an instrument in a housing are elementary design steps for which a POSITA would have an absolute expectation of success.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 14 and 15 are obvious over Hansen in view of Nara 451 (EP Application Publication No. 2 096 451), and alternative obviousness grounds based on Hansen alone for claims 3, 6, and 7.

4. Key Claim Construction Positions

• "channel": Petitioner proposed construing "channel" as "a set of path(s) for signals" under the Broadest Reasonable Interpretation (BRI). This construction is broad enough to permit channels to share common circuitry, which Petitioner argued is consistent with the ’719 patent’s specification and necessary to map Hansen's architecture, where the time and frequency paths share initial processing components before bifurcating.
• "time align": Petitioner proposed construing this term as "substantially synchronized in time." This interpretation allows for alignment based on a common time origin or system clock, which Petitioner argued is disclosed in Hansen where both time and frequency domain displays are generated from the same set of data stored in acquisition memory.
• "input port": Petitioner proposed a broad construction encompassing any "connector of a test and measurement instrument" that can receive an input signal. This construction would cover not only external connectors but also internal ports, such as the output of an acquisition memory that serves as the input to downstream processing channels.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial for redundancy by asserting that its grounds are legally and factually distinct. It contended that the §102 anticipation ground is distinct from the §103 obviousness grounds. Furthermore, certain obviousness grounds rely on the proposed BRI constructions of key terms, while others would satisfy narrower constructions, thereby providing the Board with alternative bases for finding unpatentability pending a final construction of the claims.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-10 and 12-15 of the ’719 patent as unpatentable.