- Dell Inc. / Dell Technologies Inc. v. Neo Wireless LLCInstitution deniedPTAB · Mar 14, 2022 · IPR2021-01468 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–14 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted “unless . . . the 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) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(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 on at least one of the challenged claims of the ’941 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record at this stage, we find that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). The prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Accordingly, for purposes of this decision, we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“This language specifies that a “control message” that contains “transmission parameters” for “a subsequent transmission of data” is sent to a mobile station. This language further specifies that these “transmission parameters” are first transmitted to “indicate an antenna transmission scheme and a corresponding subchannel configuration.” This language still further specifies that “the corresponding subchannel configuration [is] characterized by distributed subcarriers or localized subcarriers in the frequency domain.” Thus, claim 1 explicitly recites the transmission of a control message that includes “transmission parameters” that “indicate . . . a corresponding subchannel configuration . . . characterized by distributed subcarriers or localized subcarriers in the frequency domain.”” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“110a, 110b that support communication for user terminals 120a–120k. Ex. 1006, 3:25–28, 3:44–46. To the extent Petitioner asserts that access points 110a, 110b create cells that could interfere with one another, Petitioner has not explained adequately why access points 110a, 110b do so but instead provides only conclusory assertions. See Pet. 21 (citing Ex. 1006, 1:25–35) (“The base stations 110a, 110b serve the plurality of mobile stations 120a-120k at least because they ‘act like hubs and/or routers and provide connectivity for’ the mobile stations 120a-120k and may also allow the mobile stations 120a-120k access to LAN resources.”). While discussing what Walton ’269 discloses (Pet. 9–12), Petitioner characterizes Walton ’269 as being directed to “a Wireless Local Area Network (WLAN) Multiple-Input, Multiple-Output Orthogonal Frequency Division Multiplexing (MIMO-OFDM) communication system that includes an access point/base station and user terminals.” Pet. 9 (citing Ex. 1006, FIG. 1, 1:25–35, 1:61–2:7, 2:64–65, 3:24–58). However, in its analysis of the challenged claims, Petitioner asserts that “[a]s explained above, Walton ’269 discloses a system in which a base station serves a plurality of cells associated with mobile stations.” Id. at 18. The difficulty with Petitioner’s later assertion, however, is that it mischaracterizes the scope and content of Walton ’269’s disclosure. As discussed in greater detail below, we find the record supports a finding that Walton ’269 is not directed to a cellular system but is instead directed to a MIMO WLAN system that “includes a number of access points (APs) 110 that support communication for a number of user terminals (UTs) 120.” Ex. 1006, 3:25–31. When asserting that Walton ’269’s system serves cells, Petitioner makes several citations to Walton ’269’s disclosure. Pet. 18 (citing Ex. 1006, 2:64–65, 3:24–58, Fig. 1). The first citation is merely a brief description of Walton ’269’s Figure 1. See Ex. 1006, 2:64–65 (“FIG. 1 shows a block diagram of a MIMO LAN system in which the teachings of the invention are implemented.”). The second citation is a description of system 100 shown in Walton ’269’s Figure 1, which does not mention cells. Although Petitioner does not cite to Dr. Ding’s declaration to support its contention that Walton ’269’s base station serves a plurality of cells, Dr. Ding’s testimony regarding Walton ’269, and the proposed combination of Walton ’269 and Li, mirrors the same conclusory assertions advanced in the Petition. See, e.g., Ex. 1003 ¶¶ 59–64, 71–72, 125–128. As a result, we agree with Patent Owner that Dr. Ding’s testimony does not provide an additional basis to support Petitioner’s “allegation . . . that Walton-ʼ269 ‘discloses a system in which a base station serves a plurality of cells associated with mobile stations.’” Prelim. Resp. 7; see also 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,075,941 - Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · Mar 12, 2020 · IPR2019-01558 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Microsoft had not shown a reasonable likelihood of proving claims 1, 2, 9, 36, or 37 unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“inter partes review may not be instituted “unless . . . 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). For the reasons that follow, we determine Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim. Therefore, we deny the Petition for an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“5 Citing the testimony of Dr. Lavian, Petitioner asserts that a person of ordinary skill in the art for purposes of the ’622 patent “would have possessed at least a bachelor’s degree in computer science, computer engineering, or electrical engineering” with “at least two years of experience in the development and operation of network communication systems (or equivalent degree or experience).” Pet. 9 (citing Ex. 1003 ¶ 18). Patent Owner argues that “Petitioner’s proposed level of ordinary skill in the art is improper because it lacks an upper bound in both the factor of educational achievement and the factor of work experience,” but notwithstanding those defects, “Patent Owner does not provide its own definition because, even applying the definitions proposed in the Petition, Petitioner has not met its burden.” Prelim. Resp. 11-12. For purposes of this Decision and to the extent necessary, we adopt Petitioner’s assessment. 6 Patent Owner does not contend in its Preliminary Response that any such secondary considerations are present.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“(Ex. 1004, 23:18–20), we find no teaching or suggestion in the combination of Zydney and Shinder of the server assigning “an IP address” to the software agent (or to a device running the software agent). We also find no persuasive support for Petitioner’s contrary conclusions in Dr. Lavian’s testimony, which merely repeats the arguments in the Petition and cites the same portions of Zydney and Shinder. Compare Ex. 1003 ¶¶ 249–253 (citing, e.g., Ex. 1004, 15:1–2, 15:13–14, 16:7–10, 23:11–12, 23:18–21; Ex. 1005, 78, 86–88, Fig. 8-3), with Pet. 42–45 (same).8” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“juncture, we determine, for substantially the reasons articulated by Patent Owner, that Petitioner has not demonstrated a reasonable likelihood of prevailing in its contention that claim 1 is unpatentable over Zydney, Shinder, and Kirkwood. As Patent Owner points out (Prelim. Resp. 35–36), Zydney discloses storing user names and passwords only at a central server (Ex. 1004, 23:14-24:6) and storing lists of users only on originator devices (id. at 14:17–19, 34:1–3). Petitioner’s arguments do not persuade us that a person of ordinary skill in the art would have been motivated to modify Zydney to store all three of a user name, a password, and a list of other users in “each” of the user records of “a” user database, as recited in claim 1, whether that database would reside at a central server or at originators’ devices. Moreover, neither Petitioner nor Dr. Lavian—whose testimony in this regard merely repeats the argument in the Petition nearly verbatim— sufficiently explains what purported “advantages” a person of ordinary skill in the art would have appreciated would come from making such a combination. See Pet. 63. Petitioner does not explain, on the one hand, how Zydney’s registration and authentication would function if user names and passwords were stored in databases at originator devices rather than at a central server or, on the other hand, how Zydney’s peer-to-peer communications would function if buddy lists were stored with user names and passwords in a database at a central server rather than at originator devices. We, accordingly, are not persuaded by Petitioner’s contention that the suggested modifications “would have been nothing more than a simple combination of known and commonly used technologies . . . by known methods without changing their respective functions.” See Pet. 63.” slip op. at 26
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,724,622 - Google LLC v. Uniloc 2017 LLCInstitution deniedPTAB · Feb 10, 2020 · IPR2019-01408 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 would have been obvious over Fischer and McHann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we conclude on the record before us that Petitioner has not shown a reasonable likelihood that it would prevail in establishing that independent claims 1 and 5, or claims 2–4 and 6–8 respectively dependent therefrom, would have been obvious over the combination of Fischer and McHann. III. CONCLUSION Based on the record before us, the information presented in the Petition and accompanying evidence does not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims on the ground asserted in the Petition. We, accordingly, do not institute an inter partes review. IV. ORDER Accordingly, it is: ORDERED that the Petition is denied and no trial is instituted.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“presented by Petitioner, we agree with Patent Owner that Petitioner has not demonstrated a reasonable likelihood of prevailing. As an initial matter, we agree that Petitioner has not persuasively shown that a person of ordinary skill in the art would have had reason to combine the teachings of Fischer and McHann. As Petitioner admits, McHann describes a method for activating devices within a wired network, whereas Fischer describes a wireless networking protocol. Although both references relate in part to reducing power consumption among networked devices, we do not find Petitioner’s arguments persuasive as to why an ordinarily skilled artisan— particularly as defined by Petitioner as being knowledgeable specifically in “wireless communications systems” (see Pet. 7)—would have combined McHann’s teachings directed to activation of devices in a wired network in response to the address and message type of an Ethernet message with Fischer’s teachings of a wireless networking protocol in which savings in power consumption are achieved by establishing repeating communication cycles that allow remote devices to power off according to anticipated transmitting and receiving frames (see, e.g., Ex. 1004, Abstract; Ex. 1005, Abstract). We find no mention of wireless networks in McHann. And notwithstanding the conclusory statement in Mr. Lipoff’s declaration that “[s]imilar to Fischer, McHann is directed to a method of operating a wired network” (see Ex. 1002 ¶ 517), we find no disclosure in Fischer related to “operating a wired network.” Whether or not “wireless networks often also include wired components,” such that “it was well known for both types of networks to carry the same types of data packets,” as Petitioner alleges (Pet. 22), is of no consequence—that has no discernible bearing on whether a person of ordinary skill in the art would have been motivated to modify a wireless protocol based on cyclical power cycling to incorporate features of a method that involves analysis of message headers to determine whether to activate wired devices. We do not find such motivation in the cited portions of either Fischer or McHann, and we are not persuaded by Petitioner’s only other cited evidence, the declaration of Mr. Lipoff, which merely repeats nearly verbatim the arguments in the Petition, apart from the occasional addition of the phrase “in my opinion” and the omission of references to itself. Compare Pet. 15–23, with Ex. 1002 ¶¶ 56–71; see also 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.”).” slip op. at 22
- Expert testimonyPetitioner expert discountedOther
“network” (see Ex. 1002 ¶ 517), we find no disclosure in Fischer related to “operating a wired network.” Whether or not “wireless networks often also include wired components,” such that “it was well known for both types of networks to carry the same types of data packets,” as Petitioner alleges (Pet. 22), is of no consequence—that has no discernible bearing on whether a person of ordinary skill in the art would have been motivated to modify a wireless protocol based on cyclical power cycling to incorporate features of a method that involves analysis of message headers to determine whether to activate wired devices. We do not find such motivation in the cited portions of either Fischer or McHann, and we are not persuaded by Petitioner’s only other cited evidence, the declaration of Mr. Lipoff, which merely repeats nearly verbatim the arguments in the Petition, apart from the occasional addition of the phrase “in my opinion” and the omission of references to itself. Compare Pet. 15–23, with Ex. 1002 ¶¶ 56–71; see also 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.”).” slip op. at 23
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,285,892 - Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · Oct 10, 2019 · IPR2019-00989 · APJ Jennifer S Bisk · IPR · Institution
Institution was denied on claims 1, 4, 7-9, 18, 21, 24-26, 36, 38, 39, 42, 45, and 48 because Kobata did not teach the required identifier placement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“instituted unless the information presented in the Petition and Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the parties’ arguments, we conclude that the information presented does not establish a reasonable likelihood that Microsoft will prevail in challenging the patentability of claims 1, 4, 7–9, 18, 21, 24–26, 36, 38, 39, 42, 45, and 48 of the ’636 patent. We, therefore, decline to institute an 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
“Each of the independent claims of the ’636 patent recites “a second instance of the digital asset” with a “second unique identifier” and requires “the second instance of the digital asset include[s] the digital content and at least one other portion that does not include the digital content.” Ex. 1001, 1 On October 11, 2018, the USPTO revised its rules to harmonize the Board’s claim construction standard with that used in federal district court. Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). This rule change applies to petitions filed on or after November 13, 2018. Id. 20:60–65 (claim 1), 22:34–39 (claim 18), 24:11–16. Further, the claims recite “the second instance of the digital asset include[s] the second unique identifier embedded in the at least one other portion of the second instance of the digital asset.” Id. at 20:67–21:3, 22:41–44, 24:17–20. We agree with Uniloc that “the at least one other portion of the second instance of the digital asset” refers to “the at least one other portion that does not include the digital content.” See Prelim. Resp. 5. Thus, we agree with Uniloc that the plain language of the claims requires “the second unique identifier” be “embedded” in a portion of the asset that “does not include the digital content” and is not, itself, embedded in the digital content. In fact, we see no other reasonable way to interpret this language. Further, we see nothing in the Specification that indicates the patentee intended an alternate meaning for any of the words at issue. For example, the Specification describes creating a first instantiation of the digital asset with “an original offset and serial number embedded within the digital content,” but does not specifically describe where the serial number resides in the second instantiation of the digital asset, noting only that “instead of merely copying the digital content as part of the transfer, the present invention creates a separate instantiation to facilitate tracking of each transfer (or transaction) within the system 100.” Ex. 1001, 14:22–33; see also id. at 15:25–30 (“At step 326 Customer Client Server module 124 marks the digital asset file with the new serial number and offset preferably using the same steganographic technique . . . and then stores the digital asset in a form suitable for later retrieval and play on the user’s system.”). Thus, we see nothing in the Specification demonstrating that the claims are meant to cover anything other than the plain meaning—the second unique identifier is embedded in a portion of the asset that does not include the digital content.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Nowhere, however, does Microsoft explain how “ID portion 418” is embedded in a portion of the asset that does not include the digital content. To the contrary, Figure 4 of Kobata shows 418 to be embedded within Digital Content Data 410. Indeed, this fact is emphasized by Microsoft’s annotations of the Figure. See Pet. 33 (showing ID Portion 418 in purple completely surrounded by Digital Content Data 410 in yellow). Based on this flaw in the Petition, we cannot conclude that Microsoft has established a reasonable likelihood that a skilled artisan would understand Kobata to teach or suggest the second unique identifier is embedded in a portion of the asset that does not include the digital content. Therefore, Microsoft has not shown that Kobata teaches or suggests “the second instance of the digital asset including the second unique identifier embedded in the at least one other portion of the second instance of the digital asset” as recited in the claim.” slip op. at 11
Claim construction§ 103 obviousnessPatents in suitUS 8,706,636 - Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · Oct 9, 2019 · IPR2019-00976 · APJ Sean P O’Hanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 7–10, 12, 15–18, 20, 23, and 24 were obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner will prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review. slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Id. ¶ 157. These maps/threads provide “[t]he capability to mine/gather the data associated with the digital content 320.” Id. ¶ 162 (emphasis added). Thus, Kobata’s super-distribution threads are stored as part of digital content 320 and provide a history of digital asset transfers—the “history of identities of computer devices that manipulated and/or forwarded the digital content 320.” Id. ¶ 152. However, the threads do not detect when such a transfer occurs. Nor do the cited paragraphs of the Golbeck Declaration relied upon by Petitioner explain how Kobata detects a transfer of the digital asset as required by claim 1. See Ex. 1003 ¶¶ 63–65 (discussing tracking, but not addressing detecting); see also Pet. 37 (citing same). Thus, Kobata does not support Petitioner’s assertion that Kobata’s super-distribution allows the “digital content [to] be tracked when transferred” as asserted by Petitioner. See Pet. 36.” slip op. at 18
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Kobata discloses an asset identification embedded within an “other portion” of the digital asset that does not include digital content, as required by claim 1. Petitioner asserts that ID portion 418 does not include digital content. Pet. 33–34 (citing Ex. 1003 ¶¶ 57, 60–65). The cited portions of the Golbeck Declaration, however, do not address the recited other portion. See Ex. 1003 ¶¶ 57, 60–65 (discussing the form of the digital content and tracking digital content, but not discussing the recited other portion). Paragraph 53 of the declaration does, noting that “the digital content package 320 can include a viewer module 416, the digital content data 410, the ID portion 418, the local digital rights database 412, [and] the personal rights manager module 414,” and summarily stating that “[t]hus, Kobata’s system includes . . . at least one other portion that does not include digital content.” Ex. 1003 ¶ 53 (citing Ex. 1005 ¶¶ 208–09). The cited portions of Kobata, however, do not address the components cited by Petitioner’s declarant. See Ex. 1005 ¶¶ 208–09 (discussing loading a file onto the recipient’s computer device, decrypting the file, and running the file, but not discussing the contents of ID portion 418). As Dr. Golbeck does not direct us to any other evidence to support her assertions, we accord her testimony little weight. See 37 C.F.R. § 42.65(a).” slip op. at 20
- Skill levelSkill level board ownOther
“Based on the Specification and the prior art of record, we find Petitioner’s definition reasonable and, for purposes of this Decision, adopt it as our own.” slip op. at 9
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,606,856 - Panasonic Avionics Corp. v. Linksmart Wireless Technology, LLCRehearing deniedPTAB · Oct 8, 2019 · IPR2019-00043 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied Panasonic’s rehearing request and left in place its denial of institution because the cited art did not teach the claimed redirection server.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing of our Decision Denying Institution of inter partes review of U.S. Patent RE46,459 (the ’459 patent) entered as Paper 7 (“Decision” or “Dec.”) on May 14, 2019. See Paper 8 (“Req. Reh’g.”). When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“redirecting a packet, i.e., one in which the NAS removes the request for the Subscriber’s packet and places it in a new packet to be sent to server 14. Req. Reh’g. 5–6 (citing Pet. 71, 78). Petitioner refers to this second technique as an address-replacement approach. Id. at 5. According to Petitioner, Malkin’s address replacement approach is consistent with our analysis that the ’459 patent requires modifying a request to access a destination on the network by changing the requested destination. Id. at 5–6 (citing Dec. 18). Petitioner overlooks that our analysis of Malkin is independent of how server 14 is accessed. Our Decision states, “When the NAS detects a user attempting unauthorized access, Malkin routes the user’s request to redirection server 14 within ISP 16.” Dec. 17 (emphasis added). We also stated that “Malkin either allows network access for authorized user requests or blocks network access for unauthorized user requests, but it does not redirect a request to another location on the network.” Id. (emphasis added). As our construction requires that the claimed redirection server perform some function other than allowing or blocking access to a network, i.e., redirecting the user to a network location that is different from the requested network location, we concluded that Malkin, which blocks access to the network, does not disclose the claimed redirection server. Id. at 17–18.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“redirection server” means “a server operable to control network access by applying the following actions: block, allow, direct.” Pet. 15. We explained that a prior panel of the Board construed “redirection server” as “requiring[ing] some sort of redirection functionality” and that “blocking and allowing are ‘further’ functions of the redirection server.” Dec. 10. We agreed that “‘redirection’ requires the server perform a redirection function as distinguished from merely blocking or allowing user access, i.e., there must be some form of redirection of the user’s request.” Id. at 11. We phrased the construction of “redirection server” to mean a server that “at least must be capable of redirecting a user to a network location that is different from the network location in the user’s request.” Dec. 12. Our slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“the user’s rule set correlated to a temporarily assigned network address. As an initial matter, we note that the Petition (i) cites Abraham as disclosing denying or allowing transmission of IP packets and (ii) argues it would have been obvious to augment the network server’s ability to deny or allow packets, as disclosed by Abraham, with Malkin’s packet redirection technique, thereby making Abraham’s network server a redirection server. Pet. 30–31. According to Petitioner, “it would have been obvious for Abraham’s network server to redirect packets that are blocked, as described by Malkin.” Id. at 32. As discussed above, because Malkin’s packet redirection technique is a blocking technique that fails to disclose Abraham does not alter our decision to deny institution. See also Dec. 18 (“As we are persuaded that Petitioner has not demonstrated the references disclose a redirection server as that term is properly construed within the meaning of the challenged claims, we conclude that Petitioner has not demonstrated a likelihood that it will prevail on its challenge to any of the claims.”).” slip op. at 6
Claim construction§ 103 obviousness - Unified Patents Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · Aug 16, 2019 · IPR2019-00480 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Unified Patents’ rehearing request, leaving institution denied because Petitioner did not show a persuasive reason to combine Boykin with the other asserted references.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because Petitioner’s arguments concerning Boykin1 were not persuasive and that a person of ordinary skill in the art would not have had reason to combine Boykin’s teachings with the other asserted references. Dec. on Inst. 14−21. Petitioner has filed a Request for Rehearing. Paper 9 (“Req. Reh’g”). Petitioner argues several points, but in particular, Petitioner argues that our Decision misapprehended Boykin in concluding that the Petition failed to show an adequate reason to combine. Id. at 9. According to Petitioner, Boykin supports the contention Petitioner presented in the Petition that Boykin triggers the incentive of awarding users with points or credits, which a person of ordinary skill in the art would find beneficial. Id. Petitioner then points to Dr. Vijay Madisetti’s testimony of the alleged benefit. Id. (citing Ex. 1004 ¶ 116). Petitioner faults our Decision for weighing Patent Owner’s arguments, which Petitioner criticizes as constituting attorney argument, and concludes that our Decision’s reasoning misapprehends that Boykin would provide a benefit despite our determination that a person of ordinary skill in the art would not derive the alleged benefit given the teachings of the other asserted references.” slip op. at 2
- BurdenNot shown unpatentable
“point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,606,856 - Google LLC v. Uniloc Luxembourg, S.A.Rehearing deniedPTAB · Dec 13, 2018 · IPR2017-02202 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Richardson and Demeyer did not teach determining the claimed account information or software features through physical device recognition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“machine parameters include . . . information relating to the device’s software configuration” and that a person of ordinary skill in the art would have recognized that “data relating to the client device’s software configuration can contain information regarding features of software that the user of the client device is entitled to use” (Pet. 19 (emphasis added) (citing Ex. 1103 ¶ 52; Ex. 1104 ¶ 22)), we find no support in the cited evidence that Richardson teaches or suggests that any “information regarding features of software that the user of the client device is entitled to use” could be determined by performing physical device recognition. Indeed, as we explained in our earlier Decision, we discern no information regarding “features of software that [a] user is entitled to use” in any of Richardson’s machine parameters cited by Petitioner as examples of “information relating to the device’s software configuration,” namely, “the platform on which a web browser or another application runs,” “unique parameters associated with the firmware in use,” and “software or operating system serial number.” Dec. 17; cf. Pet. 19. Despite Petitioner’s citation to the testimony of its declarant, Mr. James Geier, in support of its argument, the cited testimony in disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. 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.”).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. 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.”).” slip op. at 9
NonePatents in suitUS 8,239,852 - Google LLC v. Uniloc Luxembourg, S.A.Rehearing deniedPTAB · Nov 1, 2018 · IPR2017-02080 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied Google's rehearing request, leaving institution denied for claims 3–23 because the petition did not show Zydney disclosed the claimed object field.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We have considered Petitioner’s contentions but are not persuaded of any error in our Decision. Our Decision was premised not on a rejection of Petitioner’s proposed formulation of the broadest reasonable interpretation of the “object field” limitation recited in claim 3, but instead on Petitioner’s failure to persuade us that Zydney’s “body” maps to the recited object field. A prior art reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Moreover, “[a]nticipation requires that a single reference ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.’” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (alteration in original) (quoting Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002)). “For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim.” Id. But the disclosure of Zydney relied upon by Petitioner for the object field limitation of claim 3 is, at best, ambiguous.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we found that there was insufficient evidence on the record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“recites, in part, “a messaging system communicating with a plurality of instant voice message client systems . . . wherein the messaging system receives an instant voice message from one of the plurality of instant voice message client systems, and wherein the instant voice message includes an object field including a digitized audio file.” Ex. 1001, 24:15–27 (emphasis added). Petitioner alleges that claims 3–8, 11, 13, and 18–21 are anticipated by Zydney1 and that claims 3–23 also are unpatentable as obvious over the combined teachings of Zydney and certain other references (Pet. 6, 11–68), relying in each of the asserted grounds on Zydney as teaching the recited “object field including a digitized audio field” (id. at 17–19, 38).” slip op. at 3
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,724,622 - Google LLC v. Uniloc Luxembourg S.A.Institution deniedPTAB · Apr 16, 2018 · IPR2017-02085 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all grounds, finding no reasonable likelihood that Google would prevail in showing any challenged claim 1–15 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that Zydney discloses “generating an instant voice message, wherein generating includes recording the instant voice message in an audio file and attaching one or more files to the audio file,” as recited in claim 1. Accordingly, we conclude that Petitioner has not established a reasonable likelihood that it would prevail in showing that either claim 1 or claim 13, which depends from claim 1 and accordingly includes the same limitation, is anticipated by Zydney.” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Having considered the parties’ respective arguments and cited evidence, we conclude, particularly in view of Patent Owner’s proposed construction in related litigation, that “node” is properly construed for purposes of this Decision as encompassing a “potential recipient.” See Pet. 10–11; Ex. 1013, 14; see also Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. App’x 864, 869 (Fed. Cir. 2014) (“The broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.”).6 Although we acknowledge Patent Owner’s arguments that, for example, “Petitioner overlooks an important consequence of its proposed construction: a person may be ‘available’ or ‘unavailable’ for communication independent of the online/offline status of their communication device” and that “a person may inform a system that they are ‘unavailable,’ that they do not wish to be disturbed during resting hours, etc. regardless whether their recipient device is online during that time” (Prelim. Resp. 23), we do not understand Petitioner’s contentions of unpatentability in this case to be based on a reading of a “potential recipient”—and hence a “node”—to be “a person” (see Pet. 22–25 (discussion mapping Zydney to claim elements reciting “nodes”)).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“petition in IPR2017-01257, wherein claim 1 was asserted to have been obvious over Zydney, is applicable here as well. In that case, we were not persuaded that the petitioner there had established sufficiently that Zydney teaches or suggests “attaching one or more files to the audio file,” as recited in claim 1, to demonstrate a reasonable likelihood of succeeding on the asserted ground. We agreed with Patent Owner in that case that the portions of Zydney now relied upon by Petitioner as allegedly disclosing this limitation instead disclose attaching additional files (e.g., a multimedia file) to a voice container, rather than to an audio file as recited in claim 1. See Case IPR2017-01257, slip op. at 18 (PTAB Dec. 4, 2017) (Paper 8) (“1257 DI”); Ex. 1004, 19:2–12, Figs. 16–18. We further observed that Zydney discloses that a voice container may “contain[] voice data or voice data and voice data properties” (Ex. 1004, 12:6–8) and also “has the ability to have other data types attached to it” (id. at 19:6), but we explained that “[e]ven if we regard Zydney’s voice data as being an audio file, however, we are not persuaded that Zydney’s disclosure that another file may be attached to a voice container that contains such an audio file teaches or suggests attaching that other file to the audio file.” 1257 DI 18–19. That conclusion applies a fortiori in this case, where Petitioner is alleging Zydney anticipates claim 1.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“On the record before us, Petitioner has not sufficiently established that the combination of Zydney and Gralla teaches or suggests the step of “controlling a method of generating [an] instant voice message based upon a connectivity status [of] each recipient,” so as to demonstrate a reasonable likelihood of succeeding in showing that claim 3 is unpatentable over the combination. As set forth in Section III.B.2.b.iii above, the deficiency of Zydney regarding this step is not with respect to whether the method of generating must be “chosen/selected/controlled automatically by a computing device . . . and not manually by a user,” but rather that Zydney does not disclose that a method of generating an instant voice message may be controlled—manually or otherwise—based upon connectivity status of each recipient. Thus, even if Zydney’s selection between pack and send and intercom communication modes were made automatic based on Gralla’s teaching of automatically varying message sound quality, that still would not teach or suggest controlling a method of generating the instant voice message based upon a connectivity status of each recipient. Further, even if we were to accept Petitioner’s assertions that (1) Gralla’s disclosure of varying message sound quality based on a sender’s Internet connection speed would have taught a person of ordinary skill in the art that computer software can automatically vary the manner in which digital voice data is generated, based on a predetermined control variable, and (2) high/low connection speed connotes “connectivity status” (see Pet. 42–43), we are not persuaded that Gralla teaches or suggests controlling a method of generating an instant voice message based upon a connectivity status of each recipient, as required by claim 3. Notably, whereas Petitioner suggests that application of Gralla’s techniques to Zydney’s system would have been a “use of a known technique to improve similar devices (methods, or products) in the same way” (see id. at 43), Dr. Min’s testimony cited in support focuses on whether it would have been obvious to “remov[e] a manual step” and “automatically control voice data generation,” rather than on whether it would have been obvious to control a method of generating a message based on recipients’ connectivity statuses (see Ex. 1003 ¶¶ 114, 115). Accordingly, we are not persuaded that Gralla cures Zydney’s deficiency with respect to claim 3, and we conclude, therefore, that Petitioner has not established a reasonable likelihood that it would prevail in showing that either claim 3 or claims 4–6 and 8, which depend from claim 3 and accordingly include the same limitation, are unpatentable over the combination of Gralla and Zydney.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,199,747
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.