- Charter Communications, Inc. v. Touchstream Technologies, Inc.Institution deniedPTAB · Feb 11, 2025 · IPR2024-01232 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any obviousness ground; it also found the petition time-barred.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“later than one month after we initially instituted inter partes review in the Comcast IPR. See 37 C.F.R. § 42.122(b). As discussed above, however, inter partes review is no longer instituted in the Comcast IPR. Under these circumstances, we do not grant Petitioner’s Joinder Motion because there is no pending proceeding to join. See 35 U.S.C. § 315(c) (“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition . . . that the Director . . . determines warrants the institution of an inter partes review.”). Petitioner’s Joinder Motion is denied.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“least in part on a second message including at least one command in a second format.’” Pet. 4 (citing Ex. 1104, 168–173). The cited portion of the prosecution history shows that the applicant distinguished its claims from the prior art based on different first and second formats. The applicant argued in particular, Applicant submits that [the prior art] is completely silent with regard to “receiving, from the remote server device, a first message that includes at least one command in a first format, wherein the first message is received based at least in part on a second message including at least one command in a second format having been sent from the associated remote computing device.” In fact, [the prior art] never describes commands in different formats. . . . Ex. 1104, 170. Based on the applicant’s argument in this regard, we find that the prosecution history limits the scope of claim 1 to different first and second formats. In other words, the applicant’s argument during prosecution distinguishing its claims from the prior art based on different first and second formats overcomes the presumption based on claim differentiation that claim 1 encompasses first and second formats that are the same. See Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015) (“Although claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.”). Accordingly, claim 1 is limited to different first and second formats.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“argument and evidence. As discussed above in the claim construction section, the recited first and second formats are limited to different formats. See supra Part IV.A. To satisfy this aspect of limitation 1D under its theory, Petitioner needs to show that in Danciu the format of the control information sent from the remote control to the server is different from the format of the control information sent from the server to the controlled device. The cited disclosures in Danciu, however, do not teach or suggest that these formats are different. Nor does Petitioner explain adequately how Danciu’s disclosures teach or suggest the two formats are different. We recognize that the control information in Danciu may be “processed” or “repackaged,” as Petitioner asserts, but it is not clear that the control information is processed or repackaged such that the format of the control information sent from the remote control to the server and the format of the control information sent from the server to the controlled device are different. Petitioner does not rely on Mahajan to teach or suggest the recited first and second formats but relies on Mahajan instead as providing “implementation details for transmission of commands for controlling a client.” Pet. 27. Petitioner contends that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Id. at 31. In other words, the controlled device would receive the generic commands sent from the remote control and then translate the generic commands. It is not clear how the proposed combination in this way teaches or suggests the format of a command sent from the remote control to a server is different from the format of a command sent from the server to the controlled device.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Aldrey and Mahajan meets limitation 1D under Petitioner’s second theory. Petitioner only alleges that it would have been obvious to an ordinarily skilled artisan that Mahajan’s RTS Media Abstraction Module could operate at a server like Aldrey’s service provider network 103. Pet. 65. The Federal Circuit has explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner does not adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s abstraction module at a server, even if the abstraction module could operate at the server. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). We note Petitioner further argues that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 66–67; see also id. at 66 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating Mahajan’s abstraction module (which translates commands) at Aldrey’s network service provider. See id. at 65–67. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider–– teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner does not close these logical gaps.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - Google LLC v. Videoshare LLCInstitution deniedPTAB · Mar 24, 2021 · CBM2020-00027 · APJ Thomas L Giannetti · CBM · Institution
The Board denied institution of CBM review for claims 1–7 because the patent did not qualify as a covered business method patent; it did not reach the § 101 challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- BurdenDecided for patent owner
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“E. Subject Matter Eligibility Under 35 U.S.C. § 101 Petitioner contends that the challenged claims are directed to an abstract idea that is not eligible subject matter for a patent under 35 U.S.C. § 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea of including advertising with appropriately formatted video.” Id. at 80. Patent Owner responds that Petitioner has failed to show that the claims recite ineligible subject matter. Prelim. Resp. 64. According to Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve the functioning of a video server providing shared video files.” Id. Because we have determined that the ’341 patent does not qualify for covered business method patent review, we do not address whether the claims recite eligible subject matter under 35 U.S.C. § 101.” slip op. at 11
§ 101 eligibilityDiscretionary denialPatents in suitUS 10,362,341 - PTAB · Mar 4, 2021 · IPR2020-00344 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and upheld denial of institution because Grounds 7, 8, 11, and 12 lacked particularity, justifying denial of the entire petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. REQUEST FOR REHEARING When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of 1 The PTAB E2E docket system correctly identifies the denial of POP review as Paper “11,” dated “October 26, 2020.” This document itself, however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the PTAB E2E docket system for this IPR proceeding is Patent Owner’s “RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed on August 21, 2020 See Paper 10. We note that Patent Owner was not authorized to file this response. See Consolidated Office Patent Trial Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The opposing party should not file a response to a request for rehearing absent a request from the Board.”). No such request was made by the Board. Accordingly, Paper 10 will be expunged from this record and will not be considered in deciding Petitioner’s Request for Rehearing. discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition fails to identify with particularity what disclosure is relied on from each of the references in Grounds 7, 8, 11, and 12, how it would be combined with the other disclosures, and why the proposed combination would have been obvious to a person of ordinary skill in the relevant technology. Without any explanation as to what, how, and why the references would have been combined in Grounds 7, 8, 11, and 12, we, and the Patent Owner, are left to speculate as to the specific details of asserted unpatentability based on combining the references to arrive at the claimed invention. See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the proceeding sufficiently that we do not institute an inter partes review.” Id. at 16–17.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“asserted unpatentability of the claims challenged in Grounds 7 and 8, and why it would have been obvious to combine selected disclosures from each of the three references. We have not been directed to any persuasive evidence that the Petition met this burden.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“Petition, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20, 2020) (Precedential). Apple v. Fintiv was decided in the context of evaluating the factors related to a co-pending parallel district court proceeding. The same holistic view applies equally to situations where some claims meet the requirements for instituting a trial and some do not. While we consider the number of claims that fail to meet the statutory and other requirements to institute an inter partes review, as well as the number of claims that meet these requirements, there is no fixed threshold or ratio of claims that meet the requirements compared to those that do not meet the requirements that controls our determination, as suggested by Petitioner (see Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its “SAS Q&As”, which stated: D3. Q: Will the Board institute a petition based on the percentage of claims and grounds that meet the reasonable likelihood standard, e.g., 50%? A: No. The Board does not contemplate a fixed threshold for a sufficient number of challenges for which it will institute. Instead, the panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a). Ex. 3003, 8. As explained in our TPG, If a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, or where deficiencies in the petition (such as a failure to provide a construction under 35 U.S.C. § 112(f)) affect only a portion of the challenges presented, the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied. TPG, 64. Where no trial is instituted, a decision to that effect will be provided, as was done in this proceeding. “The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases.” Id. at 64–65.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,918,801 - LG Electronics, Inc. v. Core Wireless Licensing S.A.R.L.Institution deniedPTAB · Mar 24, 2016 · IPR2015-01987 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 16–28 because the petition did not show a reasonable likelihood of prevailing on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“any explanation as to why a person of ordinary skill in the art would come to the conclusion that the priority field of a Packet Resource Request is a requested quality of service parameter for a TBF.” Prelim. Resp. 12. We agree. Petitioner’s only support for this argument is the testimony of Dr. Fuja who states, in conclusory fashion, and without citation to evidence, that “[a person of ordinary skill in the art] would recognize that in the context of a connection in the form of a TBF the PRIORITY field is a requested quality of service parameter that is part of request messages communicated by a mobile station to a decision making device.” Ex. 1009 ¶ 76. Dr. Fuja’s testimony includes little persuasive evidence or reasoning. Accordingly, we assign it little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). On this record, Petitioner is not reasonably likely to show that GSM 04.60’s description of establishment of a TBF teaches a request message “indicating at least one requested quality of service parameter associated with the requested communication connection,” as recited in claim 16. Each of independent claims 20, 24, and 25 includes a limitation substantially similar to claim 16’s “indicating at least one requested quality of service parameter associated with the requested communication connection.” For the same reasons, GSM 04.06’s disclosure of TBF establishment does not teach these similar limitations of claims 20, 24, and 25.” slip op. at 12
- BurdenNot shown unpatentable
“We agree with Patent Owner. Claim 16 requires that the apparatus be encoded to receive from a decision making device “a channel coding scheme corresponding to said at least one quality of service parameter.” Thus, Petitioner must show that the Channel Coding Command corresponds to the QoS Information Element, or its sub-fields, identified as the at least one quality of service parameter. Petitioner’s only identified evidence of such a correspondence is Dr. Fuja’s testimony that: A POSITA would understand that the channel coding scheme that is included in the CHANNEL_CODING_COMMAND as part of the PACKET UPLINK ASSIGNMENT and the Packet Uplink Ack/Nack message is selected by the network to satisfy the QoS Profile that was negotiated during the PDP context activation procedure under the existing channel conditions. Ex. 1009 ¶ 81. As Patent Owner argues (Prelim. Resp. 9), this testimony is conclusory and lacks any explanation as to why the Channel Coding Command is selected to satisfy the QoS profile. Prelim. Resp. 9. Aside from this conclusory statement, neither Petitioner nor Dr. Fuja points to any evidence that the selection of the Channel Coding Command of GSM 04.60 has any relationship to the QoS Information Element of GSM 03.60. Petitioner’s evidence and argument is insufficient to show that the Prior GSM/GPRS Specifications or Olofsson teach this limitation. Moreover, as explained above, Petitioner has not shown sufficiently that the Channel Coding Command is received from the SGSN, which Petitioner identifies as the “decision making device” of claim 16.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Patent Owner responds that “neither Petitioner nor its declarant offer any explanation as to why a person of ordinary skill in the art would come to the conclusion that the priority field of a Packet Resource Request is a requested quality of service parameter for a TBF.” Prelim. Resp. 12. We agree. Petitioner’s only support for this argument is the testimony of Dr. Fuja who states, in conclusory fashion, and without citation to evidence, that “[a person of ordinary skill in the art] would recognize that in the context of a connection in the form of a TBF the PRIORITY field is a requested quality of service parameter that is part of request messages communicated by a mobile station to a decision making device.” Ex. 1009 ¶ 76. Dr. Fuja’s testimony includes little persuasive evidence or reasoning. Accordingly, we assign it little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“encoded to receive from a decision making device “a channel coding scheme corresponding to said at least one quality of service parameter.” Thus, Petitioner must show that the Channel Coding Command corresponds to the QoS Information Element, or its sub-fields, identified as the at least one quality of service parameter. Petitioner’s only identified evidence of such a correspondence is Dr. Fuja’s testimony that: A POSITA would understand that the channel coding scheme that is included in the CHANNEL_CODING_COMMAND as part of the PACKET UPLINK ASSIGNMENT and the Packet Uplink Ack/Nack message is selected by the network to satisfy the QoS Profile that was negotiated during the PDP context activation procedure under the existing channel conditions. Ex. 1009 ¶ 81. As Patent Owner argues (Prelim. Resp. 9), this testimony is conclusory and lacks any explanation as to why the Channel Coding Command is selected to satisfy the QoS profile. Prelim. Resp. 9. Aside from this conclusory statement, neither Petitioner nor Dr. Fuja points to any evidence that the selection of the Channel Coding Command of GSM 04.60 has any relationship to the QoS Information Element of GSM 03.60. Petitioner’s evidence and argument is insufficient to show that the Prior GSM/GPRS Specifications or Olofsson teach this limitation. Moreover, as explained above, Petitioner has not shown sufficiently that the Channel Coding Command is received from the SGSN, which Petitioner identifies as the “decision making device” of claim 16. We cannot conclude, on this record, that Petitioner is likely to show that the GSM/GPRS Specifications or Olofsson teach an apparatus encoded to “receive from said decision making device a channel coding scheme corresponding to said at least one quality of service parameter,” as recited in claim 16. The remaining independent claims have analogous limitations that Petitioner, for the same reasons, has failed to show in the Prior GSM/GPRS Specifications or Olofsson. Specifically, independent claim 20 recites “a receiver configured to receive from the network element, a channel coding scheme corresponding to said at least one quality of service parameter”; independent claim 24 recites “receive from said decision making device at least one of a channel coding and interleaving scheme corresponding to said at least one quality of service parameter”; and independent claim 25 recites “receiving from said decision making device a channel coding scheme corresponding to said at least one quality of service parameter.”” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham - Apple Inc. v. Contentguard Holdings, LLCInstitution deniedPTAB · Jul 10, 2015 · IPR2015-00446 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1–18 were obvious over ABYSS and Denning, with or without Hartrick.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“C. Procedural Defects As a threshold matter, the Petition has several significant procedural defects. For instance, a petition for inter partes review must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify . . . [h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) requires a petition to “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus 12 on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). We agree with the Patent Owner that the Petition fails to satisfy at least the rule requirements. See Prelim. Resp. 4–10. The Petition contains vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. See, e.g., Pet. 48–49 (discussing the preamble of claim 1, and citing inter alia, “[Pet.] § IV.A.1, A.3; Ex. 1016 at 38–40, 43–45; Ex. 1013 at ¶ C18–22 and “Ex. 1016 at 38–40, 42, 49, 50; [Pet.] § IV.A.3–4; Ex. 1013 at ¶ C106– 26”).” slip op. at 12
- BurdenDenied
“defects. For instance, a petition for inter partes review must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify . . . [h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) requires a petition to “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus 12 on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). We agree with the Patent Owner that the Petition fails to satisfy at least the rule requirements. See Prelim. Resp. 4–10. The Petition contains vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. See, e.g., Pet. 48–49 (discussing the preamble of claim 1, and citing inter alia, “[Pet.] § IV.A.1, A.3; Ex. 1016 at 38–40, 43–45; Ex. 1013 at ¶ C18–22 and “Ex. 1016 at 38–40, 42, 49, 50; [Pet.] § IV.A.3–4; Ex. 1013 at ¶ C106– 26”).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“1. Insufficient Information for Graham Analysis A patent claim is unpatentable as obvious 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 17 the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).3 The legal conclusion of obviousness is resolved on the basis of underlying factual determinations, including (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner points out, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, ABYSS, Denning, and Hartrick. See Prelim. Resp. 6–7, 42–44; Pet. 22–60. Rather than address these differences, the Petition creates a hypothetical ABYSS-Denning system—based on how a person of ordinary skill in the art allegedly “would” or “could” do––in an “Operation of the Implemented System” analysis divorced from the language of the ’956 patent claims. See Pet. 39–42 (emphasis omitted). The Petition then argues, 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the ’956 patent was filed before March 16, 2013, references and citations to § 103 in this Decision are to the pre-AIA version. 18 in conclusory fashion, that this hypothetical system meets each of the limitations of the claims. See id. at 48–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements elements of both ABYSS and Denning as well as the knowledge of one of ordinary skill in the art—obscures any comparison of the individual prior art references to the claim limitations. It does not explain with any particularity which claim limitations are absent from ABYSS or Denning. See Prelim. Resp. 6–7, 42–44. Therefore, the Petition fails to provide sufficient information regarding its proffered ground of unpatentability, and fails to present a proper Graham analysis as required to show that the challenged claims are unpatentable. Accordingly, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over ABYSS and Denning. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . .” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“2. Lack of Rationale to Combine and Improper Hindsight “[R]ejections on obviousness grounds 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The reason for this is that “[w]hile the Supreme Court made clear that a mechanical application of the teaching-suggestion-motivation test, requiring an explicit teaching in the prior art, is inappropriate, ‘[w]e must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.’” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008)); see also KSR , 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)). Thus, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to 20 achieve the result of the claims in suit.’” Grain Processing Corp. v. Am. Maize–Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). As discussed above, Petitioner reads the claims onto a proposed hypothetical ABYSS-Denning system. See Pet. 38–60. Although Petitioner frames the hypothetical ABYSS-Denning system as created by four main modifications, each of these modifications includes what appear to be additional modifications about what the hypothetical system “could” do, which neither reference discloses, and which the Petition does not support with sufficient reasoning or citation. See Pet. 36–39 (modifications); see, e.g., Pet. 40–41 (reasoning that a “vendor could restrict distribution to processors that had a digital certificate issued by a particular authority,” and “[t]he vendor also could specify as a condition” further changes) (citing Pet. “§ IV.D.1; Ex. 1013 at ¶ C83–89, C113”). Considering the proposed changes together, which are devoid of a clear reference to claim limitations, the Petition lacks adequate reasoning, with rational underpinning, to show sufficiently that a person of ordinary skill would have combined the teachings of ABYSS and Denning to reach the hypothetical ABYSS- Denning system and render the claims obvious. In other words, the Petition fails to explain sufficiently why a person of ordinary skill would simultaneously make all of the particular proposed changes and implementation choices. Moreover, the mere fact that individual changes might have been obvious does not make doing all of the changes at once 21 obvious. See In re Irani, 427 F.2d 806, 809 (CCPA 1970) (“Obviousness, however, must not be judged by hindsight, and a ‘little modification’ can be a most unobvious one.”). The extent of the proposed modifications and the thin reasoning proffered for each modification suggests that the Petition improperly uses Patent Owner’s claims as a guide in constructing a system loosely based on ABYSS and Denning. See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1355 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted)); see also W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983) (“The result is that the claims were used as a frame, and individual, naked parts of separate prior art references were employed as a mosaic to recreate a facsimile of the claimed invention. At no point did the district court, nor does Garlock, explain why that mosaic would have been obvious to one skilled in the art . . . .”). The Petition’s analysis, infected with impermissible hindsight, cannot form the basis of a proper obviousness finding. See KSR , 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to 22 read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)).” slip op. at 20
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,370,956
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.