- PTAB · Aug 3, 2023 · IPR2023-00441 · APJ Gregg I Anderson · IPR · Institution
Instituted inter partes review of claims 1–15 and 17–18 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“4. Analysis We are not persuaded to deny institution based on Section 325(d). Although Li was previously presented to the Office under part 1 of Advanced Bionics, as Petitioner acknowledges, Kim was not. Even were we to discount Li because of Section 325(d), the challenge here is not based solely on Li. Some grounds rely on Kim. See Pet. 3. Kim differs from Li and the Kim and Li combination was not previously considered. These differences provide a separate basis for the challenge presented here. Kim was not presented to the Examiner during prosecution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_ district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner stipulates that “it will not pursue an invalidity defense in the parallel district court action based on the same grounds as in this petition or any grounds that could have reasonably been raised before the PTAB.” Pet. Prelim. Reply 3. Petitioner asserts that its stipulation is consistent with the one in Sotera. Id.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth above, Petitioner has shown a reasonable likelihood that claim 1 would have been anticipated by Li.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’430 patent “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology. More education can supplement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 23–24). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. 33–35. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). 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 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,448,430 - Google LLC v. Singular Computing LLCInstitution deniedPTAB · Jul 25, 2023 · IPR2023-00396 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the arguments and evidence before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the ’775 patent. The Petition is denied, and no inter partes review is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention “would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture” and that “[m]ore education could substitute for experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 35–36).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“specification of the ’775 patent. But that does not mean “input-output unit” automatically can be construed as encompassing anything that has some tangential involvement in getting data into and out of a component which accepts and provides data. The construction still has to be reasonable and consistent with the specification, even under a broadest reasonable interpretation rule of claim construction that is more lenient than the Phillips standard which applies here. See In re Smith International, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). A particular reading is not deemed consistent with the specification simply because the specification does not expressly preclude that reading. Id. at 1382 (“Therefore, the Board’s reasoning that because the specification does not ‘in and of itself proscribe the Examiner’s construction,’ the examiner’s interpretation was reasonable, Board Decision, 2016 Pat. App. LEXIS 3764, at *4, was erroneous.”). Although an input-output unit must be connected to a system component to function as an input-output unit with respect to that component, it would be unreasonable to regard that connection, such as a data bus, as itself an input-output unit. A data bus carries data from place to place but does not have a significant role on when to place data onto the bus or when to off load data from the bus, or what data to place on the bus.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We need not resolve whether, as Petitioner contends, one with ordinary skill in the art would have modified Schmidt-2000’s 16-bit architecture to an 8-bit architecture, to perform, primarily, image processing applications. Even assuming that one of ordinary skill in the art would have made the proposed modification to Schmidt-2000’s KPROC chip, and successfully in doing so, Petitioner still has not made a sufficient accounting for limitations [1E] and [1J] as we explain below. We proceed to analyze claim 1, assuming as Petitioner contends, that one of ordinary skill in the art would have modified Schmidt-2000’s 16-bit architecture to an 8-bit architecture, i.e., registers having 8 bits instead of 16 bits and all execution units, e.g., adders, multipliers, processing 8 bits at a time rather than 16 bits.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,169,775 - Google LLC v. Singular Computing LLCInstitution deniedPTAB · Jul 25, 2023 · IPR2023-00394 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“l) Conclusion For the foregoing reasons, Petitioner has not shown a reasonable likelihood that it would prevail in establishing obviousness of claim 1 over Schmidt-2000.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not proposed its own articulation of the level of ordinary skill in the art. Nor has Patent Owner expressed disagreement with Petitioner’s statement of the level of ordinary skill. Patent Owner states: “For the purpose of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 9. On this record, we adopt Petitioner’s proposed level of ordinary skill in the art. It appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Although an input-output unit must be connected to a system component to function as an input-output unit with respect to that component, it would be unreasonable to regard that connection, such as a data bus, as itself an input-output unit. A data bus carries data from place to place but does not have a significant role on when to place data onto the bus or when to off load data from the bus, or what data to place on the bus.” slip op. at 17
- BurdenNot shown unpatentable
“First, we explained above in Claim Construction Section III.B that it is unreasonable and not consistent with the specification of the ’616 patent to regard a data bus as an “input-output unit.” The analysis need not be reiterated here. Second, because limitation [1E] recites “an input-output unit connected to the first edge processing element and the second edge processing element,” it is unreasonable to treat registers within the first or second edge processing element as the input-output unit. Patent Owner correctly notes (Prelim. Resp. 24) that that would regard an internal reading is illogical and Petitioner points to nothing in the specification of the ’616 patent to indicate that the ’616 patent itself used the “connected to” term in this manner. Third, because neither the global data bus nor registers R48–R63 within each processor can be the claimed “input-output unit,” Petitioner provides no adequate reasoning how the two in combination can be the claimed “input-output unit.” We determine that Petitioner has not sufficiently shown that Schmidt- 2000 discloses limitation [1E].” slip op. at 30
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,754,616 - Google LLC v. Singular Computing LLCInstitutedPTAB · Jul 25, 2023 · IPR2023-00397 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–5, 7–14, and 16–23 based on a reasonable likelihood that claims 1–5 are obvious over Stuttard and Shirazi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’775 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’775 patent on the sole ground of unpatentability set forth in the Petition.” slip op. at 2
- Parallel petitionsNot reached
“patentability of claims of the ’775 patent. In the Petition before us, Petitioner challenges claims 1–5, 7–14, and 16–23 as obvious over Stuttard and Shirazi. Pet. 1. In IPR2023-00396, Petitioner challenges claims 1–5, 7– 14, and 16–23 as obvious over other references not relied on in the Petition before us. IPR2023-00396, Paper 2, 1. On December 22, 2022, in accordance with the Board’s Consolidated Trial Practice Guide (“Consolidated TPG”),9 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3 (“Notice”). In its Notice, Petitioner requests that we consider the Petition in IPR2023-00396 first and the Petition in this proceeding second. Id. at 1. Patent Owner did not respond to the Notice in either its Preliminary Response or in a separate paper, as the Consolidated TPG allows. See Consolidated TPG, 60. We need not decide the issue of discretion under 35 U.S.C. § 314(a). For the reasons detailed in the Decision on Institution in IPR2023-00396, institution is denied in that case because the information presented in the petition does not show a reasonable likelihood of prevailing.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture. More education could substitute for experience, and vice versa. Pet. 4 (citing Ex. 1003 ¶¶ 33–37). Patent Owner states that, “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 9. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that, in the Petition, all claim terms have been given their ordinary and customary meaning, and does not propose any constructions under the “Claim Interpretation” heading. Pet. 6. Patent Owner states that it “agrees that no claim construction is necessary,” and impliedly asserts that it applies the “plain meaning” of all claim terms. Prelim. Resp. 9. We determine that no express claim construction is necessary for purposes of this Decision, except for “input-output unit” and the recitations regarding the interior processing element connections.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,169,775 - Google LLC v. Singular Computing LLCInstitutedPTAB · Jul 25, 2023 · IPR2023-00395 · APJ Ken B Barrett · IPR · Institution
Instituted review of claims 1–5, 7–14, 16–22, and 24 on obviousness over Stuttard and Shirazi; the Board found a reasonable likelihood of success on claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’616 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’616 patent on the sole ground of unpatentability set forth in the Petition.” slip op. at 2
- Parallel petitionsNot reached
“patentability of claims of the ’616 patent. In the Petition before us, Petitioner challenges claims 1–5, 7–14, 16–22, and 24 as obvious over Stuttard and Shirazi. Pet. 1. In IPR2023-00394, Petitioner challenges claims 1–5, 7–14, 16–22, and 24 as obvious over references not relied on in the Petition before us. IPR2023-00394, Paper 2, 1. On December 22, 2022, in accordance with the Board’s Consolidated Trial Practice Guide (“Consolidated TPG”),9 Petitioner filed a Notice Ranking Petitions and 7 Although there is only one ground in the Petition, Petitioner analyzes the challenged claims as three groups under the headings “Ground 1A,” “Ground 1B,” and “Ground 1C.” See, e.g., Pet. i–v (Table of Contents). 8 For purposes of this Decision, we assume the challenged claims have an effective filing date prior to March 16, 2013, the effective date of the relevant aspects of the Leahy-Smith America Invents Act, Pub. L. No. 112- 29, 125 Stat. 284 (2011) (“AIA”), and we apply the pre-AIA version of 35 U.S.C. § 103. See Pet. 1, 4 (applying pre-AIA provisions). 9 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated, 59–61 (explaining that the Board may exercise discretion under 35 U.S.C. Explaining Material Differences. Paper 3 (“Notice”). In its Notice, Petitioner requests that we consider the Petition in IPR2023-00394 first and the Petition in this proceeding second. Id. at 1. Patent Owner did not respond to the Notice in either its Preliminary Response or in a separate paper, as the Consolidated TPG allows. See Consolidated TPG, 60. We need not decide the issue of discretion under 35 U.S.C. § 314(a). For the reasons detailed in the Decision on Institution in IPR2023-00394, institution is denied in that case because the information presented in the petition does not show a reasonable likelihood of prevailing.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture. More education could substitute for experience, and vice versa. Pet. 4 (citing Ex. 1003 ¶¶ 33–37). Patent Owner states that, “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 9. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that, in the Petition, all claim terms have been given their ordinary and customary meaning, and does not propose any constructions under the “Claim Interpretation” heading. Pet. 5. Patent Owner states that it “agrees that no claim construction is necessary,” and impliedly asserts that it applies the “plain meaning” of all claim terms. Prelim. Resp. 9. We determine that no express claim construction is necessary for purposes of this Decision, except for “input-output unit” and the recitations regarding the interior processing element connections. 1. Input-Output Unit Independent claims 1, 7, and 16 each recite an “input-output unit.”” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,754,616 - PTAB · Jul 12, 2023 · IPR2023-00216 · APJ Jason M Repko · IPR · Institution
The Board instituted inter partes review of claims 1–9 based on a reasonable likelihood that claim 1 is anticipated by Powers.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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) (2018). For the reasons discussed in this Decision, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this stage of the proceeding and on this current record, Petitioner’s assertion is sufficient. Id. In particular, Powers arranges the three microphones in a horizontal line. Ex. 1003, 41. Power also explains that those signals are combined in a delay-and-subtract approach. Id. This is illustrated in the Petition’s annotated version of Power’s 2a, showing the delays (T1, T2, T3) and the subtract units combining the signals. See Pet. 19. Thus, at this stage and on this record, Petitioner has shown that Powers discloses “receiving acoustic signals at a physical microphone array and in response outputting a plurality of microphone signals from the physical microphone array,” as claimed. In reaching our conclusion, we credit Dr. Stern’s testimony about the microphone array and the signals because it is consistent with Powers. See Ex. 1002 ¶¶ 46–48.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“III. ANALYSIS A. Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that no claim terms require construction. Pet. 17. Patent Owner did not file a Preliminary Response. At this stage, no terms are in controversy. Thus, we do not construe any terms in this decision.” slip op. at 7
- Expert testimonyPetitioner expert creditedOther
“In reaching our conclusion, we credit Dr. Stern’s unrebutted testimony about the output. See Ex. 1002 ¶ 57. Thus, at this stage and on this record, Petitioner has shown that Powers discloses generating output signals, as recited in claim 1. See Pet. 22–23.” slip op. at 12
Claim construction§ 102 anticipationPatents in suitUS 8,280,072 - Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00164 · APJ Jason M Repko · IPR · Final written decision
LinkedIn did not prove claims 1–3 and 6–10 unpatentable on any asserted Eaton- or Kim-based anticipation or obviousness ground.
RulingsFinal written decision- ExcludeOther
“In its Motion to Exclude, Patent Owner seeks to exclude Petitioner’s Exhibits 1017–1020, 1022–1026, 1030, 1032, 1033, 1034, and 1036. Mot. 1. Even without excluding any of these exhibits, Petitioner has not proven that any challenged claims are unpatentable. Thus, we dismiss Patent Owner’s Substitute Motion to Exclude as moot.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s alternative definition that “a PHOSITA[3] would possess equivalent additional formal education such as graduate studies, or work experience to replace formal education” is unclear or, at best, does not meaningfully contribute to the first definition. See id. For example, Petitioner does not explain whether or how additional graduate studies would be both equivalent and additional to the education described in the first definition. See id. Patent Owner does not propose an alternative definition. See generally PO Resp.; Sur-reply. Thus, in this decision, we apply Petitioner’s proposed definition, without the alternative qualifier about “equivalent additional formal education . . . or work experience.” See Pet. 6. We determine that Petitioner’s definition is supported by the testimony of Dean Willis. Ex. 1004 ¶¶ 32–35.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We need only construe terms that are in controversy and only to the extent necessary to resolve the dispute. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We need not construe any terms to resolve the issues in this case.” slip op. at 6
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We credit Dr. Rajeev Surati’s testimony6 (Ex. 2020 ¶ 2053) on this issue over Dean Willis’s testimony (Ex. 1004 ¶¶ 211–13) because Dr. Rajeev Surati’s testimony is more consistent with Kim’s disclosure and Dean Willis’s Declaration lacks an adequate explanation. Thus, Petitioner has not shown that Kim discloses the associating step.” slip op. at 16
Patent outcomesUS 8,230,135 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,230,135 - Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00165 · APJ Jameson Lee · IPR · Final written decision
Claims 1–3 and 6–10 were not shown unpatentable because Eaton and Kim each failed to disclose the claimed array and alternative-title limitations, and the obviousness grounds did not cure those deficiencies.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“alternative” or “alternative title.” Neither party contends that “alternative” or “alternative title” is a term of art with an art recognized meaning. In plain English, “alternative” as an adjective designates something that is another option, another choice. Dictionary.com (accessed June 23, 2022), https://www.dictionary.com/browse/alternative (Ex. 3002) (“affording a choice of two or more things, propositions, or courses of action,” “(of two things, propositions, or courses) mutually exclusive so that if one is chosen the other must be rejected: The alternative possibilities are neutrality and war.”). The specification of the ’179 patent also consistently uses the word “alternative” to mean something in lieu of or in place of another choice. For instance, the ’179 patent describes: Advantageously, data associated with the event can also (or in the alternative) be provided to the title provisioning engine 616. Ex. 1001, 8:15–17 (distinguishing “also” from “alternative”). A given event may cause the title provisioning engine 616 to rewrite the entire title array 618 with title strings associated with the most recent events. Alternatively, a given event may cause the title provisioning engine 616 to append title strings to the end of the title array 618. Id. at 8:24–28 (using “alternative” in mutually exclusive context). slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“During oral hearing, counsel for Petitioner clarified that the index to an array may start from “0” rather than “1” and that the index also need not be a number. Tr. 18:13–19:19. With that clarification, counsel for Patent Owner indicated that there no longer is any dispute with regard to the meaning of “array.” Tr. 61:14–25. Accordingly, we have no need to construe the term “array.” 4. “event” The term “event” is recited in independent claim 1. The specification” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“reproduced above, are “event messages / strings 300 (shaded in green).” Pet. 30 (citing Ex. 1006 ¶ 31). But the cited evidence does not support that assertion. Paragraph 31 of Eaton describes the referenced column simply as “associated event 300.” Ex. 1006 ¶ 31. Further, even if the column stores associated event messages, Petitioner cites nothing to show that the associated messages in server memory column 300 are the event presence notification messages discussed above in the context of limitation 1[ii]. Alternatively, Petitioner relies on Eaton’s Figure 6 embodiment. Pet. 31. Petitioner asserts (id.) that in the Figure 6 embodiment server memory 160 stores an array of event notifications, referencing an annotated version of Eaton’s Figure 6, reproduced below: Figure 6 is a block diagram of an alternate embodiment of a server memory for use within a server of the instant message communication system, and Petitioner has shaded the EVENT AN–NN column green and the words “SERVER MEMORY” red. Ex. 1006 ¶ 19. Petitioner asserts that both the TOPIC N column 540 and the EVENT AN-NN column 670 as the stored event notifications. Pet. 31 (citing Ex. 1006 ¶¶ 56–58). But the assertion is not supported by the cited evidence. Paragraphs 56–58 of Eaton do not indicate that either topic entries 540 or event entries 670 are the event presence notification messages discussed above in the context of limitation 1[ii]. In its Reply, Petitioner asserts that event presence notification message EPNM “is associated with the character strings labelled Topics [1]- [N], and using ‘Topic N’ as the example, it is tied to ‘Event[s] AN-NN’ (representing the ‘events’ from the plurality of events 180 discussed in Claim 1[i]).” Reply 22. Even assuming that there is an association, Petitioner still has not shown that EPNM is any of Topics [1]-[N] in Figure 6. Similarly, Petitioner has not shown that EPNM is any of Event [1]-[N] in Figure 2.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“’179 Patent as provided above in Ground 1. To the extent that there are arguably any meaningful differences between those claims and Eaton’s disclosures, those differences would have been trivial and obvious modifications to make for a PHOSITA.” Pet. 49. This conclusory assertion of obviousness does not specifically identify any difference between the claimed invention and Eaton, and does not provide any reasoning or rational underpinning to support the assertion. Conclusory assertions of obviousness are insufficient to satisfy Petitioner’s burden of proof. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Petitioner asserts that to the extent that Eaton discloses various, “distinct” embodiments, it would have been obvious to one with ordinary skill in the art to combine Eaton’s teachings into a single system. Pet. 49. Petitioner also asserts that one with ordinary skill in the art “would understand that Eaton discloses possible configurations and/or operations of the same system, and to the extent that it is argued or found otherwise, the functions would have been entirely obvious to combine for [one of ordinary skill in the art] given Eaton’s express disclosures.” Id. It is uncertain what distinct embodiments are referred to by Petitioner. However, even assuming that the disclosures of Eaton’s embodiments, already discussed by Petitioner, are properly combinable, there still remains the deficiencies, discussed above in the alleged anticipation of claim 1 by Eaton, relating to the step of storing the event notification in an array, the step of providing the event notification from the array to a process executed by a processor, and the step of providing an alternative title from the array to the process. Accord Inst. Dec. 57.” slip op. at 33
Patent outcomesUS 8,402,179 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,402,179 - Apple Inc. v. Memoryweb, LLCNo claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00032 · APJ Jason M Repko · IPR · Final written decision
Claims 1–12 were not shown unpatentable over A3UM, Belitz, and Rasmussen because the obviousness challenge relied on an unsupported account of A3UM’s Places view and an inadequate combination rationale.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art in 2011 (or 2014) would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least one year of experience designing graphical user interfaces for applications such as photo management systems. Pet. 9 (citing Ex. 1003 ¶¶ 41–43). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 10. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 18. We continue to find that the skill level identified by Petitioner (Pet. 9) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 31
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“C. Claim Construction Only those claim terms that are in controversy need to be construed, and only 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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do no need to construe any terms to resolve the issues in this case.” slip op. at 31
- Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed
“size version of the selected image in the Places view. PO Resp. 55 (citing Ex. 2025 ¶¶ 156–157). Patent Owner’s argument is adequately supported by Dr. Surati’s testimony. Ex. 2025 ¶¶ 156–157. We credit Dr. Surati over Dr. Terveen on this issue because Dr. Surati’s testimony is consistent with the teachings in A3UM. See id.; Ex. 1003 ¶ 186. Specifically, the Petition and Dr. Terveen’s declaration rely on page 251 of A3UM to support the assertion that the Places view displays the original digital image in the Viewer. See Pet. 50; Ex. 1003 ¶ 186. The cited part of A3UM provides an overview of the Viewer. Ex. 1005, 251. A screenshot showing the Viewer and Browser is reproduced below. Id. The screenshot shows a Viewer displaying the image selected in the Browser. Id. The Browser displays several thumbnail images. Id. The Viewer displays a larger detailed view of the selected thumbnail image. Id. Dr. Surati testifies that this part of A3UM is not describing the Places view. Ex. 2025 ¶ 159. According to Dr. Surati, “clicking the thumbnail in the Browser in the Places view does not cause the Places view map to be replaced with a full size image corresponding to the selected thumbnail image.” Id. ¶ 156. Dr. Surati’s testimony (id. ¶¶ 155–157) is adequately supported by” slip op. at 38
Patent outcomesUS 9,552,376 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,552,376 - PTAB · Jun 6, 2023 · IPR2023-00253 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds after finding a reasonable likelihood of prevailing on at least claim 11 over Ikeda and Puthuff.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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) (2018). For the reasons discussed in this Decision, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition, and we have not been provided a sufficient reason to exercise our discretion to deny institution. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art (“POSITA”) would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. (Ex. 1002 ¶28.) Work experience could substitute for formal education and additional formal education could substitute for work experience. (Id.) Pet. 13. 1 Congress amended § 103 when it passed the Leahy-Smith America Invents Act (AIA). Pub. L. No. 112-29, § 3(c), 125 Stat. 284, 287 (2011). Here, Petitioner asserts that the previous version of § 103 applies. Pet. 12. proposed level of ordinary skill in the art. Prelim. Resp. 6–7. In this Decision, we apply Petitioner’s proposed definition. If Patent Owner proposes a different level of ordinary skill in the art in its Response, the parties are encouraged to explain how the differences affect the obviousness analysis.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner argues that it is unnecessary to construe any terms. Pet. 8. Patent Owner agrees. Prelim. Resp. 6. Patent Owner’s argument about the recited “determination” in claim 11 depends on an unstated construction. Id. at 13–14; see infra § II.C.3.b.i. Apart from our discussion about the meaning of the recited “determination” in Section II.C.3.b.i, we do not construe any terms.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage and on this record, we preliminarily determine that Petitioner describes the benefits of different approaches to detecting voicing activity in different situations. For example, Petitioner asserts that “Ikeda discloses the need for accurately determining periods when a desired signal (e.g., voicing activity) is present and periods when a desired signal is absent for an adaptive noise canceler to function optimally.” Pet. 32–33 (citing Ex. 1003, 3:32–54; Ex. 1002 ¶ 91). According to Petitioner, a person of ordinary skill in the art would have looked to other VAD methods, including Puthuff’s. Id. Petitioner argues that Puthuff would have improved voice-activity detection in noisy environments, in particular. Id. at 33 (citing testimony of Dr. Richard Stern. Ex. 1002 ¶ 91, cited in Pet. 33. On this record, Petitioner’s assertions are adequately supported. Pet. 32–33. The cited part of Puthuff, for instance, explains that its system improves “immunity to false triggering due to noisy environments.” Ex. 1004, 3:19–24, 6:6–10. We credit the testimony of Dr. Richard Stern, which is consistent with this teaching. Ex. 1002 ¶ 91. The Petition also explains how Ikeda’s and Puthuff’s systems are similar, and how both are concerned with solving the same problem. See Pet. 32–35.” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,019,091
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.