• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc.Institution denied
  PTAB · Mar 21, 2023 · IPR2022-01453 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show that Mayadas and Katiyar taught or suggested claim 24’s requirement that tags and records determine a visitor previously visited the first site.

  RulingsInstitution decision

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

    “5. Conclusion In sum, after considering the arguments presented in the Petition and Patent Owner’s Preliminary Response, we determine that, for the reasons given, Petitioner has failed to demonstrate sufficiently that Mayadas and Katiyar teach or suggest independent claim 24. Therefore, Petitioner has not demonstrated a reasonable likelihood of prevailing on this challenge to claim 24 nor its dependent claims 29, 31–33, 40, 44.” slip op. at 21

  • Skill levelSkill level petitioner adoptedOther

    “According to Petitioner, a person of ordinary skill in the pertinent art “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 7 (citing Menascé Decl. ¶¶ 30–34). Petitioner adds that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not provide a description of the person of ordinary skill. For this decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as consistent with the prior art before us in this proceeding. C. Claim Construction” slip op. at 7

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

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner states that “[f]or the purposes of this Petition, the challenged claims are interpreted according to their plain and ordinary meaning.” Pet. 8. Patent Owner contends that Petitioner has argued for construction of multiple terms of the ’639 patent in parallel district court litigation, and that Petitioner “does not explain how [Petitioner’s] theories in this IPR are consistent with its district court arguments for how these terms should be construed.” Prelim. Resp. 9. “However, at this stage and solely for the purposes of this Preliminary Response, Patent Owner does not contend any terms of the challenged claims require express construction.” Id. at 9. “Patent Owner reserves its right to identify terms requiring construction in the event this IPR is instituted.” Id. We determine that no claim terms are in controversy. Therefore, no other claim term needs to be construed at this stage. See Vivid Techs., Inc., 200 F.3d at 803. D. Description of the Prior Art References” slip op. at 7

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

    “We agree with Patent Owner’s explanation that in Mayadas, these user profiles can be created in two ways: (1) by visiting Mayadas’s system website (which Petitioner identifies as the “first website” in the claims) or (2) by visiting a different website operated by a data aggregator. Prelim. Resp. 12–13; see also Section III.D.1, supra. Patent Owner reasons that “because identical profile information can be generated by any number of data aggregator websites, the collected profile information disclosed by Mayadas cannot be used to distinguish between different sites the user may have visited to provide the profile information.” Id. at 14–15. We agree with this analysis and conclude that Mayadas’s profile information cannot be used to determine, “using the tags and electronic records” identified by Patent Owner, that a user visited the “first website,” i.e., Mayadas’s system website. As Patent Owner points out, the cookies mentioned in Mayadas are used to determine whether a user visiting a website is registered and has a profile. Ex. 1006 ¶ 35. As noted, a user profile can also result from visiting any number of aggregator sites. Thus, in contrast to the ’639 patent, the cookie does not signify that the user has visited the “first” website, only that the user is registered and a profile is available in the central repository. Prelim. Resp. 15–16. Thus, we agree with Patent Owner that Mayadas does not teach or suggest “computer-determining, using the tags and said electronic records, that such visitor computers have visited the first Internet site.” Id. at 12–17. Similarly, and for the same reasons we find the Mayadas does not teach or suggest delivering advertising “as a consequence” of that determination, as the claim requires. Id. at 17–19.” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,822,639
• Meta Platforms, Inc. v. Almondnet, Inc.Institution denied
  PTAB · Mar 2, 2023 · IPR2022-01480 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because Roth and its combinations did not show a reasonable likelihood of establishing the challenged claims’ obviousness.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

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

    “We agree with Patent Owner’s argument that Petitioner has failed to demonstrate that Roth teaches or suggests the claimed “third-party server computer” under our claim construction. In discussing claim construction, we concluded that there is a distinction in the challenged claims between the system performing the claimed process and the “third-party server computer” that is authorized to cause display of the advertisement in claim 1. See supra Section III.C. We concluded from the language of the claims and the prosecution history that the “third-party server computer” cannot be part of the recited “system comprised of one or more computers.” Id. We are persuaded that the Petition fails to establish that Roth’s web server system (identified by Petitioner as the “third-party server computer”) is distinct from the claimed “system comprised of one or more computers,” as is required by our construction. As discussed supra, in discussing the preamble the Petition identifies web server 310 and view server 320 (part of the alleged “third-party server computer”) as part of the “system comprised of one or more computers.” See Pet. 19. As Patent Owner points out, this is not an “isolated or accidental” oversight on the part of Petitioner. Prelim. Resp. 11. In Petitioner’s analysis of claim element 1(b), Petitioner contends that “[t]he HUD [historic user] data is thus ‘received by the computer system,’ i.e., by the system which includes view server 320.” Pet. 34 (emphasis and highlighting omitted) (quoted at Prelim. Resp. 12). Petitioner further argues that the web server computer system in Roth can be separate from the “other computers” in Roth, citing the first and second media properties and the bidding agents. Pet. 24. This argument also is unavailing. Our construction requires the “third-party server computer” to be separate from the “system comprised of one or more computers” recited in the preamble, which according to Petitioner includes servers 310 and 320. Id. at 19. Those computers are also part of the web server system in Roth (id. at 18) identified as the “third-party server computer” (id. at 20), and therefore, the web server system cannot be separate from the “third-party computer system.”” slip op. at 18

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

    “We agree with Patent Owner that construction of this term is necessary and we find that the claimed “third party server computer” in claims 1, 17, and 21 and their dependent claims must be different from the “system [comprised of]/[comprising] one or more computers” recited in the preambles of claims 1 and 21 and the “tangible computer-server device” recited in the preamble of claim 17.3 As Patent Owner points out, the language of the claims compels this construction. Prelim. Resp. 6–7. The Federal Circuit reminds us that “the Supreme Court made clear that the claims are ‘of primary importance, in the effort to ascertain precisely what it is that is patented.’” Phillips, 415 F.3d at 1312 (quoting Merrill v. Yeomans, 94 U.S. 568, 570 (1876)). Claims 1 and 21 recite that the “system” described in each claim’s preamble is programmed to “automatically . . . direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition . . . for display of an advertisement.” Ex. 1001, 12:64– 3 We do not express an opinion as to whether the preambles are limiting. 13:1, 14:56–60. Claim 17 similarly recites that the “tangible computer-server device” described in the claim preamble is programmed to “automatically . . . direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition . . . for display of an advertisement.” Id. at 14:17–21. If the third-party server computer were not separate from the “system [comprising of/comprising] one or more computers” or “tangible computer-server device,” the system or device would be directing indicia to itself. This is not a reasonable construction. “[T]he context of the surrounding words of the claim . . . must be considered in determining the ordinary and customary meaning of those terms.” Phillips, 415 F.3d at1314 (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)).” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “IV. DISCRETIONARY DENIAL Patent Owner asserts that the Board should exercise its discretion to deny institution of inter partes review under 35 U.S.C. § 325(d). See Prelim. Resp. 13–26. Because we deny institution on the merits of Petitioner’s challenges to patentability, we need not address Patent Owner’s arguments urging denial of institution under § 325(d).” slip op. at 23

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,959,146
• Samsung Electronics Co., Ltd. / Microsoft Corporation v. Almondnet, Inc.Institution denied
  PTAB · Feb 7, 2023 · IPR2022-01260 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on either obviousness ground.

  RulingsInstitution decision

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

    “D. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations).4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Secondary considerations may include long-felt but unsolved need, failure of others, unexpected results, commercial success, copying, licensing, and praise. See id. at 17–18; Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). We analyze the asserted grounds with these principles in mind.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’582 patent would have had “at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with designing, programming, configuration, and/or analysis/research with Internet or similar network-related processes including, for example, user/entity profile management and/or web-based targeted content delivery, or a related field.” Pet. 4 (citing Ex. 1002 ¶¶ 20–21). Petitioner asserts further that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not challenge this definition of the level of skill at this time. Prelim. Resp. 6. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 5

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

    “Petitioner and Patent Owner agree that for purposes of this proceeding “no claim construction is necessary.” See Pet. 5 (citing Ex. 1002 ¶ 35); Prelim. Resp. 6. At this stage of this proceeding we determine that no claim terms require express construction in order to determine whether or not to institute inter partes review because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6

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

    “system with Merriman’s ‘automatic URL redirection’ teachings fails because it is unsupported by any articulated, nonconclusory reasoning or rational underpinning.” PO Resp. 11 (citing KSR, 550 U.S. at 418). We agree with Patent Owner that Petitioner’s reasoning in support of the proposed combination lacks rational underpinning. PO. Resp. 11. Specifically, we agree that there is no motivation to add Merriman’s URL redirection to Philyaw’s system. See PO Resp. 11. We further agree with Patent Owner that Petitioner “fails to provide any evidence that a POSITA would have believed Philyaw to lack any important detail (or contain any other deficiency) with respect to user exits of websites” that would prompt a person of ordinary skill in the art to look to other references such as Merriman. PO Resp. 12. Rather, as discussed in detail below, Philyaw specifically addresses what happens when a user exits a vendor website. Ex. 1005, 26:39–44.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,244,582
• Meta Platforms, Inc. v. Almondnet, Inc.Institution denied
  PTAB · Feb 2, 2023 · IPR2022-01262 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was obvious over the asserted Roth-based grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

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

    “As Patent Owner points out, the language of the claim compels this construction. Prelim. Resp. 6–7. The Federal Circuit reminds us that “the Supreme Court made clear that the claims are ‘of primary importance, in the effort to ascertain precisely what it is that is patented.’” Phillips, 415 F.3d at 1312 (quoting Merrill v. Yeomans, 94 U.S. 568, 570 (1876)). Claim 37 recites that the “system” described in the preamble is programmed to “automatically direct[], to a third-party server computer controlling advertising space on a second media property, indicia of a condition for display of an advertisement.” Ex. 1001, 16:40–44. If the third-party server computer were not separate from the “system comprising one or more computers,” the system would be directing indicia to itself. This is not a reasonable construction. “[T]he context of the surrounding words of the claim . . . must be considered in determining the ordinary and customary meaning of those terms.” Phillips, 415 F.3d at1314 (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003)).” slip op. at 10

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

    “demonstrate that Roth teaches or suggests the claimed “third-party server computer” under our claim construction. In discussing claim construction, we concluded that there is a distinction in the challenged claims between the system performing the claimed process and the “third-party server computer” that is authorized to cause display of the advertisement. See supra, Section III.C. We concluded from the language of claim 37 and the prosecution history that the “third-party server computer” cannot be part of the “system comprising one or more computers.” Id. We are persuaded that the Petition fails to establish that Roth’s web server system (identified by Petitioner as the “third-party server computer”) is distinct from the claimed “system comprising one or more computers,” as is required by our construction. As discussed supra, in discussing the preamble the Petition identifies web server 310 and view server 320 (part of the alleged “third-party server computer”) as part of the “system comprising one or more computers.” Prelim. Resp. 10 (quoting Pet. 18). As Patent Owner points out, this is not an “isolated or accidental” oversight on the part of Petitioner. Prelim. Resp. 10. In Petitioner’s analysis of claim element 37(c), Petitioner contends that “[t]he HUD [historic user] data is thus ‘received by the system comprising one or more computers,’ i.e., by the system which includes view server 320.” Pet. 37 (emphasis and highlighting omitted) (quoted at Prelim. Resp. 10). Petitioner argues that the web server computer system in Roth can be separate from the “other computers” in Roth, citing the first and second media properties and the bidding agents. Pet. 23–24. This argument is unavailing. Our construction requires the “third-party server computer” to be separate from the “system comprising one or more computers” recited in the preamble, which according to Petitioner includes servers 310 and 320. Id. at 18. Those computers are also part of the web server system in Roth (id. at 17) identified as the “third-party server computer” (id. at 19), and therefore, the web server system cannot be separate from the “third-party computer system.” For the reasons given, we determine that Petitioner has failed to demonstrate a reasonable likelihood of prevailing on its challenge to claim 37 as obvious over Roth.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “Because we deny institution on the merits of Petitioner’s challenges to patentability, we need not address Patent Owner’s arguments urging denial of institution under § 325(d).” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,671,139
• ROKU, Inc. v. Almondnet, Inc And Intent Iq, LLCInstitution denied
  PTAB · Feb 2, 2023 · IPR2022-01236 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 13–17 or 19–26 were unpatentable over the asserted combinations.

  RulingsInstitution decision

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

    “method of targeting advertisements based on mutual information sharing between IP-addressed devices on a common network” (id. at 25, see id. at 26–27 (similar articulations of combination)). We are not persuaded the Petition sufficiently explains why one of ordinary skill in the art would look to Baum’s teaching. In particular, Petitioner has not explained sufficiently why Madhavan would require the teachings of Baum to operate in an environment using dynamically assigned IP addresses. As such, it is unclear that a person of ordinary skill in the art would apply Baum’s edge routers and techniques for determining that multiple dynamic-IP addressed devices are connected to a common LAN in order to achieve the claimed invention. “The obviousness inquiry does not merely ask whether a skilled artisan could combine the references, but instead asks whether ‘they would have been motivated to do so.’” Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020) (quoting InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Accordingly, we are not persuaded the Petition sets forth sufficient articulated reasoning with rational underpinning why a person of ordinary skill in the art would have combined the teachings of Madhavan and Baum to achieve the claimed invention, including the electronic association based on connection to a common LAN limitation, unequivocally identified in the Petition as taught by the combination of Madhavan and Baum (see Pet. 37, 40–41). We also agree with Patent Owner’s argument that “a mere assertion that references are analogous art provides no reason for the specific modification proposed by the Petition.” Prelim. Resp. 28 (emphasis omitted); see Pet. 25–26 (asserting that Madhavan and Baum are analogous art to the ’398 Patent). establish a reasonable likelihood it would prevail in showing that the subject matter of independent claim 13 is unpatentable as obvious over Madhavan and Baum. Due to the dependency of claims 14–17, 20–23, and 26 ultimately from independent claim 13, (see Ex. 1001, 24:62–25:14, 25:26–39, 25:47–50), and for the same reasons as those addressing claim 13, Petitioner does not establish a reasonable likelihood it would prevail in showing that the subject matter of dependent claims 14–17, 20–23, and 26 are unpatentable over Madhavan and Baum.” slip op. at 20

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

    “In particular, we are not persuaded that the alleged beneficial result of the combination presented in the Petition––e.g., “facilitat[ing] targeting of advertisements based on associations of device identifiers (e.g., IP addresses) in networking environments where device IP addresses are dynamically assigned and therefore subject to change” (Pet. 26, see id. at 25–27 (similar articulations of benefit)), provides sufficient articulated rationale to explain why a person of ordinary skill in the art would “apply Baum’s techniques for recognizing that particular device IP addresses connect to the Internet via a particular edge router and thereby determining method of targeting advertisements based on mutual information sharing between IP-addressed devices on a common network” (id. at 25, see id. at 26–27 (similar articulations of combination)). We are not persuaded the Petition sufficiently explains why one of ordinary skill in the art would look to Baum’s teaching. In particular, Petitioner has not explained sufficiently why Madhavan would require the teachings of Baum to operate in an environment using dynamically assigned IP addresses. As such, it is unclear that a person of ordinary skill in the art would apply Baum’s edge routers and techniques for determining that multiple dynamic-IP addressed devices are connected to a common LAN in order to achieve the claimed invention. “The obviousness inquiry does not merely ask whether a skilled artisan could combine the references, but instead asks whether ‘they would have been motivated to do so.’” Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020) (quoting InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Accordingly, we are not persuaded the Petition sets forth sufficient articulated reasoning with rational underpinning why a person of ordinary skill in the art would have combined the teachings of Madhavan and Baum to achieve the claimed invention, including the electronic association based on connection to a common LAN limitation, unequivocally identified in the Petition as taught by the combination of Madhavan and Baum (see Pet. 37, 40–41). We also agree with Patent Owner’s argument that “a mere assertion that references are analogous art provides no reason for the specific modification proposed by the Petition.” Prelim. Resp. 28 (emphasis omitted); see Pet. 25–26 (asserting that Madhavan and Baum are analogous art to the ’398 Patent).” slip op. at 19

  • PTAB / AIA Trials › Discretionary denialNot reached

    “F. Discretion under 35 U.S.C. § 314 Patent Owner argues that the Board should exercise its discretion to deny institution of inter partes review under 35 U.S.C. § 314. See Prelim. Resp. 28–42. Because we deny institution on the merits of the proposed patentability challenges to claims 13–17 and 19–26, we need not address Patent Owner’s arguments urging discretionary denial of institution.” slip op. at 22

  • Skill levelSkill level petitioner adoptedOther

    “April 2007 would have a bachelor’s or equivalent degree in electrical and/or computer engineering or a related field and 2-3 years of experience in computer and networking systems including systems for online content delivery such as targeted advertisements” and that “[a] person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard.” Pet. 8 (citing challenge Petitioner’s definition. See Prelim. Resp. 4–5. For the purpose of deciding whether to institute, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’398 Patent Specification and the asserted prior art.” slip op. at 6

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,677,398
• Meta Platforms, Inc. v. Almondnet, Inc. And Intent Iq, LLCInstitution denied
  PTAB · Oct 26, 2022 · IPR2022-00929 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Amjadi teaches or suggests the claimed first Internet site, as required by every challenged claim.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

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

    “We recognize that the claim recites an “Internet site,” and not a “Web site.” Although the ’586 patent sometimes describes an “Internet site,” see Ex. 1001, 4:48–49, 5:22, 16:7, 17:2, 17:11, the patent more frequently describes an “Internet web site” or “web site,” suggesting the inventors understood “Internet site” and “web site” to be synonymous. See, e.g., id. at 2:6, 2:17, 2:20, 2:32, 2:39, 2:65, 3:31, 3:34, 3:35, 3:36, 3:38. In addition, the specification describes the saturation problem addressed by the ’586 patent as one experienced by Web sites. Id. at 6:4–8 (“A media may reach this saturation level due to pragmatic considerations such as limited physical size or space. In addition, saturation may occur due to a requirement to limit the cost of a producing a Web site, magazine, newspaper or other media application.”) One technical dictionary defines “Web site” as “[a] group of related HTML documents and associated files, scripts, and databases that is served up by an HTTP server on the World Wide Web.” Microsoft Computer Dictionary 564 (2002). Ex. 3001. Another states: “In more common usage [Web site] refers to individual sets of Web pages that can be visited with Web Browsers.” Newton’s Telecom Dictionary 913 (2004). Ex. 3002. Merriam-Webster defines Web site as “a group of World Wide Web pages usually containing hyperlinks to each other and made available online by an individual, company, educational institution, government, or organization.” See https://www.merriam-webster.com/dictionary/web%20site (last accessed Oct. 14, 2022). From these definitions, and consistent with the ’586 patent specification, we determine that an Internet site is a collection of HTML Web pages that can be accessed by users with Web browsers.” slip op. at 17

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

    “We are not persuaded that Petitioner has sufficiently demonstrated that Amjadi’s incentive host server 410 qualifies as an Internet site. As discussed, only two functions of the Incentive Host Server are disclosed by Amjadi: (1) distributing incentive information to incentive network server 420, and (2) registering subscribers discussed supra. See Ex. 1003, 7:40–42. Amjadi does not describe either function as involving HTML Web pages that can be accessed by users with Web browsers. Amjadi describes the user registration process as the server transmitting a registration form to the subscriber. Id. at 8:1–4 (also disclosing that the completed form is then transmitted back to the server); see also Prelim. Resp. 16–18.4 We see no disclosure in Amjadi of incentive host server 410 having a collection of Web pages that can be visited by users, nor is that evident from the described functions of the incentive host server.” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,244,586
• Meta Platforms, Inc. v. Almondnet, Inc., And Intent Iq, LLCInstitution denied
  PTAB · Oct 26, 2022 · IPR2022-00928 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 24, 28, 29, 31–33, 40, or 44 unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons discussed below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For this decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as consistent with the prior art before us in this proceeding. C. Claim Construction” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “the claims themselves and then to the specification. Although the claims of the ’639 patent recite “Internet site,” from the context of the ’639 patent, we find that this refers to a site on the World Wide Web, i.e., a Web site. See Ex. 1001, 9:13–38 (discussing Web site saturation problems). In the absence of any further guidance from the claims or specification, we turn to dictionaries for further information on the meaning this term.” slip op. at 16

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

    “We are not persuaded that Petitioner has sufficiently demonstrated that Amjadi’s incentive host server 410 qualifies as an Internet site under our construction. As discussed, only two functions of the incentive host server are disclosed by Amjadi: (1) distributing incentive information to incentive network server 420, and (2) registering subscribers discussed supra. See Ex. 1003, 7:40–42. Amjadi does not describe either function as involving HTML Web pages that can be accessed by users with Web browsers. Amjadi describes the user registration process as the server transmitting a registration form to the subscriber. Id. at 8:1–4 (also disclosing that the completed form is then transmitted back to the server); see also Prelim. Resp. 15–17.10 We see no disclosure in Amjadi of incentive host server 410 having a collection of Web pages that can be visited by users, nor is that evident from the described functions of the incentive host server.” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,822,639
• The Chamberlain Group, LLC. v. Overhead Door CorporationInstitution denied
  PTAB · Oct 25, 2022 · IPR2022-00842 · APJ Hubert C Lorin · IPR · Institution

  The Board denied institution because the petitioner did not show a reasonable likelihood of proving claims 1–6, 8, 10, 11, 13–15, and 17 obvious over the asserted combinations.

  RulingsInstitution decision

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

    “III. CONCLUSION For the foregoing reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability claims 1–6, 8, 10, 11, 13–15, and 17 of the ’120 patent. Accordingly, we do not institute an inter partes review of the ’120 patent. IV. ORDER It is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 39

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience in the fields of access control or automated door control systems, or equivalent work experience or training in the field of such technologies. Pet. 4 (citing Ex. 1003 ¶ 31). Patent Owner does not address the level of skill of the ordinary artisan. See, generally, Prelim. Resp. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundNot shown unpatentable

    “i. Principles of Law A reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). However, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Id. (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).” slip op. at 18

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

    “We find that Patent Owner’s argument is supported by Marchetto’s disclosure, which explains that one must first enter a certificate via the programming unit’s keypad 56 in order to activate a new transmitter (see Ex. 1007 ¶ 87). Thus, using Marchetto’s external device would involve an extra step of manually entering recognition codes. This is in contrast to Sommer, which actuates transmitters simply by transmitting a code to the receiver once its learn–in mode is activated (see Ex. 1004 ¶ 11). Adding an extra manual–entering step would increase, rather than “alleviate,” the labor needed to activate transmitters per Sommer’s system. Petitioner relies on the testimony of Dr. Davis. See Ex. 1003 ¶ 47; Pet. 12. But it simply repeats the argument in the Petition. Dr. Davis states that “[u]sing an external programming device … alleviate[s] the need for a human to locate, physically handle, and manually actuate each wireless transmitter [as in Sommer]” (id.; Pet. 12) but does not elaborate. Dr. Davis does not, address, for example, Marchetto’s stated need to additionally enter recognition codes into the external device and whether the combination of Sommer and Marchetto still yields an alleviation from having to do so. Absent evidentiary support or persuasive explanation, we afford Dr. Davis’s conclusory testimony little weight. There is insufficient evidence on this record showing one of ordinary skill in the art would have combined Sommer and Marchetto because it would “alleviate” the human labor associated with actuating transmitters per Sommer’s procedure.” slip op. at 23

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,869,120
• Forescout Technologies, Inc. v. Fortinet, Inc.Institution denied
  PTAB · Jan 27, 2022 · IPR2021-01328 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution because Forescout did not show Thomas was prior art, so it did not show a reasonable likelihood that any challenged claim was obvious over Thomas or Thomas and Gill.

  RulingsInstitution decision

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

    “§ 42.4(a), we may only institute an inter partes review when “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); see also 37 C.F.R. § 42.108(c) (2020). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2

  • BurdenDecided for patent owner

    “We agree with Fortinet that Forescout has not met its burden to particularly articulate its arguments in the Petition. To be successful in an inter partes review, a petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2) (2020). In this case, Forescout’s burden includes, among other things, explaining in the Petition why Thomas “was effectively filed before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(2). On its face, Thomas does not qualify as prior art to the ’421 patent because the application was filed on April 1, 2016, after the effective filing date of the ’421 patent. Thus, when Forescout filed its Petition, it was clear that Forescout needed to rely on a prior application in Thomas’s priority chain, such as the Thomas Provisional, to establish that Thomas was prior art to the ’421 patent under § 102(a)(2). Section 102(d)(2) of 35 U.S.C. provides that, “[f]or purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application . . . as of the filing date of the earliest such application that describes the subject matter.” 35 U.S.C. § 102(d)(2) (emphases added). Without having the benefit of the provisional’s filing date, Thomas does not qualify as prior art to the ’421 patent. See supra. Thus, the subject matter disclosed in Thomas is only available as prior art to the ’421 patent to the extent it also is described in the earlier-filed Thomas Provisional. Thus, Forescout has an initial burden, not just to compare the challenged claims with the disclosure in Thomas, but to show that the subject matter that Forescout relies on in Thomas is also found in the Thomas Provisional. Because Forescout has not met that burden, we determine that Forescout has not adequately shown that it is reasonably likely to prevail on the issue of whether Thomas is prior art to the challenged claims of the ’421 patent under 35 U.S.C. § 102(a)(2).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “particularly articulate its arguments in the Petition. To be successful in an inter partes review, a petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2) (2020). In this case, Forescout’s burden includes, among other things, explaining in the Petition why Thomas “was effectively filed before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(2). On its face, Thomas does not qualify as prior art to the ’421 patent because the application was filed on April 1, 2016, after the effective filing date of the ’421 patent. Thus, when Forescout filed its Petition, it was clear that Forescout needed to rely on a prior application in Thomas’s priority chain, such as the Thomas Provisional, to establish that Thomas was prior art to the ’421 patent under § 102(a)(2). Section 102(d)(2) of 35 U.S.C. provides that, “[f]or purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application . . . as of the filing date of the earliest such application that describes the subject matter.” 35 U.S.C. § 102(d)(2) (emphases added). Without having the benefit of the provisional’s filing date, Thomas does not qualify as prior art to the ’421 patent. See supra. Thus, the subject matter disclosed in Thomas is only available as prior art to the ’421 patent to the extent it also is described in the earlier-filed Thomas Provisional. Thus, Forescout has an initial burden, not just to compare the challenged claims with the disclosure in Thomas, but to show that the subject matter that Forescout relies on in Thomas is also found in the Thomas Provisional. Because Forescout has not met that burden, we determine that Forescout has not adequately shown that it is reasonably likely to prevail on the issue of whether Thomas is prior art to the challenged claims of the ’421 patent under 35 U.S.C. § 102(a)(2).” slip op. at 9

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

    “A claim is unpatentable under § 103 for obviousness “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103 (2018). As discussed above, we determine that Forescout has not adequately shown that Thomas is prior art to the challenged claims. For the same reason, Forescout has also failed to adequately show that in light of Thomas alone or in combination with Gill, the claimed inventions would have been obvious to a person of ordinary skill in the art prior to March 17, 2014, the effective filing date of the ’421 patent. See supra part III.B. Thus, we determine that Forescout has not shown that there is a reasonable likelihood that it would prevail in proving that any of the challenged claims would have been obvious over either Thomas alone or Thomas in view of Gill.” slip op. at 10

  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,503,421
• Niantic, Inc. v. Nant Holdings IP, LLCInstitution denied
  PTAB · Dec 9, 2021 · IPR2021-01119 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim, chiefly because the cited art did not disclose tessellated tiles.

  RulingsInstitution decision

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

    “partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any challenged claim. We therefore do not institute inter partes review as to any of the challenged claims of the ’518 patent.” slip op. at 2

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

    “interest, the area tile map represented by a set of tile subareas that includes one or more tessellated tiles from a tessellated tile map” or “identify[ing] a tile subarea . . . wherein one or more tessellated tiles within the identified tile subarea are associated with one or more AR content objects.” As Patent Owner points out, there is no discussion in Altman of tessellated tiles. Prelim. Resp. 16. While it is true that Altman discusses map tiles, there is no disclosure in Altman of how those tiles are arranged, much less whether they are “tiles fitted together to cover an area without gaps.” Id. at 18–19. The portions of Altman relied on by Petitioner do not support its argument that Altman discloses tessellated tiles. Thus, for example, paragraph 37 of Altman, cited by Petitioner, mentions “map tiles” but provides no description of what they are or how they are arranged. Ex. 1003 ¶ 37. Similarly, paragraph 43 of Altman, also cited by Petitioner, describes the map tiles as “image files of maps with varying degrees of granularity,” but does not provide any description of how the tiles are arranged. Id. ¶ 43. Nor does Figure 2A of Altman or its description in the text demonstrate that Altman’s map is made up of tessellated tiles. Prelim. Resp. 17. Petitioner does not support its argument that because Altman’s Figure 2A shows “a large geographic area covering multiple towns with no gaps in map coverage” that “a person of ordinary skill would have understood that each layer or the area map as a whole . . . constitutes a tessellated tile map.” Pet. 24. As Patent Owner points out, individual map tiles can be used to display certain areas of a map without being sets of tessellated tiles. Prelim. Resp. 18. And even if individual tiles were used in Altman’s maps, nothing in Altman discloses or suggests that there are no gaps between the tiles. Id. at 18–19.” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable

    “Altman with CaveLie.” Pet. 46 (citing Zyda Decl. ¶¶ 305–311). Petitioner explains that “[a person of ordinary skill] would have naturally looked to CaveLie for further implementation details on the tessellated tiles already disclosed in Altman.” Id. at 46–47 (emphasis added). Patent Owner responds that “there is no citation to anything in these references themselves to support this argument, which is apparently based on hindsight.” Prelim. Resp. 36. We agree with Patent Owner that Petitioner has failed to demonstrate a sufficient motivation to combine Altman with CaveLie, other than hindsight. As indicated in the argument from the Petition just quoted, Petitioner’s rationale for combining Altman and CaveLie proceeds on the assumption that Altman discloses tessellated tiles, for which CaveLie allegedly provides “further implementation details.” Pet. 46–47. However, in our analysis of Altman, we conclude that Petitioner has not demonstrated sufficiently that Altman teaches or suggests tessellated tiles. See supra, Section III.B.1.c.” slip op. at 25

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “the “tessellated tiles” limitations. Dr. Zyda’s testimony tracks the arguments in the Petition closely. See Zyda Decl. ¶¶ 160–162. As support for his conclusion (id. ¶ 160) that “Altman discloses that the map tiles can be tessellated tiles,” Dr. Zyda cites the same disclosures from Altman (Ex. 1003 ¶¶ 37, 43, and Fig. 2A) as does the Petition. See Pet. 23 (citing Ex. 1003 ¶¶ 37, 43). As just discussed, those disclosures do not describe how the tiles in Altman are arranged and do not support the contention that they are tessellated tiles. Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art would have understood that these map tiles are tessellated tiles” cites paragraph 43 of Altman for support. See Zyda Decl. ¶ 161. For the reasons given supra, that paragraph in Altman does not support this conclusion. Moreover, Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art would have understood that each layer or [sic] the area tile map [in Altman] as a whole (considering all layers collectively) constitutes a tessellated tile map” (Zyda Decl. ¶ 161) cites no supporting evidence. Our Trial Practice Guide cautions that “[e]xpert testimony . . . cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 36 (November 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated. We are not persuaded by Dr. Zyda’s speculations on what persons of ordinary skill would have known (including those discussed supra) because either they are not properly supported by the cited evidence, or they do not cite any evidentiary support at all.” slip op. at 23

  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,664,518

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.