• Trove Brands, LLC v. Camelbak Products, LLCInstituted
  PTAB · Jan 28, 2025 · IPR2024-01137 · APJ Nathan A Engels · IPR · Institution

  The Board instituted IPR of claims 1–7 and 9–23 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Our consideration of discretionary denials is guided by the Director’s Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued on June 21, 2022 (“Memorandum”).7 The Memorandum states that, consistent with Sotera Wireless, Inc. v. Massimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential), “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memorandum, 3 (footnote and emphasis omitted).” slip op. at 6

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

    “c. Discussion At this stage, we preliminarily determine Petitioner has shown that Nakajima teaches or reasonably suggests each element of claim 1, but we encourage the parties to develop the record regarding the meaning of “pivotal about an axis” as recited in Limitation 1[b][3][i] during the trial phase. As cited by Petitioner, from the closed position, for example, the Nakajima’s mouthpiece would appear to move based on clockwise rotation about hinge shaft 19. Pet. 35. Patent Owner appears correct that at some point in the opening (or closing) process, Nakajima’s mouthpiece additionally moves based on rotation about protrusions 25. Prelim. Resp. 44–45. At this stage, we preliminarily determine that such additional rotation is not foreclosed by the plain language of the claims.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art would have had “an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products.” Pet. 18 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies the level of skill set forth in the Petition. Prelim. Resp. 35. At this stage, we apply Petitioner’s proposed definition, as it appears reasonable and consistent with the level of skill reflected in the asserted prior art and the ’255 patent. D. Claim Construction” slip op. at 8

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

    “Patent Owner contends that “adapted to” in independent claims 1 and 20 means “‘designed or configured to’ and is not satisfied by mere hypothetical capability.” Prelim. Resp. 36; see Prelim. Resp. 36–41. We address Patent Owner’s arguments below with our discussion of Petitioner’s Ribartis-based arguments. Based on the current record, however, we determine that it is not necessary to provide an express interpretation of any claim terms at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). E. Alleged Obviousness” slip op. at 8

  Claim constructionDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,676,255
• Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationSome claims unpatentable
  PTAB · Oct 22, 2024 · IPR2024-00034 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–13 and 17–20 are unpatentable over the stated obviousness grounds; claims 14–16 are not shown unpatentable because the cited art does not teach logic configured to determine concurrent failure probability.

  RulingsFinal written decision

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

    “We decline to adopt Patent Owner’s implicit construction that would require “selecting an entity pair from” all of the entity pairs of “said plurality of transport entities.” Contrary to Patent Owner’s arguments addressing the claim language, the plain language of claim 1 does not require the selection to be from all of the entity pairs of the plurality of transport entities for which an overall cost has been determined. The plain language of claim 1 also does not preclude the selection to be from a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined. Rather, dependent claim 9, through its dependence on claims 1 and 4, explicitly allows for the selection to be from a subset of the entity pairs of the plurality of transport entities. Patent Owner’s arguments advocate for the importation of limitations from the ’821 Patent Specification into the claim––namely the disclosure that all entity pairs of transport entities examined in step 220 of Figure 2 are input to the entity pair selection step 230. See PO Sur-reply 4. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Accordingly, we construe “selecting an entity pair from said plurality of transport entities based at least upon said overall cost” according to its plain meaning, the scope of which includes selecting an entity pair from all or a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined.” slip op. at 11

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

    “As demonstrated in the analysis below, we need not construe “working entity” and “protection entity” in order to resolve the controversy before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Other Claim Terms and Phrases As demonstrated in our analysis below, we need not construe any other claim terms or phrases to resolve the controversy before us. See, e.g., Realtime, 912 F.3d 1368, 1375.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s level of ordinary skill for purposes of this Patent Owner Response.” PO Resp. 25. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is supported by declaration testimony and is consistent with the level of skill reflected by the ’821 Patent Specification and the asserted prior art. slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Based on the entire record and after having considered Petitioner’s citations to Doshi, Guichard, and Dr. Houh’s testimony (Ex. 1003) as well as Patent Owner’s citations to Doshi, Guichard and Mr. Gomez’s testimony, we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Doshi with Guichard’s teachings of reoptimization of a LSP path triggered by an network change. See Pet. 20–22, 40–45; KSR, 550 U.S. at 418. Petitioner asserts that “[t]he results of the combination would have been predictable and there would have been a reasonable expectation of success since Doshi and Guichard both address the same technology.” Pet. 22 (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “a POSITA would have had a reasonable expectation of success in reoptimizing Doshi’s LSP pair selection because Guichard provides significant implementation details, including when to trigger reoptimization evaluations and how to ‘avoid network instabilities.’” Pet. 22–23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1006, 5). Petitioner asserts that a reasonable expectation of success is evidenced by other skilled artisans that reoptimized similar systems. See Pet. 23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1009, 136; Ex. 1010, 1; Ex. 1023, 34; Ex. 1034 ¶¶ 27–33, claim 19; Ex. 1035 ¶ 24). In support, Petitioner contends that “the combination would be within a POSITA’s skillset since Doshi already sets forth the calculation and selection techniques that would be utilized during the reoptimization evaluation.” Id. (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “since Doshi is already ‘monitoring and updating . . . network topology’ . . . event-based reoptimization evaluation per Guichard, would be directly applicable.” Id. (citing Ex. 1003 ¶¶ 63–65; Ex. 1005 ¶¶ 270–281).” slip op. at 38

  Patent outcomesUS 8,830,821 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,830,821
• Cisco Systems, Inc. / Dell Technologies Inc. et al. v. Corrigent CorporationSome claims unpatentable
  PTAB · Jul 3, 2024 · IPR2023-00169 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103(a); claims 11 and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 11 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8

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

    “We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is genuinely in controversy. Thus, we need not construe the term for this decision. 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.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Considering the evidence of record on both sides, we find Petitioner’s argument persuasive that Baker teaches a “mapping” as recited in limitation 1.4. Baker’s disclosure of a “mapping” is explicit. See, e.g., Ex. 1005 ¶ 69, 83. And the evidence shows that this mapping occurs “in advance of a communication,” and may, for example, take place in the head node as part of the Administer Ring routine. See, e.g., Ex. 1005 ¶¶ 51–56, 76. That intermediate rings are ultimately configured to simply forward traffic “according to preconfigured rules” (Ex. 1005 ¶ 87) rather than to perform more complicated routing has no pertinent bearing on the process corresponding to the recited “mapping” step, which occurs “in advance” of the communication and any such forwarding (id. ¶ 76).” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “allocating bandwidth as part of its resources and that, in light of Wright, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 36; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 17–20 (citing Ex. 1003 ¶¶ 42–46, 48). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 20 (citing Ex. 1003 ¶ 47).” slip op. at 32

  Patent outcomesUS 7,330,431 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,330,431
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Smart Mobile Technologies LLCSome claims unpatentable
  PTAB · Dec 4, 2023 · IPR2022-01004 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1, 5–9, and 12–14 are unpatentable; claims 2–4 and 15–20 were not shown unpatentable, based on the asserted prior-art challenges.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art” slip op. at 8

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

    “Petitioner filed a Petition (Paper 2, “Pet.”) requesting institution of an inter partes review of claims 1–9 and 12–20 of the ’943 patent. Smart Mobile Technologies LLC (“Patent Owner”) filed a Preliminary Response (Paper 6). After receiving authorization, Petitioner filed a Reply to the Preliminary Response (Paper 7), and Patent Owner filed a Sur-reply (Paper 8). Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of claims 1–9 and 12–20 of the ’943 patent on all presented challenges. Paper 13 (“Inst. Dec.”), 2, 71.” slip op. at 2

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

    “2. Claim 1 The parties dispute whether Petitioner has shown a motivation to” slip op. at 72

  Patent outcomesUS 9,614,943 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,614,943
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Smart Mobile Technologies LLCSome claims unpatentable
  PTAB · Dec 1, 2023 · IPR2022-01005 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–3 are unpatentable over Raleigh, Sainton, and Gernert; claims 4–16 are not shown unpatentable because the proposed combination lacks adequate support for the challenged limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We preliminarily adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 8. Patent Owner does not dispute Petitioner’s proposal and does not propose its own level of ordinary skill in the art. See generally PO Resp.; see also Ex. 2004 ¶ 21 (Patent Owner’s declarant accepting Petitioner’s proposed level of ordinary skill in the art). Based on the full record, we maintain and affirm that one of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience related to the design or development of wireless communication systems, or the equivalent” and that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 2 (citing Ex. 1003 ¶¶ 27–28).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “The ’291 patent addresses a problem with a cellular telephone or mobile device and the objects of the ’291 patent are related to the cellular telephone or mobile device. See, e.g., Ex. 1001, 1:22–55, 2:53–58. Thus, “what the inventors actually invented and intended to encompass by the claim” was related to a cellular telephone or mobile device. The ’291 patent indicates that the “portable handheld mobile device with a plurality of antennas” of the preamble of claim 5 should be treated as a limitation. We also agree with Patent Owner that “the preamble is limiting because several limitations in claim 5’s body ‘rely upon and derive antecedent basis from the preamble,’” specifically “a communication system” and “a plurality of antennas.” PO Resp. 6. The body of claim 5 recites “the system” repeatedly, and “the system” relies upon and derives antecedent basis from the preamble. Ex. 1001, 12:40, 12:44, 12:48, 12:54. The body also recites “the plurality of antennas” that also relies upon and derives antecedent basis from the preamble. Id. at 12:46, 12:50. Because the preamble of claim 5 recites that the “communication system includ[es] one or more communication modules and processors for use in a portable handheld mobile device with a plurality of antennas,” the preamble “recites essential structures for the claimed system,” as argued by Patent Owner. PO Resp. 6–7.” slip op. at 10

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

    “Petitioner’s citations to the record do not explain or support why Raleigh’s remote unit 170a would have been “easily modified as a mobile wireless device, such as those shown in Sainton or other similar references.” Ex. 1003 ¶ 70; Ex. 1004, Fig. 4; Ex. 1005, Figs. 4A, 4B; Ex. 1008, 1:34–37, 6:38–53; Ex. 1010, 1:16–27; Ex. 1036 ¶¶ 11–20. would not have been “easily modified as a mobile wireless device.” See, e.g., Ex. 2007, 1 (stating that, for MIMO, “[t]here are numerous situations where this degree of hardware complexity is undesirable – this is especially important for the mobile station (MS)”); Ex. 2008, 68 (stating that “[t]he introduction of MIMO techniques into wireless communication systems introduces a number of implementation challenges” “[t]he greatest challenges, however, lie within the terminal where the size, power and cost constraints must be overcome,” and “[r]esearch initiatives must address the viability of terminals employing MIMO or diversity techniques, with particular emphasis being placed on maximizing the performance of the terminal antenna system in realistic macrocellular deployment scenarios and within the restricted form factors of future terminals such as laptops, PDAs and handsets”). Petitioner does not address directly Patent Owner’s evidence that shows technical difficulties of implementing a system such as Raleigh’s in a portable handheld mobile device with its practical limitations on size to accommodate an antenna array, power and battery capacity for all the components of Raleigh combined with Sainton, and required heat dissipation for the proposed combination. See generally Pet. Reply. In view of the full record that includes scant argument and evidence supporting Petitioner’s argument that Raleigh’s remote unit 170a would have been “easily modified as a mobile wireless device” and Patent Owner’s extensive argument and evidence to the contrary, Petitioner does not show by a preponderance that one of ordinary skill in the art would have had a reasonable expectation of success in implementing Raleigh’s remote unit as a portable handheld mobile device. Pet. 14–15; PO Resp. 15–23; Ex. 1003 ¶ 70; Ex. 1004, Fig. 4; Ex. 1005, Figs. 4A, 4B; Ex. 1008, 1:34–37, 6:38–53; 40:4–7, 63:6–11, 63:24–66:6, 70:11–19; Ex. 1036 ¶¶ 11–20; Ex. 2004 ¶¶ 47–63; Ex. 2007, 1; Ex. 2008, 11, 68; Ex. 2009, 187; Ex. 2010, 2; Ex. 2011, 297; Ex. 2012, 1; Ex. 2013, 1804; Ex. 2016, 277; Ex. 2017, 206. Additionally, based on the full record, Petitioner’s proposed level of ordinary skill in the art would have been insufficient for modifying Raleigh’s remote unit into a portable handheld mobile device in view of Patent Owner’s evidence of technical challenges and practical limitations. See generally Pet.; Pet. Reply.” slip op. at 31

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “obviousness] involves weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). Above, based on full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art, and (4) objective evidence of nonobviousness. is consistent with the prior art of record, (2) Raleigh, Sainton, and Gernert teach or suggest all the limitations of claim 1, (3) one of ordinary skill in the art would have combined these references with a reasonable expectation of success, and (4) no objective evidence of nonobviousness has been presented in relation to any challenged claim. Weighing these underlying factual determinations, Petitioner persuades us by a preponderance of the evidence that claim 1 of the ’291 patent is unpatentable over Raleigh, Sainton, and Gernert. Arctic Cat, 876 F.3d at 1361.” slip op. at 62

  Patent outcomesUS 9,084,291 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,084,291
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Staton Techiya, LLCSome claims unpatentable
  PTAB · Jul 10, 2023 · IPR2022-00324 · APJ Russell E Cass · IPR · Final written decision

  Claims 1, 2, 4–7, 9, and 11–16 are unpatentable as obvious; claim 3 was not shown unpatentable over the asserted combinations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “reasonable expectation of success in achieving the proposed Le-Kvaløy combination. Our conclusion is supported by Dr. Atlas’s testimony that one of ordinary skill “would have been able to adapt Le’s computer unit 15 to wirelessly communicate with Kvaløy’s ear terminal, as Le itself suggests.” Ex. 1002 ¶ 110. We also credit Dr. Atlas’s testimony that one of ordinary skill would have been able to “pass the signal from the outer microphone [of Kvaløy] (which replaces Le’s environmental microphone in the combination) continually to Le’s computer unit through the digital interface.” Id. ¶ 112; see also id. ¶¶ 113–114. We further agree with and find credible Dr. Atlas’s testimony that one of ordinary skill would have been aware of the potential for feedback, echo, and ringing, and would have been able to implement solutions to address this issue. Ex. 1041 ¶¶ 19–40.” slip op. at 35

  • Skill levelOther

    “C. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of digital audio systems and associated signal processing such as voice or speech processing and/or acoustic pattern recognition.” Pet. 15 (citing Ex. 1002 ¶¶ 18–20). Petitioner further states that a person of 2 Patent Owner has not presented objective evidence of non-obviousness. ordinary skill in the art “could have also obtained similar knowledge and experience through other means.” Id. Patent Owner “applies the level of ordinary skill in the art that Petitioners propose.” PO Resp. 17. We are persuaded by Petitioner’s undisputed assessment of the level of ordinary skill in the art, which is supported by the ’591 patent and the asserted prior art. D. Ground 13: Asserted Obviousness of Claims 1, 2, 6, 7, and 9 Based on Le in view of Kvaløy Petitioner contends that claims 1, 2, 6, 7, and 9 would have been” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “3. Motivation to Combine Le and Kvaløy a) The Parties’ Arguments Relying on the testimony of Dr. Atlas, Petitioner argues that one of ordinary skill “would have been motivated to combine the teachings of Le and Kvaløy, and would have had a reasonable expectation of success in doing so.” Pet. 18 (citing Ex. 1002 ¶ 93). According to Petitioner, Le emphasizes the desire for the system to be unobtrusive and blend in with the user’s appearance, and discloses that computer unit 15 can be implemented as a cellular telephone with wireless connections for microphones 36 and 38. Id. (citing Ex. 1005 ¶¶ 5, 9, 31, 33, 42). Petitioner also contends that Le is “concerned with properly recognizing voice commands that initiate recording in noisy environments.” Id. (citing Ex. 1005 ¶¶ 23–24). In view of these disclosures, Petitioner argues, one of ordinary skill would have been motivated to look for ways to implement Le’s system with a wireless connection to the microphones 36 and 38 and an ability to input audio commands in noisy environments, while making the system more unobtrusive. Id. at 18–19 (citing Ex. 1002 ¶ 99). Petitioner argues that this motivation would have led one of ordinary skill to Kvaløy. Pet. 19 (citing Ex. 1002 ¶ 99). According to Petitioner, one of ordinary skill “would have recognized that Kvaløy’s ear terminal was compatible with and even advanced Le’s disclosed objectives and be as good or superior to Le’s earpiece 30” for the following reasons: 1. Kvaløy’s ear terminal is analogous to Le’s earpiece 30 because both are configured to exchange audio signals with other devices. Id. at 20 (citing Ex. 1002 ¶ 103). 2. Kvaløy’s ear terminal would be less obtrusive and better blend in with the user’s natural appearance than Le’s wired earpiece 30. Id. (citing Ex. 1002 ¶ 104). 3. Kvaløy’s inner microphone M2 would provide an equivalent or superior voice signal to Le’s personal microphone 36 for Le’s natural voice commands to computer unit 15 because it is less susceptible to noise. Id. (citing Ex. 1002 ¶ 105). 4. Kvaløy’s outer microphone M1 for picking up ambient sound so that the user can speak with other people would be as effective as Le’s belt-worn environmental microphone 38 without the obtrusiveness of having to carry around a separate microphone or wear it on a belt. Id. at 20–21 (citing Ex. 1002 ¶ 106). 5. Le’s recording of ambient sound for later recall would have been an obvious use for Kvaløy’s ear terminal microphones. Id. at 21 (citing Ex. 1002 ¶ 107). Accordingly, in Petitioner’s combined Le-Kvaløy system, “Kvaløy’s ear terminal would replace Le’s earpiece and Le’s environmental microphone such that Kvaløy’s outer microphone would replace Le’s environmental microphone, and Kvaløy’s inner microphone would be used to pick up the user’s speech instead of the personal microphone.” Pet. 21–22 (citing Ex. 1002 ¶ 109). Petitioner asserts that “wireless headsets for mobile devices were common in the 2007 timeframe,” and one of ordinary skill “would have been able to adapt Le’s computer unit 15 to wirelessly communicate with Kvaløy’s ear terminal, as Le itself suggests.” Id. at 22 (citing Ex. 1002 ¶¶ 110–111).” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “h) Summary for Claim 1 For the foregoing reasons, and based on the full trial record, Petitioner” slip op. at 54

  Patent outcomesUS 8,254,591 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,254,591
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Staton Techiya, LLCSome claims unpatentable
  PTAB · Jun 16, 2023 · IPR2022-00242 · APJ Russell E Cass · IPR · Final written decision

  Claims 1, 5, 7, 11–12, 14–17, and 21–23 are unpatentable as obvious; claims 6 and 8–10 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelOther

    “C. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of digital audio systems and associated signal processing such as voice or speech processing and/or acoustic pattern recognition.” Pet. 12– 13 (citing Ex. 1002 ¶ 19). Petitioner further states that “[m]ore education can supplement practical experience and vice versa.” Id. at 13. Patent Owner “applies the level of ordinary skill in the art that Petitioners propose.” PO Resp. 9. We are persuaded by Petitioner’s undisputed assessment of the level of ordinary skill in the art, which is supported by the ’839 patent and the asserted prior art. D. Ground 1A: Asserted Obviousness of Claims 1, 6, 22, and 23 Based on Le in view of Victorian Petitioner contends that claims 1, 6, 22, and 23 would have been obvious over Le in view of Victorian. Pet. 20–38. Patent Owner disagrees, arguing that Petitioner has failed to establish that the claims would have been obvious based on the proposed combination. PO Resp. 12–39.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther

    “using its earpiece.” Id. at 3–4 (citing Ex. 1007, code (57), ¶¶ 2, 6, 16). “Accordingly,” Petitioner contends, “a user of the Le-Victorian combination could still hear the surrounding environment, including the conversation, in his/her other ear even when the ear canal speaker is off.” Id. at 4. “Furthermore,” according to Petitioner, “as long as the ear canal speaker is off, there is no feedback loop between Victorian’s ear canal microphone and ear canal speaker, and thus no risk of the echo, ringing, or feedback that [Patent Owner] complains about.” Id. Petitioner also argues that, in the proposed combination, it would have been obvious to modify Victorian’s ear-level device 110 to pass the signal from the external microphone to both the ear canal speaker and continually to Le’s computer unit, so that the external microphone signal is transmitted to the remote device independent of whether the external microphone signal was also transmitted to the ear canal speaker. Pet. Reply 4–5 (citing Pet. 18; Ex. 1002 ¶¶ 114–115). In this configuration, Petitioner asserts, Victorian’s ear-level device would “transmit the external microphone signal to Le’s computer unit to record conversations independent of whether the signal was also transmitted to the ear canal speaker.” Id. at 5. Thus, according to Petitioner, “there would be no need to ‘completely redesign Victorian’s VOX circuit 430’ or to ‘chang[e] all its existing rules.” Id. (citing PO Resp. 28). Petitioner further contends that Victorian discloses a rule in which “ambient sound gating module 421 is off, occluded sound gating module 441 is on, and remote sound gating module 451 is off” which, when combined with Petitioner’s proposed modification to provide an independent path from the external microphone to the computer unit, would allow the combined system to record conversations. Id. Petitioner also disagrees with Patent Owner’s argument that, due to technical challenges, one of ordinary skill would not have had a reasonable expectation of success in making the proposed Le-Victorian combination. Pet. Reply 7–8. Petitioner argues that Patent Owner does not argue that Petitioner’s proposed independent path modification would have been beyond the level of ordinary skill, and that the features Patent Owner points to, such as incorporating components into a “small earpiece” that operates within a “power budget,” are “unclaimed.” Id. at 7. Additionally, Petitioner asserts that Victorian itself refutes Patent Owner’s arguments about purported technical limitations “because Victorian discloses an earpiece with an in-ear canal form factor including the components that [Patent Owner] alleges would be ‘difficult to miniaturize,’” and Victorian is presumed to be enabling. Id. (citing Ex. 1007 ¶¶ 13, 29, Figs. 3, 4). Petitioner also contends that Patent Owner’s argument about “the alleged absence of commercialized consumer electronics” is “irrelevant.” Id. at 8. Moreover, Petitioner argues, “the ’839 patent itself admits the absence of these purported technical challenges,” because “despite having the same microphone and speaker placement as Victorian and the ability to record conversations with a ‘user-defined verbal activation message,’ the ’839 patent does not even mention feedback, echo, or ringing as a problem to solve.” Id. Furthermore, Petitioner argues, even if the Le-Victorian combination did not allow recording of conversations, that would not render the combination “inoperable.” Pet. Reply 10. According to Patent Owner, Le discloses uses for its system that do not require simultaneous recording of the user and another speaker, including situations “when the user is alone” and an embodiment “in which the audio information received ‘between’ two commands is stored (such as ‘start recording’ and ‘stop recording’).” Id. (citing Ex. 1006 ¶¶ 36, 37). “Thus,” Petitioner contends, “only some features Le describes would be less effective, which does not show inoperability.” Id.” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Based on the full trial record, we find that Petitioner has proven by a preponderance of the evidence that claim 21 would have been obvious over the combination of Le, Victorian, and Stuckman.” slip op. at 84

  Patent outcomesUS 8,111,839 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,111,839
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Staton Techiya, LLCSome claims unpatentable
  PTAB · Jun 14, 2023 · IPR2022-00282 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–3, 6, 7, 9–14, and 17–20 are unpatentable; claims 4, 5, 8, 15, and 16 were not shown unpatentable, based on the stated anticipation and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’400 patent “would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of wireless earphones and associated signal processing.” Pet. 17; Ex. 1002 ¶¶ 17–18. “Patent Owner accepts the level of ordinary skill in the art that is proposed in the Petition.” PO Resp. 15; Ex. 2009 ¶¶ 9–10. We conclude Petitioner’s formulation of ordinary skill is consistent with the level of skill reflected in the ’400 patent and the prior art of record, and it is not disputed by Patent Owner. We, therefore, apply Petitioner’s formulation in our analysis below.” slip op. at 8

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

    “B. Claim Construction We interpret the ’400 patent claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. The Petition asserts “no express constructions of the claims are necessary” in this proceeding, and “the claims should be given their plain and ordinary meaning.” Pet. 17–18; Ex. 1002 ¶ 74. The Patent Owner Response provides several claim constructions. See PO Resp. 15–19 (construing “sound signal” in claims 1, 14, and 18; “noise signal” in claims 14 and 18; and “envelope” in claims 8, 17 and 20); id. at 19–21 (construing “a background noise level” in claim 1); id. at 33–35 (construing “a background noise signal” in claims 14 and 18); id. at 35–38 (construing “mixing” in claims 4, 15, and 19). We discuss here Patent Owner’s claim constructions as they relate to independent claims 1, 14, and 18. We defer construction of dependent claims to later sections of this Decision.” slip op. at 9

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

    “might support construing “a background noise level” in claim 1 to mean a single overall background noise level is the reasoning provided in the Patent Owner Response. However, the CUPP decision states: “We now make precedential the straightforward conclusion we drew in an earlier nonprecedential opinion: ‘[T]he Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.’” CUPP, 53 F.4th at 1383 (quoting VirnetX, 778 F. App’x at 910). Yet, Patent Owner is in effect asking us to do that here, given the procedural interplay of this proceeding and the District Court Litigation. For the foregoing reasons, we conclude the District Court Litigation does not provide a persuasive basis to adopt Patent Owner’s claim construction of “a background noise level” in this proceeding. c) Conclusion For the foregoing reasons, we construe “a background noise level” in” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “based on the background noise level, to produce noise-reduced ambient sound signal 78. See Ex. 1005, Fig. 3. In particular, Alves discloses that, in an exemplary noise cancellation algorithm applied by noise reducer 76, “the average power of quasi-stationary background noise is tracked, and then a gain is decided accordingly and applied to the subband signals.” Id. ¶ 43 (emphasis added); accord id. ¶ 31.” slip op. at 38

  Patent outcomesUS 8,315,400 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,315,400
• Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedSome claims unpatentable
  PTAB · Feb 22, 2023 · IPR2021-01343 · APJ Nathan A Engels · IPR · Final written decision

  Claims 1, 3–5, 7, 9, 10, 12, 14–16, and 18–20 are unpatentable as obvious over Baldwin; claims 6, 8, 11, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art at the time of the invention would have been a person with a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field with at least two years of experience in digital video signal processing or digital video streaming or had a master’s degree in electrical engineering, computer engineering, computer science, or a similar field with a specialization in digital video signal processing.” Pet. 15 (citing Ex. 1003 ¶¶ 37–39). Petitioner also states that a person of ordinary skill would have been able to, among other things, encode and decode digital video signals, packetize, multiplex, and demultiplex encoded digital video signals for transmission, and implement modulation and channel coding. Pet. 15–16 (citing Ex. 1003 ¶ 40). Patent Owner states that a person of ordinary skill would have had “a bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, with one or two years of experience in this or a related field.” PO Resp. 13 (citing Ex. 2014 ¶ 20). Patent Owner states that its definition of a person of ordinary skill is similar to Petitioner’s definition and that any differences are not material. PO Resp. 13. We determine a person of ordinary skill would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field and two years of experience in digital video signal processing or digital video streaming, which is consistent with the parties’ arguments, the ’014 patent, and the prior art of record.” slip op. at 5

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

    “1. “video information” Petitioner contends a person of ordinary skill would have understood that “video information” means “digital video data.” Pet. 16. Patent Owner disagrees with Petitioner’s proposed construction and contends “video information” should be given its plain and ordinary meaning. PO Resp. 13. Patent Owner also states that the construction of “video information” is immaterial to this proceeding. PO Resp. 13. We do not discern a meaningful dispute between the parties regarding the meaning of “video information,” and we do not expressly interpret the term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (internal quotation omitted).” slip op. at 6

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

    “Among other problems with these arguments, it is not clear how or where Petitioner relies on the proposed combination to satisfy any specific claim limitations. Petitioner argues each of Cooper and Baldwin teaches each limitation of each independent claim, and Petitioner presents its combination of references separate from its comparisons of Cooper and Baldwin to the claims, without clearly stating how the references are to be combined or how those combined teachings satisfy particular limitations. Because Petitioner fails to identify its proposed combination with sufficient clarity, we are also not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have been motivated to combine Cooper and Baldwin to yield the subject matter recited by the challenged claims. We also disagree with Petitioner’s argument that Realtime Data suggests that Petitioner does not need to show a motivation to combine. Reply 27–29 (citing Realtime Data, 912 F.3d at 1373–74). Unlike here, in Realtime Data, the secondary reference was cited for the “sole purpose” of confirming that an element was disclosed in the primary reference. Id. In this case, Petitioner proposes combining some teachings from each of Baldwin and Cooper. See Pet. 19–20; Reply 27. Accordingly, we determine Petitioner has not articulated an adequate rationale to combine the references to arrive at any particular challenged claim.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Patent Owner contends, and we agree, that Cooper does not teach that its receiver identifies which of two streams is expected to result in a lower latency, as required by limitation [1d]. PO Resp. 36–52. Where Cooper describes receiving a multiplexed composite signal, Cooper teaches always identifying the normal mode packet stream for decoding when it is available, without regard to latency, and identifying the robust mode packet stream for decoding only when the normal mode packet stream is not available, such as when normal mode packets are lost. E.g., Ex. 1004, 7:8–8:28. In fact, it would be inconsistent with Cooper’s teachings for the receiver to select the robust mode packet stream when the normal mode packet stream is available: Cooper teaches that “[u]nder normal conditions, the error signal is not active on the error signal line E. In response, the selector 230 couples the normal mode packet stream to the multi-standard decoder 240, and the multi-standard decoder 240 begins to generate the content representative signal from the normal mode packets . . . .” Ex. 1004, 7:32–37 (emphasis added). Although Cooper also teaches that its receiver can decode the robust mode packet stream to avoid “undue delay” “at the beginning of any broadcast or channel change,” we find that Cooper does so only when the normal mode packet stream is not available. Ex. 1004, 17:23–45; see also Ex. 1004, 3:1–3. Specifically, Cooper states that “at the beginning of any broadcast or channel change,” there is a period of time (i.e., Tadv ) when the receiver’s delay device 220 is being filled. Ex. 1004, 17:23–26 (emphasis added). Cooper explains that waiting until delay device 220 is full would cause “undue delay when a receiver is switched on or a channel is changed.” Ex. 1004, 17:26–30. To address this delay, Cooper’s receiver decodes the robust mode packet stream, which “is immediately available,” so that a video signal can be presented until “the normal mode packet stream becomes available,” at which point the receiver switches to decoding the normal mode packet stream. Ex. 1004, 17:30–42. Consequently, we find that Cooper teaches that, at a channel change, its receiver receives (and decodes) the robust mode packet stream until it receives the normal mode packet stream. We disagree with Petitioner’s contrary argument that Cooper’s receiver receives both streams in this situation (see Reply 4–16), and, at a minimum, Petitioner has not persuasively shown that Cooper teaches or suggests this (see Ex. 2015, 82:22–85:13 (describing different scenarios but acknowledging that “Cooper doesn’t really illuminate either of these”)). Further, Cooper’s description of Figure 3 is consistent with our understanding of Cooper description of a channel change. Specifically, that portion of Cooper states: Time t0 may represent the time when the receiver is turned on, or when a user specifies a new content source to receive. During the time, Tadv, between t0 and t4, robust mode packets “a” to “j” are loaded into the delay device 220, and normal mode packets, designated “0” through “9” are received. At time t4, the normal mode packet “A” becomes available from the demultiplexer 210 and delayed robust mode packet “a” becomes available from the delay device 220. Under normal conditions, . . . the selector 230 couples the normal mode packet stream to the multi-standard decoder 240, and the multi-standard decoder 240 begins to generate the content representative signal from the normal mode packets, as described above. This is illustrated by the cross hatching 301 in the normal mode packets “A” through “G”. Ex. 1004, 7:24–39. Cooper includes this description in order to explain its typical operation as well as to illustrate the relative timing of the robust mode packet stream and the normal mode packet stream. See Ex. 1004, 7:24–25, 7:40–8:28. This passage teaches that normal mode packets designated with capital letters (e.g., “A”) are displayed after time t4 under normal conditions; however, it does not address which (if any) packets are displayed between time t0 and time t4. As a result, we understand this passage of Cooper to indicate that “0” to “9” are simply placeholders, which” slip op. at 13

  Patent outcomesUS 8,646,014 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,646,014
• Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedAll claims unpatentable
  PTAB · Feb 15, 2023 · IPR2021-01293 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–5 and 7 are unpatentable under § 103: claims 1 and 2 over Patrick, claim 2 over Patrick and Barrett, claims 3–5 over Patrick and Gringeri, and claim 7 over Patrick and Mahdavi.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the field of art (“POSITA”) of the ’098 patent would have been a person with a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar field with at least two years of experience in video transmission systems, or a person with a master’s degree in computer science, computer engineering, electrical engineering, or a similar field with a specialization in video transmission systems. Pet. 18 (citing Ex. 1003 ¶¶ 55–56). Petitioner further contends that “[a] person with less education but more relevant practical experience may also meet this standard.” Id. (citing Ex. 1003 ¶¶ 55–56). Petitioner further asserts that a person of ordinary skill in the art in 2004 would have known and had the skills necessary to: (1) “Design or implement video transmission systems and applications in compliance with standards such as TCP/IP, UDP, RTP, ATM, DVB, and ATSC;” (2) “Understand video coding and processing in compliance with standards such as MPEG-1, MPEG-2, MPEG-4, and H.26x;” (3) “Implement known techniques for determining available bandwidths between transmitting and receiving systems of media content; and” (4) “Understand common techniques for organizing and” slip op. at 8

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

    “construction standard as applied in federal courts in a civil action under 35 U.S.C. § 282(b), which is generally referred to as the Phillips standard. See 37 C.F.R. § 42.100(b) (2021); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under the Phillips standard, “words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (1996)). Petitioner proposes claim constructions for “transmission rate” and “steady-state transmission rate.” See Pet. 19–21. Patent Owner does not agree with Petitioner’s proposed claim constructions. See PO Resp. 16 (citing Ex. 2014 ¶ 20). Patent Owner, however, does not offer alternative proposed claim constructions, but instead asserts these terms should be construed in accordance with their plain and ordinary meanings. See id. As demonstrated in the analysis below, we need not expressly construe “transmission rate” and “steady-state transmission rate.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7

  • Strike new argumentNew argument consideredDecided for petitioner

    “As an initial matter, we do not agree with Patent Owner’s contention that the following Reply argument constitutes an impermissible new argument: “[s]ince [Patent Owner] is unable to dispute paragraph 38 teaches limitations [1b] and [1d] . . . .” Pet. Reply 9; see PO Sur-reply 12–13. Contrary to Patent Owner’s suggestion, we do not understand Petitioner to argue for the first time on Reply that Patrick’s paragraph 38 by itself teaches limitations [1b] and [1d]. Rather, we understand the Reply argument to address the dispute raised by Patent Owner regarding the disclosure of Patrick’s paragraph 38 as applied to limitations [1b] and [1d] in the Petition. See Pet. Reply 9; PO Resp. 38–40, 38 n.7, 52–53 (citing Ex. 2014 ¶¶ 50–51, 63–64, 70); Pet. 30–31, 37. Likewise, we do not agree that the portion of the Reply addressing the second sentence of Patrick’s paragraph 38 is a new argument that attempts to buttress the lack of discussion of paragraph 38 in the Petition. See PO Sur-reply 16; Pet. Reply 11. Instead, we find that these Reply arguments constitute a permissible response to Patent Owner’s arguments addressing how a person of ordinary skill in the art would understand the disclosure of Patrick’s paragraph 38. See PO Resp. 38 n.7 (citing Ex. 2014 ¶ 50), 52–53 (citing Ex. 2014 ¶¶ 63–64, 70; PO Resp. 38 n.7); see also 37 C.F.R. § 42.23(b); Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)8 73–74.” slip op. at 28

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “paragraph 38 uses terms consistent with the terms used in the first sentence of paragraph 38 and terms used in paragraphs 31 and 36 to address act 206 of Figure 3. See id. ¶¶ 31, 36, 38. Moreover, the first sentence of paragraph 38 is consistent with Patrick’s paragraph 37 disclosure that network congestion or other restrictions between the server and client (i.e., a reduction of bandwidth between the server and client) may limit the rate of accelerated streaming. See Ex. 1004 ¶ 37 (quoted in Pet. 30–31). We give weight to Dr. Brody’s testimony that a person of ordinary skill in the art “reading Patrick’s disclosure would have understood that [Patrick’s] later disclosure [in paragraphs 33 through 39] provides additional details and teachings relevant to the invention as a whole,” (Pet. Reply 7 (citing Ex. 1033 ¶ 8)) because it is supported by the aforementioned interrelated teachings of at least Patrick’s paragraphs 31 and 36 through 38. We give minimal weight to Dr. Hayes’s cited supporting testimony regarding the “structure” of Patrick because it is not supported by a sufficient factual basis, and like Patent Owner’s arguments, is inconsistent with Patrick’s disclosure. Accordingly, contrary to Patent Owner’s arguments, we find: (1) Patrick’s paragraph 38 provides additional detail regarding the disclosures of paragraphs 31 through 36 with respect to act 206 of Figure 3; (2) the disclosures of paragraphs 37 through 39 are not limited to describing the period of accelerated streaming of act 208 of Figure 3; and (3) the corresponding disclosure related to act 206 of Figure 3 is not limited to the description of Patrick’s paragraphs 31 through 36.” slip op. at 30

  Patent outcomesUS 9,402,098 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,402,098

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.