- PTAB · Nov 22, 2021 · IPR2021-00917 · APJ Brent M Dougal · IPR · Institution
Instituted inter partes review of claims 7–13 on all grounds in the Petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For all of these reasons, we determine that the Petition has established a reasonable likelihood of success with respect to claim 7. c) Claims 8, 9, and 12 Petitioner argues that Numazaki anticipates dependent claims 8, 9, and 12. Pet. 41–42. Patent Owner does not contest Petitioner’s assertions regarding these claims at this stage. See generally Prelim. Resp. We have reviewed Petitioner’s assertions and the supporting evidence, and determine that Petitioner has established a reasonable likelihood of prevailing with respect to claims 8, 9, and 12.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“We agree that the preamble of claim 7 is limiting. This is primarily because the last clause of claim 7 refers back to the preamble and is understood with reference thereto. The last clause states: “means for how these constructions are impacted by the District Court Claim Construction Memorandum and Order (Ex. 2004) which was issued after the pre-institution briefing was submitted. controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” can be understood because of this reference to the handheld computer apparatus. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claim 7.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“c) “camera means associated with said housing for obtaining an image using reflected light of at least one object positioned by a user operating said object” Petitioner asserts that claim 7’s limitation of “camera means associated with said housing for obtaining an image using reflected light of at least one object positioned by a user operating said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 14. Petitioner argues that the limitation’s function “is obtaining an image using reflected light of at least one object positioned by a user operating said object” and the corresponding structure “is one or more TV cameras (e.g., TV camera 815) or other suitable electro-optical sensors, and equivalents thereof.” Id. (citing Ex. 1001, 3:15–29; Ex. 1003 ¶¶ 50–51). As noted above, Patent Owner does not contest Petitioner’s constructions. Prelim. Resp. 5. For the purposes of institution, we accept Petitioner’s construction. d) “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 15. Petitioner argues that the limitation’s function “is analyzing an image to determine information concerning a position or movement of an object” and the corresponding structure “is a general purpose computer programmed with an algorithm to cause the general purpose computer to: (1) analyze target image(s) of an object captured by the camera means; and (2) determine position(s) of the object.” Id. (citing Ex. 1001, 6:9–18, 7:22–29, 12:1–9, 12:46–52, 17:34–50; Ex. 1003 ¶¶ 53–36). As noted above, Patent Owner does not contest Petitioner’s constructions. Prelim. Resp. 5. For the purposes of institution, we accept Petitioner’s construction.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“The function of the photo-detection sensor unit is taught in a number of locations in Numazaki. For example, Numazaki at 52:8–14 (cited at Pet. 37) teaches that “a window 712 is provided for the lighting unit and the photo-detection sensor unit” to enable the function of “lighting and photo-detecting on an external body.” The paragraph continues to teach that “[a] position of a cursor 714 on the screen can be controlled by moving a finger 713 in front of this window 712.” Ex. 1007, 52:14–16. Thus, the function of the photo-detection sensor unit is taught by Numazaki. Further, this description of the function of the photo-detection sensor unit is consistent with Numazaki’s more detailed discussion of the reflected light extraction unit and photo-detection optics, which teaches obtaining an image. See Ex. 1007, 10:33–35, 11:11–15 (“an image is formed on a photo-detection plane of the reflected light extraction unit 102 by a photo-detection optics 107.”); Pet. 37. Patent Owner also argues that, because they “hav[e] different names, Numazaki’s ‘photo-detection sensor unit’ and Numazaki’s ‘reflected light extraction unit’ must be different units with different functions.” Prelim. Resp. 21. Patent Owner’s argument misunderstands Petitioner’s position. The Petition equates Numazaki’s photo-detection sensor unit with Numazaki’s reflected light extraction unit (102) and photo-detection optics (107). Pet. 37. At the same time, Patent Owner is trying to equate Numazaki’s photo-detection sensor unit with only Numazaki’s reflected light extraction unit, which does appear to reflect the teachings of Numazaki or the position in the Petition. For the above reasons, Patent Owner’s arguments do not identify any shortcomings in the showing by Petitioner that Numazaki teaches all the aspects of the camera means claim element.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,933,431 - Hulu, LLC v. Pucs, Inc.InstitutedPTAB · Oct 8, 2021 · IPR2021-00811 · APJ Joni Y Chang · IPR · Institution
The Board instituted IPR on claims 1–7, finding a reasonable likelihood they would have been shown obvious over Santangelo alone and over Santangelo combined with Zigmond.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that the Petition and evidence in this record establish that there is a reasonable likelihood that Petitioner would prevail in challenging claims 1−7 of the ’619 patent based on the grounds discussed above. At this juncture, we have not made a final determination with respect to the patentability of the challenged claims, nor with respect to claim construction. IV. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted for the following asserted grounds: Claims Challenged 35 U.S.C. § References 1−7 103 Santangelo 1−7 103 Santangelo, Zigmond” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Here, citing to the Declaration of Stephen Gray for support, Petitioner asserts that a person of ordinary skill in the art of the ’619 patent would have had “a bachelor’s degree in computer science or a similar field with at least four years of experience in delivery of media content and advertising over the Internet,” or “a master’s degree in computer science or a similar field.” Pet. 17 (citing Ex. 1003 ¶¶ 59–61). At this juncture, Patent Owner does not proffer any assessment regarding the knowledge of an ordinarily skilled artisan. To the extent necessary, and for purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, with the exception of the open-ended language “at least,” because it is consistent with the ’619 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposed claim construction for the term “over-the-top data delivery system” as it is consistent with Specification and Mr. Gray’s testimony. Notably, the Specification discloses that “OTT systems can include any one or more systems or elements of a larger system that use publicly accessible internet connections to deliver video streams.” Ex. 1001, 9:26−31. Mr. Gray also explains that “the [S]pecification uses ‘over-the-top’ or ‘OTT’ in various embodiments to describe systems that are able to access the internet and deliver media streams, or access the internet and establish a connection with an ad engine.” Ex. 1003 ¶ 64 (citing Ex. 1001, 1:22−27 (describing prior art “Thomas does not disclose analyzing the media content and user data to queue advertisements to over-the-top (OTT) internet signals”), 9:32−34 (disclosing that “OTT systems advantageously allow digital content to be accessible by any devices that can access the internet and establish a connection with ad engine 110”)). Moreover, as Mr. Gray testifies, Petitioner’s proposed claim construction is further supported by Santangelo’s description of “over-the-top” in the context of providing content over a network: “network services are sent ‘over the top’ of other provider’s infrastructure, thereby making the service network substantially network-agnostic” (Ex. 1004 ¶ 102). See Ex. 1003 ¶ 64. In light of the Specification and the evidence in this record, we determine for purposes of this Decision that the term “over-the-top data delivery system” as used in the preamble of claim 1 encompasses a system “sending data over another’s network, which includes using publicly accessible internet connections to deliver media streams,” adopting Petitioner’s proposed claim construction. Pet. 18.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“suggests each limitation of the claims and provides reasons to combine the prior art teachings. Id. For example, Petitioner explains that Santangelo teaches Element 1f (“retrieving an advertisement rule associated with the user”) as discussed in Ground 1, obviousness based on Santangelo alone. Pet. 68. Petitioner asserts that, to the extent Patent Owner argues that Santangelo does not sufficiently disclose this “advertisement rule” element, Zigmond would have rendered this element obvious by expressly teaching using “ad selection rules” based on “identifying characteristics of viewer” to select advertisement “specifically associated with characteristics of the viewer or the household,” such as recent advertisement content, permitted themes (e.g., parental locks), etc. Pet. 68−71 (citing Ex. 1005, 4:24−34, 9:56−10:3, 10:36−63, 11:30−53, 11:66−12:14, 12:62−66, 13:51−58, 14:13−20). Petitioner also asserts that a person of ordinary skill in the art would have been motivated to modify Santangelo’s method to include Zigmond’s additional monitoring functions and selection rules because it would “provide advertisers and users greater control on what advertisements to display,” furthering Santangelo’s goals for selecting user tailored advertisement. Id. at 61−64 (citing Ex. 1003 ¶¶ 18−20, 173−178). Upon review of the parties’ arguments and evidence, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in showing that claims 1−7 are unpatentable under § 103 as obvious over Santangelo and Zigmond. As discussed above, Petitioner has shown sufficiently for purposes of instituting a review that Santangelo teaches or suggests all of the limitations in these challenged claims. Petitioner also has articulated a sufficient reason to combine the teachings of Santangelo and Zigmond for purposes of this Decision.” slip op. at 27
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,728,619 - PTAB · Oct 7, 2021 · IPR2021-00607 · APJ Joni Y Chang · IPR · Institution
The Board denied institution for claims 14–38 under § 325(d), finding the same or substantially the same arguments were previously presented and Petitioner failed to show material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“[U]nder § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. If the petitioner fails 7 to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8, 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). 1. Part I – whether the same or substantially the same arguments previously were presented to the Office slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Fourth, Petitioner argues that, because the subject matter added from Chu ’886 was not included in any of the applications in the ’140 patent’s priority chain before it was added by amendment in the ’138 application and then filed with the U.S. Application No. 13/294,108 (“the ’108 application”), the earliest possible priority date for any of the ’140 patent claims relying on this subject matter for written description support under 35 U.S.C. § 112, ¶ 1, is the date of filing the ’108 application, November 10, 2011. Pet. 14−17. However, the amendments to the ’138 application were proper because, as discussed above, “[w]hen claims were added to the ’138 application that transformed previously non-essential material into allegedly essential material, Patent Owner submitted an amendment to explicitly set forth the material in the specification,” in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p), 8th Ed. Rev. 8 (July 2010). See Prelim. Resp. 26−30. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’140 patent’s priority chain did not properly incorporate by reference Chu ’330 and Chu ’886, or that the examiner erred in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. As such, we are not persuaded by Petitioner’s argument that the earliest possible priority date for the challenged claims of the ’140 patent is November 10, 2011. For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that “the Examiner erred by not realizing that Chu 21 ’330 and Chu ’886 qualify as prior art under 35 U.S.C. § 102(b) and are material to the patentability of the claims in the ’140 Patent.” Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics, Paper 6 at 8; see also Becton, Dickinson, Paper 8, 24.” slip op. at 21
§ 102 anticipationDiscretionary denial - PTAB · Oct 7, 2021 · IPR2021-00670 · APJ Joni Y Chang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 14–38 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We are not persuaded that a “graphics controller” is merely a graphics interface in the context of the ’140 patent. As Patent Owner explains, “[t]he ‘graphics controller’ of the ’140 patent has graphics processing functionality, and is not just a connection to a separate component for processing graphics.” Prelim. Resp. 12 (emphasis added). Patent Owner’s declarant, Marc Levitt, Ph.D., testifies that a person of ordinary skill in the art would have recognized that a graphics interface is not a graphics controller because a graphics interface is “simply the interface for connecting an external graphics processor to the processor module” and the “graphics interface itself provides no actual graphics processing functionality.” Ex. 2001 ¶¶ 72−73. We credit Dr. Levitt’s testimony as it is consistent with the Specification and the general knowledge of an ordinarily skilled artisan. See, e.g., Ex. 1001, 19:10−13, Figs. 19, 20; Ex. 3001 (IEEE Dictionary), 3 (defining “interface” as “[a] hardware or software component” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“dispute the level of skill for a person of ordinary skill in the art.” Prelim. Resp. 4. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’140 patent, prior art of record, and the testimony of Dr. Edwards.” slip op. at 11
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“interface in the context of the ’140 patent. As Patent Owner explains, “[t]he ‘graphics controller’ of the ’140 patent has graphics processing functionality, and is not just a connection to a separate component for processing graphics.” Prelim. Resp. 12 (emphasis added). Patent Owner’s declarant, Marc Levitt, Ph.D., testifies that a person of ordinary skill in the art would have recognized that a graphics interface is not a graphics controller because a graphics interface is “simply the interface for connecting an external graphics processor to the processor module” and the “graphics interface itself provides no actual graphics processing functionality.” Ex. 2001 ¶¶ 72−73. We credit Dr. Levitt’s testimony as it is consistent with the Specification and the general knowledge of an ordinarily skilled artisan. See, e.g., Ex. 1001, 19:10−13, Figs. 19, 20; Ex. 3001 (IEEE Dictionary), 3 (defining “interface” as “[a] hardware or software component” slip op. at 7
Claim construction§ 103 obviousnesscites KSR · Graham - PTAB · Sep 20, 2021 · IPR2021-00669 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review may not be authorized “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner demonstrated a reasonable likelihood of prevailing in establishing unpatentability of the challenged claims of the ’654 patent. Accordingly, no trial is instituted.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“bit at a time on a single path.’” Prelim. Resp. 20 (quoting Ex. 2002, 11 (IEEE Dictionary) (defining “serial transmission”); citing Ex. 1001, 20:66−21:3 (“describing ‘bit based line’ ‘for transmitting serial bits’”); Ex. 2001 ¶ 76). Based on the evidence before us, we agree with Patent Owner’s proposed claim construction. Ex. 1001, 20:66−21:3; Ex. 2001 ¶ 76; Ex. 2002, 9, 11.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)(quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In that regard, relying on the declaration of Dr. Edwards, Petitioner contends that a person of ordinary skill in the art at the time of the ʼ654 patent’s invention would have had “at least a Master’s Degree in, or a related subject, or a Bachelor’s Degree in electrical engineering, computer science, or a related subject and three years of experience working with computer architecture, computer busses, and related technologies.” Pet. 9; Ex. 1003 ¶¶ 46–47.” slip op. at 18
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“teach the claimed “graphics controller,” citing Dr. Edwards’ testimony for support. Pet. 22−23 (citing Ex. 1004, 5:21–25, 23:54–57; Ex. 1003 ¶¶ 72– 73). However, as discussed above in our claim construction analysis, in the context of the ’654 patent, a “graphics controller” is a processing unit having graphics processing functionality (e.g., producing graphical video output), and thus, not merely a graphics interface. As Dr. Levitt testifies, a person of ordinary skill in the art would have recognized that a graphics interface is not a graphic controller, because “the graphics interface is simply the interface for connecting an external graphics processor to the processor module,” wherein “[t]he graphics interface itself provides no actual graphics processing functionality.” Ex. 2001 ¶ 72. We credit Dr. Levitt’s testimony as it is consistent with the Specification and the general knowledge of an 26 ordinarily skilled artisan. See, e.g., Ex. 1001, 7:4−17, 19:4−9, Figs. 3, 19, 20.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · Graham - PTAB · Sep 15, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same arguments had been presented before and Petitioner failed to show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), in “determining whether to institute [an inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“Institution of an inter partes review may not be authorized “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons stated below, we decline to institute an inter partes review of the challenged claims of the ’654 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“3. § 325(d) Conclusion For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’654 Patent claims. Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics at 8; see also Becton, Dickinson, Paper 8, 24. III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny institution of an inter partes review. 26 IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 26
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Chu ’886 was not included in any of the applications in the ’654 patent priority chain before the amendments in the ’138 application, the earliest possible priority date for any of the ’654 patent claims relying on this subject matter for written description support under § 112, ¶ 1, is the filing date of the ’108 application, i.e., November 10, 2011, “the earliest possible priority date for any of the ’654 Patent claims relying on this subject matter.” Pet. 15−17. However, the amendments to the ’138 application were proper because, as discussed above, when claims were added to the ’138 application that transformed previously non-essential material into allegedly essential 25 material, Patent Owner submitted an amendment to explicitly set forth the material in the specification in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p) (8th Ed. Rev. 8 July 2010). See Prelim. Resp. 28−33. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’654 patent priority chain did not properly incorporate by reference Chu ’330 and Chu ’886, or that the examiner erred in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. As such, we are not persuaded by Petitioner’s argument that the earliest possible priority date for the challenged claims of the ’654 patent is November 10, 2011.” slip op. at 25
§ 102 anticipation§ 103 obviousnessDiscretionary denial - PTAB · Sep 14, 2021 · IPR2021-00666 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of proving the claims obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review may not be authorized “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner demonstrated a reasonable likelihood of prevailing in establishing unpatentability of claims 1−40 of the ’768 patent. Accordingly, no trial is instituted.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“serial” transmission or transmitting “serially.” See generally Pet. However, Patent Owner proposes that “terms reciting ‘serial’ data transmission have an ordinary meaning,” wherein “[i]n data transmission, ‘serial’ means ‘one bit at a time on a single path.’” Prelim. Resp. 17–18 (quoting Ex. 2002, 11 (IEEE Dictionary) (defining “serial transmission”); citing Ex. 1001, 25:3−7 (“describing ‘bit based line’ ‘for transmitting serial bits’”); Ex. 2001 ¶ 76). Based on the evidence before us, we agree with 9 Patent Owner’s proposed claim construction. Ex. 1001, 25:3−7; Ex. 2001 ¶ 76; Ex. 2002, 9, 11. In particular, Patent Owner’s proposed claim interpretation is consistent with the term’s “ordinary and customary meaning.” Phillips, 415 F.3d at 1312−13. As Dr. Levitt, testifies, the IEEE Dictionary similarly defines “serialization” as “the process of transmitting coded characters one bit at a time,” and defines “serial interface” as “[a]n interface that transmits data bit by bit rather than in whole bytes.” Ex. 2001 ¶ 76 (citing Ex. 2002, 11) (alteration in original). Dr. Levitt further testifies that the IEEE Dictionary indicates that “serial” means the opposite of “parallel” transmission, which “transmits multiple bits simultaneously.” Id. (citing Ex. 2002, 9 (“defining ‘parallel transmission’ as ‘simultaneous transmission of all the bits making up a character or byte where each bit travels on a different path’ and contrasting to ‘serial transmission’”), 11 (“defining ‘serial transmission’ and contrasting to ‘parallel transmission’”)). slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)(quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In that regard, relying on the declaration of Dr. Edward, Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the ʼ768 patent’s invention would have had “at least a Master’s degree in, or a Bachelor’s Degree in electrical engineering, computer science, or a related subject and three years of experience working with computer architecture, computer busses, and related technologies.” Pet. 11; Ex. 1003 ¶ 45. In its Preliminary Response, Patent Owner does not dispute Petitioner’s proposed the level of ordinary skill in the art. See Prelim. Resp. 5. Based on the current record, for purposes of this Decision, we apply Petitioner’s proposed level of ordinary skill in the art. We also note that the prior art of record currently in the instant proceeding is consistent with this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 16 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“As Patent Owner explains in its Preliminary Response, and as Dr. Levitt testifies, “Goodrum describes only one embodiment for transmitting address and data bits,” wherein “Goodrum’s data transfer are done as parallel transmissions, sending a 60-bit message over the parallel cable in three time multiplexed phases of 20 parallel bits each.” Prelim. Resp. 17−22; Ex. 2001 ¶ 79 (citing Ex. 1006, 52:22−45, 55:14−56:3, 57:22−29, Figs. 14, 15A). In particular, “Goodrum promotes the benefits of its parallel cable interface over ‘serial methods,’ such as fiber optics . . . to transmit address and data bits.” Ex. 2001 ¶ 79 (citing Ex. 1006, 57:36−39 (“less expensive than fiber optics for this short distance and less complex to interface than other serial methods”)). Here, Petitioner’s reason to combine Goodrum with Gulick (Pet. 20 (citing Ex. 1006, 57:30−44) (“less expensive, better noise immunity, minimized EM radiation etc.”) relies on those advantages disclosed in Goodrum that are for transmitting data in parallel over a HIPPI cable, not for serial transmissions as required by the challenged claims at issue. See Ex. 1006, 57:30–44. We credit Dr. Levitt’s testimony because it is consistent with Goodrum’s disclosure and the general knowledge of an ordinarily skilled artisan. See, e.g., Ex. 1006, 57:22−49, 55:14−56:3, 58:8−14, Figs. 14, 15A 16; Ex. 2002, 9 (defining “parallel transmission” as “[s]imultaneous transmission of all the bits making up a character or byte where each bit travels on a different path” and contrasting to “serial transmission”), 11 (defining “serial transmission” as “one bit at a time on a single path” and” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,529,768 - PTAB · Sep 14, 2021 · IPR2021-00667 · APJ Scott A Daniels · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–23 and 27–38 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’797 patent. Accordingly, we decline to institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner’s interpretation is also consistent with the Specification of the ’797 patent. The written descriptions states that “[a] bit based line 9 Our citations to Exhibit 2002 refer to the page number on the bottom, right corner added by Patent Owner. (i.e., a bit line) is a line for transmitting serial bits,” and that “[b]it based lines typically transmit bit packets and use a serial data packet protocol.” Ex. 1001, 22:51−52. The written description also explains that “[e]xamples of bit lines include an LVDS line, an IEEE 1394 line, and a Universal Serial Bus (USB) line.” Id. at 22:53−55. In view of the foregoing, for purposes of this Decision, we adopt Patent Owner’s interpretation—namely that the ordinary meaning of, “[i]n data transmission, ‘serial’ is ‘one bit at a time on a single path.’” Prelim. Resp. 14. And that “serial” means the opposite of “parallel” transmission, which “transmits multiple bits simultaneously.” Id.; Ex. 2001 ¶ 78; Ex. 2002, 9, 11.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Significantly, even if a person of ordinary skill in the art understood that Gulick’s link interfaces “could have been modified to incorporate Goodrum’s cable interface” as Dr. Edwards testifies, neither Petitioner nor Dr. Edwards explains why one of ordinary skill in the art would have modified Goodrum’s “true differential” signaling that transmits data in parallel over a HIPPI cable to use “serial channels,” or additionally, accomplish the step of “conveying encoded address and data bits of a Peripheral Component Interconnect (PCI) bus transaction in serial form over the serial channels” as is further required by certain challenged claims. Ex. 1003 ¶ 73; Ex. 1001, 38:28–30; Pet. 16−20, 22−30; Ex. 1003 ¶¶ 70−75. In light of the foregoing, we determine that Petitioner fails to show that the combination of Gulick and Goodrum discloses “serial channels” as required by each of independent claims 4, 14, 21, 27, 33, and 36, and further fails to teach conveying data addresses and bits “in serial form” as required by independent claims 4, 14, and 21. Additionally, as to independent claims 27, 33, and 36, Petitioner’s combination of Gulick, Goodrum, and McAlear do not cure this deficiency.” slip op. at 25
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In support of Patent Owner’s arguments, Dr. Levitt persuasively testifies that “Goodrum’s data transfers are done as parallel transmissions, sending a 60-bit message over the parallel cable in three time-multiplexed phases of 20 parallel bits each.” Ex. 2001 ¶ 81 (citing Ex. 1006, 52:22−45, 55:14−56:3, Figs. 14, 15A). Dr. Levitt testifies further that “Goodrum promotes the benefits of its parallel cable interface over ‘serial methods’ such as fiber optics,” to transmit address and data bits. Id. (citing Ex. 1006, 57:36−39 (“less expensive than fiber optics for this short distance and less complex to interface than other serial methods”)). Moreover, Petitioner’s reason to combine Goodrum with Gulick relies on those advantages disclosed in Goodrum that are for transmitting data in parallel over a HIPPI cable, not for transmitting on “serial channels” as required by the challenged claims. Pet. 19, 26 (citing Ex. 1006, 57:30−44). We credit Dr. Levitt’s testimony because it is consistent with Goodrum’s disclosure and the general knowledge of an ordinarily skilled artisan. See, e.g., Ex. 1006, 57:22−49, 55:14−56:3, 58:8−14, Figs. 14, 15A 16; Ex. 2002, 9 (defining “parallel transmission” as “[s]imultaneous transmission of all the bits making up a character or byte where each bit travels on a different path” and contrasting to “serial transmission”), 11 (defining “serial transmission” as “one bit at a time on a single path,” and “serial interface” as “[a]n interface that transmits data bit by bit rather than in whole bytes”).” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,977,797 - Google LLC v. Videoshare LLCInstitution deniedPTAB · Mar 24, 2021 · CBM2020-00027 · APJ Thomas L Giannetti · CBM · Institution
The Board denied institution of CBM review for claims 1–7 because the patent did not qualify as a covered business method patent; it did not reach the § 101 challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- BurdenDecided for patent owner
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“E. Subject Matter Eligibility Under 35 U.S.C. § 101 Petitioner contends that the challenged claims are directed to an abstract idea that is not eligible subject matter for a patent under 35 U.S.C. § 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea of including advertising with appropriately formatted video.” Id. at 80. Patent Owner responds that Petitioner has failed to show that the claims recite ineligible subject matter. Prelim. Resp. 64. According to Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve the functioning of a video server providing shared video files.” Id. Because we have determined that the ’341 patent does not qualify for covered business method patent review, we do not address whether the claims recite eligible subject matter under 35 U.S.C. § 101.” slip op. at 11
§ 101 eligibilityDiscretionary denialPatents in suitUS 10,362,341 - Apple Inc. v. Seven Networks, LLCInstitution deniedPTAB · Sep 1, 2020 · IPR2020-00507 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–44 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Patent Owner raises a valid point. Petitioner only alleges “the embedded credential is associated with the user’s account information” (Pet. 27) and fails to explain how merely associating the embedded credential with the user’s account information addresses how the second identifier is sent “in response to the received registration information” as limitation [1.4] requires. See Pet. 27–28 (citing Ex. 1005 ¶ 65; Ex. 1003 ¶ 44). In turn, at the cited paragraph, Dr. Wills testifies that “the redirect message from the identity provider to the service provider, as illustrated above, would automatically include the registration information associated with the particular user so that the service provider will have the necessary account information of the user in performing the requested service.” Ex. 1003 ¶ 44. Although Petitioner cites to this testimony, the Petition does not advance Dr. Wills’ theory that underlies the testimony. See Pet. 27 (citing 1003 ¶ 44). Even if we deem the Petition to properly incorporate Dr. Wills’ theory that “the redirect message from the identity provider . . . would automatically include the registration information,” the record does not support the theory, as Patent Owner argues. See Prelim. Resp. 33–34.5 Dr. Wills’ testimony cites to Yared’s paragraph 87 for support (Ex. 1003 ¶ 44), but that paragraph neither mentions Yared’s redirect procedures nor otherwise suggests that the redirect message includes the registration reliedupon information. See Ex. 1005 ¶ 87. Also, Dr. Wills’ testimony does not explain sufficiently how something that Yared’s identity provider (server) renders “automatically available to service providers” (see id.) means that the identity provider transmits that information in Yared’s redirect message or why this transmission would have been obvious.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner raises a valid point. Petitioner only alleges “the embedded credential is associated with the user’s account information” (Pet. 27) and fails to explain how merely associating the embedded credential with the user’s account information addresses how the second identifier is sent “in response to the received registration information” as limitation [1.4] requires. See Pet. 27–28 (citing Ex. 1005 ¶ 65; Ex. 1003 ¶ 44). In turn, at the cited paragraph, Dr. Wills testifies that “the redirect message from the identity provider to the service provider, as illustrated above, would automatically include the registration information associated with the particular user so that the service provider will have the necessary account information of the user in performing the requested service.” Ex. 1003 ¶ 44. Although Petitioner cites to this testimony, the Petition does not advance Dr. Wills’ theory that underlies the testimony. See Pet. 27 (citing 1003 ¶ 44). Even if we deem the Petition to properly incorporate Dr. Wills’ theory that “the redirect message from the identity provider . . . would automatically include the registration information,” the record does not support the theory, as Patent Owner argues. See Prelim. Resp. 33–34.5 Dr. Wills’ testimony cites to Yared’s paragraph 87 for support (Ex. 1003 ¶ 44), but that paragraph neither mentions Yared’s redirect procedures nor otherwise suggests that the redirect message includes the registration reliedupon information. See Ex. 1005 ¶ 87. Also, Dr. Wills’ testimony does not explain sufficiently how something that Yared’s identity provider (server) renders “automatically available to service providers” (see id.) means that the identity provider transmits that information in Yared’s redirect message or why this transmission would have been obvious.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or the equivalent and 2-3 years of work experience with computer networks, or the equivalent.” Ex. 1003 ¶ 14. Patent Owner does not present a proposed level of ordinary skill. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, which comports with the teachings of the ’962 patent and the asserted prior art. C.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under the same standard applied by district courts, claim terms take their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Based on the current record, no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’. . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D.” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,243,962
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.