- Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Jul 22, 2024 · IPR2024-00407 · APJ Thu A Dang · IPR · Institution
Instituted IPR on claims 1–20 of the ’289 patent over four § 103 grounds: Giobbi ’157/Giobbi ’139; with Dua; Broadcom; and Broadcom with Giobbi ’157.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. 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 grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- BurdenOther
“We find Patent Owner’s arguments unavailing. In particular Patent Owner is relying on a claim construction of “enabling” requiring “providing an access key in exchange for information held locally in the PDK’s service blocks” (Prelim. Resp. 32–35) that is not required by our construction discussed above. As discussed above, we determine that the term “enabl[ing] an application, a function or a service” is not limited to “receiv[ing] information from a PDK in exchange for an access key.” Giobbi ’157 teaches, for example, a RDC requesting profile data stored within the external PDK for authentication, wherein, if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein its completion “enabl[es] access to secure physical or digital assets,” i.e., “enables one or more of an application, a function, and service.” See Pet. 35. a sufficient showing that the combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of (a) the integrated, wireless communication interface . . . and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service,” as recited in claim 1.” slip op. at 33
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 28– 29, 67–68; Prelim. Resp. 27−29. Further, nothing in the Specification clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 27. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 28. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition],” and not a definition. See Ex. 1001, 3:43–50. The language Patent Owner points to in the Specification proves that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” Prelim. Resp. 28 (citing Ex. 1001, 3:43–50) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a “service block” can be used as “local secure information,” nothing in the Specification limits “local, secure information” to “information stored within service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.6 Id. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “local, secured information” as claimed 6 We are unpersuaded by Patent Owner’s contention that “the permissive language ‘in this example’ does not expand the definition ‘local secure information’” because “it applies to the sensors.” Prelim. Resp. 28. The Specification is clear that, in this example, “the” same service access keys 118 contained by the sensor allow the sensor to unlock information “used as local secured information.” See Ex. 1001, 3:43–50. wherein the information is secured,,and is not limited to information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In view of the plain language of the claims and the Specification, we determine that the term “hybrid device” recited in claims 1–16, and 19 is not limited to “comprising an integrated personal digital key (PDK).” We determine no further explicit construction is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803. 2. “receiver-decoder circuit (RDC)” Patent Owner proposes construing “receiver-decoder circuit” appearing in claims 1, 3, 7, 14, and 16 as “a component or collection of components, capable of wirelessly receiving data in an encrypted format and decoding the encrypted data for processing” as “construed” by the district court in the Samsung case. Prelim. Resp. 7–8 (citing Ex. 2001, 4; Ex. 2004, 4). Petitioner contends that, “[f]or purposes of this proceeding, Petitioner adopts this construction [adopted in the district court].” Pet. 5. We determine no explicit construction of “receiver-decoder circuit” is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Jul 22, 2024 · IPR2024-00405 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that at least one challenged claim would be unpatentable under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. 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 grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The plain meaning of “an integrated, secure memory storing local, secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 28– 29, 67–68; Prelim. Resp. 22−23. Further, nothing in the Specification or the clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 22. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 22. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition]” (id.), this portion of the Specification merely shows an exemplary embodiment and not a definition. The language Patent Owner points to in the Specification provides that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” Id. (citing Ex. 1001, 3:50–57) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a corresponding service block can be used as “local secure information,” nothing in the Specification limits “local, secure information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.6 Id. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “local, secured information” as claimed encompasses information stored locally on an integrated, secure memory, wherein the information is secured, and is not limited to information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 22. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition]” (id.), this portion of the Specification merely shows an exemplary embodiment and not a definition. The language Patent Owner points to in the Specification provides that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” Id. (citing Ex. 1001, 3:50–57) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a corresponding service block can be used as “local secure information,” nothing in the Specification limits “local, secure information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.6 Id. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “local, secured information” as claimed encompasses information stored locally on an integrated, secure memory, wherein the information is secured, and is not limited to information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK.” slip op. at 9
- Prior constructionPrior construction not adoptedDecided for petitioner
“We are unpersuaded by Patent Owner’s contention that “the District Court found it necessary to construe the term ‘enabled.’” Prelim. Resp. 4–5. In particular, we disagree that the district court in the Samsung case provided any construction for the term “enabled.” Id. Although Patent Owner points to the district court’s Memorandum in Support of Claim Construction Order (Id. (citing Ex. 2002, 26)) to support its contention that the district court construed the term “enabled,” this portion of the district court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Ex. 2002, 26. That is, a determination of whether a term is indefinite is not the same things as construing a claim term. Thus, the district court’s determination that “hybrid device” is not indefinite did not construe that term, much less provide a construction of “enabled” recited in the claim. Accordingly, although the referenced portion of the district court’s Memorandum indicates that a POSITA could reasonably ascertain the scope of the claim (id.), nothing in the Memorandum provides a definition of “enabled” limited to “exchanging an access key for information held within a service block of a PDK,” as Patent Owner contends. Prelim. Resp. 19.” slip op. at 11
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,073,960 - PTAB · Jun 26, 2024 · IPR2023-01116 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on all challenged claims based on two §103 grounds: Patten, Ben-Rubi, and AAPA; and those references with Plotnick.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the ’302 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“35 U.S.C. § 103 requires resolving the level of ordinary skill in the pertinent art at the time of the effective filing date of the claimed invention. Graham, 383 U.S. at 17. The person of ordinary skill in the art is a hypothetical person who knows the relevant art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors in determining the level of ordinary skill in the art include the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. One or more factors may predominate. Id. Petitioner contends that person of ordinary skill in the art “would have held a bachelor’s degree in electrical or computer engineering or a related field (or equivalent understanding through actual work experience), and had at least two years of experience related to multimedia systems such as video and audio systems.” Pet. 9 (citing Ex. 1003 ¶¶ 1–10, 22–23). Patent Owner does not propose a level of ordinary skill. See generally Prelim. Resp. Based on a review of the preliminary record, for purposes of the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’302 patent specification, except that we delete the experience.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownOther
“supply broadcast digital video/audio programmes having therein periodic breaks for the insertion of advertisements.” See Pet. 11. Petitioner lists the corresponding structure as “hard disc 62 in PVR 60 with a part that stores programme database 80.” Id. (citing Ex. 1002 ¶ 82; Ex. 1001, 4:57–62). But that cited disclosure states that “programme database 80 . . . stores the broadcast programme segments.” Id. at 4:59–60. This storage does not clearly link database 80, which “stores the broadcast programme segments,” as corresponding to the “supply means” of the programmes. Rather, the specification indicates that “the broadcaster broadcasts the programme with its interleaved advertisements,” indicating that a broadcaster is the source (i.e., “supply means”) of the programme and advertisements. See Ex. 1001, 5:33–34 (emphasis added). Even though Petitioner’s proposed claim construction points to portions of the PVR as part of the supply, the Petition also indicates that the Applicant admits that “[t]he prior art ‘PVR receives broadcast digital television and audio signals from an aerial 20,’ . . ., and that ‘the connections to an aerial 20, a modem 22 and the Internet 24 are as in the prior art.’” Pet. 18 (quoting Ex. 1001, 1:65–67, 4:44–45; Ex.1003 ¶ 35). In any event, as discussed below, Petitioner shows that Patten discloses the supply means as a hard disk, which is consistent with the district court construction (and possibly with the ’302 patent), and also that television broadcasters supply broadcast television, at least the latter of which is consistent with the AAPA and the ’302 patent. To the extent there is a controversy, the parties should clarify the construction of “programme supply means” and other terms discussed below during the trial. claims 1 and 12, Petitioner contends that the corresponding structure is “hardware and/or software arranged to perform steps 102, 104, and 112 of FIG. 8 of the ’302 Patent, as described at 6:40–62 and 7:17–27 of the specification.” Pet. 12. Tracking the claim language in limitations 1.i and 1.h, Petitioner identifies two recited functions of the “control means” as follows: “read said first field and said clock signal and said rules database and to apply said local broadcasting time regulation to each advertisement before said advertisement is shown”; and “update the second field in the header of said advertisement when said advertisement is again shown during time-shifted viewing.” See id. at 12–13. However, it is not clear on this preliminary record if steps 102, 104, and 112 of Figure 8 represent (algorithmic) structure clearly linked to recited functions of the control means. First, steps 102, 104, and 112 of Figure 8 appear to include additional functionality not required by claim 1. See Ex. 1008, Fig. 8 (Step 102 describing a “mix of adverts”; step 112 describing “record any key depressions”), 7:17–17 (describing other functionality not required by the claim 1). Second, to the extent the process flow of Figure 8 also represents some algorithmic structure, it remains unclear on this preliminary record as to how much of any such structure is clearly linked to the recited functions of claim 1––as opposed to the unclaimed functionality described in Figure 8. At this preliminary stage, we construe the corresponding structure as PVR hardware and/or software arranged to perform the recited functions of (1) to read said first field and said clock signal and said rules database; (2) to apply said local broadcasting time regulation to each advertisement before said advertisement is shown; and (3) to update the second field in the header of said time-shifted viewing. In other words, it does not appear on this preliminary record that the specification clearly links specific hardware and/or software to these claimed functions, other than generally disclosing a PVR, which Petitioner also points to as corresponding structure. See Pet. 17–18 (pointing to the disclosed AAPA PVR and other known hardware items as represented in Figure 1 as performing “nearly all of the claimed features”); Ex. 1001, 4:43 (describing “a PVR 60 for use in a system according to the invention” according to Figure 4 (described above)). slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner sufficiently shows that Patten employs metadata for storing various attributes or rules for advertisements, Ben-Rubi teaches headers for advertisements, Patten and Ben-Rubi track the number of times an advertisement was shown, and headers with different data fields for storing metadata were well-known as efficient mechanisms for reducing processing time and organizing data. On this preliminary record, Petitioner at least shows that using the well-known advertising metadata header data scheme of Ben-Rubi and including multiple data fields in Patten’s similar system of storing different types of advertising metadata was a “suitable option” for storing and organizing data for video streams, and in addition, would have provided known benefits. See Intel Corporation v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. March 13, 2023) (reversing the Board because “contrary to the Board’s suggestion, Intel never had to show that replacing Kabemoto’s secondary cache with Bauman’s secondary cache was an ‘improvement’ in a categorical sense,” rather, “Intel just had to show that Bauman’s secondary cache was a ‘suitable option’ to replace Kabemoto’s secondary cache.” (quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021)). Based on the foregoing discussion, on this preliminary record, Petitioner’s showing as to limitation 1.e is sufficient.” slip op. at 27
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,392,302 - PTAB · May 8, 2024 · IPR2024-00175 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–17 and all petition grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Biswas and Kumar. Patent Owner focuses on specific details of the packet classification system of Kumar, whereas Petitioner relies on the combination of Biswas and Kumar. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for obviousness is not whether the 6 “Minoli Decl.” refers to the Declaration of Daniel Minoli, filed by Patent Owner in support of its Preliminary Response. Ex. 2001. features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d at 425; In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). At this stage, we are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have known to use the masking techniques exemplified by Kumar to implement the disclosed operation in Biswas of edge routers providing hosts with port number ranges. Bhattacharjee Decl. ¶¶ 77, 97–101. Accordingly, for purposes of this Decision, we accept Partitioner’s proffered combination of Biswas and Kumar.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In regard to the reexamination proceedings that Patent Owner relies on, however, the current record presents circumstances not well suited for the Becton Dickinson factors. Here, the reexamination is in its early stages, and no office action has issued. It is premature to characterize the reexamination grounds as “previously presented,” or to evaluate whether the Office erred in a manner material to the patentability of challenged claims. See, e.g., Mueller Sys., LLC v. Rein Tech, Inc., IPR2020-00099, Paper 9, 10– 14 (PTAB May 12, 2020) (holding that §325(d) did not apply to prior art submitted in pending reexamination that had not yet resulted in an office action). Moreover, the Examiner’s determination in the January 18, 2024 grant of the reexamination request is consistent with Petitioner’s arguments here, in that it found substantial new questions of patentability with respect to both a Biswas patent asserted to be similar to the Biswas patent asserted here, and Fangman, also asserted here. Ex. 2008, 20. Therefore, there is little basis to predict that, in the further course of the reexamination proceedings, the Office will have erred in a manner material to the patentability of challenged claims. Also, the finding of substantial new questions of patentability supports a determination that the Office was not “previously” presented with the same art or arguments as in the Petition because the Examiner determined that arguably similar (the reexamination Biswas patent) and identical (the Fangman patent) references presented new questions of patentability. See Mueller, IPR2020-00100, Paper 9, 10. We note that the Office has advised that “[t]he Board . . . may deny institution under 35 U.S.C. [§] 325(d) of a requested AIA trial proceeding if a parallel Office proceeding, for example, is in a more advanced stage and involves overlapping issues with the proposed AIA trial proceeding.” Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg. 16,654, 16,657 (Apr. 22, 2019). The Examiner in the reexamination proceeding at issue here has found that the art presented there is “substantially the same prior art” as Petitioner asserted in this IPR. Ex. 2008, 20. As stated above, both proceedings rely on Fangman, and the two Biswas references are similar. The early stage of the reexamination proceeding, however, weighs against denying institution. See Mueller, IPR2020-00100, Paper 9, 13. In addition, unlike this proceeding, the reexamination does not involve consideration of the teachings of Kumar, which as discussed above is critical to the question of obviousness of using a mask to define a range of port numbers. After weighing all the considerations discussed above, we determine” slip op. at 27
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Patent Owner also argues that the fact that Unified Patents submitted the reexamination request presents a real party in interest issue that is an additional reason to deny institution. Prelim. Resp. 46–48. However, the present record does not present facts that would support this argument.” slip op. at 29
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,693,369 - PTAB · Apr 25, 2024 · IPR2023-01268 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–10, finding a reasonable likelihood of success on the asserted Paasonen and Hotelling grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–10 of the ’631 patent to determine whether:” slip op. at 48
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), weigh in favor of denying institution in view of the district court litigation. Prelim. Resp. 27–47. A USPTO Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Interim Procedure”) provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation. Ex. 1300; Paper 24, 8. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner acknowledges that it and Patent Owner have proposed constructions in the district court litigation, but contends that “the Board need not construe these terms because the prior art discloses or renders obvious embodiments within the indisputable scope of the claims under the parties’ and any reasonable interpretations.” Pet. 13. Patent Owner similarly points to the proposed constructions in the district court litigation but also does not propose any claim construction in its Preliminary Response. See Prelim. Resp. 24–25. At this time, we determine that no terms of the challenged claims require explicit construction. See, e.g., 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))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Here, Petitioner makes a sufficient showing that “Paasonen and Nakano are in the same field as the ’631 [patent]—which includes mobile interfaces,” wherein “Paasonen discloses sequentially displaying the four most-recently active applications in the application switcher panel,” and “Nakano’s teachings permit a user to browse additional applications.” Pet. 44 (citing Ex. 1001, 2:32–51; Ex. 1005, 1:6–9, 3:41–4:25; Ex. 1006 ¶¶ 1, 6, 14–15; Ex. 1003 ¶ 119). On this present record, we are sufficiently persuaded by Petitioner’s showing, supported by the testimony of Dr. Madisetti, that a POSITA would have been motivated “to modify Paasonen’s application switcher panel with Nakano’s scrolling teachings in order to more easily access recently-active applications by scrolling through more than four icons.” Id. at 45; Ex. 1003 ¶ 120. Having reviewed all of Petitioner’s assertions, as well as the supporting evidence, we determine on this record that Petitioner has made a sufficient showing Paasonen in combination with Nakano discloses “in response to a first command for sequentially displaying icons, performing sequential display of icons such that an icon corresponding to the second work process is displayed,” “the icon corresponding to the second work process is displayed in the designated portion of the display,” as recited in claim 1. Further, having reviewed all of Petitioner’s assertions and the supporting evidence, we determine on this record that Petitioner has made a sufficient showing of motivation to combine Paasonen and Nakano. For the foregoing reasons, we determine that the evidence and arguments presented show a reasonable likelihood that Petitioner would prevail in establishing that the subject matter of claims 1–10 would have been obvious over Paasonen and Nakano.” slip op. at 32
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,575,631 - PTAB · Apr 25, 2024 · IPR2024-00146 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1, 3–5, 7–11, 13–20, and 22–27 on all grounds, finding a reasonable likelihood of success on the obviousness grounds.
RulingsInstitution decision- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Our inquiry begins and ends with the first test pertaining to the field of the endeavor. Patent Owner is correct that the ’555 patent is in the field of video streaming over the internet with shifting of streaming content based on network conditions. See Ex. 1001, 1:31–34. Similarly, Ogdon discloses shifting presentation content that is transmitted over the internet based on network conditions. See, e.g., Ex. 1004, 1:9–15. The only potential discrepancy appears to be whether Ogdon’s disclosed presentation content can include streaming video. And Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66; see also infra § II.D.3.a (discussing Ogdon’s disclosure of video presentations). We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art because it is in the same field of endeavor as the ’555 patent. slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“reasonable likelihood of prevailing in showing that an ordinarily skilled artisan would have been motivated to combine Ogdon and Allen to yield this limitation. Ogdon teaches different quality versions of a presentation that may include video (see, e.g., Ex. 1004, 2:8–10, 2:30–66, 13:47–49, 22:44– 47, 24:55), and Allen expressly teaches encoding the same content at bitrates of 56 kbps, 300 kbps, and 600 kbps (see, e.g., Ex. 1005, 12:1–5). Based on these teachings, Petitioner shows sufficiently, on this record, that it would have been obvious to encode streaming video into low, medium, and high quality streams. See, e.g., Ex. 1003 ¶¶ 68–70. We also are sufficiently persuaded on this record that an ordinarily skilled artisan would have combined Allen with Ogdon to enable streaming video presentations for a variety of different available bandwidths. See, e.g., Ex. 1003 ¶ 70; Ex. 1004, code (57). In particular, Ogdon’s teaching of retrieving alternatively sized presentations based on transmission data rates supports Petitioner’s proposed combination with Allen’s teaching of encoding video at different bitrates. See Ex. 1004, code (57) (stating that a greater-sized presentation for a “higher transmission rate” has “corresponding enhanced quality of presentation” compared to a reduced-sized version for a “low transmission data rate”), 22:44–47 (stating that “as the expected amount of time for retrieving one or more presentation elements lengthens, . . . better presentation quality presentation elements may be retrieved (e.g., the presentation quality may be enhanced from limited or no animation to full animation)”). And Petitioner establishes sufficiently that an ordinarily skilled artisan reasonably would have expected success in making the combination, particularly given that Ogdon already contemplates alternative presentations for different transmission rates. See, e.g., Ex. 1003 ¶¶ 68, 70; Ex. 1004, code (57). Patent Owner’s arguments are directed to Ogdon alone and do not account for Petitioner’s proposed modification based on Allen.3 Such arguments do not show nonobviousness where Petitioner’s obviousness ground is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Furthermore, to the extent Patent Owner argues that an ordinarily skilled artisan would not have been motivated to modify Ogdon as proposed, it fails to sufficiently explain this contention. For example, we do not read Ogdon to indicate that its presentation versions must be wholly different types of presentation materials, i.e., presentations in different languages or presentations tailored for different audiences. We also do not agree with Patent Owner (Prelim. Resp. 20–22) that Ogdon fails to teach or suggest video streaming for the same reasons discussed above.” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Based on the present record, we find that the secondary considerations findings from the ITC Investigation do not undermine the sufficiency of Petitioner’s obviousness showing at this stage.5 We note that Patent Owner “bears the burden of production with respect to evidence of secondary considerations of nonobviousness.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1373 (Fed. Cir. 2018). At this stage, Patent Owner merely references the findings of the ITC rather than adducing evidence of objective indica of nonobviousness in the first instance and attempting to establish a nexus to the invention of the ’555 patent. Further, Petitioner has adduced at least some evidence that the allegedly unique features of the Move Media Player were known in Ogdon, which tends to undermine the ITC’s nexus analysis. See, e.g., Ex. 1004, 14:46–49, 22:48–63. We also disagree with Patent 5 Patent Owner also argues that Dr. Houh’s testimony is unreliable because he failed to consider evidence of secondary considerations from the ITC Investigation. Prelim. Resp. 42–43. We decline to discount Dr. Houh’s testimony on this basis. Regardless of whether Dr. Houh addressed secondary considerations, we find his testimony relevant at this stage to our consideration of (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; and (3) the level of skill in the art. See Graham, 383 U.S. at 17–18. Owner (Prelim. Resp. 41–42) that Ogdon does not disclose streaming video for the same reasons mentioned above. See supra §§ II.D.1, II.D.3.a. For these reasons, we find that the evidence of secondary considerations in the present record does not undermine Petitioner’s showing for purposes of institution. We also decline to exercise our discretion to deny institution based on Petitioner’s alleged failure to address secondary considerations. Patent Owner will have the opportunity at trial to produce evidence related to secondary considerations of nonobviousness.” slip op. at 30
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Claim 18 recites, inter alia, “at least one storage device configured to store live event video, the live event video encoded at a plurality of different bit rates creating a plurality of streams including at least a low quality stream and a high quality stream.” Ex. 1001, 20:45–49. Claim 18 additionally recites that “the low quality stream and the high quality stream each encod[e] the same portion of the live event video.” Id. at 20:50–53. Petitioner cites Ogdon’s discussion of storing different versions of a presentation. See Pet. 17–19. Patent Owner argues that Ogdon fails to teach multiple copies of the same video encoded at different bitrates, as required by the claim. Prelim. Resp. 16 (citing Ex. 2001 ¶ 60). Having reviewed the parties’ arguments and the evidence of record, we determine that Petitioner has not sufficiently shown that Ogdon alone discloses storing the same portion of live event video as a low quality stream and a high quality stream. Although we preliminarily agree that Ogdon teaches the use of video as a version of a presentation, we do not agree that Ogdon alone discloses storing multiple copies of the same video. Specifically, Ogdon describes storing different versions of a presentation, rather than multiple copies of the same video.9 See Ex. 1004, code (57), 2:30–66, 13:47–49, 22:44–47, 24:55, claim 9. For these reasons, Petitioner does not show that there is a reasonable likelihood that it would prevail in establishing that Ogdon discloses claim 18. Petitioner’s analysis for claim 19, which depends from claim 18, is likewise deficient.” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,469,555 - PTAB · Apr 16, 2024 · IPR2024-00046 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1, 2, 4–12, 14–19, 21–25, and 27–29 on both § 103 grounds, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1, 2, 4–12, 14–19, 21–25, and 27–29 of the ’680 patent to determine whether:” slip op. at 46
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Because there are material differences between Ogdon and Carmel, we determine that Ogdon is not substantially the same as Carmel. See Nokia of Am. Corp. v. Soto, IPR2023-00680, Paper 18 at 6 (Vidal Mar. 28, 2024) (“[P]rior art references are not ‘substantially the same’ when there are differences between them that are material to the Office’s prior consideration of the art.” (citing Wolfspeed, Inc. v. Trustees of Purdue University, IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023)). As Patent Owner points out, the Examiner distinguished Carmel during prosecution of the ’138 patent because it did not teach streamlets of the same duration. Prelim. Resp. 36 (citing Ex. 2002, 2–5). In contrast, Petitioner cites Ogdon in the Petition for teaching, inter alia, segments that have “approximately the same presentation duration.” See, e.g., Pet. 25 (quoting Ex. 1004, 2:49–55). Based on the present record, we disagree with Patent Owner that Ogdon fails to disclose what the Office “has already found Carmel lacked,” i.e., “streamlets of the same length.” Prelim. Resp. 36–37. That is, we find that Petitioner applies Ogdon in a manner here that is distinguishable from the way Carmel was understood by the Examiner, as shown by the prosecution of the ’138 patent. Thus, we find that the same or substantially the same art or arguments were not previously presented, so we need not proceed past the first stage of the Advanced Bionics framework with respect to Ogdon. Advanced Bionics, Paper 6 at 8. Accordingly, we do not exercise our discretion to deny the Petition based on the framework set forth in Advanced Bionics.” slip op. at 14
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Our inquiry begins and ends with the first test pertaining to the field of the endeavor. We agree with Patent Owner that the ’680 patent is in the field of video streaming over the Internet with adaptive-rate shifting of presentation content based on network conditions. See Ex. 1001, 1:31–34. However, Ogdon similarly discloses switching transmission rate of presentation content that is transmitted over the Internet based on network conditions. See, e.g., Ex. 1004, 3:38–41. Further, Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66. We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art to the ’680 patent because it is in the same field of endeavor as the ’680 patent. slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are sufficiently persuaded that a POSITA would have combined Allen with Ogdon to enable streaming video presentations for a variety of different available bandwidths. See, e.g., id. ¶ 70; see also Ex. 1004, code (57). In particular, Ogdon’s teaching of retrieving alternatively sized presentations based on transmission data rates supports Petitioner’s proposed combination with Allen’s teaching of encoding video at different bitrates. See Ex. 1004, code (57) (stating that a greater-sized presentation for a “higher transmission rate” has “corresponding enhanced quality of presentation” compared to a reduced-sized version for a “low transmission data rate”), 22:44–47 (stating that “as the expected amount of time for retrieving one or more presentation elements lengthens, . . . better presentation quality presentation elements may be retrieved (e.g., the presentation quality may be enhanced from limited or no animation to full animation)”). And Petitioner establishes sufficiently that an ordinarily skilled artisan reasonably would have expected success in making the combination, particularly given that Ogdon already contemplates alternative presentations for different transmission rates. See, e.g., Ex. 1004, code (57); see also Ex. 1003 ¶ 71. We note Patent Owner’s arguments are directed to Ogdon alone and do not account for Petitioner’s proposed modification based on Allen. Prelim. Resp. 16–17. Such arguments do not show nonobviousness where Petitioner’s obviousness ground is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981).” slip op. at 28
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,951,680 - PTAB · Apr 16, 2024 · IPR2024-00043 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–9, 11–19, and 21–24 on all three § 103 grounds, finding a reasonable likelihood of unpatentability over the specified reference combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Because there are material differences between Ogdon and Carmel, we determine that Ogdon is not substantially the same as Carmel. See Nokia of Am. Corp. v. Soto, IPR2023-00680, Paper 18 at 6 (Vidal Mar. 28, 2024) (“[P]rior art references are not ‘substantially the same’ when there are differences between them that are material to the Office’s prior consideration of the art.” (citing Wolfspeed, Inc. v. Trustees of Purdue University, IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023)). As Patent Owner points out, the Examiner distinguished Carmel during prosecution of the ’138 patent because it did not teach streamlets of the same duration. Prelim. Resp. 40 (citing Ex. 2002, 1329–31). In contrast, Petitioner cites Ogdon in the Petition for teaching, inter alia, segments that have “approximately the same presentation duration.” See, e.g., Pet. 21–22 (quoting Ex. 1004, 2:49–55). Based on the present record, we disagree with Patent Owner that Ogdon fails to disclose what the Office “has already found Carmel lacked,” i.e., “streamlets of the same length. Prelim. Resp. 40. That is, we find that Petitioner applies Ogdon in a manner that is distinguishable from the way Carmel was understood by the Examiner during prosecution of the ’138 patent. Thus, we find that the same or substantially the same art or arguments were not previously presented, so we need not proceed past the first stage of the Advanced Bionics framework with respect to Ogdon. Advanced Bionics, Paper 6 at 8.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this time, we determine that no terms of the challenged claims require explicit construction. See, e.g., 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))).” slip op. at 14
- BurdenInstitutedInstituted
“the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that the limitations of independent claim 1 would have been obvious over Ogdon and Allen.” slip op. at 40
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We agree with Patent Owner that the ’798 patent is in the field of video streaming over the Internet with adaptive-rate shifting of presentation content based on network conditions. See Ex. 1001, 1:31–34. However, Ogdon similarly discloses switching transmission rate of presentation content that is transmitted over the Internet based on network conditions. See, e.g., Ex. 1004, 3:38–41. Further, Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66. We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art to the ’798 patent because it is in the same field of endeavor as the ’798 patent.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,677,798 - PTAB · Apr 16, 2024 · IPR2024-00045 · APJ John A Hudalla · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7, 8, 10–14, 16–20, 22–28, and 30 on all asserted grounds, finding a reasonable likelihood of prevailing on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–5, 7, 8, 10–14, 16–20, 22– 28, and 30 of the ’554 patent on all grounds of unpatentability presented.” slip op. at 2
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Our inquiry begins and ends with the first test pertaining to the field of the endeavor. Patent Owner is correct that the ’554 patent is in the field of video streaming over the internet with shifting of streaming content based on network conditions. See Ex. 1001, 1:31–34. Similarly, Ogdon discloses shifting presentation content that is transmitted over the internet based on network conditions. See, e.g., Ex. 1004, 1:9–15. The only potential discrepancy appears to be whether Ogdon’s disclosed presentation content can include streaming video. And Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66; see also infra § II.D.3.a (discussing Ogdon’s disclosure of video presentations). We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art because it is in the same field of endeavor as the ’554 patent. slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the present record, we are persuaded that Petitioner has a reasonable likelihood of prevailing in showing that an ordinarily skilled artisan would have been motivated to combine Ogdon and Allen to yield this limitation. Ogdon teaches different quality versions of a presentation that may include video (see, e.g., Ex. 1004, 2:8–10, 2:30–66, 13:47–49, 22:44– 47, 24:55), and Allen expressly teaches encoding the same content at bitrates of 56 kbps, 300 kbps, and 600 kbps (see, e.g., Ex. 1005, 12:1–5). Based on these teachings, Petitioner shows sufficiently, on this record, that it would have been obvious to encode streaming video into low, medium, and high quality streams. See, e.g., Ex. 1003 ¶¶ 62–64. We also are sufficiently persuaded on this record that an ordinarily skilled artisan would have combined Allen with Ogdon to enable streaming video presentations for a variety of different available bandwidths. See, e.g., Ex. 1003 ¶ 64; Ex. 1004, code (57). In particular, Ogdon’s teaching of retrieving alternatively sized presentations based on transmission data rates supports Petitioner’s proposed combination with Allen’s teaching of encoding video at different bitrates. See Ex. 1004, code (57) (stating that a greater-sized presentation for a “higher transmission rate” has “corresponding enhanced quality of presentation” compared to a reduced-sized version for a “low transmission data rate”), 22:44–47 (stating that “as the expected amount of time for retrieving one or more presentation elements lengthens, . . . better presentation quality presentation elements may be retrieved (e.g., the presentation quality may be enhanced from limited or no animation to full animation)”). And Petitioner establishes sufficiently that an ordinarily skilled artisan reasonably would have expected success in making the combination, particularly given that Ogdon already contemplates alternative presentations for different transmission rates. See, e.g., Ex. 1003 ¶¶ 62, 64; Ex. 1004, code (57). Patent Owner’s arguments are directed to Ogdon alone and do not account for Petitioner’s proposed modification based on Allen.3 Such arguments do not show nonobviousness where Petitioner’s obviousness ground is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Furthermore, to the extent Patent Owner argues that an ordinarily skilled artisan would not have been motivated to modify Ogdon as proposed, it fails to sufficiently explain this contention. For example, we do not read Ogdon to indicate that its presentation versions must be wholly different types of presentation materials, i.e., presentations in different languages or presentations tailored for different audiences. We also do not agree with Patent Owner (Prelim. Resp. 20–22) that Ogdon fails to teach or suggest video streaming for the same reasons discussed above.” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Based on the present record, we find that the secondary considerations findings from the ITC Investigation do not undermine the sufficiency of Petitioner’s obviousness showing at this stage.6 We note that Patent Owner “bears the burden of production with respect to evidence of secondary considerations of nonobviousness.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1373 (Fed. Cir. 2018). At this stage, Patent Owner merely references the findings of the ITC rather than adducing evidence of objective indica of nonobviousness in the first instance and attempting to establish a nexus to the invention of the ’554 patent. Further, Petitioner has adduced at least some evidence that the allegedly unique features of the Move Media Player were known in Ogdon, which tends to undermine the ITC’s nexus analysis. See, e.g., Ex. 1004, 14:46–49, 22:48–63. We also disagree with Patent Owner (Prelim. Resp. 41–42) that Ogdon does not disclose streaming video for the same reasons mentioned above. See supra §§ II.D.1, II.D.3.a. For these reasons, we find that the evidence of secondary considerations in the present record does not undermine Petitioner’s showing for purposes of institution. We also decline to exercise our discretion to deny institution based on Petitioner’s alleged failure to address secondary considerations. Patent Owner will have the opportunity at trial to produce evidence related to secondary considerations of nonobviousness. 6 Patent Owner also argues that Dr. Houh’s testimony is unreliable because he failed to consider evidence of secondary considerations from the ITC Investigation. Prelim. Resp. 42–43. We decline to discount Dr. Houh’s testimony on this basis. Regardless of whether Dr. Houh addressed secondary considerations, we find his testimony relevant at this stage to our consideration of (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; and (3) the level of skill in the art. See Graham, 383 U.S. at 17–18.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,469,554 - PTAB · Apr 16, 2024 · IPR2024-00044 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1, 3–12, 14–20, 22–25, and 27–29 on all petitioned grounds, finding a reasonable likelihood of success on obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“i. Conclusion Regarding Claim 1 Petitioner has shown sufficiently at this juncture that the combination of Ogdon and Allen teaches all limitations of claim 1. Petitioner also has put forth a sufficient rationale for combining Allen with Ogdon with a reasonable expectation of success. Based on the present record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Ogdon and Allen.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“must consider “whether the same or substantially the same art previously was presented to the Office.” Advanced Bionics, Paper 6 at 8. Although we agree with Petitioner (Pet. 63–64) that Ogdon was not cited during prosecution, we still must consider whether Ogdon is substantially the same as Carmel. We determine that Ogdon is not substantially the same as Carmel because there are differences between them material to the way the Office previously considered the art. See Nokia of Am. Corp. v. Soto, IPR2023-00680, Paper 18 at 6 (Vidal Mar. 28, 2024) (“[P]rior art references are not ‘substantially the same’ when there are differences between them that are material to the Office’s prior consideration of the art.” (citing Wolfspeed, Inc. v. Trustees of Purdue University, IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023)). Both parties agree that the Examiner distinguished Carmel during prosecution because it did not teach streamlets of the same duration. Pet. 10–11 (citing Ex. 1002, 1270–71); Prelim. Resp. 37 (citing Ex. 1002, 1270–73). In contrast, Petitioner cites Ogdon in the Petition for teaching, inter alia, segments that have “approximately the same presentation duration.” See, e.g., Pet. 27 (quoting Ex. 1004, 2:49–55). For the same reasons discussed above (see supra § II.D.3.f), and based on the present record, we disagree with Patent Owner (Prelim. Resp. 38) that this disclosure does not teach streamlets of the same length. As such, we find that Petitioner applies Ogdon in a manner that is distinguishable from the way Carmel was understood by the Examiner during prosecution of the ’138 patent. Thus, we find that the same or substantially the same art or arguments were not previously presented, so we need not proceed past the first stage of the Advanced Bionics framework with respect to Ogdon. Advanced Bionics, Paper 6 at 8.” slip op. at 41
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Our inquiry begins and ends with the first test pertaining to the field of the endeavor. Patent Owner is correct that the ’138 patent is in the field of video streaming over the internet with shifting of streaming content based on network conditions. See Ex. 1001, 1:31–34. Similarly, Ogdon discloses shifting presentation content that is transmitted over the internet based on network conditions. See, e.g., Ex. 1004, 1:9–15. The only potential discrepancy appears to be whether Ogdon’s disclosed presentation content can include streaming video. And Ogdon discloses an example where a presentation version may include “real time or animated video.” Id. at 2:61– 66; see also infra § II.D.3.a (discussing Ogdon’s disclosure of video presentations). We find that Ogdon’s disclosure of transmitting real-time video as part of a presentation is the same as video streaming. Thus, we conclude that Ogdon is analogous art because it is in the same field of endeavor as the ’138 patent. For purposes of this Decision, we determine that Ogdon qualifies as prior art under 35 U.S.C. § 102(b) because Ogdon’s issue date of December 12, 2000, is more than one year before the earliest effective filing date of the challenged claims, which is April 30, 2004. Ex. 1001, code (60); Ex. 1004, code (45). slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“reasonable likelihood of prevailing in showing that an ordinarily skilled artisan would have been motivated to combine Ogdon and Allen to yield this limitation. Ogdon teaches different quality versions of a presentation that may include video (see, e.g., Ex. 1004, 2:8–10, 2:30–66, 13:47–49, 22:44– 47, 24:55), and Allen expressly teaches encoding the same content at bitrates of 56 kbps, 300 kbps, and 600 kbps (see, e.g., Ex. 1005, 12:1–5). Based on these teachings, Petitioner shows sufficiently, on this record, that it would have been obvious to encode streaming video into low, medium, and high quality streams. See, e.g., Ex. 1003 ¶¶ 65–67. We also are sufficiently persuaded on this record that an ordinarily skilled artisan would have combined Allen with Ogdon to enable streaming video presentations for a variety of different available bandwidths. See, e.g., Ex. 1003 ¶ 67; Ex. 1004, code (57). In particular, Ogdon’s teaching of retrieving alternatively sized presentations based on transmission data rates supports Petitioner’s proposed combination with Allen’s teaching of encoding video at different bitrates. See Ex. 1004, code (57) (stating that a greater-sized presentation for a “higher transmission rate” has “corresponding enhanced quality of presentation” compared to a reduced-sized version for a “low transmission data rate”), 22:44–47 (stating that “as the expected amount of time for retrieving one or more presentation elements lengthens, . . . better presentation quality presentation elements may be retrieved (e.g., the presentation quality may be enhanced from limited or no animation to full animation)”). And Petitioner establishes sufficiently that an ordinarily skilled artisan reasonably would have expected success in making the combination, particularly given that Ogdon already contemplates alternative presentations for different transmission rates. See, e.g., Ex. 1003 ¶¶ 65, 67; Ex. 1004, code (57). Patent Owner’s arguments are directed to Ogdon alone and do not account for Petitioner’s proposed modification based on Allen.3 Such arguments do not show nonobviousness where Petitioner’s obviousness ground is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Furthermore, to the extent Patent Owner argues that an ordinarily skilled artisan would not have been motivated to modify Ogdon as proposed, it fails to sufficiently explain this contention. For example, we do not read Ogdon to indicate that its presentation versions must be wholly different types of presentation materials, i.e., presentations in different languages or presentations tailored for different audiences. We also do not agree with Patent Owner (Prelim. Resp. 22–25) that Ogdon fails to teach or suggest video streaming for the same reasons discussed above. See supra §§ II.D.1, II.D.3.a. Thus, based on the present record, Patent Owner’s arguments regarding this limitation are unavailing.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,470,138
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.