- PTAB · Mar 16, 2023 · IPR2022-01391 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on claims 30–33, 35, 37–40, 43, 45–48, 51, 53, 54, 61, 62, 64, 65, 67, 69, 70, 72, and 75 on all petitioned grounds, and joined Samsung to IPR2022-01232.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B. Related Proceedings” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation 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 7. Here, Petitioner stipulates that it “will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted.” Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on our review of the before us, we find that Petitioner demonstrates that allowing it to join the Meta IPR as a party will not materially lengthen the schedule, increase cost, or add to the complexity of briefing or discovery in the Meta IPR. Accordingly, we grant Petitioner’s Motion and add it as a party to the Meta IPR.” slip op. at 8
Discretionary denialPatents in suitUS 8,630,234 - PTAB · Mar 16, 2023 · IPR2022-01393 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, and granted Samsung’s motion to join the Meta IPR as a petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current “Petition and the . . . Petition [in the Meta IPR] challenge the same claims, on the same grounds, and rely on the same prior art and evidence, including an identical declaration from the same expert.” Mot. 1. Furthermore, Petitioner agrees that, if joined as a party to the Meta IPR, “Petitioner will act as ‘understudy’ and will not assume an active role unless Meta ceases to participate” in the Meta IPR, “Meta will maintain the lead role in the proceeding so long as it is a party to the proceeding,” and “Petitioner will not seek additional depositions or deposition time.” Mot. 2.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation 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 7. Here, Petitioner stipulates that it will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted. Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- Other 314aDecided for petitioner
“Patent Owner argues by implication that the Petition must set forth “compelling evidence of unpatentability” to avoid analysis of the Fintiv factors for deciding whether to exercise discretion to deny a petition. Opp. 13. Patent Owner’s argument is flawed for two reasons. First, as we discuss immediately above, even applying the Fintiv framework for deciding whether to discretionarily deny the Petition, we decline to exercise such discretion. Second, the Interim Procedure does not impose a requirement that a petition must always present compelling evidence of unpatentability to warrant institution. Rather, the Interim Procedure merely indicates that whenever a petitioner adduces compelling evidence of unpatentability, panels will not discretionarily deny the petition under Fintiv. Interim Procedure 2. D. Whether a Potential Denial of the Petition in the Meta IPR Justifies” slip op. at 8
Discretionary denialPatents in suitUS 10,880,721 - PTAB · Mar 16, 2023 · IPR2022-01392 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 9, 14, 15, 16, 20, 25, 34, 38, 39, 43, 45, 46, 49, 50, 135, 136, and 140 on all petitioned grounds, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“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 under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) “authorizes joinder of a person as a party, not ‘joinder’ of two proceedings” and “does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020). Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current “Petition and the . . . Petition [in the Meta IPR] challenge the same claims, on the same grounds, and rely on the same prior art and evidence, including an identical declaration from the same expert.” Mot. 1. Furthermore, Petitioner agrees that, if joined as a party to the Meta IPR, “Petitioner will act as ‘understudy’ and will not assume an active role unless Meta ceases to participate” in the Meta IPR, “Meta will maintain the lead role in the proceeding so long as it is a party to the proceeding,” and “Petitioner will not seek additional depositions or deposition time.” Mot. 2.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation 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 7. Here, Petitioner stipulates that it will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted. Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- Other 314aDecided for petitioner
“Patent Owner argues by implication that the Petition must set forth “compelling evidence of unpatentability” to avoid analysis of the Fintiv factors for deciding whether to exercise discretion to deny a petition. Opp. 13. Patent Owner’s argument is flawed for two reasons. First, as we discuss immediately above, even applying the Fintiv framework for deciding whether to discretionarily deny the Petition, we decline to exercise such discretion. Second, the Interim Procedure does not impose a requirement that a petition must always present compelling evidence of unpatentability to warrant institution. Rather, the Interim Procedure merely indicates that whenever a petitioner adduces compelling evidence of unpatentability, panels will not discretionarily deny the petition under Fintiv. Interim Procedure 2. D. Whether a Potential Denial of the Petition in the Meta IPR Justifies” slip op. at 8
Discretionary denialPatents in suitUS 10,880,721 - PTAB · Mar 16, 2023 · IPR2022-01390 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted inter partes review of claims 1–3, 6, 10, 11, 19–22, 24, 25, 28, and 29 on all petitioned grounds and granted Samsung’s motion to join the Meta IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective March 16, 2013. Because the application for the ’234 patent was filed on July 28, 2009, we apply the pre-AIA versions of §§ 102, 103. 2 U.S. Patent No. 7,668,159 B2 (Ex. 1005, “Buckley”). 3 U.S. Patent No. 8,731,163 B1 (Ex. 1009, “Bates”). response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B. Related Proceedings” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Patent Owner argues that we should deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 2–3 (PTAB Mar. 20, 2020) (precedential). Opp. 7–12. Patent Owner points to the Litigation. See supra Part I.B. We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation 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 7. Here, Petitioner stipulates that it “will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted.” Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Section 315(c) “authorizes joinder of a person as a party, not ‘joinder’ of two proceedings” and “does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020). Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current “Petition and the . . . Petition [in the Meta IPR] challenge the same claims, on the same grounds, and rely on the same prior art and evidence, including an identical declaration from the same expert.” Mot. 1. Furthermore, Petitioner agrees that, if joined as a party to the Meta IPR, “Petitioner will act as ‘understudy’ and will not assume an active role unless Meta ceases to participate” in the Meta IPR, “Meta will maintain the lead role in the proceeding so long as it is a party to the proceeding,” and “Petitioner will not seek additional depositions or deposition time.” Mot. 2.” slip op. at 5
- Other 314aDecided for petitioner
“Patent Owner argues by implication that the Petition must set forth “compelling evidence of unpatentability” to avoid analysis of the Fintiv factors for deciding whether to exercise discretion to deny a petition. Opp. 13. Patent Owner’s argument is flawed for two reasons. First, as we discuss immediately above, even applying the Fintiv framework for deciding whether to discretionarily deny the Petition, we decline to exercise such discretion. Second, the Interim Procedure does not impose a requirement that a petition must always present compelling evidence of unpatentability to warrant institution. Rather, the Interim Procedure merely indicates that whenever a petitioner adduces compelling evidence of unpatentability, panels will not discretionarily deny the petition under Fintiv. Interim Procedure 2. D. Whether a Potential Denial of the Petition in the Meta IPR Justifies Denying the Petition in this Proceeding” slip op. at 8
Discretionary denialPatents in suitUS 8,630,234 - Early Warning Services, LLC / Samsung Electronics Co., Ltd. v. Wepay Global Payments LLCAdverse judgmentPTAB · Feb 9, 2023 · PGR2022-00045 · APJ Grace Karaffa Obermann · PGR · Adverse judgment
The Board entered adverse judgment against Patent Owner and cancelled claim 1 based on statutory disclaimers; alternatively, it held claim 1 unpatentable on every asserted ground.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“first embodiment, including Figures 1 and 2. Ex. 1106; Paper 32, 2. On January 26, 2023, Patent Owner filed a statutory disclaimer of the second embodiment, including Figures 3, 4, and 5. Ex. 1107; Paper 32, 2. Patent Owner successfully paid the statutory disclaimer fees in connection with both disclaimers. Ex. 1106, 4; Ex. 1107, 4; Paper 32, 2–3. Based on the information presented, we find that Patent Owner, by disclaiming all figures and embodiments described in the ’702 patent, has disclaimed the entire scope of the sole design claim at issue, such that no challenged claim remains in this proceeding. Specifically, in that regard, the ’702 patent claims and describes two embodiments, where the first embodiment is depicted in Figures 1 and 2, and the second embodiment is depicted in Figures 3, 4, and 5. Ex. 1001, code (57). The statutory disclaimers, taken together, disclaim both embodiments and all five figures set forth in the ’702 patent. Exs. 1106, 1107. Accordingly, we determine that adverse judgment against Patent Owner based on the disclaimers is warranted. 37 C.F.R. §§ 42.73(b)(1), 42.73(b)(2); Paper 32, 3.8” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In particular, we find that Reddy discloses a design having substantially the same overall appearance as the claimed design, as shown in Petitioner’s comparison illustration reproduced below. Paper 22, 10 (citing Pet. 63). The above illustration compares the claimed design in the upper half to Reddy’s design in the lower half. Both designs include an image of a Three Square Arrangement9 followed by an image of “a $0.00 in practically identical style and font.” Id. at 10–11 (quoting Pet. 64). We determine that Petitioner proves by a preponderance of the evidence, moreover, “that ‘the overall visual effect of the claimed design,’ when compared to ‘the design disclosed in Reddy[,] would be substantially the same to an ordinary observer.’” Id. at 11 (alteration in original) (citation omitted); Pet. 64–67 (and evidence cited therein). Based on the full trial record, we agree with Petitioner and find that “there is no material difference” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“To the extent “any ‘slightly different spacing of the squares,’ as between the claimed and prior art designs,” is not de minimus, we find “that the ordinary designer would have modified Reddy’s design to mirror the claimed design” in order “to increase the amount of data” contained in the code. Paper 22, 13 (quoting Pet. 72 (citing Ex. 1002 ¶ 97)). The ordinary designer, considering Reddy alone, “would find the claimed ‘design as a whole has substantially the same overall visual appearance as the Reddy design,’ as so modified.” Id. (quoting Pet. 73 (citing Ex. 1002 ¶ 99)). Based on the full trial record, we determine that Reddy renders the challenged claim unpatentable as obvious.” slip op. at 9
- BurdenUnpatentable
“We conclude that Patent Owner has forfeited any arguments opposing the information advanced in the Petition with respect to the other asserted grounds of invalidity. We adopt the reasoning set forth in the Petition with respect to those grounds. See Pet. 23–45 (arguments and evidence directed to publication and accessibility of SGQR, GrabPay, Digital Debit Video, and Digital Debit Patent), 73–88 (arguments and evidence directed to the grounds that assert SGQR, GrabPay, Digital Debit Video, and Digital Debit Patent). On this record, Petitioner demonstrates by a preponderance of the evidence that the subject matter of the challenged claim would have been obvious based on the other grounds asserted in the Petition. Id.” slip op. at 9
§ 102 anticipation§ 103 obviousness - Early Warning Services, LLC / Samsung Electronics Co., Ltd. v. Wepay Global Payments LLCAdverse judgmentPTAB · Feb 9, 2023 · PGR2022-00031 · APJ Grace Karaffa Obermann · PGR · Adverse judgment
Adverse judgment was entered after Patent Owner disclaimed the sole claim; alternatively, the claim was held unpatentable on the asserted anticipation and obviousness grounds.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“On October 5, 2022, Patent Owner filed a statutory disclaimer of the first embodiment, including Figures 1 and 2. Ex. 1106; Paper 32, 2. On January 26, 2023, Patent Owner filed a statutory disclaimer of the second embodiment, including Figures 3, 4, and 5. Ex. 1107; Paper 32, 2. Patent Owner successfully paid the statutory disclaimer fees in connection with both disclaimers. Ex. 1106, 4; Ex. 1107, 4; Paper 32, 2–3. Based on the information presented, we find that Patent Owner, by disclaiming all figures and embodiments described in the ’702 patent, has disclaimed the entire scope of the sole design claim at issue, such that no challenged claim remains in this proceeding. Specifically, in that regard, the ’702 patent claims and describes two embodiments, where the first embodiment is depicted in Figures 1 and 2, and the second embodiment is depicted in Figures 3, 4, and 5. Ex. 1001, code (57). The statutory disclaimers, taken together, disclaim both embodiments and all five figures set forth in the ’702 patent. Exs. 1106, 1107. Accordingly, we determine that adverse judgment against Patent Owner based on the disclaimers is warranted. 37 C.F.R. §§ 42.73(b)(1), 42.73(b)(2); Paper 32, 3.8” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In particular, we find that Reddy discloses a design having substantially the same overall appearance as the claimed design, as shown in Petitioner’s comparison illustration reproduced below. Paper 22, 10 (citing Pet. 63). The above illustration compares the claimed design in the upper half to Reddy’s design in the lower half. Both designs include an image of a Three Square Arrangement9 followed by an image of “a $0.00 in practically identical style and font.” Id. at 10–11 (quoting Pet. 64). We determine that Petitioner proves by a preponderance of the evidence, moreover, “that ‘the overall visual effect of the claimed design,’ when compared to ‘the design disclosed in Reddy[,] would be substantially the same to an ordinary observer.’” Id. at 11 (alteration in original) (citation omitted); Pet. 64–67 (and evidence cited therein). Based on the full trial record, we agree with Petitioner and find that “there is no material difference” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“To the extent “any ‘slightly different spacing of the squares,’ as between the claimed and prior art designs,” is not de minimus, we find “that the ordinary designer would have modified Reddy’s design to mirror the claimed design” in order “to increase the amount of data” contained in the code. Paper 22, 13 (quoting Pet. 72 (citing Ex. 1002 ¶ 97)). The ordinary designer, considering Reddy alone, “would find the claimed ‘design as a whole has substantially the same overall visual appearance as the Reddy design,’ as so modified.” Id. (quoting Pet. 73 (citing Ex. 1002 ¶ 99)). Based on the full trial record, we determine that Reddy renders the challenged claim unpatentable as obvious.” slip op. at 9
§ 102 anticipation§ 103 obviousness - PTAB · Dec 20, 2022 · PGR2022-00045 · APJ Grace Karaffa Obermann · PGR · Institution
The Board instituted post-grant review of the sole claim on the Petition’s grounds and granted Samsung’s motion to join PGR2022-00031.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS Before deciding joinder questions, the Board first determines whether the petition “warrants the institution of a post-grant review under section 324.” See 35 U.S.C. §§ 325(c), 324(a) (stating that the petition “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”); see also Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020) (interpreting joinder requirements in inter partes review under 35 U.S.C. §§ 314(a), 315(c)). When a second petition is a “me-too” or “copycat” petition, the institution analysis may include a General Plastic analysis. See Apple, Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020) (designated as precedential on December 4, 2020) (“Uniloc”); General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Although the decision in Uniloc informs that a petitioner’s failure to adequately address these factors may weigh in favor of discretionary denial, this case is distinguishable because Petitioner has not previously filed a petition challenging the validity of the ’702 patent claim. See, e.g., Uniloc, Paper 9 at 11. The Petition is substantively the same as the petition in PGR 031 and includes notice of Petitioner’s intention to file the joinder motion. See Pet. 1; Mot. 1–2. This factor is neutral given Petitioner’s willingness “to proceed solely on the grounds, evidence, and arguments advanced, or that will be advanced, in” PGR 031. Mot. 1– 2.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder must be filed “no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner timely filed the Motion for Joinder on October 28, 2022, within one month of the Decision of Institution in PGR 031. See Mot. 14; PGR 031, Paper 22. The Petition indicates Petitioner’s intent to file the Motion for Joinder. See Pet. 1. The Petition is substantively identical to the petition in PGR 031 and, accordingly, presents no new grounds. Mot. 6–8. Because Petitioner seeks only to join the first proceeding as a party, and makes no arguments in its Petition that differ from those already being addressed in PGR 031, we grant the Motion for Joinder. In so doing, we take account of Petitioner’s assertions that joinder will not impact the trial schedule because there are no new grounds and, furthermore, Petitioner “consents to any trial schedule adopted in” PGR 031. Mot. 7–8. The Board agrees that joinder should not impact the trial schedule.” slip op. at 11
Discretionary denial - Stingray Digital Group Inc. v. Music ChoiceSome claims unpatentablePTAB · Oct 11, 2018 · IPR2017-01191 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1–4 and 6–9 are unpatentable as obvious over Hudson and Dwek; claims 5 and 10–20 were not shown unpatentable because the references do not disclose the genre channel limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends a person of ordinary skill in the art pertaining to the ’045 patent, at the time of invention, “would have had at least an undergraduate degree in computer science or electrical engineering, or equivalent experience and, in addition, two years of experience in distribution of digital audio and video via networks.” Pet. 5 (citing Ex. 1003 ¶¶ 11–17). Patent Owner agrees. PO Resp. 6. In considering the issues presently before us, we have adopted and applied Petitioner’s proposed identification of the level of ordinary skill in the art, which is consistent with the ’045 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“B. CLAIM INTERPRETATION “A claim in an unexpired patent that will not expire before a final written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification, and absent any special definition, we give claim terms their ordinary and customary meaning. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.” (internal quotation marks omitted)). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In the Decision on Institution, we instructed the parties to brief the meaning of “a message comprising information indicating that the user desires to view the video identified by the video identifier” as recited in claims 1 and 6; and “in response to receiving the message” as recited in claims 1 and 6. Dec. 24. The parties agreed upon the express meaning of both phrases, PO Resp. 6–7; Reply 2, which we adopt for the purposes of this Final Written Decision. We discern no need to interpret any other phrase expressly for the purposes of this Final Written Decision.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)). Moreover, a reference “must [be] considered for all it taught, disclosures that diverged and taught away from the invention at hand as well as disclosures that pointed towards and taught the invention at hand.” Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 296 (Fed. Cir. 1985) (citation omitted). A reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy, 567 F.3d at 1327 (quoting In re Fulton, 391 F.3d at 1201). But even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference. See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc) (noting that, even if a reference “does not teach away, its statements regarding users preferring other forms of switches are relevant to a finding regarding whether a skilled artisan would be motivated to combine the slider toggle in” that reference with the invention of a second reference). Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018). Against this background, we determine that Hudson does not teach away from incorporating the ability to customize playlists as described by Dwek. Hudson never expressly mentions permitting a user to customize its storyboards much less disparages doing so. Dr. Shamos testifies that an ordinarily skilled artisan would have recognized that Hudson’s advantages of providing links to ancillary content along with primary content would be further enhanced if users also had Dwek’s ability to customize the primary content they were viewing. Ex. 1003 ¶¶ 43–46. Dr. Russ’s conclusions otherwise fail to consider each of Hudson and Dwek as a whole, but instead focus narrowly upon specific implementations of delivering media in each reference. Ex. 2109 ¶¶ 49–52. When Hudson and Dwek are considered as a whole, the similarities in their goals suggests their combination. For example, Hudson, by incorporating Headings by reference,3 recognizes that its system is compatible with streaming a wide variety of content including “movies, music videos, educational content, television shows, games, live events, and advertising.” Ex. 1005 ¶ 27. Similarly, Dwek recognizes that its system may deliver more than music; it may also “deliver video or other streaming multimedia content.” Ex. 1006, 4:10:12. Patent Owner argues that because Dwek describes joining a customized, shared channel “in progress,” Dwek’s system only broadcasts streams in a manner akin to live radio. PO Resp. 17. However, Dwek also contemplates starting playback of its user-defined shared channels at the beginning of the user-defined playlist. Id. at 11:27– 33. Based on our review of Hudson and Dwek, we determine that they both describe systems in which users have some degree of control over what content they consume and when they consume it. Ex. 1004 ¶¶ 37–40, Figure 4; Ex. 1006, 1:31–50. We also determine that both systems are designed to facilitate commerce related to the content. Ex. 1004 ¶ 41, 44; Ex. 1006, 3:28–57. Based upon our consideration of Hudson and Dwek as a a whole, we credit the testimony of Dr. Shamos over that of Dr. Russ and conclude that Hudson does not teach away from permitting a user to slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“storyboards much less disparages doing so. Dr. Shamos testifies that an ordinarily skilled artisan would have recognized that Hudson’s advantages of providing links to ancillary content along with primary content would be further enhanced if users also had Dwek’s ability to customize the primary content they were viewing. Ex. 1003 ¶¶ 43–46. Dr. Russ’s conclusions otherwise fail to consider each of Hudson and Dwek as a whole, but instead focus narrowly upon specific implementations of delivering media in each reference. Ex. 2109 ¶¶ 49–52. When Hudson and Dwek are considered as a whole, the similarities in their goals suggests their combination. For example, Hudson, by incorporating Headings by reference,3 recognizes that its system is compatible with streaming a wide variety of content including “movies, music videos, educational content, television shows, games, live events, and advertising.” Ex. 1005 ¶ 27. Similarly, Dwek recognizes that its system may deliver more than music; it may also “deliver video or other streaming multimedia content.” Ex. 1006, 4:10:12. Patent Owner argues that because Dwek describes joining a customized, shared channel “in progress,” Dwek’s system only broadcasts streams in a manner akin to live radio. PO Resp. 17. However, Dwek also contemplates starting playback of its user-defined shared channels at the beginning of the user-defined playlist. Id. at 11:27– 33. Based on our review of Hudson and Dwek, we determine that they both describe systems in which users have some degree of control over what content they consume and when they consume it. Ex. 1004 ¶¶ 37–40, Figure 4; Ex. 1006, 1:31–50. We also determine that both systems are designed to facilitate commerce related to the content. Ex. 1004 ¶ 41, 44; Ex. 1006, 3:28–57. Based upon our consideration of Hudson and Dwek as a a whole, we credit the testimony of Dr. Shamos over that of Dr. Russ and conclude that Hudson does not teach away from permitting a user to 3 Ex. 1004 ¶ 27. customize its content storyboards in a manner akin to Dwek’s customization of musical playlists.” slip op. at 18
Patent outcomesUS 9,351,045 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,351,045 - Grit Energy Solutions, LLC v. Oren Technologies, LLCNo claims unpatentablePTAB · Jun 13, 2018 · IPR2017-00768 · APJ Michael L Woods · IPR · Final written decision
Claims 1–3 and 5 were not shown unpatentable over Eng Soon and Constantin; claims 4, 6, and 7 were not shown unpatentable over Eng Soon, Constantin, and Olson because the asserted combinations were not adequately …
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“Mr. Smith, on the other hand, testifies that Constantin does not disclose an actuator having a receptacle and “Petitioner and Dr. Wooley’s argument that Constantin teaches that one could switch the location of stud 15 and orifice 16 is not supported.” Ex. 2040 ¶¶ 65–66. Mr. Smith further testifies that “Constantin does not describe the location of stud 15 and orifice 16 as a ‘preferred embodiment.’ . . . Constantin’s disclosure does not disclose or suggest that stud 15 could be switched for orifice 16 on the other shutter blade.” Id. ¶ 68. Having considered Petitioner’s and Patent Owner’s competing evidence and argument, we agree with Patent Owner and credit Mr. Smith’s testimony. Specifically, we find that Petitioner has not shown that Constantin teaches, discloses, or suggests its orifice as being attached to its actuator, as Petitioner asserts. See Pet. 49. Petitioner’s assertion is premised on a misapprehension of Constantin’s claim 5.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Having established that Constantin does not teach, disclose, or suggest an orifice attached to its actuator, we also find unpersuasive Petitioner’s argument that a POSITA would have modified Eng Soon’s structure so as “to fix the pin on the bottom of the gate as taught by Constantin.” Pet. 54 (emphasis added). Because Petitioner has not shown Constantin teaches or suggests such structure and has failed to provide adequate explanation for why one would have modified Constantin, Petitioner’s reasoning is insufficient.” slip op. at 22
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board may, for good cause, issue an order to protect a party or person from disclosing confidential information.” 37 C.F.R. § 42.54(a). Upon considering the content of the Exhibits, including those redacted versions, and Petitioner’s representations as to the confidentiality of the information, we determine that Petitioner has shown good cause for sealing Exhibit 1016 in its entirety and the redacted portions of the Exhibits 2010, 2012, 2013, 2020–2024, 2029, 2032, 2033, 2039, and 2044, which redacted versions have been submitted as Exhibits 1025–1037. Id. at ii. slip op. at 27
Patent outcomesUS 8,585,341 not shown unpatentable§ 103 obviousnessPatents in suitUS 8,585,341 - Westerngeco LLC v. PGS Geophysical AsRehearing grantedPTAB · Feb 3, 2017 · IPR2015-00313 · APJ Justin Busch · IPR · Rehearing
On rehearing, the Board held claim 2 unpatentable as anticipated by Gallagher, modifying the final written decision; no other aspect was modified.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision. 37 C.F.R. § 42.71(d). “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.” Id. For the reasons that follow, Petitioner’s request for rehearing is granted. This decision on rehearing modifies our Final Written Decision only to the extent that we now hold claim 2 of the ’059 patent to be unpatentable as anticipated by Gallagher. Neither party challenges our holdings with respect to any other claims in our Final Written Decision.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Owner, and Petitioner does not contest, that traces “have the same coordinates” when those traces populate the same bin in the “set of bins.” We agree with Petitioner, however, that the disputed limitation is tied to the assignment of coordinates, not to the organizing step, and we are unpersuaded by Patent Owner’s arguments that a trace can only populate a particular bin after “the coordinate-designated set of traces” has been organized.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“interpreted properly (i.e., not tied to the organizing step), Gallagher teaches or suggests the disputed limitation. Req. Reh’g 5–6. We found persuasive Petitioner’s mappings of (1) Gallagher’s assignment of sections and shells in a common reference point bin to the assigning step, (2) the section-shell segments created from that assignment to the recited set of bins, and (3) Gallagher’s decimation process, which in one example leaves one trace per section-shell segment (or bin), to the organizing step. Dec. 14–19; see Pet. 45–48. In Gallagher, it is the combination of the acquisition geometry and the selection of the sections and shells that defines the coordinate-designated set of traces and the bins. Prior to Gallagher’s decimation,” slip op. at 10
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,026,059
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.