• Tiktok Inc. v. Ntech Properties, Inc.Institution denied
  PTAB · Mar 10, 2025 · IPR2024-01343 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the three asserted obviousness grounds.

  RulingsInstitution decision

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

    “II. ANALYSIS A. Principles of Law Petitioner bears the burden of persuasion to prove unpatentability of the claims challenged in the Petition, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A patent claim is unpatentable under 35 U.S.C. § 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) if present, any objective evidence of obviousness or non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. Cf. Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “[m]y opinions in this declaration would not change were I to adopt the definition of a POSITA offered by [Petitioner’s declarant] Dr. Almeroth.”).” slip op. at 8

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

    “dedicated to claim construction, but Patent Owner does address claim construction in its discussion of Petitioner’s challenges. See, e.g., Prelim. Resp. 21–23 (Patent Owner arguing: “Petitioner’s ‘Feed Selection Mapping 2’ should be rejected because it relies on rewriting the claim so that it encompasses a device other than the aggregator providing user information to the publisher. . . . Because Whitehead’s alleged aggregator does not provide profiles to the alleged publisher in a channel request responsive to that request, ‘Feed Selection Mapping 2’ does not even meet the plain reading of the aggregator providing to the publisher ‘the media feed selection’ with ‘user information’ included.” (emphasis added)). Because our decision does not turn on this proposed construction, we need not address it. On this record and for purposes of this decision, we determine that no claim terms require express construction. D. The Alleged Obviousness of Claims 1 and 2 over Whitehead (Ground 1)” slip op. at 9

  • BurdenDecided for patent owner

    “We find the Petition to be too confusing to follow. It is Petitioner’s burden to articulate a coherent and discernable case that is readily understandable by the Board and that places Patent Owner on notice of the basis of Petitioner’s case so that Patent Owner may have the opportunity to respond. See 37 C.F.R. § 42.104(b) (“[T]he petition must set forth . . . a statement of the precise relief requested for each claim challenged,” including “specify[ing] where each element of the claim is found in the prior art.” (emphasis added)). In light of the above, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its Whitehead obviousness challenge.” slip op. at 16

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 9,923,947
• Tiktok Inc. v. Ntech Properties, Inc.Institution denied
  PTAB · Mar 10, 2025 · IPR2024-01341 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–10 unpatentable under any of the three asserted obviousness grounds.

  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). 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 ’261 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

    “The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. Cf. Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “[m]y opinions in this declaration would not change were I to adopt the definition of a POSITA offered by [Petitioner’s declarant] Dr. Almeroth.”).” slip op. at 8

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

    “read limitations out of the claims.” (citation omitted)). Because our decision does not turn on this proposed construction, we need not address it. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 10

  • BurdenDecided for patent owner

    “Thus, according to Whitehead, the purported client device (media player 115) is a TV or monitor that displays menus, whereas the selection of programming is performed by the remote control 111 in conjunction with the set top box (content processing device 110). Petitioner does not explain adequately how the TV/monitor itself has the capability of selecting a program or, in terms of the claim, how the aggregator (set top box) receives a media feed selection from the TV/monitor. Petitioner’s lengthy string cite, see Pet. 21, is not an adequate substitute for an explanation in the Petition, and we decline to study all the cited portions to try to discern whether Petitioner might have a viable explanation as to how the TV/monitor selects programming.” slip op. at 12

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 9,215,261
• Tiktok Inc. v. Ntech Properties, Inc.Institution denied
  PTAB · Feb 25, 2025 · IPR2024-01339 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on claims 1–20 because the petition did not show a reasonable likelihood of proving the claims obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we deny institution of inter partes review of the ’597 patent.3” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the ’597 patent (“POSITA”) had at least a Bachelor of Science in electrical engineering, computer engineering, or similar fields and at least two years of practical experience in the field of media processing and/or transmission. More education can supplement for less practical experience, and vice versa. Pet. 4–5. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 26.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner cites the Alermoth Declaration, paragraphs 198–201, but does not explain the content or pertinence of this testimony. See Pet. 21. We have reviewed this testimony and determine that it is conclusory. This testimony repeats, almost verbatim, the language in the Petition without any further explanation or supporting reasoning or evidence. See Ex. 1002 ¶¶ 198–201. We accord this testimony little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); 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 16

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

    “With regard to Petitioner’s contention that “it would have been obvious for a POSITA to modify Ferman’s system to more explicitly select clips for inclusion in the final video programming based on their ability to transition between other events,” we determine that this contention is not adequately supported by articulated reasoning. See Pet. 48. Petitioner asserts that, “[a] POSITA would have been motivated to do so by at least Ferman’s expressed desire to ‘include content suited to [the user’s] particular viewing preferences.’” Id. (citing Ex. 1002 ¶ 89). There is no articulated reasoning (and we can discern none) as to how or why including content suited to a user’s preferences would have motivated a skilled artisan to modify Ferman to select transitional clips. Petitioner also asserts, “doing so would provide more compelling and cohesive video programming.” Id. There is no articulated reasoning or explanation for this assertion and we find this statement to be too general and unsupported. We determine that Petitioner has not established that a skilled artisan would have been motivated to modify Ferman’s system as proposed in the Petition. Patent Owner argues that “Petitioner fails to demonstrate that Ferman discloses ‘identifying . . . a plurality of first[/second] transitional clips.’” Prelim. Resp. 39 (alteration in original). We agree with Patent Owner that the Petition fails to provide adequate support for its assertion that limitations 1[d] and 1[j] are taught or suggested by Ferman.” slip op. at 26

  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,317,597
• Tiktok Inc. v. Ntech Properties, Inc.Institution denied
  PTAB · Feb 25, 2025 · IPR2024-01338 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all grounds because the petition did not show a reasonable likelihood of prevailing on any challenged claim, including deficiencies in the Marcus156- and Ferman-based obviousness showings.

  RulingsInstitution decision

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

    “III. CONCLUSION We have weighed the evidence presented by Petitioner and considered its arguments. We determine that Petitioner fails to establish a reasonable likelihood that it would prevail with respect to at least 1 of the claims challenged in the Petition. For each challenged claim in each asserted ground of unpatentability, Petitioner fails to establish that the asserted art teaches or suggests multiple recited limitations. Accordingly, we determine that trial should not be instituted on claims 1–20 of the ’185 patent. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 37

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we deny institution of inter partes review of the ’185 patent. 3 1 Petitioner identifies TikTok Inc., Bytedance Ltd., Bytedance Pte. Ltd., and TikTok Pte. Ltd. as real parties-in-interest. Pet. 2. 2 Patent Owner identifies itself, NTECH Properties, Inc., as the real party-ininterest. Paper 4 (Patent Owner’s Mandatory Notices), 1. 3 In addition to the Petition and Preliminary Response, Petitioner’s Preliminary Reply (Paper 7) and Patent Owner’s Preliminary Sur-reply (Paper 8) were filed. However, these papers were limited to arguments related to discretionary denial under 35 U.S.C. § 325(d). We do not reach the issue of discretionary denial in light of our decision to deny institution on the merits.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the ’185 patent (“POSITA”) had at least a Bachelor of Science in electrical engineering, computer engineering, or similar fields and at least two years of practical experience in the field of media processing and/or transmission. More education can supplement for less practical experience, and vice versa. Pet. 5. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 23. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the description offered by Petitioner. It is not disputed by the Patent Owner and is consistent with the ’185 patent and the asserted prior art.” slip op. at 8

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

    “C. Claim Construction In inter partes reviews, the Board construes claims using the same claim construction standard employed in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). The “words of a claim ‘are generally given their ordinary and customary meaning,’” as would have been understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Neither Petitioner nor Patent Owner requests express claim construction. Pet. 5; Prelim. Resp. 23. And, no need exists to expressly construe any claim terms to resolve this dispute. 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 9

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,875,185
• Motorola Solutions, Inc. v. Sta Group LLCInstitution denied
  PTAB · Aug 6, 2024 · IPR2024-00479 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 and 8–11 were obvious over Choksi.

  RulingsInstitution decision

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

    “In an IPR, 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”)). slip op. at 5

  • BurdenDecided for patent owner

    “Patent Owner contends, and we agree, that “the Petition ignores that the proxy is ‘dynamically inserted to connect . . . the endpoint to a virtual talk group.” Prelim. Resp. 17. Petitioner’s argument fails because the 5 Elsewhere, Petitioner mentions “virtual talk group” in the context of the recited “rules of transmission” (Pet. 27) and trusted endpoint identity (Pet. 30), but neither of these passages provides an explanation of how Choksi discloses “receive a first determination from the IS . . . that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group.” Petition provides no explanation as to what constitutes claim 1’s “virtual talk group” in Choksi, let alone that Choksi teaches “that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group” as claimed. Even if we were to agree with Petitioner that Choksi’s signaling bridge is a dynamically inserted proxy, Petitioner does not explain how the signaling bridge “connect[s] the endpoint to a virtual talk group.”” slip op. at 10

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

    “Patent Owner contends, and we agree, that “the Petition ignores that the proxy is ‘dynamically inserted to connect . . . the endpoint to a virtual talk group.” Prelim. Resp. 17. Petitioner’s argument fails because the 5 Elsewhere, Petitioner mentions “virtual talk group” in the context of the recited “rules of transmission” (Pet. 27) and trusted endpoint identity (Pet. 30), but neither of these passages provides an explanation of how Choksi discloses “receive a first determination from the IS . . . that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group.” Petition provides no explanation as to what constitutes claim 1’s “virtual talk group” in Choksi, let alone that Choksi teaches “that a proxy is to be dynamically inserted to connect the endpoint to a virtual talk group” as claimed. Even if we were to agree with Petitioner that Choksi’s signaling bridge is a dynamically inserted proxy, Petitioner does not explain how the signaling bridge “connect[s] the endpoint to a virtual talk group.”” slip op. at 10

  § 103 obviousnesscites Graham
  Patents in suitUS 9,319,852
• Trend Micro, Inc. v. Open Text Inc.Institution denied
  PTAB · Feb 14, 2024 · IPR2023-01391 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Piccard was disqualified under pre-AIA § 103(c)(1), leaving no reasonable likelihood that claims 1–15 were unpatentable over either asserted combination.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’932 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  None
  Patents in suitUS 8,719,932
• Trend Micro, Inc. v. Open Text Inc.Institution denied
  PTAB · Feb 14, 2024 · IPR2023-01390 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Piccard was disqualified under pre-AIA § 103(c)(1), leaving neither asserted obviousness ground likely to establish claims 1–14 as unpatentable.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’243 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person. Petitioner asserts that Piccard qualifies as prior art under pre-AIA § 102(e). Pet. 4 (“Piccard . . . is prior art under pre-AIA § 102(e) because it was filed on June 30, 2005, before the earliest possible priority date of the ’243 patent.”). Piccard cannot qualify as prior art under § 102(a) or § 102(b), as Piccard published January 4, 2007, which is after the ’243 patent’s April 20, 2006 filing date. Ex. 1007, code (43); Ex. 1001, code (22). Therefore, Piccard could qualify as prior art only under § 102(e) and may be subject to disqualification under § 103(c)(1). Cf. Unified Patents, Inc. v. Uniloc Luxembourg S.A., IPR2017-02148, Paper 9 at 19–20 (PTAB Apr. 17, 2018) (determining that a reference was not disqualified under § 103(c)(1) because it qualified as prior art under § 102(a) and therefore was not “prior art only under one or more of subsections (e), (f), and (g) of section 102”).” slip op. at 6

  § 102 anticipation
  Patents in suitUS 8,201,243
• Sonos, Inc v. Google LLCInstitution denied
  PTAB · Feb 8, 2024 · IPR2023-01288 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that Rosenberger anticipated any challenged claim or that Rosenberger and Jang rendered claims 2, 3, 9, 10, and 12 obvious.

  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 Technology, Inc., 815 F.3d 1358, 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”)). slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a person of ordinary skill in the art “would have had the equivalent of a fouryear degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2-4 years of experience in the field of speech processing, or an equivalent level of skill, knowledge, and experience.” Pet. 8 (citing Ex. 1002 ¶¶ 36–39). 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 asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “construction in a footnote addressing “perform[ing] speech recognition.” Prelim. Resp. 14 n.1 (“Patent Owner does not concede to the correctness of the ITC’s construction of ‘perform[ing] speech recognition,’ particularly its finding that ‘hotword[6] detection’ necessarily includes speech 5 In the Initial Determination of Violation of Section 337 and Recommended Determination on Remedy and Bond (Ex. 2001 (“Initial Determination”)), the plain and ordinary meaning of “perform speech recognition” was construed “to include[] hotword detection” (id. at 49). 6 According to the ’748 patent, a “hotword” is a predetermined audio command or audio trigger such as “Hello phone,” “Okay car,” “Hello device,” “Give me directions,” “what’s the time,” “make a call,” “go silent,” or “play.” Ex. 1001, 2:66–67, 4:12, 5:14–15, 5:40, 9:61–62, 10:6–7, 20:16– recognition.”). Although Patent Owner does not “concede to the correctness” of this construction in this proceeding, Patent Owner does not argue what, if anything, is wrong with this construction. Before the ITC, Patent Owner argued that the plain and ordinary meaning of “[perform/performing] speech recognition” was not broad enough to cover “hotword detection.” See Ex. 2001, 30. The ITC found Patent Owner’s position to be “untenable” because hotword detection “is a form of speech recognition in every ordinary sense.” Id. at 31. We agree with the ITC that the plain and ordinary meaning of performing speech recognition includes hotword detection. Moreover, the ’748 patent describes using speech recognition for hotword detection. Ex. 1001, 4:57–63 (“[A]udio input modules may be operable to utilize speech recognition techniques . . . to determine whether the obtained audio input includes a predetermined audio command.”). We apply the plain and ordinary meaning and consider the meaning of “perform/performing speech recognition” to include hotword detection. 17, 20:20–21, 24:29–30, 24:38–39, 24:40–41, 24:43–44, 24:51, 25:3–4. The ’748 patent further provides:” slip op. at 15

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

    “positions relating to this limitation. See Pet. 33–34 (Ex. 1003, 8:20–39); Prelim. Resp. 4–5 (citing Ex. 1003, 8:20–32). The cited passage in Rosenberger states: Upon receiving and recognizing a speech trigger phrase and determining that it is in a better position to handle subsequent user interaction than any other device that simultaneously recognized the same speech trigger phrase (see device coordination discussion below) . . . the device beeps, changes its status light 34 or plays a prerecorded or synthesized audio message (e.g. "How may I help you?") through speaker 19 and/ or 20 to prompt the user to say one of the speech commands from a known vocabulary or grammar stored in the speech pattern memory 14. Ex. 1003, 8:20–32 (emphasis added). This passage indicates speech recognition to recognize the trigger phrase (i.e., hotword detection) is performed by all the devices that receive the trigger phrase prior to any coordination determination. This passage supports Patent Owner’s argument and contradicts Petitioner’s contention that Rosenberger discloses this limitation. We agree with Patent Owner that the flaw in Petitioner’s reasoning is that the devices disclosed in Rosenberger upon receiving a spoken audio input do not make any determination as to whether speech recognition, particularly hotword detection, should be performed. All the devices perform speech recognition by performing hotword detection before the coordination determination is made. See Ex. 1003, 8:20–32.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,632,748
• Meta Platforms, Inc. v. Eight KHZ, LLCInstitution denied
  PTAB · Jan 9, 2024 · IPR2023-01004 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because Meta did not show a reasonable likelihood that claims 1, 4–6, 8–11, 14, 15, and 17–19 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “II. ANALYSIS A. Legal Standards A claim is unpatentable 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; see 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 “the scope and content of the prior art”; “differences between the prior art and the claims at issue”; and “the level of ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, secondary considerations, such as “commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019). A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Also, “[t]hough less common, in appropriate circumstances, a patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016). “Although the KSR test is flexible, the Board ‘must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (stating that “conclusory statements” amount to an “insufficient articulation[] of motivation to combine”; “instead, the finding must be supported by a ‘reasoned explanation’”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.”).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science or engineering with a focus on audio signal processing and sound localization, with at least two years of relevant experience,” where “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 14; see Ex. 1003 ¶¶ 30–35. Patent Owner argues that a person of ordinary skill in the art instead would have had “several years of academic and/or professional experience in a technical field relevant to digital audio signal processing, such as electrical engineering, computer engineering, or computer science; and a familiarity with relevant literature and concepts concerning virtual 3D audio processing, which were widely available at the time of disclosure.” Prelim. Resp. 6. Neither party explains why its proposed definition is appropriate. Based on the record presented, including our review of the ’196 patent and the types of problems and solutions described in the ’196 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of we remove the term “at least” to eliminate vagueness as to the amount of education and practical experience. We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.” slip op. at 11

  • BurdenInstitution denied

    “Moreover, though, Petitioner’s showing is insufficient because the preamble and limitation 1[c] recite “moving” the SLP of the voice of the computer program “during the voice exchange between the computer program and the user” (emphasis added). As Patent Owner correctly points out, or pre-recorded sound tracks.” None of the examples in Li includes moving a voice during a voice exchange. Instead, all examples and embodiments in Li are directed to recording, and then moving a 3D sound. Thus, in Li no moving of a sound can happen before first recording it . . . . See Prelim. Resp. 26–28 (also citing the description of Figure 19 shown above as a “reconstruction” of a concert involving sound from multiple instruments); Ex. 1006, code (57), col. 4, ll. 7–16 (stating that the configurable 3D binaural sound is generated “using pre-recorded sound tracks and pre-recorded stereo sound tracks”), col. 5, ll. 7–26, col. 14, l. 58–col. 15, l. 3, col. 21, ll. 38–42, Figs. 7, 8, 20, 25, 27; Ex. 2007 ¶ 27 (“Li gives examples using pre-recorded sounds in fixed positions; this method could not be used for a user to interact dynamically in three dimensions with the spatial configuration of one or more sound sources such as computer voices.”). Also, Li’s users must first input their desired configuration before any binaural sound being rendered—but Li does not disclose a feature that allows users to change their desired configuration during rendering. . . . Li’s music listening example clearly illustrates that users may only place sound sources at their desired spots prior to rendering. . . . Similarly, Li’s conference call example at best suggests that a user can “plac[e] different speaking users at different spots” only prior to rendering the pre-recorded voices of speaking users at the selected spots—once rendered, Li does not disclose that its users may reconfigure during their voice exchange with other speaking users. See Prelim. Resp. 29–30 (citing Ex. 1006, col. 22, ll. 64–67 (“The configurable 3D sound system 900 renders the 3D binaural sound from the input configuration to provide the user with the reconstructed virtual audio 3D space he/she designed.” (emphasis added)), col. 15, l. 61–col. 16, l. 4). that he “read[s] Li as disclosing that moving the sound source . . . takes place during a voice exchange between the computer program and a user/person” is conclusory and unsupported. Id. at 10–13 (quoting Ex. 1003 ¶ 104) (emphasis omitted). Again, the only support for Dr. Kyriakakis’s opinion is the very brief “conference call” excerpt in Li, which we find insufficient for the reasons explained above. See Ex. 1003 ¶ 104 (citing Ex. 1006, col. 21, l. 60–col. 22, l. 5).” slip op. at 22

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

    “Assuming (without deciding) that Li renders obvious a “voice of a computer program” as Petitioner contends,1 we are not persuaded that Petitioner has made a sufficient showing that Li teaches or suggests a “voice exchange between [a] computer program and [a] user,” or moving a SLP of the voice of a computer program during such a “voice exchange,” as recited in limitations 1[pre],2 1[a], 1[c], and 1[d]. 1 Patent Owner disputes whether Li teaches or suggests a “voice of a computer program,” and also argues that the Petition should be denied under 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). Prelim. Resp. 13–22, 50–59. In light of our decision to deny institution for the reasons discussed herein, however, we need not address these arguments. 2 On the record before us, we determine that the preamble is limiting at least because the body of the claim refers to the preamble for antecedent basis for numerous terms, including the “sound localization point (SLP),” “computer program,” “voice of a computer program,” “voice exchange,” and “user.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a how . . . Li’s listener can have voice exchange with a computer program” and fails to “identify what features of Li would need to be modified to include [the recited ‘voice exchange’] and explain how such modifications would work.” Prelim. Resp. 22–26. The plain meaning of “voice exchange between [a] computer program and a user,” as recited in claim 1, is an exchange of voice audio between the computer program and user. See id. at 22; Ex. 1001, col. 35, l. 64–col. 36, l. 1 (the ’196 patent describing an exemplary embodiment where “second user 2362 is speaking to and listening to . . . four others” and “the others are not people but computer programs with interactive audio input/output interfaces” (emphasis added)). Under Petitioner’s first apparent theory that the “voice of a computer program” can be the processed voice of a speaking user as in “other embodiments” of Li, the “other embodiments” all involve recording sound tracks and providing a GUI that allows the user to configure the sound that will later be played back. See, e.g., Pet. 17, 23; Prelim. Resp. 21, 24–25; Ex. 1006, code (57) (“The 3DSPA generates a configurable sound field on a graphical user interface using recorded or pre-recorded sound tracks.”), col. 5, ll. 7–26 (“The 3D sound processing application generates a configurable sound field on a graphical user interface (GUI) provided by the 3D sound processing application using the recorded sound tracks,” “acquires user selections of one or more of multiple configurable parameters,” and “dynamically processes the recorded sound tracks using the acquired user selections to generate a configurable 3D binaural sound.”), col. 14, necessary component of the claimed invention.”). Even if it was not, though, limitations 1[a], 1[c], and 1[d] recite the “voice exchange” discussed herein. from the acoustic beam patterns. . . . The 3D sound processing application generates 703 a configurable sound field . . . using the recorded sound tracks.”), Figs. 7 (steps 702 and 703), 8 (steps 801 and 703), 20 (steps 2001, 2002, and 703), 25 (steps 2501, 2502, and 703), 27 (steps 702 and 703). Petitioner and Dr. Kyriakakis rely on a single sentence in Li that “the configurable 3D sound system 900 provides a method of communication among multiple people, for example, in a conference call, by placing different speaking users at different spots to mimic a real conference room environment.” Ex. 1006, col. 22, ll. 1–5; see Pet. 24; Ex. 1003 ¶ 104. Petitioner does not provide any further explanation as to how a voice exchange would occur during such a “conference call” when modified to use the processed voice of a speaker—which the remainder of Li describes as recorded in advance in sound tracks. Absent additional explanation, we are not persuaded that Li’s brief reference to a “conference call” is sufficient.” slip op. at 20

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,282,196
• Sony Electronics Inc. v. Jawbone Innovations, LLCInstitution denied
  PTAB · Jan 9, 2024 · IPR2023-01118 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Sony did not show a reasonable likelihood that claim 1 was obvious over Avendano ’880 and Hou; the dependent-claim challenges also failed.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’213 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

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

    “Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 34 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity.” slip op. at 14

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

    “Concurrently with the Petition, Petitioner filed a Motion for Joinder seeking joinder as a party in Amazon.com, Inc. v. Jawbone Innovations, LLC, IPR2023-00279 (“the Amazon IPR”) and consolidation with the Amazon IPR. Paper 3, 1. Patent Owner filed an Opposition to Petitioner’s Motion for Joinder. Paper 7. Subsequently, the Amazon IPR terminated based on settlement. IPR2023-00279, Paper 17. We therefore dismiss Petitioner’s Motion for Joinder as moot.” slip op. at 2

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

    “The Petition construes no terms. Pet. 7. The Preliminary Response proposes construing “filter, wherein the filter is formed,” as “adaptive filter comprising a signal ratio, wherein the filter is formed.” Prelim. Resp. 12– 14. We determine that we need not construe this term because, for the reasons we explain below, Petitioner has not met its institution burden regardless of the construction of this term. We further determine that no other terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 7

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,321,213

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.