• Google LLC v. Uniloc Luxembourg S.A.Institution denied
  PTAB · Mar 29, 2018 · IPR2017-02067 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution: it declined review of claims 1–12, 14–17, 25, and 26 under §§ 315(d) and 325(d), and found no reasonable likelihood for claims 13, 18–24, and 27.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly. Moreover, the time of filing of this Petition leads us to conclude that Petitioner gained the benefit of Patent Owner’s preliminary responses in the previous IPRs. Patent Owner filed those responses on September 9, 2017. Three days later Petitioner filed the instant petition. Petitioner, as the party with the knowledge of this fact, failed to allege that it did not gain the benefit of the preliminary responses in previous IPRs. We look to Petitioner to explain its delay in its filing. Petitioner provides no reason here. Finally, although not a dispositive fact, we note that in the previous IPRs, Patent Owner requested authorization to file a motion to amend challenged claims of the ’433 patent. This fact raises concerns regarding the complexity and potential for inconsistency inherent in allowing this proceeding to occur in tandem with ongoing trials that arise in large part from the considerable role Zydney plays each proceeding. Further, we are concerned not only with ensuring consistency across multiple trials focused on Zydney, but also with administrative efficiency because significant resources of the Board would be consumed reconciling arguments, issues, and evidence across multiple, independent trials,3 especially in light of the forthcoming motion to amend in the previous IPRs. Cf. Heckler v. Chaney, 470 U.S. 821, 831 (1985) (indicating an agency, when deciding whether to take action in a particular matter, must determine whether its resources are best spent on one matter or another).” slip op. at 9

  • Other 314aInstitution denied discretionary otherDenied

    “authority, under 37 C.F.R. § 42.122, to issue “any appropriate order regarding the additional matter[, i.e., this proceeding,] including providing for the stay, transfer, consolidation, or termination or any such matter.” See 35 U.S.C. § 315(d). We recognize that in exercising our discretion we determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in a manner consistent with securing the just, speedy, and inexpensive resolution of the proceeding (37 C.F.R. § 42.1(b)). Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly.” slip op. at 9

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

    “likelihood of prevailing with regard to its contention that claim 13 is anticipated by Zydney. In particular, we find that Petitioner has failed to show that Zydney’s software agent “displays a selectable control for generating an instant voice message using an intercom mode.” This is an anticipation challenge, which requires that the art disclose each and every limitation of the claim, in the same arrangement as claimed. Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,995,433

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