• Cisco Systems, Inc. v. Portsmouth Network Corp.Some claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-00505 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 2, 4–7, 9, 10, 13, 14, 16–19, 21, and 22 are unpatentable as obvious over Gai under theory 1B; claims 11, 12, 23, and 24 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id. at 667.” slip op. at 10

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

    “The most common type of MAC bridge is a switch, which has multiple ports connecting it to LANs, other switches, host computing systems, or other network elements. Switches can be roughly classified as access switches or core switches. An access switch has ports that connect to LANs and/or to other network endpoints, such as user computer systems. Core switches interconnect the access switches into a Wide Area Network (WAN), by direct connection between the core switch and access switches and/or by connection to other core switches. Core switches that are directly connected to access switches are referred to herein as edge switches. Ex. 1001, col. 1, ll. 27–38. Both parties refer to this disclosure when arguing whether particular switches in the asserted prior art (Gai) qualify as an “access switch” or “edge switch.” See Pet. 5, 22, 27–28 (“edge switches are ‘[c]ore switches that are directly connected to access switches’”), 71; PO Resp. 31–32 (“The ’986 patent discloses that ‘[a]n access switch has ports that connect to LANs and/or to other network endpoints.’ . . . The ’986 patent also discloses that edge switches are ‘[c]ore switches that are directly connected to access switches.’”); Reply 20, 22. Dr. Houh and Dr. Olivier do so as well. See Ex. 1003 ¶¶ 39, 66–67, 82–83, 166, 171, 193; Ex. 2001 ¶ 80. Based on the full trial record, we agree and conclude that the descriptions of “access switch” and “edge switch” in the ’986 patent reflect what was understood to be the plain and ordinary meanings of these terms at the time of the invention. Accordingly, we interpret “access switch” to mean a switch with ports that connect to LANs and/or to other network endpoints, such as user computer systems, and interpret “edge switch” to mean a core switch that is directly connected to an access switch.” slip op. at 12

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

    “and conclude that Petitioner has not shown sufficiently that a person of ordinary skill in the art would have been motivated to designate switch 117 as the root switch when implementing the network reconfiguration method of Gai. The only mention of an access switch connected to port 7 of switch 114 is at column 13, lines 59–63 of Gai. While that sentence establishes that such an access switch may exist in the network, it does not state or imply that it would be the root switch. Instead, when discussing the operation of the Figure 1 network, Gai only identifies switches 120 and 121 as the root switch. See Ex. 1005, col. 10, ll. 37–41, col. 11, ll. 60–64, col. 14, ll. 16–20, col. 15, ll. 27–29, 38–51, col. 16, ll. 42–45. To be sure, Gai does disclose that “execution of the spanning tree algorithm causes the switches to elect a single switch, among all the switches within each network, to be the ‘root’ switch,” where “[e]ach switch has a unique numerical identifier (switch ID) and the root is the switch having the lowest switch ID numeric value,” such that an access switch can be the root switch if it has the lowest switch ID. See Ex. 1005, col. 2, ll. 42–47, col. 10, ll. 29–36. As Patent Owner and Dr. Olivier explain in detail, though, Gai expressly cautions against doing so. Gai discloses that [d]epending on the configuration of a given network, the location of the root can significantly affect the distance that messages must travel. For example, many networks include a plurality of switches designated as access switches that provide connectivity to LANs, end stations, etc., and a plurality of backbone switches that, in turn, interconnect the various access switches. If the root is located at an access switch and the principal server utilized by the end stations (i.e., clients) is coupled to a backbone switch, the average distance between end stations and the primary server may be quite high, resulting in inefficient network operation. In addition, the backbone switches may become partitioned as ports between them are blocked. Id. at col. 3, ll. 17–29; see also id. at col. 10, ll. 26–29 (the “location of the root may affect the average distance (i.e., the average number of hops) a message travels and/or cause undesirable partitioning of backbone switches”). Thus, the location of the root is not an unimportant consideration—it affects the distance messages must travel and can cause backbone switches to be partitioned. See id. Gai, therefore, discloses that “[t]o reduce the average distance and avoid partitioning of the backbone switches, it is desirable to locate the root at a backbone switch.”10 Id. at col. 3, ll. 29–31 (emphasis added). Switch 117 in Petitioner’s modified Figure 1 is an access switch, not a backbone switch. See id. at col. 6, ll. 10–12 (“Access switches are preferably coupled to entities (e.g., LANs, end stations, etc.) whereas backbone switches provide the interconnections between access switches.”).” slip op. at 44

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “We agree with Petitioner. For purposes of claim 1, which does not recite “downstream” communication of dummy traffic (unlike claims 11, 12, 23, and 24), the only modification to Figure 1 is the addition of switch 117 and server 112e—otherwise, in Petitioner’s analysis, Gai’s method operates exactly as described when a failure occurs at root port 3 of switch 114. See Pet. 69–73, 81–85; Tr. 47:20–48:2. That modification is expressly supported by Gai, which discloses the following: Rapid reconfiguration entity 234 similarly generates one or more separate multicast messages 400 for each remaining entity directly coupled to access switch 114 (i.e., entities or end stations on LANs 102–104). In each message 400, entity 234 loads SA field 414 with the address of the corresponding entity. Each of these messages are similarly forwarded by access switch 114 through the new forwarding port (i.e., port number four). In addition, entity 234 generates and transmits one or more multicast messages 400 for entities reachable through switch 114 on ports other than its root port. For example, if port number seven at switch 114 were coupled to another access switch, entity 234 would transmit multicast messages 400 carrying the source address of entities directly coupled to this additional access switch as well. Thus, at least one multicast message 400 is generated and transmitted for each entity directly coupled to or downstream of access switch 114 (relative to the root). As set forth above, upon receipt of these multicast messages 400, the other devices within network 100 update their corresponding filtering databases with the new destination ports, as necessary. Ex. 1005, col. 13, l. 50–col. 14, l. 3 (emphasis added). Gai thus expressly contemplates the addition of “another access switch” coupled to port 7 of switch 114. Switch 117 in the modified Figure 1 is such a switch. See PO Resp. 30 (Patent Owner arguing that “a [person of ordinary skill in the art] would understand that switch 117 is an access switch”); Ex. 1018, 84:14–85:9 (Dr. Olivier agreeing that switch 117 is an “access switch”). And because an “access switch” has “ports that connect to LANs and/or to other network endpoints, such as user computer systems,” and the above disclosure mentions “entities directly coupled to th[e] additional access switch,” switch 117 would be directly connected to a device like server 112e as well. See Ex. 1001, col. 1, ll. 31–33; Ex. 1005, col. 13, ll. 59–63; supra Section II.B. We credit Dr. Houh’s testimony that Gai in its written description expressly discloses the particular “variation of the topology” of Figure 1 that Petitioner asserts. See Ex. 1003 ¶ 165. Third, Patent Owner argues that Petitioner has not established that a person of ordinary skill in the art “would have had a reasonable expectation of success in modifying Gai to meet the claims.” PO Resp. 14–16 (citing Ex. 2001 ¶¶ 47–49). Patent Owner’s arguments are primarily directed to Petitioner’s asserted modification for its “1A” theory. See id. To the extent Patent Owner’s arguments apply to claim 1 and “1B,” we disagree, as Gai expressly describes the asserted modification to Figure 1 (i.e., adding an access switch connected to port 7 of switch 114). Thus, we are persuaded that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving the method of claim 1 based on Gai’s full disclosure.” slip op. at 33

  Patent outcomesUS 6,917,986 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,917,986
• Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.Some claims unpatentable
  PTAB · May 14, 2025 · IPR2024-00156 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–3 and 8 are unpatentable over the stated obviousness grounds; claims 4–6 were not shown unpatentable because Hiroyuki does not teach the claimed terminal pins.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the Schubert Declaration, Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes amendments to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application filed before March 16, 2013, we apply pre-AIA law. See Pet. 2; Ex. 1001, codes (22), (30). 2 US 2009/0021955 A1, published January 22, 2009 (Ex. 1004, codes (10), (43)) (“Kuang”). Petitioner contends that Kuang is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2. 3 US 2012/0050606 A1, published March 1, 2012 (Ex. 1005, codes (10), (43)) (“Debevec”). Petitioner asserts that “[b]ecause Debevec was filed prior to the priority date of the ’546 patent, it qualifies as prior art at least under pre-AIA 35 U.S.C. § 102(e).” Pet. 2. 4 US 6,774,584 B2, issued August 10, 2004 (Ex. 1008, codes (10), (45)) (“Lys”). Petitioner contends that Lys is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2–3. 5 JP2006-228529, published August 31, 2006 (Ex. 1006, code (43)) (“Hiroyuki”). We refer herein to the certified English translation filed as Exhibit 1007. Petitioner contends that Hiroyuki is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2. practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 31). Patent Owner applies Petitioner’s asserted level of ordinary skill in the art. PO Resp. 7–8. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’546 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

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

    “The parties also dispute the interpretation of the term “synchronous signals” recited in claim 1, with the parties proposing these respective constructions: Petitioner’s Proposed Patent Owner’s Proposed Construction Construction “signals that are sent to the slave “signals related to activities governed by synchronized timing” nodes to control their corresponding LED strings at the same time.”” slip op. at 20

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

    “The “context” is typically evaluated by reviewing the intrinsic record. See e.g., Regeneron, 130 F.4th at 1380–84. Here, as discussed above, the ’546 patent has multiple disclosures where a curtain lamp has a single light-emitting diode in one light-emitting diode string. See Ex. 1001, 1:33–36, 6:15–20, 6:27–40, 8:25–45. In particular, the ’546 patent similarly discloses a first curtain lamp with one LED in one light string, as well as a second curtain lamp, which provides further support for Petitioner’s proposed interpretation. Id. at 8:25–45. Although Patent Owner argues that Figures 7 and 8 disclose multiple LEDs and light strings in curtain lamps, other embodiments and claims explicitly indicate single components in a “curtain lamp.” “[T]here is a strong presumption against a claim construction that excludes a disclosed embodiment.” See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011). Given that certain embodiments and claim 8 disclose a curtain lamp with one light string with one LED, we decline to interpret the claim to prohibit Petitioner’s interpretation. Additionally, we do not find that Petitioner’s claim interpretation renders the claim terms nonsensical or illogical. See Becton, 616 F.3d at 1255. Patent Owner asserts otherwise, arguing that Petitioner’s interpretation is based upon a “nonsensical” or “absurd[]” argument, there is no reason to have both a master and slave control unit to operate a single LED, and the interpretation renders most of the components superfluous. See PO Sur-reply 12; PO Resp. Supp. Br. 5. As discussed above, however, although the ’546 patent does not appear to provide any explanation for why there are master and slave control units to operate a single LED, the patent nevertheless discloses that in embodiments. This situation is also distinguishable from Becton, where “unequivocal language” of the claim recited “spring means ‘connected to’ the hinged arm,” such that interpreting the spring means and the hinged arm as the same structure would have rendered the claim nonsensical. Becton, 616 F.3d at 1254–55. Becton further found that interpreting the spring means and hinged arm as the same structure would be inconsistent with descriptions of the elements in the specification. Id. Here, in contrast, the ’546 patent Specification is replete with disclosures of a curtain lamp having one light string with one LED, and claim 8 is directed to the same. Accordingly, we adopt Petitioner’s interpretation of these claim elements.” slip op. at 36

  • Strike new argumentNew argument consideredDecided for petitioner

    “Although Patent Owner argues that Petitioner’s arguments in the Reply on “light strings” and “curtain lamp” as they relate to a single LED are improper, we do not agree. As Patent Owner acknowledges, the Petition and Dr. Schubert’s original declaration stated that a “curtain lamp” is “commonly understood to be one or more light strings.” See PO Sur-reply 12; see also Pet. 8; Ex. 1003 ¶ 37. Patent Owner did not contest Petitioner’s interpretation in its Response. See PO Resp. 15. Patent Owner did, however, argue that Kuang did not teach or suggest “light strings” in any form and therefore did not teach a “curtain lamp” under Petitioner’s definition of the same. PO Resp. 15–17. A petitioner reply may respond to arguments raised in a patent owner’s response under 35 U.S.C. § 42.23(b), and here Petitioner’s argument that a light string may have a single LED is properly presented in its Reply in response to Patent Owner’s arguments. Further, Patent Owner was not only aware that Petitioner had taken the position that a “curtain lamp” could be a single “light string,” but Patent Owner also did not dispute Petitioner’s interpretation.8 Our view, therefore, is that Petitioner’s argument that a curtain lamp may be a single LED is proper because it is corollary to Petitioner’s reply arguments on light strings. That is, Petitioner’s assertion follows from the reply arguments on light strings and the unopposed interpretation of curtain lamp as a single light string. Additionally, to the extent there could be any prejudice to Patent Owner by these light string and curtain lamp arguments, Patent Owner has had opportunities to address them by supplemental briefing.” slip op. at 32

  Patent outcomesUS 8,884,546 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,884,546
• Juniper Networks, Inc. v. Monarch Networking Solutions LLCSome claims unpatentable
  PTAB · May 5, 2025 · IPR2024-00175 · APJ Norman H Beamer · IPR · Final written decision

  Claims 7, 9–11, 13, 14, 16, and 17 are unpatentable as obvious over Biswas and Kumar; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 14 (citing Ex. 1003 ¶¶ 62–64). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 8–9. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 10

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

    “Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties submit that no claim construction is necessary. Pet. 14; PO Resp. 15. We have not been presented with the need to construe any claim terms for this Decision. D.” slip op. at 11

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

    “We determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Biswas and Kumar. We are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have known to use the masking techniques exemplified by Kumar to implement the disclosed operation in Biswas of edge routers providing hosts with port number ranges. Ex. 1003 ¶¶ 77, 97–101. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine Biswas and Kumar.” slip op. at 13

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

    “This disclosure is inconsistent with any suggestion that the Fangman system, when routing a telephone call to its destination, identifies the private IP address of the destination telephone by determining the port range to which the port number of the destination telephone belongs. When Fangman describes the NAPPT process, it does not indicate that port ranges are used, but rather repeatedly states that port numbers are used: The [service gateway] receives a data packet from the IP device, including a public destination IP address . . . a destination port number . . . and source information, NAPPTs the data packet, using the [public destination IP address] and the [destination port number] to identify the [IP telephone] . . . . Ex. 1024, code (57). Performing NAPPT on the data packet received from the destination may include using the public destination IP address and the destination port number to uniquely identify the IP telephone, and changing the public destination IP address to a private source IP address of the IP telephone while leaving the destination port number unchanged. Ex. 1024, 4:28–33. The SG 170 may maintain a table of semi-permanent mappings of the external IP address and ports to the internal hosts and ports. Ex. 1024, 8:49–51.” slip op. at 33

  Patent outcomesUS 8,693,369 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,693,369
• Whatfix Inc. v. Walkme Ltd.Some claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01368 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–8, 12, 13, 16, 19–23, 26, 29, and 31 are unpatentable over Symons and Williams; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner proposes that a person of ordinary skill in the art (“POSITA”) “would have a bachelor’s degree in engineering or computer science and two years of experience working on NLP [natural language processing] and automation processes. Alternatively, a POSITA would have five to six years of experience working on NLP and automation processes.” Pet. 5–6 (citing Ex. 1003 ¶¶ 50–52). We adopted Petitioner’s proposal for purposes of the Decision on Institution, explaining that it appeared to be consistent with the evidence of record, including the asserted prior art and the ’664 patent. Dec. 12.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “We interpret claims using the same claim construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Under that standard, words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). However, “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, and “[i]n such cases, the inventor’s lexicography governs.” Id. at 1316. A patentee may “choose to be his or her own lexicographer by clearly setting forth an explicit definition for a claim term that could differ in scope from that which would be afforded by its ordinary meaning.” Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). We only need to construe the claims to the extent necessary to resolve the parties’ disputes. See Realtime Data, LLC. v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 18

  • ExcludeGranted in part

    “Exhibits 2015–2017 are three comments made on the Internet in association with the Symons Article. These comments are also shown in Exhibit 2005. According to our rules, “[s]upplemental evidence is not filed at the time of the objection, but simply served, and is filed only in support of an opposition to a motion to exclude.” CTPG14 79 (citing 37 C.F.R. §§ 42.64(a), 42.64(b)(2)). Because no motion to exclude was filed by Petitioner, we agree with Petitioner that Patent Owner improperly filed Exhibits 2014–2017. However, as described above, the comments in Exhibit 2015–2017 are already part of the record in Exhibit 2005, and Petitioner has not filed a motion to expunge Exhibit 2005. Therefore, we are not aware of any harm to Petitioner by leaving these Exhibits in the record, as the information is 14 PTAB Consolidated Trial Practice Guide, November 2019 (the “CTPG”), available at: https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. already there. See Tr. 100:8–14. Moreover, retaining these Exhibits in the record will avoid confusion in the record and serve the public interest in a full and complete record. Accordingly, we will expunge only Exhibit 2018, as agreed by the parties, and waive the requirements of 37 C.F.R. § 42.64(b)(2) to the extent necessary to retain entry of Exhibits 2014–2017.” slip op. at 27

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

    “We need not determine whether Symons alone teaches this limitation, because we are persuaded that Petitioner has sufficiently shown that the combination of Symons and Williams teaches this limitation. We agree with Petitioner that, by disclosing that “chatbots can engage in natural language dialog with the caller and discern, through a series of interactions, the nature of the call[,] . . .capture information required to further handle the request . . [and] then trigger a robot, passing the required information to the robot to complete the request,” Williams teaches “determining . . . an automation process,” as recited in limitation 1[c]. See Pet. 19 (citing Ex. 1011, 3) (some emphasis omitted); see Ex. 1003 ¶ 95. We disagree with Patent Owner’s arguments that the combination is “ill-defined.” Sur-reply 8–9. Petitioner argues that the combination of Symons and Williams “results in a chatbot-RPA bot system capable of handling a user request for automated email signature generation along with other requests, such as automated generation of an electronic letterhead or an electronic invoice.” Pet. 20 (citing Ex. 1003 ¶ 98). In other words, in addition to the capability of handling the automated email signature generation (as taught in Symons), the combined chatbot-RPA bot system can handle other requests as well (as taught in Williams). Further, we agree with Petitioner that “[t]he ability to handle multiple requests would expand the capabilities and flexibilities of the chatbot-RPA bot” as well as “improv[e] costs, time, and capabilities.” Id. at 19–20 (citing Ex. 1003 ¶¶ 95, 96, 99). Both Symons and Williams support this argument. Ex. 1011, 2 (stating that RPA “support[s] repetitive, labor-intensive and transactional business processes,” that “software robots [are] an attractive way to drive operational cost reduction,” and that “[a]utomation through RPA can offer a return on investment (ROI) often ranging between 30 and 50 percent”); id. at 5 (stating that “[d]eployment of these cognitive tools promises new levels of productivity and innovation–freeing human workers to focus on higher-value activities and bringing industrial-level quality, consistency and auditability to business processes”); Ex. 1004, 2 (stating that “combining [RPA bots and chatbots] to automate processes can tremendously boost productivity in multiple organizations” and that “[RPA bots] reduce[] costs and human efforts”). Patent Owner’s argument that “[n]either Symons nor Williams suggest using a single chatbot-RPA to handle multiple requests at once in the same conversation thread” (PO Resp. 38) is not commensurate with the claim language, which does not require a single automation process (e.g., chatbot-RPA) to handle multiple inputs (e.g., multiple requests in the same conversation thread). See Reply 9–10. Regardless, however, we are not persuaded that Williams does not suggest using a single chatbot-RPA to handle multiple requests, as argued by Patent Owner. Sur-reply 9; see Ex. 1011, 2 (stating, for example, that “[t]he most common processes enabled by RPA today include back-office administrative processes and workflow within IT, finance, procurement, and human resources functions” and that “RPA enlists software robots to perform complex, nested routines that cut across multiple applications and interact with these systems”); id. at 3 (“Through several scripted questions, the virtual agent can surmise that the supplier is asking for status on their payment and, thus, trigger an RPA robot to access the appropriate enterprise resource planning (ERP) backend system, validate the caller’s details, retrieve necessary information, and provide status back in real-time to the supplier.”).” slip op. at 35

  Patent outcomesUS 10,819,664 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,819,664
• Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCSome claims unpatentable
  PTAB · Jul 16, 2024 · IPR2023-00379 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 9–16 are unpatentable as obvious over Drell, Knappe, and Elliott; claims 17–20 were not shown unpatentable because the petition did not establish the separately recited mixers in claims 17 and 18.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 9. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9

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

    “We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 5 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.6 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))).” slip op. at 10

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

    “We are persuaded that the combination of Drell and Knappe teaches limitation [9.6]. Patent Owner’s arguments improperly address Drell and Knappe individually, rather than the combination of Drell and Knappe on which Petitioner relies. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017) (attacking a reference individually does not show non-obviousness where petitioner’s ground is premised on the combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 31

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 32

  Patent outcomesUS 9,094,525 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,525
• ROKU, Inc. v. Universal Electronics, Inc.Some claims unpatentable
  PTAB · Nov 28, 2023 · IPR2022-00943 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–7, 9–13, 15, and 16 are unpatentable as obvious; claims 8 and 14 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that: On or before 7/12/2017, [one of ordinary skill in the art] would have had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately three years of experience or equivalent study in voice-controlled devices in smart home systems. Additional graduate education could 2 Neither party presents arguments or evidence relating to such objective evidence of nonobviousness. in the field could substitute for formal education. Pet. 18. We adopted this definition for the purposes of the Decision on Institution. Dec. on Inst. 8–9. Patent Owner adopts Petitioner’s definition. PO Resp. 4. We again adopt Petitioner’s definition, which is consistent with the level of skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “Absent a recitation of order, or an order mandated by grammar or logic, the steps of a method claim are not construed to require a particular order. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). Patent Owner argues that the steps of claim 1, a method claim, must be performed in sequential order. PO Resp. 13–16. Without commenting on or conceding Patent Owner’s proposal, Petitioner contends that “the trial grounds meet this proposed construction.” Pet. Reply 24–25; Tr. 8:25–11:16. Our record does not reflect any indication that Patent Owner’s proposed construction requiring the sequential ordering of the method steps is not at least encompassed by the correct construction of claim 1. Because of this, and because Petitioner agrees that the arguments in the Petition meet this construction, we accept Patent Owner’s construction as correct for the purposes of this Decision.” slip op. at 10

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

    “We do not agree with Patent Owner that Petitioner’s showing uses the same sound data to teach the “first sound data” of limitation 1.a and the “second sound data” of limitation 1.c. Patent Owner is correct that Rosenberg’s claim 5 describes the determination of a volume threshold based on the volume of the ambient audio signal in which characteristic form(s) (e.g., the name of the user of the media player) are present. Ex. 1006, 13:66–21, 14:28–30. However, the Petition describes using Fu’s “predetermined threshold” in combination with Hart-787’s device, which attenuates audio output of a device upon detecting a user’s utterance intended to gain the attention of the device, in order to “include adjusting the audio output volume of a wirelessly-linked audio-producing device when the voice-controlled device determines that the ambient noise level at the time a Ex. 1004, 2:22–37, 5:61–6:10, 9:18–25; Ex. 1005 ¶¶ 24, 32, 54; Ex. 1003 ¶¶ 88–89). Petitioner further proposes including a threshold that is advantageously based on the environment in which the device is operating as described in Fu, for example to respond to differing levels of noise at different times of day. Id. at 26, 29–30, 40 (citing Ex. 1006, 10:42–67, 14:28–30; Ex. 1003 ¶¶ 48–53, 55, 58, 87, 91, 107–109). We agree with Petitioner that Patent Owner’s arguments address the references individually instead of addressing the combination of the teachings proposed in the Petition. See Pet. Reply 8, 13–14; see also Dec. on Inst. 21–22, 23–24, 25–26. The Petition relies upon a combination of elements of Hart-787 with the predetermined threshold as taught in Fu and with establishing such a threshold based on the operating environment of a device as in Rosenberg. Pet. 26–31, 34–41. Patent Owner is correct that Rosenberg’s threshold is set at the time of the utterance in Rosenberg’s claim 5 and cites Petitioner’s declarant as “conceding” issues regarding how “Rosenberg’s volume threshold is determined.” PO Resp. 20–21. But this argument and the ostensible concession do not squarely address the proposed combination, which combines Fu’s teaching of an adjustment unit that “compares the volume of the ambient noise received . . . to a predetermined threshold” with Rosenberg’s teaching that such “a threshold may be ‘determined based on the volume of [an] ambient audio signal.’” Pet. 39, 40 (emphasis omitted) (quoting Ex. 1006, 14:28–30). While Patent Owner argues that “Petitioner has not proposed using a predetermined/pre-set threshold or a previously established threshold based on environmental noise in the combination of Hart-787 with F[u] and Rosenberg” (PO Resp. 46), we find, on the contrary, that the Petition describes a combination based predetermined threshold” and on a threshold “determined according to an environmental noise level.” Pet. 29–30. Thus, we find Petitioner’s unpatentability grounds do not suffer from the issues Patent Owner argues are a consequence of the purported use of the same sound data for the “first sound data” of claim limitation 1.a and for the “second sound data” of claim limitation 1.c. We do not agree with Patent Owner’s arguments regarding Fu’s teachings with respect to limitation 1.e’s “transition from a first state having a first volume level to a second state having a second volume level that is less than the first volume level” because these arguments similarly do not address the proposed combination. See PO Resp. 26–30. The Petition cites Hart-787 for attenuating the volume of an audio-producing device when a wake word is issued. Pet. 32–34, 43–44. The Petition cites Fu for adjusting volume of an audio-producing device if the level of ambient noise exceeds a predetermined threshold. Id. at 36–39, 44–45. Thus, even if Fu teaches only increasing the volume of an audio-producing device if the predetermined threshold is exceeded, the Petition relies on the combination of teachings of Hart-787 and Fu, and Patent Owner’s argument that neither reference teaches “decreasing a controllable appliance’s volume output when a previously established volume threshold is exceeded” (PO Resp. 30) does not address the combination proposed. Patent Owner’s argument that “Petitioner has not proposed modifying Fu to decrease a controllable appliance’s volume output when a volume threshold is exceeded” (PO Resp. 30) similarly does not address the combination proposed in the Petition. We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references.” slip op. at 23

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

    “We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references. transmitted volume down control signals as the means for attenuating audio output, Petitioner contends that Hart-787 “broadly teaches” that a device transmits control command signals to the audio-producing device, relying on the testimony of its declarant. See Pet. 23 (citing Ex. 1004, 5:47–51; Ex. 1003 ¶ 82), 43–44 (citing Ex. 1004, 1:67–2:7, 2:26–27, 5:47–51; Ex. 1003 ¶ 118). In addition, Petitioner shows that these control signals were well-known in the art and would have been known to one of ordinary skill in the art at the time of the invention, supporting its showing with additional testimony from its declarant. Id. at 44 (citing Ex. 10183, 2:39–47, 5:35–38; Ex. 10194 ¶¶ 3, 13; Ex. 1003 ¶¶ 44–45, 118). We conclude Petitioner’s evidence regarding the showing in Hart-787 is sufficient with respect to this point. Hart-787 describes altering a signal sent to the speaker to attenuate the audio from that speaker. Ex. 1004, 1:67– 2:1. Petitioner’s declarant testifies that using transmitted control signals to do this would have been known to one of ordinary skill. Ex. 1003 ¶¶ 44–45, 82, 118. We consider Petitioner’s evidence regarding what one of ordinary skill in the art would have understood from Hart-787’s disclosure to be sufficient for the showing regarding the “causing one or more commands to be automatically issued to the controllable appliance to thereby cause” that appliance to transition to a lower volume level, as required in limitation 1.e. While Patent Owner argues that Petitioner’s declarant “concede[s] that Hart- 787 does not disclose or teach how its voice-controlled device decreases the audio output of the controllable appliance,” the cited portion of the” slip op. at 25

  Patent outcomesUS 10,930,276 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,930,276
• Verizon Business Network Services Inc. v. Huawei Technologies Co. Ltd.Some claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01080 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1, 8, 15, and 16 are unpatentable as obvious over Saleh and Chu; claims 5, 12, 17, 19, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both proposals appear reasonable on the record before us. Neither party articulates whether material differences exist between their respective proposals, nor whether the proposals alter the obviousness analysis. Furthermore, we discern no material difference in the application of the parties’ proposals. Accordingly, we apply the proposal articulated by Patent Owner, but would have reached the same conclusion under either party’s proposed level of ordinary skill in the art.” slip op. at 11

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

    “We are not persuaded by Petitioner’s constructions limiting the “to- be-played signals” received at either the primary player or the mobile (separate player) at the site to only be one type of distinct signal. Petitioner’s evidence and argument in support of the narrowed construction for the “to-be-played signals” in claims 1, 5, 8, and 12 address the resulting content displayed at each of the primary playing device or mobile device of each claim. See Pet. 30–32. However, Petitioner has not presented persuasive evidence that the Applicant’s arguments during prosecution or the ’366 patent specification limits the received and played signals at each device to only the specific type of signal received. Thus, we determine that no claim construction is necessary.” slip op. at 14

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

    “Patent Owner further argues that an ordinarily skilled artisan would not have combined Chu’s wireless technique with Saleh to pursue reducing bandwidth and that a similar result could be obtained by using Saleh’s pre-installed pop-up personal displays. PO Resp. 35–36; Ex. 2015 ¶¶ 82–83. To the contrary, Patent Owner asserts, combining Chu and Saleh would be bandwidth inefficient and add costly networking equipment. Id. Patent Owner’s arguments are unavailing. We note, that “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). In other words, “obviousness ‘does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’” Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1328 (Fed. Cir. 2017). In this regard, we credit Petitioner’s evidence that Saleh depicts and discusses the use of personal laptops showing video content, regardless of the existing pop-up displays. Ex. 1004, 3:10–13, Fig. 4B; Reply 11; Ex. 1023 ¶ 29. In addition, we are persuaded by Petitioner’s testimony that the use of Chu’s features to connect to portable devices via the Saleh VCT would be an efficient content delivery system and would allow for increased collaboration by portable device users with the presentation. Pet. 47–48; Ex. 1003 ¶¶ 92–93. We also do not find availing Patent Owner’s argument that because Saleh already allows collaborative editing using pop-up displays, Petitioner’s motivation to combine Chu and Saleh to allow editing collaboration through laptops fails. PO Resp. 37–38; Ex. 1004, 8:36–465; Ex. 2015 ¶¶ 85–86. We do not find that the existing editing feature of Saleh diminishes or discourages adding a similar feature through the addition of Chu’s portable device connection. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (stating that “[t]he fact that [a] motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another”). Here, we credit Petitioner’s argument that Chu’s features allow the use of laptops along with fixed pop-up displays to enable enhanced collaboration. Pet. 48; Ex. 1003 ¶ 93; Reply 12–13; Ex. 1023 ¶¶ 31–34. We find that Petitioner provides sufficient argument and evidence that a person of ordinary skill in the art would have been motivated to combine Chu’s teachings regarding the video terminal distributing connection channel with the distance learning system of Saleh. Pet. 47; Ex. 1003 ¶ 91. In light of the level of skill in the art and knowledge of an ordinarily skilled artisan, Petitioner has provided persuasive evidence regarding the addition of Chu’s connection and distribution features to Saleh’s remote learning system resulting in local video conferencing equipment with connections to mobile devices. Pet. 47–48.” slip op. at 21

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

    “We do not agree with Patent Owner. The claims recite a first type and a second type signal in to-be–played signals. See, e.g., Ex. 1001, 29:19–20. Our construction above rejected the narrowed interpretation that the “to-beplayed signals” of claims 1, 5, 8 and 12 were limited to distinct types of signals. Patent Owner’s arguments directed to the type of signal within the “to-be-played signals” (PO Resp. 17–20; Ex. 2015 ¶¶ 27–32, 39) fails to persuasively demonstrate that the sending of the first and second type of signal limitations of claims 1 and 8 are limited to distinct and different signals and only those distinct signals. We are not persuaded by Patent Owner’s argument and evidence that the “’366 [p]atent is about sending two different signal types to two different types of devices separately.” Sur-reply 4 (citing Ex. 2015 ¶¶ 18, 28–32). Regardless of the signals sent, we credit Petitioner’s argument and evidence that Saleh teaches receiving and displaying different types of content sent for display on mobile devices that differs from the signal sent for display on other presentation devices. See Reply 6–7; Pet. 49–52; Ex. 1023 ¶¶ 15–17; Ex. 1003 ¶¶ 99, 138–141. We agree with Petitioner that Saleh discloses: “[t]he remote classroom can include a display screen for displaying received images of local participants, and an instructor display screen for displaying received images of the local instructor.” EX1004, Cols. 2:38–41 (emphasis added), 4:8- 12, 5:19-21, Figures 3, 4A–4B, 6–7. Saleh also discloses that display screens in the local classroom can display images of participants in the remote classroom. Id., Cols. 4:8–12, 5:18–19, 8:62–66. Pet. 52. Patent Owner rejects Petitioner’s assertion that displaying different content teaches sending different signals, arguing that “[i]t is entirely plausible that exactly the same type of signal is sent to both the [primary display] screen and laptops, and then simply displayed differently at each type of device.” PO Resp. 24 (citing Ex. 2015 ¶ 61 (asserting that identical multiplexed signals could provide that feature)); Sur-reply 8. We are not persuaded by Patent Owner’s speculation regarding the plausibility of the same signal being sent to both mobile and primary display devices. Id. On the full record, we credit Petitioner’s argument and evidence that Saleh discloses a remote classroom that mirrors the local classroom, including a VCT that receives images of a local instructor and/or local participants, which are displayed on a primary playing device, where different signals are displayed on the mobile devices. See Pet. 52; see also Pet. 49–52; Ex. 1003 ¶¶ 99, 138–141; Ex. 1004, 2:38–41, 3:7–13, 4:8–12, 5:19–21, 8:3–45, 9:24– 28, 10:1-4, Figs. 3, 4A–4B, 6–7. We also find unavailing Patent Owner’s argument that Saleh never” slip op. at 31

  Patent outcomesUS 9,521,366 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,521,366
• Target Corporation v. Proxicom Wireless, LLCSome claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00933 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 19–23 are unpatentable as obvious over Perttila and Insolia; claims 25, 26, 28, and 29 were not shown unpatentable over Perttila and Davis.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have had “a Bachelor’s degree in Electrical Engineering, or a related field, and approximately 3-5 years of professional experience in the field of wireless communications.” Pet. 14. Petitioner acknowledges that “graduate education could substitute for professional experience” and “significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 36–38). Patent Owner concedes that the level of skill as defined by Petitioner “is sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 9.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Notwithstanding the arguments in its briefing, Petitioner’s counsel acknowledged during the hearing that the claims require the entity or object to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . . that physical presence is connoted by the word ‘proximity’ and by ‘located.’”). There is, accordingly, no controversy regarding whether “an entity or object located in proximity to the second device” requires the entity or object to have a physical presence. Moreover, as explained below our decision does not depend on an express construction of this term. We conclude, therefore, that there is no need for us to construe this term.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “terminal 12, interaction terminal 14, and loyalty server 24. Ex. 1008, 5:47–64, Fig. 1. The personal terminal is transported by user 16. Id. at 5:65–66. The interaction terminal can be associated with product 18, such as a beverage, equipment 20, such as a vending machine, or promotional object 22, such as a poster. Id. at 5:51–53, 6:9–37. The personal terminal and the interaction terminal communicate when the personal terminal is brought within proximity of the interaction terminal. Id. at 9:12–18. A benefit, such as a loyalty point, can be awarded to the user for interacting with the interaction terminal. Id. at 9:58–64. Petitioner’s declarant testifies that incorporating Insolia’s reward of loyalty points into Perttila’s system would provide incentives for a customer to engage with the merchant-media arrangement. Ex. 1003 ¶ 120. We credit this testimony of Petitioner’s declarant, which Patent Owner does not rebut. Accordingly, for the foregoing reasons, Perttila and Insolia support Petitioner’s contentions. We further determine that Petitioner has set forth reasoning with rational underpinning for modifying Perttila to include a loyalty reward system as taught by Insolia.” slip op. at 25

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

    “terminal 12, interaction terminal 14, and loyalty server 24. Ex. 1008, 5:47–64, Fig. 1. The personal terminal is transported by user 16. Id. at 5:65–66. The interaction terminal can be associated with product 18, such as a beverage, equipment 20, such as a vending machine, or promotional object 22, such as a poster. Id. at 5:51–53, 6:9–37. The personal terminal and the interaction terminal communicate when the personal terminal is brought within proximity of the interaction terminal. Id. at 9:12–18. A benefit, such as a loyalty point, can be awarded to the user for interacting with the interaction terminal. Id. at 9:58–64. Petitioner’s declarant testifies that incorporating Insolia’s reward of loyalty points into Perttila’s system would provide incentives for a customer to engage with the merchant-media arrangement. Ex. 1003 ¶ 120. We credit this testimony of Petitioner’s declarant, which Patent Owner does not rebut. Accordingly, for the foregoing reasons, Perttila and Insolia support Petitioner’s contentions. We further determine that Petitioner has set forth reasoning with rational underpinning for modifying Perttila to include a loyalty reward system as taught by Insolia.” slip op. at 25

  Patent outcomesUS 8,374,592 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,374,592
• Target Corporation v. Proxicom Wireless, LLCSome claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00931 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1–5, 14–18, 27, 31, 36, 42, 48, 49, and 52–55 are unpatentable over Perttila alone or Perttila and Insolia; claims 37 and 43 were not shown unpatentable.

  RulingsFinal written decision

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

    “We instituted trial based on all asserted claims and grounds of unpatentability as follows: Claims Challenged 35 U.S.C. § Reference(s) 1–5, 14–18, 27, 31, 36, 37, 42, 43, 102(b)3 Perttila 48, 52, 55 1–5, 14–18, 27, 31, 36, 37, 42, 43, 103(a) Perttila 48, 49, 52, 55 27, 31, 53, 54” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner concedes that the level of skill as defined by Petitioner “is generally sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 9. However, Patent Owner also notes that “Petitioner’s proposed level of skill in the art does not include any reference to electronic commerce” and contends that “a POSITA should also have 1-2 years of experience designing or implementing systems for electronic commerce including the use of wireless communications.”5 Id. at 10 (citing Ex. 2010 ¶¶ 6–9, 22–24). The level of ordinary skill in the art may be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision. We note that we would reach the same conclusions herein using Patent Owner’s alternate definition.” slip op. at 9

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

    “Notwithstanding the arguments in its briefing, Petitioner’s counsel acknowledged during the hearing that the claims require the entity or object to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . . that physical presence is connoted by the word ‘proximity’ and by ‘located.’”). There is, accordingly, no controversy regarding whether “an entity or object located in proximity to the second device” requires the entity or object to have a physical presence. Moreover, as explained below our decision does not depend on an express construction of this term. We conclude, therefore, that there is no need for us to construe this term. 2. “wireless device” Patent Owner argues that, as recited in the challenged claims, “wireless device” “refer[s] to wireless communication capabilities, not that a wireless device would be precluded from having any external wires whatsoever.” PO Resp. 19. However, Patent Owner concedes that construction of “wireless device” is “not necessary to resolve the dispute here.” Id. Petitioner argues that “‘wireless device’ should be construed to require a device without external wires,” noting that the claims of the ’359 patent recite a “wireless device” rather than a “wireless communication device.” Pet. Reply 5–6. However, Petitioner also concedes that “no construction of this term is necessary.” Id. at 5. No construction of this term is necessary. The parties both agree that no construction is needed, and as explained below our decision does not depend on a construction of this term.” slip op. at 12

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

    “As noted above, Petitioner maps Perttila’s disclosure of “electronic coupon information including various offerings” to the recited “list of goods” and notes that the merchant-media device can be located in a store where the advertised goods are sold. Pet. 51–52 (citing Ex. 1006 ¶¶ 26, 39); see also Ex. 1003 ¶ 177. However, neither Petitioner nor its declarant identifies adequately any “list of goods” that Perttila’s remote server delivers to the first wireless device. At best, Petitioner and its declarant describe an iterative process whereby a user interacts with a plurality of tags or beacons in a store to receive multiple electronic coupons. Pet. Reply 17–18; Ex. 1003 ¶ 177. However, Petitioner fails to explain adequately how delivering coupons one at a time in an iterative process constitutes delivering a list of goods as part of an electronic commerce transaction. Petitioner also refers to Perttila’s disclosure of delivering a restaurant menu. Pet. 52–53 (citing Ex. 1006 ¶¶ 26); see also Ex. 1003 ¶ 177. However, Petitioner and its declarant again fail to explain adequately how sending a restaurant menu constitutes delivering a list of goods as a step in a process for an electronic commerce transaction. Perttila discloses that, in embodiments, the billboard may promote a food product and the user’s interaction with the billboard results in the server sending “a restaurant menu or a recipe involving that particular food or food type.” Ex. 1006 ¶ 26. However, neither Petitioner nor its declarant explain adequately how this constitutes a step in a process for an electronic commerce transaction. Notably, Petitioner and its declarant fail to identify any discussion or suggestion in Perttila of the user interacting with the menu after it has been delivered. Nor do we see any such disclosure in Perttila. Rather, Perttila merely discloses sending a restaurant menu as part of “electronic coupon information”: “In another application, the billboard may be promoting a food product, and the request to the remote server corresponds to a request for receiving electronic coupon information including, for example, a restaurant menu or a recipe involving that particular food or food type.” Id. Moreover, we note that Petitioner does not propose to modify Perttila’s system in some manner such that a user could interact with the delivered menu as part of an electronic commerce transaction. Petitioner also refers to Perttila’s disclosure of delivering a movie ticket. Pet. 52–53 (citing Ex. 1006 ¶¶ 44–50); see also Ex. 1003 ¶ 177. However, Petitioner and its declarant again fail to explain adequately how sending an electronic movie ticket constitutes delivering a list of goods as a step in a process for an electronic commerce transaction. Perttila discloses that its system may be used to purchase a movie ticket that is redeemed “at a time much later than the time when the electronic coupon is received.” Ex. 1006 ¶ 44. Perttila discloses purchasing the movie ticket and later using a menu displayed on the user’s mobile phone to activate and validate the ticket at the theater. E.g., id. ¶¶ 46–50. Petitioner fails to explain persuasively how delivering an electronic movie ticket in the manner disclosed by Perttila constitutes delivering a list of goods as a step in a process for an electronic commerce transaction.” slip op. at 38

  Patent outcomesUS 8,090,359 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,090,359
• Juniper Networks, Inc. / Palo Alto Networks, Inc. v. Packet Intelligence LLCSome claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00486 · APJ Kristi L R Sawert · IPR · Final written decision

  Claims 31 and 33 are unpatentable under § 103; claim 34 is not shown unpatentable because the evidence and reasoning do not establish the associative cache limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field (or its equivalent), and one to two years of experience working in networking environments, including at least some experience with network traffic monitors and/or analyzers.” Pet. 8–9 (citing Ex. 1056, 13–14; Ex. 1006 ¶¶ 195–201). In our Institution Decision, we adopted Petitioner’s articulation of the level of skill in the art, which we determined was consistent with the ’789 patent and the asserted prior art. Inst. Dec. 26–27. In its Response, Patent Owner states that it “generally does not object to this finding.” PO Resp. 22. We apply Petitioner’s definition of the level of ordinary skill in the art, as we did in the Institution Decision. Inst. Dec. 26–27. We also maintain our determination that the definition offered by Petitioner is consistent with the teachings of the ’789 patent and the prior art of record. Cf. Okajima, 261 F.3d at 1355 (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “’099 patent as describing two seemingly disjointed packet exchanges involving two different clients or users (the first packet exchange between a client and the server and the second packet exchange between the client who has “inadvertently seen” the print service address and SAP #5) as belonging to the same “conversational flow.” And because Patent Owner’s proposed construction—that a “conversational flow” is client-specific—is inconsistent with the written description, we decline to limit a “conversational flow” to a specific client or user.” slip op. at 20

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

    “been motivated, based on Ferdinand’s teachings, to “modify Riddle’s monitor with an input buffer memory to temporarily store received packets and improve performance by limiting packet drops,” and that including such input buffer memory in a packet acquisition device in accordance with Riddle’s and Ferdinand’s teachings “amounts to nothing more than combining known prior-art technologies used in their ordinary and predictable manner to queue packet traffic.” Pet. 38 (citing Ex. 1006 ¶ 276). Moreover, we agree with Petitioner that “Riddle and Ferdinand are in the same field of endeavor and contain overlapping disclosures with similar purposes,” and “illustrate that it was well-known and ubiquitous in the art for networking devices to include database storage structures” such as buffers. Id. at 28–29 (citing Ex. 1009, 19:8–12, 20:22–22:12, 26:2–7, 28:14–17, Figs. 5, 7A–7C; Ex. 1006 ¶ 258). Patent Owner does not substantively address Petitioner’s contentions or otherwise argue that Riddle, either alone or in combination with Ferdinand, fails to disclose or suggest the input buffer memory limitation recited in claim 19. Accordingly, for the reasons detailed above, we are persuaded that Petitioner has shown by a preponderance of the evidence that Riddle and/or the combination of Riddle and Ferdinand teaches or suggests this subject matter, and that an ordinarily skilled artisan would have been motivated to combine the teachings of the prior art as Petitioner proposes. We therefore adopt the contentions set forth in the Petition and in Dr. Weissman’s Declaration as mapped to this undisputed limitation of claim 19 as our own findings. NuVasive, 841 F.3d at 974.” slip op. at 37

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “not established by a preponderance of the evidence that claim 34 is unpatentable over the combination of Riddle, Ferdinand, and Wakeman. We agree with Patent Owner that Petitioner provides insufficient evidence to support its contentions. Indeed, the Petition’s discussion with respect to the “associative cache subsystem” limitation of claim 34 does not even cite Wakeman but instead cites only the testimony of Dr. Weissman and the specification of the ’789 patent. See Pet. 81.14 And neither Dr. Weissman’s 14 To be sure, the discussion of claim 34 in the Petition also includes an internal cross-reference to the “discuss[ion] for claim 33,” discussed at pages 79–80 of the Petition. Pet. 81. Although the discussion of that assertion that the artisan “would have understood that Wakeman’s CAM cache is fully associative due to Wakeman’s lack of a cache placement policy indicating there are no constraints on placement within Wakeman’s cache.” Id. We agree with Patent Owner that Dr. Weissman “does not explain why the absence of a cache placement policy in Wakeman would lead [an ordinarily skilled artisan] to just assume that Wakeman was teaching using of an associative cache placement policy.” PO Resp. 54. Thus, we determine that Dr. Weissman’s testimony in this regard is entitled to little, if any, weight. 37 CFR § 42.65(a). Moreover, as Patent Owner argues and we agree, Dr. Weissman’s statement that Wakeman could be modified to utilize an associative cache does not demonstrate that an ordinarily skilled artisan would have been motivated to implement Wakeman’s cache as a fully associative cache. PO Resp. 54–55 (citing In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990)). Although we agree with Petitioner that there is no indication that Wakeman disparages the use of an associative cache (Reply 28–29), there still needs to be “some rational underpinning to support the legal conclusion of obviousness” (KSR, 550 U.S. at 418). We do not find such underpinning on the record before us. Accordingly, we determine that Petitioner has not shown by a preponderance of the evidence that claim 34 is unpatentable over Riddle in view of Ferdinand and further in view of Wakeman.” slip op. at 60

  Patent outcomesUS 6,954,789 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,954,789

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