• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00591 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 22–36 and 39–45 because Petitioner did not show a reasonable likelihood that the asserted obviousness grounds would succeed.

  RulingsInstitution decision

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

    “passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42–43; see also id. at 48 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). We agree with Patent Owner. In its Summary of the Invention, Shimizu describes “mak[ing] it possible to build with ease an application program illustratively causing the display of the nodes to be switched in a specific order and at predetermined intervals.” Ex. 1103, with the predetermined intervals being included in the application program, rather than the hypertext nodes. Similarly, in its Description of the Related Art, Shimizu describes “mak[ing] it possible to create an application program that may be displayed on the screen by reading, from primary or secondary storage and within a predetermined time, the node information held by the nodes that are linked sequentially starting from a particular node.” Id. at 3:12–16 (emphasis added). This passage, too, is better read as disclosing that the predetermined times are included in the application program, rather than the hypertext nodes. Neither of Petitioner’s cited passages states that the hypertext nodes include predetermined intervals/times.” slip op. at 24

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “1 Petitioner filed a paper explaining its basis for filing multiple petitions challenging the ’451 patent and arguing that we should not exercise discretion to deny one of the petitions pursuant to the guidance in the Consolidated Trial Practice Guide (Nov. 2019) at 59 (“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.”). Paper 3. Patent Owner filed an objection to Petitioner’s filing of multiple petitions, arguing that we should deny one of them pursuant to the Trial Practice Guide’s guidance. Paper 8. Because we deny the Petition on the merits, we do not reach whether multiple petitions are appropriate to challenge the ’451 patent.” slip op. at 3

  • Parallel petitionsNot reached

    “1 Petitioner filed a paper explaining its basis for filing multiple petitions challenging the ’451 patent and arguing that we should not exercise discretion to deny one of the petitions pursuant to the guidance in the Consolidated Trial Practice Guide (Nov. 2019) at 59 (“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.”). Paper 3. Patent Owner filed an objection to Petitioner’s filing of multiple petitions, arguing that we should deny one of them pursuant to the Trial Practice Guide’s guidance. Paper 8. Because we deny the Petition on the merits, we do not reach whether multiple petitions are appropriate to challenge the ’451 patent.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web,” and “could also have qualified with more formal education and less technical experience, or vice versa.” Pet. 5 (citing Ex. 1102 ¶¶ 13–18). Patent Owner, without citing evidence, contends that a skilled artisan “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems”; “would also have approximately 3–5 years of professional experience with these topics”; and “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Prelim. Resp. 5–6. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art, and which is supported by expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). However, we do not see a substantial difference between the parties’ proposals. Thus, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,155,451
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00590 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 1–21, 37, and 38 because Petitioner did not show a reasonable likelihood of proving obviousness on any asserted ground.

  RulingsInstitution decision

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

    “16, 5:11–14) describes the hypertext nodes as including the predetermined times or predetermined intervals (what Petitioner argues is the duration). As Patent Owner argues, “even if these ‘predetermined times’ or ‘predetermined intervals’ could be considered relevant default duration parameters, the Petition fails to prove that they would be included within Shimizu’s hypertext nodes—i.e., the putative claimed ‘nodes’ —as the governing claim construction expressly requires.” Prelim. Resp. 45; see also id. at 58–59 (“[T]he passages relied on do not provide any specifics as to how duration information would be implemented. Instead, they are merely speculative and aspirational statements, postulating only about what is ‘possible.’ . . . [I]t is not sufficient for Shimizu to simply teach a time interval between nodes. Rather, . . . the node itself must ‘include . . . the duration for which the resource’s content is to be presented by default.’ The Petition fails to provide any argument or evidence demonstrating that the described predetermined intervals are included in Shimizu’s nodes.” (quoting Ex. 1023, 16 (emphasis Patent Owner’s))).” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web,” and “could also have qualified with more formal education and less technical experience, or vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 13–18).” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “The Microsoft court provided reasoned constructions, which Patent Owner contends that we should adopt. Ex. 1023. See also 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term Commission, that is timely made of record in the inter partes review proceeding will be considered.”). Petitioner does not allege any error in the Microsoft court’s decision or provide any alternative constructions. We adopt the Microsoft court’s constructions of “show structure of nodes” and “nodes” for purposes of this Decision. Based on the record before us, we do not find it necessary to provide express claim constructions for any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 11

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

    “16, 5:11–14) describes the hypertext nodes as including the predetermined times or predetermined intervals (what Petitioner argues is the duration). As Patent Owner argues, “even if these ‘predetermined times’ or ‘predetermined intervals’ could be considered relevant default duration parameters, the Petition fails to prove that they would be included within Shimizu’s hypertext nodes—i.e., the putative claimed ‘nodes’ —as the governing claim construction expressly requires.” Prelim. Resp. 45; see also id. at 58–59 (“[T]he passages relied on do not provide any specifics as to how duration information would be implemented. Instead, they are merely speculative and aspirational statements, postulating only about what is ‘possible.’ . . . [I]t is not sufficient for Shimizu to simply teach a time interval between nodes. Rather, . . . the node itself must ‘include . . . the duration for which the resource’s content is to be presented by default.’ The Petition fails to provide any argument or evidence demonstrating that the described predetermined intervals are included in Shimizu’s nodes.” (quoting Ex. 1023, 16 (emphasis Patent Owner’s))).” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,155,451
• Netflix, Inc. v. Robocast, Inc.Institution denied
  PTAB · May 11, 2023 · IPR2023-00081 · APJ David C Mckone · IPR · Institution

  The Board denied institution because Netflix had not shown a reasonable likelihood of proving claims 1, 2, 37, or 38 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an 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.” For the reasons explained below, we decline to institute an inter partes review of the ’451 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not see a substantial difference between the parties’ proposals. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). However, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for patent owner

    “we consider whether that construction was intended to encompass varying durations during the creating step or the displaying step. In its opinion, the Microsoft court observed that the defendants in that case argued that “before created,” and that “the ‘duration information’ is a parameter that the user can then interact with in order to vary the display of each resource.” Ex. 1014, 22. Patent Owner, the court continued, argued that “all that is required is for the user to maintain control over the actual presentation of the resource during the ‘displaying’ step, and that no duration information need be provided during the ‘creating a show structure of nodes’ step.” Id. at 22–23. The Microsoft court “agree[d] with [Patent Owner] that the user should be able to vary the duration of the content during show structure playback. This is the ‘interactive’ component of the claim.” Id. at 23; see also Prelim. Resp. 29 (arguing that this reasoning supports Patent Owner’s position that “the claim language expressly requires that the end user be able to ‘vary said duration’ for how long resource content currently ‘is being displayed’ to the user in ‘accordance with said show structure’ to which the resource belongs”). Here, the Microsoft court expressly states that the duration is varied during show structure playback, which is a clear reference to claim 1’s step of “displaying a content corresponding to each of said resources automatically in accordance with said show structure.” The Microsoft court “also finds that some duration information must be provided when the show structure of nodes is created,” that “‘parameter’ is a helpful concept for construction,” and that “the ‘duration information’ may be understood to be synonymous with a ‘parameter,’ as that timing information is the variable that will specify how long a particular content will be displayed.” Ex. 1014, 23. Thus, the Microsoft court construed claim 1 to require providing a variable duration parameter in the creating” slip op. at 13

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

    “As noted above, the Microsoft court construed “interactively variable duration information” to mean “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22. The construction itself suggests that the duration information is varied during display, because it is in the context of resources being displayed sequentially and “the viewer of the content can change the parameter.” As to Escobar, Petitioner contends that “[w]hen playing decision lists/timelines in the authoring tool using Button 174 (invoking subroutine E), the user is the viewer of the content.” Pet. 49 (citing Ex. 1004, 6:40–45). Thus, Petitioner appears to contend that, during the process of creating a show structure, the creator is a viewer if the creator can view the edited content corresponding to a node as the show structure is being created. Here, Petitioner would satisfy the “viewer” aspect of the Microsoft court’s construction by pointing to a creator viewing a piece of the show structure during the creating step, although Escobar does not teach that the creator can vary the duration of content while viewing it or that durations can be varied while a show structure (as opposed to a node being created) is being displayed in the displaying step, as discussed in more detail below.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,155,451
• Sercomm Corp. v. Atlas Global Technologies, LLCInstitution denied
  PTAB · Apr 12, 2023 · IPR2022-01519 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution for claims 1–19 because Petitioner did not show Chun was prior art, defeating both proposed obviousness grounds.

  RulingsInstitution decision

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

    “under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). Petitioner’s burden includes demonstrating that the evidence on which it relies constitutes prior art to the subject patent” slip op. at 5

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

    “We find the above-noted arguments persuasive. They account for what is actually set forth in the Korean provisionals, are supported by the testimony of Dr. Psounis, and are unaddressed by Petitioner.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) at the time of the alleged invention would have a bachelor’s degree in electrical engineering, computer science, computer engineering, or a similar discipline, and either a master’s degree in one of these fields of study or a minimum of two years of experience working in the wireless communications industry. An individual with an advanced degree in a relevant field would require less experience in the design of wireless communication systems and methods.” slip op. at 6

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

    “would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Neither party offers any specific construction for any claim term. See Pet. 7; Prelim. Resp. 11. For purposes of this Decision on Institution, we have given all claim terms their ordinary and customary meaning and determine that it is not necessary to make that meaning explicit for any term.” slip op. at 7

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 9,912,513
• Sercomm Corporation v. Atlas Global Technologies, LLCInstitution denied
  PTAB · Apr 11, 2023 · IPR2022-01520 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution because Sercomm did not show a reasonable likelihood of proving claims 1–9 and 11–19 unpatentable under any asserted ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and related briefing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1–9 and 11–19 of the ’919 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, based on the record before us, we deny institution of an inter partes review of the ’919 patent.” slip op. at 2

  • Skill levelSkill level board ownOther

    “Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Although slight differences exist in the formulation of such skill level between the parties, we discern no meaningful differences because none of those differences would affect the outcome of our analysis. Considering the subject matter of the ’919 patent, the background technical field, the prior art, and parties’ proposed definitions of the skilled artisan, we apply the level of skill cumulatively set forth above by the parties, which is consistent with testimony of both parties’ experts (Ex. 1003 ¶ 41; Ex. 2003 ¶ 48).” slip op. at 14

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

    “‘number of the one or more station information fields in the NDPA’ found earlier in the claims by explaining that this number is the number of station information fields in the NDPA, rather than, for example, the number of a particular station information field.” Prelim. Resp. 21. Patent Owner argues “Petitioner’s construction simply removes the term ‘cardinality’ from this claim element,” and “introduces ambiguity into the claims by suggesting that the number could be either the number of station information fields or the number (or index) of the station information field directed to a station,” which is the very ambiguity “the patentee sought to avoid” during prosecution.” Id. at 20–22; see id. at 21–27. We agree with Patent Owner and find Petitioner’s arguments unpersuasive. See, e.g., Ex. 1002, 159 (Examiner stating, “The applicant proposed amending the claim to further define the process of determining a number and further defining the number as a cardinality wherein the cardinality is a number of elements in a set or group.” (emphasis added)).6” slip op. at 16

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

    “We agree with Patent Owner and find Petitioner’s arguments unpersuasive. In particular, we find Petitioner does not show sufficiently, let alone with particularity, how or why 802.11ac allegedly discloses (explicitly or inherently) the combined features of “determining” that the number of elements in the set of STA Info fields “is one,” and “in response to” that determination, transmitting first CSI feedback in response to receiving the NDP. Instead, as noted by Patent Owner (Prelim. Resp. 32), Petitioner merely contends that, because 802.11ac’s VHT SU beamforming can be performed with a single station, 802.11ac allegedly discloses sending feedback in response to determining that the number of the one or more STA Info fields in the NDPA is one. We find Petitioner’s reasoning here unpersuasive, and agree with Patent Owner and its expert that Petitioner does not explain, sufficiently and with particularity, how any disclosure in 802.11ac describes channel sounding feedback being sent or received in response to determining the number of STA Info fields. See Prelim. Resp. 31–33; Ex. 2003 ¶¶ 104–109; see also Prelim. Resp. 28–31. For the foregoing reasons, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that 802.11ac discloses limitation 1.D, namely “in response to determining that the number of the one or more station information fields in the NDPA is one, transmitting first Channel State Information (CSI) feedback in response to receiving the NDP,” as recited in independent claim 1.” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,020,919
• Google LLC v. Parus Holdings, Inc.Institution denied
  PTAB · Dec 13, 2022 · IPR2022-01020 · APJ James J Mayberry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 present record, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 8. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Petitioner bases these contentions on declaration testimony from Mr. Lipoff. Id. (referencing Ex. 1002 ¶¶ 40, 85).” slip op. at 19

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

    “We agree with Patent Owner that the three independent claims include language that indicates that each claim encompasses a set-up stage and a retrieval stage. When construing a claim, we start with the language of the claims themselves. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he context in which a term is used in the [claim at issue] can be highly instructive.”). Claim 1 expressly recites that steps (a) through (h) are completed before step (i) and subsequent steps. Ex. 1001, 14:12–15; see Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.” (citation omitted)). For claim 16, its preamble recites “[a] method for allowing a phone user to set up and subsequently retrieve information in an audio format from a pre-defined portion of a pre-selected web [site].” Id. at 16:13–15; accord id. at 16:17–62 (affirmatively reciting “pre-defined portion of said pre-selected web site” in multiple steps in the body of the claim); see also Pet. 13 (“Furthermore, a [person having ordinary skill in the art] would have understood that Claim 16’s preamble is similar to element 1(i) of Claim 1.”); Prelim. Resp. 22–23; cf. Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1320 (Fed. Cir. 2013) (concluding that a claim that recites “processing” an “electronic advertisement” necessarily indicates that “the creation of the ad must happen before the processing begins”).” slip op. at 20

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

    “2. Other claim terms Except as provided above, we determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (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)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,516,190
• Apple Inc. v. Parus Holdings, Inc.Institution denied
  PTAB · Dec 6, 2022 · IPR2022-00950 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner proposes that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to a voice command.” Pet. 10. Petitioner adds that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Yarowsky supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶ 14. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Yarowsky, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We also note that, although the specific language of Petitioner’s proposal differs somewhat from the expressions of the level of ordinary skill that we adopted in the related proceedings to determine whether to institute review, they are substantially equivalent. See Microsoft, IPR2022-00137, Paper 9 at 9–10; Google, IPR2022-00279, Paper 7 at 10–11.” slip op. at 11

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

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner submits that for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction,” nor does Patent Owner propose any express construction of any claim term. See Pet. 10. On the record before us, we do not find it necessary to construe any term for purposes of this Decision. 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 12

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

    “2. Combination of Brown and Shuster Patent Owner disputes Petitioner’s reasoning for combining Brown and Shuster (together with Myers) as “based solely on hindsight.” Prelim. Resp. 64 (citing ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998)). We agree with this assessment because, as Patent Owner observes, “Brown discloses a web-based [interactive voice response] system with no inherent search capability and [that is] used to navigate Internet sites,” while Shuster “discloses a system for searching a wide area network and then displaying optimized search results such that users can find information easily and quickly.” Id. at 61 (emphases omitted). This difference, between navigation and searching, is meaningful, as Patent Owner illustrates with what it calls “a more realistic scenario.” See id. at 62.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,721,705
• Apple Inc. v. Parus Holdings, Inc.Institution denied
  PTAB · Nov 28, 2022 · IPR2022-00948 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that claims 1–26 were unpatentable over Danner or Danner and Woods.

  RulingsInstitution decision

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

    “Because Petitioner does not sufficiently show that this aspect of the claim would have been obvious over Danner, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Danner.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of retrieving information in response to voice commands, or equivalent field.” Pet. 13. Petitioner adds that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Yarowsky supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1003 ¶ 14. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Yarowsky, we adopt it for purposes of this Decision.4 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner submits that for the purposes of this proceeding, all terms of the Challenged Claims should be given their plain and ordinary meaning,” and Patent Owner does not propose any express construction of any claim term. See Pet. 14. On the record before us, we do not find it necessary to construe any term for purposes of this Decision. 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 11

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

    “We agree with Patent Owner that Petitioner insufficiently supports its contention that Danner’s application document database is “associated” with the components Petitioner identifies as corresponding to the recited “media server.” At best, Petitioner appears implicitly to apply a broad understanding of the term “associated,” but has not proffered any explicit construction of the term that we might evaluate in the context of the ’314 patent. In this respect, we note that Danner’s proxy browser 62 (and other components Petitioner identifies as part of the recited “media server”) is separated from application server 66 and web server 64 by components that Petitioner identifies as corresponding to the “internet.” See Pet. 34 (Petitioner’s annotated version of Danner’s Figure 2 identifying the “internet” in green). Neither Petitioner nor Dr. Yarowsky provides sufficient explanation how a database can be “associated” with a “media server” in the context of the ’314 patent with such a separation. See Ex. 1003 ¶ 91. We recognize that Petitioner advances an obviousness challenge, not an anticipation challenge. But Petitioner has described no clear modification to Danner that would result in Danner’s application document database 96 being “associated” with proxy browser 62 and related components. We decline to speculate how such a modification might be accomplished to meet the required association. Such association is not achieved merely because proxy browser 62 sends an instruction “to cause the application server to perform instructions stored in its database.” See Pet. 46 (emphasis added).” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,314
• Juniper Networks, Inc. v. Smart Path Connections LLCInstitution denied
  PTAB · Oct 20, 2022 · IPR2022-00815 · APJ Jameson Lee · IPR · Institution

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

  RulingsInstitution decision

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

    “review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We focus on the primary articulation of Petitioner, because the alternative articulation is vague by using the term “fewer” which indicates no lower bound. The primary articulation is supported by the testimony of Dr. Lavian (Ex. 1003 ¶ 67), and appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Patent Owner has not disputed Petitioner’s assertion of the level of ordinary skill in the art. Nor has Patent Owner proposed its own statement of the level of ordinary skill in the art. Prelim. Resp. 16. We adopt Petitioner’s primary articulation of the level of ordinary skill in the art, i.e., that a person of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and three to four years of experience in the design and development of telecommunication networks, systems, equipment, and components.” See Pet. 6. C.” slip op. at 12

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

    “serves each client node 24 (local to each edge device) as though it were physically connected to one of the hub ports. Id. at 5:16–19. We observe nothing in the Specification to suggest that HUB device 30 is an originator of communication. Rather, it serves to facilitate communication between devices connected to it through a network. Consistent with applying the term’s plain and ordinary meaning in light of the Specification, we construe “hub” as a circuit connecting components coupled to it through a network for effecting communication therebetween. No other express claim construction is necessary for this decision on” slip op. at 15

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

    “First, “hub,” as we have construed above means a circuit connecting components coupled to it through a network for effecting communication therebetween. As Petitioner has expressly recognized, Figure 1 of the ’010 patent shows a hub network device 30 that connects edge devices 26 to each other through network 22. Pet. 13 (citing Ex. 1001, Fig. 1). As PacketStar itself describes, and as Patent Owner notes, the two Multiservice Media Gateways shown in PacketStar’s Figure 3-4 are originating and terminating nodes and do not connect two devices coupled to them through the ATM network to complete communication therebetween. Ex. 1005, 69; Prelim. Resp., 35–36. Patent Owner correctly states that Figure 3-4 depicts functionality relating to alternate routing between the two gateways themselves in the event of a failure in one route through the network. Id. at 36 (citing Ex. 1005, 68–70). Patent Owner also correctly states that Figure 3-4 of PacketStar shows a pair of gateway devices acting as an originating node and a terminating node communicating with each other directly via an ATM network without a hub. Id. at 41. Contrary to Petitioner’s assertion, the media gateway devices shown in Figure 3-4 of PacketStar are unlike network device 30 (“HUB”) in Figure 1 of the ’010 patent and do not constitute a “hub,” whether or not it is configured as a server or client. Second, Petitioner cites to the same two Multiservice Media Gateway devices in PacketStar’s Figure 3-4 as the plurality of edge devices recited in limitation [1.2]. Pet. 17–18. That is problematic for Petitioner, because as required by limitation [1.3], each edge device must connect to the hub through a network and communicate with the hub through a packet-oriented Layer 2 communication protocol. That means the hub and the edge devices must be different structures and cannot be met by the same device.” slip op. at 20

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,386,010
• Ebates Performance Marketing, Inc. D/B/A Rakuten Rewards v. International Business Machines Corp.Institution denied
  PTAB · Oct 3, 2022 · IPR2022-00439 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not identify corresponding structures for the alleged means-plus-function limitations, leaving no reasonable likelihood of proving the obviousness grounds.

  RulingsInstitution decision

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

    “corresponding structure, we decline to assume for purposes of an obviousness analysis that the corresponding structure is a general-purpose computer. Because Petitioner has not identified the corresponding structures of the “mechanism” elements, which Petitioner contends are means-plus-function elements, Petitioner has not complied with our rules. 37 C.F.R. § 42.104(b)(3). Rather, Petitioner has proposed constructions that it alleges are incorrect. Having proposed constructions it alleges are incorrect, Petitioner is unlikely to prove in a trial that those constructions are correct. Nevertheless, Petitioner asks us to apply prior art to these allegedly incorrect constructions because, it argues, it is not impossible to do so. See Pet. 9. However, we decline to adopt and apply allegedly incorrect constructions, even if it might be possible to apply prior art to such incorrect constructions. In sum, because Petitioner has not identified adequately the claimed structures corresponding to the alleged means-plus-function claim terms, Petitioner has not demonstrated a reasonable likelihood of proving that the relied on prior art teaches or suggests those corresponding structures. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its obviousness challenges to the sole challenged independent claim and those that depend therefrom. We cannot and do not reach Petitioner’s arguments that the challenged claims are unpatentable for being indefinite.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Petitioner contends that “mechanism” is a nonce word and that, in each of the above-quoted limitations, the nonce word is followed by a function to be performed by the mechanism. Pet. 10. Based on this, Petitioner contends that these are means-plus-function limitations governed by the sixth paragraph of 35 U.S.C. § 112. Id. at 8, 10. A means-plus-function limitation “shall be construed to cover the corresponding structure [for performing the recited function] . . . described in the specification and equivalents thereof.” 35 USC 112, para. 6. Thus, a proper construction of a means-plus-function limitation requires the identification of that corresponding structure. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015) (en banc). To be corresponding structure, the intrinsic evidence (e.g., the specification) must clearly link or associate the structure to the recited function. B. Braun Med., Inc. v. Abbott Labs, 124 F.3d 1419, 1424 (Fed. Cir. 1997) (“We hold that, pursuant to this provision [of Section 112, paragraph 6], structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.”) (cited approving in Williamson, 792 F.3d at 1352). Consistent with these principles, our rules require a petition to provide a statement as to how the claims are to be construed and, for a means-plus-function element under 35 U.S.C. § 112 ¶ 6, to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3).” slip op. at 9

  • BurdenNot shown unpatentable

    “corresponding structure, we decline to assume for purposes of an obviousness analysis that the corresponding structure is a general-purpose computer. Because Petitioner has not identified the corresponding structures of the “mechanism” elements, which Petitioner contends are means-plus-function elements, Petitioner has not complied with our rules. 37 C.F.R. § 42.104(b)(3). Rather, Petitioner has proposed constructions that it alleges are incorrect. Having proposed constructions it alleges are incorrect, Petitioner is unlikely to prove in a trial that those constructions are correct. Nevertheless, Petitioner asks us to apply prior art to these allegedly incorrect constructions because, it argues, it is not impossible to do so. See Pet. 9. However, we decline to adopt and apply allegedly incorrect constructions, even if it might be possible to apply prior art to such incorrect constructions. In sum, because Petitioner has not identified adequately the claimed structures corresponding to the alleged means-plus-function claim terms, Petitioner has not demonstrated a reasonable likelihood of proving that the relied on prior art teaches or suggests those corresponding structures. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its obviousness challenges to the sole challenged independent claim and those that depend therefrom. We cannot and do not reach Petitioner’s arguments that the challenged claims are unpatentable for being indefinite.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have at least a bachelor’s degree in computer science or a related field, plus 4 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. at least one year of experience in the design and/or implementation of computerized information retrieval technology,” and that [a]dditional education in the field of computer science may serve as a substitute for experience in the field.” Pet. 7 (citing Ex. 1003 ¶ 35). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. 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.” slip op. at 7

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 6,785,676

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.