• Termax Company v. Illinois Tool Works Inc.Institution denied
  PTAB · May 12, 2022 · IPR2022-00106 · APJ Rae Lynn P Guest · IPR · Institution

  The Board denied institution on the sole design claim because Petitioner did not show a reasonable likelihood of prevailing on anticipation by Scroggie or obviousness over Scroggie, Scroggie and Benedetti, or Benedetti and Scroggie.

  RulingsInstitution decision

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

    “Scroggie is based entirely on the premise that we cannot consider the appearance of the lower platform. See Pet. 32 (“Factoring out unclaimed features and the functional aspects of the lower platform, a side-by-side comparison of the remaining aspects of the claimed design . . . illustrates the D’826 design is identical in all material respects to Scroggie and is anticipated . . . .”). Indeed, on the record before us, Petitioner does not address the design as a whole, to the extent that it includes the appearance of the lower platform, in order to show that an ordinary observer, giving such attention as a purchaser usually gives, would deem the design depicted in Scroggie to have the same overall visual appearance as that claimed in the ’826 patent. Rather, Petitioner asserts that “there are no differences between Scroggie and the claimed design.” Pet. 41. Indeed, on the record before us, we agree with Patent Owner that the lower platform is significant to the overall appearance of the fastener design, and thus Petitioner’s analysis is not sufficient on this record. Because we disagree with Petitioner’s premise that the lower platform’s appearance is primarily dictated by function, Petitioner has not established a reasonable likelihood of prevailing as to this ground.” slip op. at 22

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “platform is not visible “at all times during the fastener’s normal use,” but is “hidden from view.” Pet. 24. Again, the use of the fastener is not limited to use with a seal for a vehicle. Petitioner provides no evidence of manufacturing techniques, sales, advertising, or installation, to support the contention that “[f]rom manufacture, sale and installation, the lower platform is enshrouded by the perimeter seal.” Id. at 25 (citing Ex. 1005 ¶ 65). And, although Petitioner relies on Mr. Wheelock’s testimony, that testimony is unsupported on the record before us. See Ex. 1005 ¶ 65 (failing to identify any support for his opinion). Accordingly, we give Mr. Wheelock’s testimony on this point little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Additionally, as noted above, we are not persuaded that a seal is a necessary component for a general fastener, and, thus, we are not persuaded that fasteners are not manufactured or sold without seals attached. Moreover, we agree with Patent Owner that such a position is not supported by case law.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a person having at least a Bachelor’s degree in Mechanical Engineering and at least three years of experience in push-in fastener engineering, and specifically sealing fasteners, as used in the assembly of vehicle trims.” Pet. 9–10 (citing Ex. 1005 ¶ 37). Patent Owner argues that the Petitioner’s definition leaves out a key detail “that the person actually has to be a ‘designer’” and “incorrectly alleges that the person at issue need only be someone with ‘experience’ with push-in fastener ‘engineering,’ without any experience whatsoever in designing them.” Prelim. Resp. 11–12. However, Patent Owner also asserts that an ordinary designer is “[a] person having an engineering degree and at least three years of experience in designing fasteners with designs similar to the ‘D826 patent, or comparable qualifications acquired through work experience.” Id. at 12 (bold emphasis added). Because Patent Owner’s definition includes qualifications acquired through “work experience” broadly, we think the parties’ definitions are quite close. In particular, neither definition strictly requires three years of design experience in fasteners; rather, each includes comparable qualifications through other work experiences in fastener technology. Accordingly, the result is not impacted based on whether we rely on Petitioner’s definition or Patent Owner’s definition of the skilled artisan. Further, based on the limited record before us, we note that the level of ordinary skill is reflected in the prior art designs of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “In construing the design claim, if the particular appearance of a design aspect is dictated by its function, the functional element’s appearance cannot significantly contribute to an ornamental design because it would necessarily have the same appearance in any other device where it serves the same function. Sport Dimension, 820 F.3d at 1321 (“[T]he fact finder should not focus on the particular designs of these elements when determining infringement, but rather focus on what these elements contribute to the design’s overall ornamentation.”). Accordingly, if a feature is shown in the prior art as a whole having a variety of appearances and yet serves the same function, the appearance is likely not critical to its function, or that feature would have looked identical in each device’s design. See Best Lock, 94 F.3d at 1566 (“A design is not dictated solely by its function when alternative designs for the article of manufacture are available.”); L.A. Gear, 988 F.2d at 1123 (“When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.”). Thus, to determine what visual aspects of a design are primarily functional, any analysis must consider how that feature appears throughout the prior art and whether and what aspects of that feature appear consistently.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousness
• Hulu, LLC v. Divx, LLCInstitution denied
  PTAB · Mar 15, 2022 · IPR2021-01418 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable; each ground relied on file-relative Candelore-II pointers disclaimed during prosecution.

  RulingsInstitution decision

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

    “presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has not established a reasonable 1 This Petition is Petitioner’s first petition challenging claims 1, 2, 4, 7, 8, 10, and 13–16 of the ’443 patent. As noted below, Petitioner also filed a second petition challenging the same claims of the ’443 patent in IPR2021- 01419. Petitioner filed a Ranking and Explanation of Material Differences Between Petitions (Paper 3), where Petitioner discusses the two petitions. Because of the determination we reach on the merits, we do not address the parties’ arguments as to whether two petitions are necessary. likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review of the Challenged Claims.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “based on Candelore-II, the applicants raised two primary arguments. First, the applicants argued that Candelore-II “does not . . . appear to disclose partial encryption of encoded frames of video by encrypting at least one block of data within the partially encrypted frame so that only a portion of the encoded frame is encrypted.” Ex. 1003, 250. Second, and importantly, the applicants argued that Candelore-II’s failure to disclose partial encryption of encoded frames of video “is highlighted by the Candelore patent’s failure to disclose DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame as recited in claim 1.” Id. at 251 (first emphasis added). Critically, the very next sentence begins with the word instead, and states, “[i]nstead, the Candelore patent discloses pointers that point to the location of encrypted portions of the video data relative to the file.” Id. (emphases added). These two sentences from the applicants’ argument directly contrast the recited “offset value” language with Candelore-II’s disclosure. Specifically, the applicants sought to distinguish Candelore-II because its pointers are relative to the file. We find that by contrasting Candelore-II’s pointers, the applicants “ma[d]e clear that the invention does not include a particular feature”— pointers that are relative to the file. GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). And, we also find that the applicants’ arguments constitute a “clear and unmistakable disclaimer” of an offset value that points to the start of an encrypted block within an encoded frame, where the offset value is relative to the file. Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir. 2012). Although we agree with Petitioner that the applicants “never raised a distinction between offset values ‘relative to a file’ and offset values ‘relative to a frame’ at any point during prosecution,” we do not agree with Petitioner that the applicants “never said that offset values relative to a file are excluded from the scope of the claim.” Prelim. Reply 10. Rather, we find no other way to interpret the applicants’ arguments. As noted above, the applicants specifically stated that Candelore-II fails to disclose “DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame’” and then stated that “[i]nstead,” Candelore-II “discloses pointers that point to the location of encrypted portions of the video data relative to the file.” The applicants’ argument specifically identifies the claim language at issue here and specifically says that it is not disclosed because Candelore-II discloses something else instead.11 Accordingly, for these reasons, we find that the applicants disclaimed “pointers that point to the location of encrypted portions of the video data relative to the file.”” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “regarding the meaning of “an offset value that points to the start of an encrypted block within an encoded frame,” we determine that the applicants disclaimed an offset value that is relative to the file. See supra § II.A.2. On the present record, we find Patent Owner’s argument and evidence persuasive regarding Candelore-II’s disclosure. In particular, Patent Owner identifies the teachings of Candelore-II directed to its pointers, and Candelore-II’s description and Figure 3 support Patent Owner’s argument that Candelore-II’s pointers are relative to the file. See, e.g., Prelim. Resp. 33 (citing Ex. 1006 ¶ 31, Fig. 3). Additionally, Petitioner does not contest Patent Owner’s position that Candelore-II teaches pointers that are relative to the file. See generally Pet.; Prelim. Reply. Further, as applied to the combination, Petitioner does not propose modifying Candelore-II’s pointers such that they are not relative to the file. See, e.g., Pet. 22–27 (discussing motivation and reasonable expectation of success), 30–40 (discussing, inter alia, limitations [1f], [1h], [1i], and [1j]). Accordingly, because Petitioner relies on the same teaching of Candelore-II that was disclaimed from the scope of the claims during prosecution of the ’443 patent, Petitioner has not shown sufficiently on the present record that the combination of Toma, Candelore-I, and Candelore-II teaches or suggests the subject matter of limitation [1j] and, hence, claim 1.” slip op. at 42

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,257,443
• Hulu, LLC v. Divx, LLCInstitution denied
  PTAB · Mar 15, 2022 · IPR2021-01419 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 7, 8, 10, and 13–16 were unpatentable over either asserted obviousness ground.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has not established a reasonable 1 This Petition is Petitioner’s second petition challenging claims 1, 2, 4, 7, 8, 10, and 13–16 of the ’443 patent. As noted below, Petitioner also filed a petition challenging the same claims of the ’443 patent in IPR2021-01418. Petitioner filed a Ranking and Explanation of Material Differences Between Petitions (Paper 3), where Petitioner discusses the two petitions. Because of the determination we reach on the merits, we do not address the parties’ arguments as to whether two petitions are necessary. likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review of the Challenged Claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Bajaj, however, testifies that he disagrees with Dr. Storer’s definition of the level of ordinary skill because the definition “exceeds the qualifications of a person of ordinary skill in the art.” Ex. 2002 ¶ 25. Nonetheless, Dr. Bajaj does not propose a specific level of ordinary skill in the art and states that, for purposes of his declaration, he applies Dr. Storer’s definition of the level of ordinary skill in the art. Id. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’443 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt and apply Petitioner’s position as to the level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “prosecution history sheds substantial light on how the applicants understood the disputed claim language. As set forth above, in response to rejections based on Candelore-II, the applicants raised two primary arguments. First, the applicants argued that Candelore-II “does not . . . appear to disclose partial encryption of encoded frames of video by encrypting at least one block of data within the partially encrypted frame so that only a portion of the encoded frame is encrypted.” Ex. 1103, 250. Second, and importantly, the applicants argued that Candelore-II’s failure to disclose partial encryption of encoded frames of video “is highlighted by the Candelore patent’s failure to disclose DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame as recited in claim 1.” Id. at 251 (first emphasis added). Critically, the very next sentence begins with the word instead, and states, “[i]nstead, the Candelore patent discloses pointers that point to the location of encrypted portions of the video data relative to the file.” Id. (emphases added). These two sentences from the applicants’ argument directly contrast the recited “offset value” language with Candelore-II’s disclosure. Specifically, the applicants sought to distinguish Candelore-II because its pointers are relative to the file. We find that by contrasting Candelore-II’s pointers, the applicants “ma[d]e clear that the invention does not include a particular feature”— pointers that are relative to the file. GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). And, we also find that the applicants’ arguments constitute a “clear and unmistakable disclaimer” of an offset value that points to the start of an encrypted block within an encoded frame, where the offset value is relative to the file. Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir. 2012). Although we agree with Petitioner that the applicants “never raised a distinction between offset values ‘relative to a file’ and offset values ‘relative to a frame’ at any point during prosecution,” we do not agree with Petitioner that the applicants “never said that offset values relative to a file are excluded from the scope of the claim.” Prelim. Reply 10. Rather, we find no other way to interpret the applicants’ arguments. As noted above, the applicants specifically stated that Candelore-II fails to disclose “DRM information including ‘an offset value that points to the start of an encrypted block within an encoded frame’” and then stated that “[i]nstead,” Candelore-II “discloses pointers that point to the location of encrypted portions of the video data relative to the file.” The applicants’ argument specifically identifies the claim language at issue here and specifically says that it is not disclosed because Candelore-II discloses something else instead.11 Accordingly, for these reasons, we find that the applicants disclaimed “pointers that point to the location of encrypted portions of the video data relative to the file.”” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “regarding the meaning of “an offset value that points to the start of an encrypted block within an encoded frame,” we determine that the applicants disclaimed an offset value that is relative to the file. See supra § II.A.2. On the present record, we find Patent Owner’s argument and evidence persuasive regarding Candelore-II’s disclosure. In particular, Patent Owner identifies the teachings of Candelore-II directed to its pointers, and Candelore-II’s description and Figure 3 support Patent Owner’s argument that Candelore-II’s pointers are relative to the file. See, e.g., Prelim. Resp. 42 (citing Ex. 1106 ¶ 31, Fig. 3). Additionally, Petitioner does not contest Patent Owner’s position that Candelore-II teaches pointers that are relative to the file. See generally Pet.; Prelim. Reply. Further, as applied to the combination, Petitioner does not propose modifying Candelore-II’s pointers such that they are not relative to the file. See, e.g., Pet. 30–36 (discussing motivation and reasonable expectation of success), 41–53 (discussing, inter alia, limitations [1f], [1h], [1i], and [1j]). Accordingly, because Petitioner relies on the same teaching of Candelore-II that was disclaimed from the scope of the claims during prosecution of the ’443 patent, Petitioner has not shown sufficiently on the present record that the combination of Notoya, Matsui, Candelore-I, and Candelore-II teaches or suggests the subject matter of limitation [1j] and, hence, claim 1. d. Independent Claim 7 and Dependent Claims 2, 4, 8, 10, 14, and 16 As noted above, limitation [7j] of independent claim 7 recites the same “offset value” language as limitation [1j] and Petitioner relies on its arguments and evidence directed to limitation [1j] in its discussion of limitation [7j]. See Pet. 72–73 (limitation [7j]). For the same reasons discussed above, we find that the same deficiency regarding claim 1 applies equally to claim 7 and the claims that depend from claim 1 or claim 7— claims 2, 4, 8, 10, 14, and 16. Accordingly, because Petitioner relies on the same teaching of Candelore-II that was disclaimed from the scope of the claims during prosecution, Petitioner has not shown sufficiently on the present record that the combination of Notoya, Matsui, Candelore-I, and Candelore-II teaches or suggests the subject matter of limitation [7j] and, via their dependency from claim 1 or claim 7, the subject matter of dependent claims 2, 4, 8, 10, 14, and 16.” slip op. at 44

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,257,443
• SAP SE v. Teradata US, Inc.Institution denied
  PTAB · Dec 1, 2021 · IPR2021-01017 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, failing to show the claimed file management context in non-persistent memory.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’419 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “that a person of ordinary skill in the art at the time of the invention “would have possessed at least a Bachelor’s degree in computer science with at least two years of experience with database system development.” Pet. 14 (citing Ex. 1006 ¶¶ 21–22). Petitioner further contends that a person of ordinary skill in the art could have had “some combination of (1) more formal education and less technical experience, or (2) less formal education and more technical or professional experience.” Id. (citing Ex. 1006 ¶¶ 21–22). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound, we adopt Petitioner’s assessment of the level of ordinary skill in the art because it is consistent with the ’419 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “Petitioner contends that no claim terms require explicit construction at this stage of the proceeding. Pet. 16. Patent Owner contends that in related district court litigation, Petitioner has proposed construing several terms in accordance with pre-AIA 35 U.S.C. § 112 ¶ 6, and Patent Owner faults Petitioner for not applying those constructions in the Petition. Prelim. Resp. 7–8. Based on the record before us, we need not construe any claim terms expressly to decide the issues presented at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “does not show sufficiently that the combination of System R and Lorie teaches a “file management context” stored in “non-persistent memory.” See Prelim. Resp. 16–22. As an initial matter, Petitioner asserts that the “Current Page Table and associated data structures such as free-space bit maps” comprise the claimed “file management context” in “non-persistent memory,” but Petitioner does not cite any passage in System R disclosing that the current page table (or any associated data structure) resides “in memory” rather than “on disk,” as shown in Petitioner’s annotated version of System R’s Figure 7. See Pet. 28–35. Nor does Petitioner point to any disclosure in Lorie in support of its contention that the current page table in the System R database system is stored in non-persistent memory. See id.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,904,419
• Autostore System Inc. v. Ocado Innovation LimitedInstitution denied
  PTAB · Oct 8, 2021 · IPR2021-00798 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “storage locations, but that this grid is defined by a structural framework. Ex. 1001, 14:5–6. Thus, we agree with Patent Owner that the language of claims 1 and 23 strongly suggests that the structural framework defines the grid of storage locations, and not merely that the structural framework provides open areas within which storage containers could be arranged in a grid-like pattern.” slip op. at 9

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

    “After considering the parties’ arguments and evidence, for the reasons set forth below, we are not persuaded that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “As discussed in Section II.A.2 above, we construe “a structural framework defining a grid of storage locations,” as recited in claims 1 and 23, to require that a “structural framework” define the grid of storage locations, as opposed to these locations being defined merely by the orientation or location of stacked containers. Petitioner identifies no Accordingly, we are not persuaded that Petitioner demonstrates a reasonable likelihood that independent claims 1 and 23 are anticipated by Lert.” slip op. at 15

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

    “would have been obvious over Lert. Pet. 21–53. Petitioner’s obviousness arguments with respect to these claims do not resolve the issues noted above with respect to independent claims 1, 13, and 23. In particular, Petitioner provides no persuasive argument that one of ordinary skill in the art would have modified Lert to have a structural framework that defines the storage locations or to have delivery containers stored within storage containers and delivered to picking workstations. Accordingly, Petitioner has not shown a reasonable likelihood that claims 1–8, 13–20, and 23 would have been obvious over the disclosures of Lert.” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,796,080
• Facebook, Inc. v. Thaddeus GabaraInstitution denied
  PTAB · May 25, 2021 · IPR2021-00201 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable; the cited combinations did not teach or suggest a stationary map.

  RulingsInstitution decision

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

    “presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’698 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “through 14, Petitioner has not shown sufficiently7 that the map shown Figure 13b is stationary, as recited in claim 1. Petitioner does not rely upon Roussos as teaching the “stationary map” recited in claim 1 or assert that one of ordinary skill in the art would have modified Kim in light of Roussos to satisfy this claim limitation. See, e.g., Pet. 27–30 (relying upon Kim); see also id. at 26 (discussing the proposed combination as including Roussos’s coordinate system). Accordingly, Petitioner has not shown sufficiently that the combination of Kim and Roussos teaches or suggests a stationary map as recited in claim 1.” slip op. at 23

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

    “Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). At this stage of the proceeding, the parties agree that the claim terms should be given their plain and ordinary meaning. Pet. 13; Prelim. Resp. 28. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,836,698
• Facebook, Inc. v. Thaddeus GabaraInstitution denied
  PTAB · May 25, 2021 · IPR2021-00200 · APJ Frederick C Laney · IPR · Institution

  Institution was denied on all challenged claims because the petition did not show that Kim, alone or in combination, disclosed or suggested the required stationary map.

  RulingsInstitution decision

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

    “For the following reasons, we find Patent Owner’s assertions have merit because Petitioner has not carried its burden of showing Kim discloses or suggests a background image of a stationary map, which is a necessary limitation in each of the challenged independent claims. Because this deficiency is dispositive and leads us to the conclusion that the Petition fails to demonstrate a reasonable likelihood Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’545 patent, our discussion below focuses on Petitioner’s contentions regarding Kim’s disclosure of a stationary map.” slip op. at 12

  • Other 314aNot reached

    “V. 35 U.S.C. § 314(a) Patent Owner contends that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a). Prelim. Resp. 3–12. Petitioner opposes Patent Owner’s argument. See Paper 12 (Decision Denying Petitioner’s Request to File Preliminary Replies to Patent Owner’s Preliminary Responses), 3 (noting that Petitioner requested authorization to file a preliminary reply to respond to Patent Owner’s argument regarding discretionary denial under § 314(a)). Because we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’545 patent is unpatentable, we need not reach the issue of discretionary denial pursuant to § 314(a).” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’545 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNot reached

    “Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). At this stage of the proceeding, the parties agree that the claim terms should be given their plain and ordinary meaning. Pet. 15; Prelim. Resp. 28. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,620,545
• Platform Science, Inc. v. Omnitracs, LLCInstitution denied
  PTAB · Apr 13, 2021 · IPR2020-01613 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–3 and 5–15 unpatentable over Milewski, or claims 1–3, 7–9, and 12 obvious over Milewski and Heijden.

  RulingsInstitution decision

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

    “analysis. Petitioner maps the action message shown in Milewski’s Figure 4 to the recited “formatted message” (see, e.g., Pet. 32 (“Figure 4 shows an exemplary screen display of an action message (the ‘formatted message’) presented to the recipient at the receiver communication station.”)), while also mapping Figure 4 to the recited “response message” (see, e.g., id. at 37 (identifying Figure 4 as the “completed reply form (response message)”)). Milewski describes Figure 4 as both the action message and reply form. Compare Ex. 1007, 7:38–39 (“FIG. 4 is a screen of the action message 400 displayed by the controller at the recipient’s station.” (emphasis added)), with id. at 9:11–15 (“In an operation 803, the controller renders the action message body in a reply form shown in FIG. 4 to the recipient using standard World Wide Web protocols and processes (HyperText Transaction Protocols-HTTP; HyperText Mark Up Language-HTML).” (emphasis added)). Milewski appears to explain the basis for its terminology by stating that “[t]hroughout the description, structured responses may also be classified as an ‘action message’ as more descriptive of the reply sought by a sender.” See id. at 5:56–59. The problem Patent Owner identifies with Petitioner’s analysis, however, is that Petitioner fails to explain where Milewski indicates copying information from the action message to the reply form when the action message and reply form appear to be the same. In support of its argument regarding copying, Petitioner cites to column 7, lines 44 through 52, of Milewski. That section states the following: Upon marking the selected response, the recipient completes the response to the action message. In the present instance, the recipient has marked the “other” response and provides text in a field 408 as a response to the text in field 402. A field 410 is available for additional comments which the sender authorized to be entered by checking the field 212 in template 200. In this case, the recipient has chosen not to provide any additional comments. Ex. 1007, 7:44–52. We find that there is nothing in this section that expressly supports Petitioner’s contention that information is copied from the action message to the reply form, especially in light of Milewski’s indication that the action message is the reply form. Furthermore, Petitioner fails to explain sufficiently why a skilled artisan would view this passage as describing the alleged copying.” slip op. at 29

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached

    “The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6. Petitioner contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 3–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner, supported by Mr. Andrews’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had at least a Bachelor of Science degree (or equivalent) in electrical engineering, computer engineering, computer science, or a related technical field, and at least 2–3 years of experience in the fields of messaging systems, and wireless communication devices, or an equivalent advanced education in the field of messaging systems, including wireless communication devices. Pet. 12 (citing Ex. 1003 ¶ 28). Patent Owner “does not dispute Petitioner’s offered level of ordinary skill in the art” for purposes of this proceeding. Prelim. Resp. 8. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12

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

    “analysis. Petitioner maps the action message shown in Milewski’s Figure 4 to the recited “formatted message” (see, e.g., Pet. 32 (“Figure 4 shows an exemplary screen display of an action message (the ‘formatted message’) presented to the recipient at the receiver communication station.”)), while also mapping Figure 4 to the recited “response message” (see, e.g., id. at 37 (identifying Figure 4 as the “completed reply form (response message)”)). Milewski describes Figure 4 as both the action message and reply form. Compare Ex. 1007, 7:38–39 (“FIG. 4 is a screen of the action message 400 displayed by the controller at the recipient’s station.” (emphasis added)), with id. at 9:11–15 (“In an operation 803, the controller renders the action message body in a reply form shown in FIG. 4 to the recipient using standard World Wide Web protocols and processes (HyperText Transaction Protocols-HTTP; HyperText Mark Up Language-HTML).” (emphasis added)). Milewski appears to explain the basis for its terminology by stating that “[t]hroughout the description, structured responses may also be classified as an ‘action message’ as more descriptive of the reply sought by a sender.” See id. at 5:56–59. The problem Patent Owner identifies with Petitioner’s analysis, however, is that Petitioner fails to explain where Milewski indicates copying information from the action message to the reply form when the action message and reply form appear to be the same. In support of its argument regarding copying, Petitioner cites to column 7, lines 44 through 52, of Milewski. That section states the following: Upon marking the selected response, the recipient completes the response to the action message. In the present instance, the recipient has marked the “other” response and provides text in a field 408 as a response to the text in field 402. A field 410 is available for additional comments which the sender authorized to be entered by checking the field 212 in template 200. In this case, the recipient has chosen not to provide any additional comments. Ex. 1007, 7:44–52. We find that there is nothing in this section that expressly supports Petitioner’s contention that information is copied from the action message to the reply form, especially in light of Milewski’s indication that the action message is the reply form. Furthermore, Petitioner fails to explain sufficiently why a skilled artisan would view this passage as describing the alleged copying.” slip op. at 29

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Platform Science, Inc. v. Omnitracs, LLCInstitution denied
  PTAB · Apr 13, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Coffee, alone or with Heijden, rendered any challenged claim unpatentable.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’308 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached

    “The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6. Petitioner contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 14

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner “does not dispute Petitioner’s offered level of ordinary skill in the art” for purposes of this proceeding. Prelim. Resp. 8. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 13

  • BurdenNot shown unpatentable

    “analysis. Even if we assume that Coffee discloses and/or renders obvious “field-mapping information for indicating information to be copied from said formatted message to a response message,”7 Petitioner has not shown that it is “based on which one of said pre-defined formatted messages was received.” Rather, whatever information Coffee may copy appears to be the same from each formatted message (as shown in Petitioner’s comparison of 7 For purposes of this Decision, we need not decide whether Coffee in fact discloses or renders obvious this recitation of claim 1. Coffee’s Tables 58 and 63) and not based on which pre-defined formatted message was received.8 Additionally, Petitioner’s alternative arguments as to whether Coffee discloses (explicitly or inherently) and/or renders obvious field-mapping information that is stored on the MDT do not address the specific deficiency identified above and do not provide an alternative basis for finding that Coffee discloses and/or renders obvious field-mapping information for indicating information to be copied from said formatted message to a response message based on which one of said pre-defined formatted messages was received. See Pet. 33–35 (discussing explicit, inherent, and obvious alternatives). Accordingly, based on the record before us, Petitioner has not shown sufficiently that Coffee discloses and/or renders obvious limitation 1d.” slip op. at 29

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Google LLC v. Ipa Technologies Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00736 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the asserted combinations taught the claimed conversational protocol.

  RulingsInstitution decision

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

    “information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’128 patent is unpatentable. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • BurdenDenied

    “event types” as recited in claim 1. See Pet. 12–13. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. Petitioner’s evidence and argument fails to persuasively and adequately explain how the speech acts or performatives as described in Nodine are the events recited in the challenged claims. Although both Finin and Bayardo define and disclose performatives (Ex. 1016, 297; Ex. 1017, 197), Petitioner does not discuss these disclosures or explain sufficiently how the speech acts/performatives in Nodine, Finin, and Bayardo alone or combination teach the “layer of conversational protocol defined by event types and parameter lists associated with one or more events, and wherein the parameter lists further refine the one or more events” limitation of claim 22 and 45. Petitioner asserts that “Nodine in combination with Steiner and Finin discloses or suggests this limitation” of claim 45 (Pet. 49), but Petitioner does not identify adequately any reliance on Steiner for this limitation (id. at 28–33, 49). slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “in the art at the time of the invention of the ’128 patent would have had at least a Bachelor’s degree in computer science, electrical engineering, or a similar discipline, and one to two years of work experience in networked computer systems or a related area. Ex. 1002 ¶ 14; Pet. 4. At this stage of the proceeding, Patent Owner does not dispute Dr. Olsen’s assessment of the level of ordinary skill in the art. Prelim. Resp. 6.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 12–13. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,036,128

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.