• ROKU, Inc.Institution denied
  PTAB · Feb 7, 2023 · IPR2022-01258 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution because Roku did not show a reasonable likelihood that Alger anticipated claims 184, 185, and 188–190 or that Alger-based combinations rendered claims 186, 187, 189, 191, and 192 obvious.

  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) (2018); see also 37 C.F.R. § 42.108(c) (2022). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2

  • Parallel petitionsNot reached

    “1 Roku also filed a Notice Ranking Petitions, arguing that we should institute trial both in this proceeding and in IPR2021-01257 where Roku challenges the same claims of the ’819 patent on different grounds. Paper 3; see also Paper 8 (IOENGINE’s response). Because we deny institution on the merits, we need not address whether it would be appropriate to institute trial in both proceedings.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art “would have had a Bachelor of Science degree in Electrical Engineering, Computer Science, Computer Engineering or related discipline, and experience in programming software or firmware for computers/peripheral devices or databases/servers.” Pet. 21–22 (citing Ex. 1103 ¶¶ 54–58). Petitioner also contends that this person “would have had a working understanding of computer hardware, operating systems, encryption, data storage, user interfaces, and communication protocols.” Id. (citing Ex. 1103 ¶¶ 54–58). IOENGINE agrees with that articulation for this proceeding. Prelim. Resp. 8. We find the parties’ agreed articulation to be reasonable in light of the subject matter involved in the ’819 patent and its description of the relevant prior-art background. See, e.g., Ex. 1101, 1:14–2:29. Thus, we adopt it for our decision.” slip op. at 7

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

    “Given the evidence on this record, we agree with IOENGINE that a person of ordinary skill in the art would have understood that the word terminal in claim 184 refers at least to a computing device. Prelim. Resp. 13. As IOENGINE correctly argues, the word terminal in claim 184 corresponds to the “access terminal” or “AT” discussed in the ’819 patent specification. See Prelim. Resp. 14. According to the ’819 patent, “Access terminals (ATs) may be any number of computing devices such as servers, workstations, desktop computers, laptops, portable digital assistants (PDAs), and/or the like.” Ex. 1101, 3:56–59 (emphasis added). The ’819 patent also discloses that “[t]he type of AT used is not important,” but that it “should provide . . . an operating environment for the user to engage the TCAP through the AT,” such as “Java and/or Windows runtime environments, which allows the TCAP to interact with the input/output mechanisms of the AT.” Id. at 3:59–4:3. This reference to an access terminal’s operating or runtime environment supports IOENGINE’s position that the “terminal” contemplated in the ’819 patent is a computing device.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,447,819
• ROKU, Inc. v. Ioengine, LLCInstitution denied
  PTAB · Feb 7, 2023 · IPR2022-01257 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution because Roku did not show a reasonable likelihood that Ozawa or Clanton disclosed the claimed terminal, and the dependent-claim obviousness grounds did not cure that deficiency.

  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) (2018); see also 37 C.F.R. § 42.108(c) (2022). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Relying on Dr. Lippman’s testimony, Roku argues that a person of ordinary skill in the art “would have had a Bachelor of Science degree in Electrical Engineering, Computer Science, Computer Engineering or related discipline, and experience in programming software or firmware for computers/peripheral devices or databases/servers.” Pet. 24–25 (citing Ex. 1003 ¶ 55). Petitioner also contends that this person “would have had a working understanding of computer hardware, operating systems, encryption, data storage, user interfaces, and communication protocols.” Id. (citing Ex. 1003 ¶ 55). IOENGINE agrees with that articulation for this proceeding. Prelim. Resp. 15–16. We find the parties’ agreed articulation to be reasonable in light of the subject matter involved in the ’819 patent and its description of the relevant prior-art background. See, e.g., Ex. 1001, 1:14–2:29. Thus, we adopt it for our decision.” slip op. at 7

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

    “terminal is key to our decision in this proceeding whether to institute trial, so we need to construe the term more specifically than the district court did. Given the evidence on this record, we agree with IOENGINE that a person of ordinary skill in the art would have understood that the word terminal in claim 184 refers at least to a computing device. Prelim. Resp. 20. As IOENGINE correctly argues, the word terminal in claim 184 corresponds to the “access terminal” or “AT” discussed in the ’819 patent specification. See Prelim. Resp. 21. According to the ’819 patent, “Access terminals (ATs) may be any number of computing devices such as servers, workstations, desktop computers, laptops, portable digital assistants (PDAs), and/or the like.” Ex. 1001, 3:56–59 (emphasis added). The ’819 patent also discloses that “[t]he type of AT used is not important,” but that it “should provide . . . an operating environment for the user to engage the TCAP through the AT,” such as “Java and/or Windows runtime environments, which allows the TCAP to interact with the input/output mechanisms of the AT.” Id. at 3:59–4:3. This reference to an access terminal’s operating or runtime environment supports IOENGINE’s position that the “terminal” contemplated in the ’819 patent is a computing device.” slip op. at 10

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

    “2. Analysis To show anticipation, a petitioner must locate each and every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 10,447,819
• Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip.Pal.Com, Inc.Institution denied
  PTAB · Dec 22, 2022 · IPR2022-01179 · APJ Mitchell G Weatherly · IPR · Institution

  The Board denied institution on all challenged claims because the substantively identical petition did not show a reasonable likelihood of proving any claim unpatentable, and denied joinder.

  RulingsInstitution decision

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

    “After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1073 proceeding, we denied institution, because “Petitioner [in the 1073 proceeding] had not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, therefore, “there [wa]s not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition.” IPR2022- 01073 Paper 10, 23. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1073 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution in the 1073 proceeding. IPR2022- 01073 Paper 10. B. Motion for Joinder” slip op. at 4

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it requested that the Petition be granted: “only if, an IPR is instituted in the 1073 proceeding.” Mot. 1. Because we did not institute review in the 1073 proceeding, we deny the Motion for Joinder.” slip op. at 5

  None
  Patents in suitUS 8,630,234
• Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip.Pal.Com, Inc.Institution denied
  PTAB · Dec 22, 2022 · IPR2022-01178 · APJ Mitchell G Weatherly · IPR · Institution

  The Board denied institution on all challenged claims because the identical petition and evidence had not shown a reasonable likelihood of prevailing, and denied joinder.

  RulingsInstitution decision

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

    “After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1072 proceeding, we denied institution, because “Petitioner [in the 1072 proceeding] had not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, therefore, “there [wa]s not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition.” IPR2022- 01072 Paper 10, 23. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1072 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution in the 1072 proceeding. IPR2022- 01072 Paper 10. B. Motion for Joinder” slip op. at 4

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it requested that the Petition be granted: “only if, an IPR is instituted in the 1072 proceeding.” Mot. 1. Because we did not institute review in the 1072 proceeding, we deny the Motion for Joinder.” slip op. at 5

  None
  Patents in suitUS 8,630,234
• Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 22, 2022 · IPR2022-01181 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because the substantively identical petition in IPR2022-01075 failed to show the cited art disclosed every claim limitation; it also denied joinder.

  RulingsInstitution decision

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

    “After consideration of the arguments and evidence in the Petition and the Preliminary Response in the 1075 proceeding, we denied institution, because “Petitioner [in the 1075 proceeding] ha[d] not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, prevail with respect at least one of the claims challenged in the Petition.” IPR2022-01075 Paper 10, 20–21. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1075 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution (IPR2022-01075 Paper 10) in the 1075 proceeding.” slip op. at 4

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “B. Motion for Joinder The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it stated: “Petitioners request that . . . the motion be granted only if, an IPR is instituted in the 1075 proceeding.” Mot. for Joinder 1. Because we did not institute review in the 1075 proceeding, we deny the Motion for Joinder.” slip op. at 5

  None
  Patents in suitUS 10,880,721
• Amazon.Com, Inc. / Amazon.Com Services, LLC et al. v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 22, 2022 · IPR2022-01180 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because the substantively identical petition and evidence had not shown that the cited art disclosed every limitation of any challenged claim; it also denied joinder.

  RulingsInstitution decision

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

    “the Preliminary Response in the 1074 proceeding, we denied institution, because “Petitioner [in the 1074 proceeding] ha[d] not shown that the cited art disclose[d] all the limitations of any challenged claim” and that, prevail with respect at least one of the claims challenged in the Petition.” IPR2022-01074 Paper 10, 25. Because the arguments and the evidence in this proceeding are substantively identical to the arguments and evidence in the 1074 proceeding, we deny institution in this proceeding for the reasons set forth in the Decision Denying Institution (IPR2022-01074 Paper 10) in the 1074 proceeding.” slip op. at 4

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “B. Motion for Joinder The Director may grant a motion for joinder and allow the movant to “join as a party” an existing proceeding only “[i]f the Director institutes an inter partes review” in the proceeding to which joinder as a party is sought. 35 U.S.C. § 315(c). Petitioner implicitly recognized this prerequisite to granting its Motion for Joinder when it stated: “Petitioners request that . . . the motion be granted only if, an IPR is instituted in the 1074 proceeding.” Mot. for Joinder 1. Because we did not institute review in the 1074 proceeding, we deny the Motion for Joinder.” slip op. at 5

  None
  Patents in suitUS 10,880,721
• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01073 · APJ Mitchell G Weatherly · IPR · Institution

  The Board denied institution on all challenged claims because Teodosiu did not disclose the claimed location identifier, and the proposed combinations did not cure that deficiency.

  RulingsInstitution decision

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

    “For all its grounds, Petitioner relies on Teodosiu for allegedly disclosing “a location identifier separate and distinctive from said callee identifier, said location identifier identifying a location of the mobile telephone” as recited in each of the challenged independent claims of the ’234 patent. See Pet. 19–21 (claim 30), 44–45 (claim 46), 56 (claim 62). Petitioner relies on its showing as to this limitation of claim 30 for each of the other independent claims. Id. Because the Petitioner fails to establish that Teodosiu discloses this limitation, we determine that the Petition does not show a reasonable likelihood that the Petitioner would prevail in showing any of the challenged claims are unpatentable.” slip op. at 13

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “and 93 of the Mir Declaration. See Pet. 19–20 (citing Ex. 1002 ¶¶ 87–89, 93). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses receiving an access code request message including “a location identifier identifying a location of the mobile telephone” as recited in each independent claim of the ’234 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of ordinary skill in the art would have understood that an area code associated with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 87. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that “Teodosiu’s method includes a network server receiving from the mobile device (‘mobile telephone’) a request (‘access code request message’) including a selected contact (‘callee identifier’) and mobile device 110 phone number, which includes geographic information (‘location identifier’).” Id. ¶ 89. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a location of the mobile telephone.”” slip op. at 16

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

    “We interpret claims in the same manner used in a civil action under 35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then 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). We determine that it is not necessary to expressly interpret any claim language in order to decide whether to institute review. B. Legal Standards” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual inquiries set forth in Graham that we apply in determining whether a claim is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a) as follows: (1) determining the scope and content of the prior art, (2) ascertaining the differences between the prior art and the claims at issue, (3) resolving the level of ordinary skill in the pertinent art, and (4) considering objective evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we address each challenge below. slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,630,234
• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01072 · APJ Mitchell G Weatherly · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show that the cited art disclosed the claimed location identifier.

  RulingsInstitution decision

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

    “’234 patent. See Pet. 24–25 (claim 1), 36 (claim 11), 46 (claim 20). Petitioner relies on its showing as to this limitation of claim 1 for each of the other independent claims. Id. Because the Petitioner fails to establish that Teodosiu discloses this limitation, we determine that the Petition does not show a reasonable likelihood that the Petitioner would prevail in showing any of the challenged claims are unpatentable.” slip op. at 14

  • BurdenDecided for patent owner

    “For all its grounds, Petitioner relies on Teodosiu for allegedly disclosing “a location identifier separate and distinctive from said callee identifier, said location identifier identifying a location of the mobile telephone” as recited in each of the challenged independent claims of the ’234 patent. See Pet. 24–25 (claim 1), 36 (claim 11), 46 (claim 20). Petitioner relies on its showing as to this limitation of claim 1 for each of the other independent claims. Id. Because the Petitioner fails to establish that Teodosiu discloses this limitation, we determine that the Petition does not show a reasonable likelihood that the Petitioner would prevail in showing any of the challenged claims are unpatentable.” slip op. at 13

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “the Mir Declaration. See Pet. 24 (citing Ex. 1002 ¶¶ 93–97). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses transmitting “a location identifier identifying a location of the mobile telephone” as recited in each independent claim of the ’234 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of ordinary skill in the art would have understood that an area code associated with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 95. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 96. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a location of the mobile telephone.”” slip op. at 16

  • Skill levelOther

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual inquiries set forth in Graham that we apply in determining whether a claim is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a) as follows: (1) determining the scope and content of the prior art, (2) ascertaining the differences between the prior art and the claims at issue, (3) resolving the level of ordinary skill in the pertinent art, and (4) considering objective evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406. With these standards in mind, we address each challenge below. C. Prior Art slip op. at 9

  Nonecites Phillips · KSR
  Patents in suitUS 8,630,234
• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01075 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the cited art disclosed the claimed location identifier limitations.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioners cannot satisfy their burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9

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

    “Ex. 1005 ¶ 66. In this paragraph, Teodosiu is determining what phone number to supply to the mobile device to use to access the VoIP system. See id. ¶¶ 67–69. Teodosiu discloses selecting a VoIP phone number with the same area code as the mobile device phone number and “which is close in geographic vicinity to the phone number associated with mobile device 110.” Id. ¶ 66. But Patent Owner argues, and we agree, that the area code in the phone number of Teodosio’s mobile device is not “a location identifier identifying a geographical location of the wireless device.” See Prelim. Resp. 34–41. The area code does not change as the geographical location of the wireless device changes. The area code of the phone number associated with the mobile device does not identify the geographical location of the wireless device. number of the mobile device to select a VoIP phone number “which is close in geographic vicinity to the phone number associated with mobile device 110.” Ex. 1005 ¶ 66. And, because the location of the mobile device is not identified by the area code of the phone number associated with the mobile device, by disclosing receipt of the mobile device phone number (id. ¶ 63, Fig. 4 (ref. no. 440)), Teodosiu does not disclose “receiving/receive from the wireless device an access code request message including . . . a location identifier identifying a geographical location of the wireless device.” as recited in the challenged independent claims of the ’721 patent.” slip op. at 15

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the Mir Declaration. See Pet. 17 (citing Ex. 1002 ¶¶ 81–83). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses receiving “a location identifier identifying [or associated with] a geographical location of the wireless device” as recited in the challenged independent claims of the ’721 patent by disclosing receipt of the mobile device’s phone number. The Mir Declaration states: “[a] person of ordinary skill in the art would have understood that an area code associated with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 81. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 83. Dr. Mir fails to adequately explain how or why the area” slip op. at 16

  • Skill levelSkill level petitioner adoptedOther

    “[a] person of ordinary skill in the art as of the claimed priority date of the ’721 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field along with at least two years of work experience in the field of networking.” Pet. 5 (citing Ex. 1002 ¶¶ 19–21). Petitioner further contends “[m]ore education can complement practical experience and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 19–21). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’721 patent and the asserted prior art. slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,880,721
• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01074 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution because the petition did not show Teodosiu disclosed the required location identifier, and the proposed combinations did not remedy that deficiency.

  RulingsInstitution decision

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

    “In summary, we determine that Petitioner has not shown that the cited art discloses all the limitations of any challenged claim and we deny institution on this basis. III. CONCLUSION On the record before us, we conclude that there is not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition. Therefore, we do not institute inter partes review on any claims or any challenge to the claims of the ’721 patent.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “[a] person of ordinary skill in the art as of the claimed priority date of the ’721 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field along with at least two years of work experience in the field of networking.” Pet. 5–6 (citing Ex. 1002 ¶¶ 19–21). Petitioner further contends “[m]ore education can complement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 19–21). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’721 patent and the asserted prior art. slip op. at 10

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

    “2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2018); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). We construe only terms that are in controversy and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, construe any claim terms in order to make this decision.” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the Mir Declaration. See Pet. 20 (citing Ex. 1002 ¶¶ 87–91). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses transmitting “a location identifier identifying a geographical location of the wireless device” as recited in each independent claim of the ’721 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 89. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 90. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a geographical location of the wireless device.”” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,880,721

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.