• Freewheel Media, Inc. v. Intent Iq, LLCInstituted
  PTAB · Oct 2, 2024 · IPR2024-00421 · APJ Scott B Howard · IPR · Institution

  The Board instituted IPR on claims 1–5, 7, 11–20, 22, 26–28, 35–38, 41, 44, 54, 56–58, 61, 62, 71–75, 77–80, 83, 84, 86, 90–99, 101, 105, 106, 116, 118, 119, 125, 127, 128, 137–141, 143, …

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). “When instituting inter partes review, the Board will authorize the review to proceed on all of” slip op. at 2

  • Parallel petitionsDenied

    “states that “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate” and “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.” Prelim. Resp. 5 (emphasis omitted, citing CTPG, 59). Patent Owner also argues that because Petitioner “has not and cannot justify” its four parallel petitions, the Board should deny institution in the instant proceeding. Prelim. Resp. 4–5; see also id. at 6 (“Petitioner fails to justify why all four Petitions, filed on the same day and challenging the same independent claims, are all necessary and appropriate.” (emphasis omitted)). Patent Owner also argues that (1) different prior art does not justify multiple petitions, (2) because Patent Owner “expressly stipulates that it will not ‘attempt to antedate or disqualify’ the prior art relied upon by Petitioner,” there are no potential priority issues, and (3) Petitioner is speculating as to the potential for disputes around claim construction. Id. at 6–7. Because this is the first ranked petition (Paper 3, 1–2), we do not exercise our discretion to deny this petition on the basis of multiple parallel petitions. Although Patent Owner has presented arguments why Petitioner may not be entitled to four petitions,14 Patent Owner does not persuasively argue why we should not institute on at least one of the ranked petitions.” slip op. at 13

  • BurdenDecided for petitioner

    “We are not persuaded by Patent Owner’s arguments. Unlike Adaptics, which involved potentially hundreds of distinct grounds challenging each claim due to the use of “and/or” in the catch-all ground (see Adaptics, Paper 20 at 19), the Petition only has, at most, two grounds for each claim (see Pet. 4). Nor has Patent Owner shown any evidence of improper “shadow grounds.” Although Patent Owner points to the size of the declaration testimony and the number of exhibits relied on by the declarants, Patent Owner has not pointed to any examples of alleged improper use of the testimony or exhibits. We decline to perform analysis that is missing from the Preliminary Response. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva 181 F.3d at 866–67 (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). To be clear, we make no judgment on the propriety of the declarants’ testimony or the cited exhibits at this time. If appropriate, Patent Owner can challenge (1) the admissibility of the exhibits and testimony and (2) specific arguments as going beyond the grounds stated in the Petition during the trial. But simply including a significant amount of testimony and a number of supporting references is not, by itself, a reason to find that the particularly requirement is not met.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person having ordinary skill in the art would have had “a degree in computer or electrical engineering, computer science, or a similar discipline, and two years of experience with the design and/or implementation of network-based content delivery systems and Internet advertising.” Pet. 6 (citing Ex. 1002 ¶¶ 144–49). Patent Owner does not address the level of ordinary skill in the art. See Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’260 patent and not disputed by Patent Owner, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.12” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,861,260
• Freewheel Media, Inc. v. Almondnet, Inc.Instituted
  PTAB · Oct 1, 2024 · IPR2024-00416 · APJ David Cotta · IPR · Institution

  The Board instituted IPR on claims 1, 3–11, 13–21, and 23–25, finding a reasonable likelihood that claim 1 is obvious over Merriman and Jaye.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1, 3–11, 13–21, and 23–25 of the ’249 patent.” slip op. at 2

  • Parallel petitionsOther

    “DISCRETIONARY DENIAL IN VIEW OF PARALLEL PETITIONS Petitioner filed three petitions for inter partes review of claims 1, 3– 11, 13–21, and 23–25 of the ’249 patent: this Petition, the petition filed in IPR2024-00417, and the petition filed in IPR2024-00418. See Freewheel Media, Inc. v. Almondnet, Inc., IPR2024-00417, Paper 2 (PTAB, filed Mar. 1, 2024); Freewheel Media, Inc. v. Almondnet, Inc., IPR2024-00418, Paper 2 (PTAB, filed Mar. 1, 2024). Patent Owner argues that “Petitioner has not shown that this is one of the ‘rare’ instances where multiple petitions are needed.” Prelim. Resp. 1. Petitioner requests that we consider this Petition before we consider the Petitions in IPR2024-00417, and IPR2024-00418. Paper 3, 1. Accordingly, we reserve consideration of whether multiple petitions are merited for our decisions in IPR2024-00417, and IPR2024- 00418.” slip op. at 12

  • Other 314aDecided for petitioner

    “We are not persuaded by Patent Owner’s arguments. Unlike in Adaptics, which involved potentially hundreds of distinct grounds challenging each claim due to the use of “and/or” in the catch-all ground (see Adaptics, Paper 20 at 19), the Petition relies on four grounds, comprised of combinations of two primary references with two secondary references, for each of the challenged claims (see Pet. 5–6). Nor has Patent Owner shown any evidence of improper “shadow grounds.” Although Patent Owner points to the size of declaration testimony and the number of exhibits relied on by the declarants, Patent Owner has not pointed to any examples of alleged improper use of the testimony or exhibits. We decline to perform analysis that is missing from the Preliminary Response. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva 181 F.3d at 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). To be clear, we make no judgment on the propriety of the declarants’ testimony or the cited exhibits at this time. If appropriate, Patent Owner can challenge (1) the admissibility of the exhibits and testimony and (2) specific arguments as going beyond the grounds stated in the Petition during the trial. But simply including a significant amount of testimony and a number of supporting references is not, by itself, a reason to find that the particularly requirement is not met.” slip op. at 16

  • BurdenInstituted

    “Having reviewed the arguments and evidence included in the Petition, including the Ranka Declaration, which are not substantively addressed by Patent Owner at this stage (see Prelim. Resp.), we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that it would have been obvious to combine Merriman and Jaye in the manner set forth in the Petition.” slip op. at 30

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,775,249
• Google LLC / Ecobee, Inc. v. Ecofactor, Inc.All claims unpatentable
  PTAB · Aug 1, 2024 · IPR2020-01504 · APJ Scott B Howard · IPR · Remand

  On remand, the Board held claims 1–20 unpatentable as obvious over Wedekind and Ehlers and denied Petitioner’s motion to exclude Dr. Palmer’s testimony.

  RulingsRemand decision

  • RemandOther

    “Circuit held that we erred in construing limitation 1m. According to the Federal Circuit, In sum, both the claim language and the specification support a broader construction than the Board accorded the [1m] limitation. The proper construction of the term must allow for any of the five claimed inputs to potentially be used to calculate another claimed input. We agree, then, with Google’s proposed construction, which simply “require[s] that each of the five inputs be used at some point during the determination of the first time prior to said target time.” Appellant Br. 52 (emphasis and quotation marks omitted). Id. at 1059 (alteration in original). The Federal Circuit further ordered that we “apply this construction on remand.” Id. Following the issuance of the mandate, we held a conference call with the parties. See Paper 51, 2 (Order on Conduct of Proceedings on Remand). As noted in the previous paragraph, the Federal Circuit instructed us to apply Petitioner’s construction for limitation 1m on remand. Google, 92 F.4th at 1059. Because the construction was implicitly argued in the Petition, the parties had notice and opportunity to be heard. Paper 51, 5. Therefore, in accordance with PTAB Standard Operating Procedure 3,4 we “determine[d] that additional briefing [was] not warranted in this proceeding.” Id. at 4.5 We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine that Petitioner has shown by a 4 Available at https://www.uspto.gov/sites/default/files/documents/ptab_ sop_3-2023-oct.pdf. 5 Neither party requested to submit additional evidence or have an oral hearing on remand. Ex. 3002 (Email from the parties to the Board). unpatentable.” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the one hand, Patent Owner’s formulation is attorney argument without any supporting evidence. See PO Resp. 5–6. Although not cited in the Response, when Dr. Palmer testifies to the level of skill in the art, he opinion: EcoFactor contends that a person of ordinary skill in the arts at the time of the invention would have had a (a) bachelor's degree in engineering, computer science, or a comparable field of study, and (b) at least 2 years of professional experience in electronic thermostats, HVAC controls, building energy management and controls or other similarly relevant industry experience. Additional relevant industry experience may compensate for lack of formal education or vice versa. Ex. 2002 ¶ 22 (emphasis added). It is well settled that mere attorney arguments and conclusory statements that are unsupported by factual evidence are generally entitled to no probative value. See Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorney’s argument is no substitute for evidence.”). On the other hand, Petitioner’s proposal is supported by Mr. Shah’s testimony. See Pet. 26 (citing Ex. 1002 ¶¶ 26–27). Because Mr. Shah’s testimony is based on his years of experience, we give it some weight. See Ex. 1002 ¶¶ 2–10. Accordingly, we are persuaded that Petitioner’s formulation, except for the qualifier “at least,” is correct.9” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “After briefing, we issued an order inviting supplemental briefing regarding the preambles of the challenged claims. Paper 28. In the Order, we proposed that the preamble of each of the challenged claims was not limiting. Id. at 2–3. In supplemental briefing, both Petitioner and Patent Owner agreed with that construction. PO Claim Constr. Br. 1; Pet. Claim Constr. Br. 5. We adopt the parties undisputed construction that the preamble of each of the claims is not limiting. In doing so, we conclude that the preamble is not limiting because it is “only a statement of purpose and intended result” and “[t]he expression does not result in a manipulative difference in the steps of the claim.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375–76 (Fed. Cir. 2001).” slip op. at 18

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

    “s) Conclusion Regarding Claim 1 For the reasons set forth above, Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Wedekind and Ehlers. 4. Analysis of Claims 2–4, 6–20 Petitioner argues that the combination of Wedekind and Ehlers teaches the limitations recited in claims 2–4 and 6–20 and that a person having ordinary skill in the art would have combined the teachings with a reasonable expectation of success. Pet. 61–62, 64–75. Petitioner’s arguments are supported by citations to the prior art and the testimony of Mr. Shah. See id. We have reviewed Petitioner’s arguments and evidence, agree with them, and, therefore, adopt Petitioner’s arguments and evidence as our own.” slip op. at 61

  Patent outcomesUS 8,498,753 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,498,753
• Askeladden L.L.C. v. Calabrese Stemer LLCInstituted
  PTAB · Jun 27, 2024 · IPR2024-00367 · APJ Scott B Howard · IPR · Institution

  The Board instituted inter partes review of claims 1–4 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Horie.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other

    “corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the ’310 patent has an application filing date of March 11, 2005, we apply the pre-AIA version of the statutory basis for unpatentability. See Ex. 1001, code (22). 2 Japanese Patent Application 2002-133100, published May 10, 2002 (Ex. 1009). All citations are to the Petitioner-provided English translation. Ex. 1006. claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).” slip op. at 6

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

    “Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’310 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue this ground. Those challenges, in our view, are best left for trial after full development of the record.10 10 As guidance to the parties, we note that it is unclear that the Petition, unlike Dr. Akl’s testimony, argues how a person having ordinary skill in the art would have modified Horie. Compare Ex. 1003 ¶ 98 (arguing that the differences between the first and second transmission channels in Horie “would have suggested to a person of ordinary skill in the art that separate and independent lines of communication could be employed in Horie’s system for the sending/receiving of requests and notifications.”), with Pet. 32–33 (not making the argument in Dr. Akl’s testimony). The parties should address in the Response and Reply (1) whether the Petition argues how and why a person having ordinary skill in the art would have modified Horie and (2), if not, whether we can rely on the argument in Dr. Akl’s testimony that is not made in the Petition.” slip op. at 21

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

    “Petitioner argues that “no claim terms require an express construction.” Pet. 9 (citing Ex. 1003 ¶ 62). 3 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. See 37 C.F.R § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). For the purposes of this Decision, we need not expressly construe any claim terms.4, 5 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,357,310
• Askeladden L.L.C. v. Calabrese Stemer LLCInstituted
  PTAB · Jun 27, 2024 · IPR2024-00369 · APJ Andreas Baltatzis · IPR · Institution

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

  RulingsInstitution decision

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

    “We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). We may institute inter partes review when “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). After considering the Petition and the evidence of record, we institute an inter partes review as to claims 1–7 of the ’706 patent.” slip op. at 2

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

    “motivated to combine Horie and Kobayashi, specifically to improve Horie’s confirmation option. Pet. 18–21. For example, Petitioner asserts Horie discloses sending a card transaction notification to a user device, with the option to issue a transaction cancellation request. Id. at 19 (citing Ex. 1006 ¶ 73). But, Petitioner notes that Horie does not disclose details on cancelling a transaction. Id. So Petitioner asserts that one of skill in the art would have looked to Kobayashi’s known techniques for preventing fraudulent transactions. Id. (citing Ex. 1003 ¶¶ 72–73). Specifically, Petitioner cites to Kobayashi’s method for verifying user identity, by notifying a user of a transaction using a pre-registered mobile phone number. Id. (citing Ex. 1007 ¶ 57; Ex. 1003 ¶ 74). In response, the user indicates whether or not the card can be used by entering a number determined at the time of card creation and a predetermined operation button. Id. at 19–20 (citing Ex. 1007 ¶¶ 60, 61; Ex. 1003 ¶¶ 73–74). Petitioner contends that implementing Kobayashi’s fraud prevention interface with Horie applies a known technique to improve a similar system in the same way. Id. at 20 (Ex. 1003 ¶¶ 75, 76). Petitioner concludes that, given the similarity between Horie and Kobayashi, one of ordinary skill in the art would have had a reasonable expectation of success in combining the disclosures. Id. at 20–21 (Ex. 1003 ¶¶ 75, 76). On this record and for purposes of institution, we determine that Petitioner has presented sufficient motivation to combine Horie and Kobayashi and reasonable expectation of success in doing so.” slip op. at 23

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

    “terms require an express construction.” Pet. 8. Instead, Petitioner addresses what it asserts is a typographical error in claim 1, which twice recites the term “merchant’s.” Id. (citing Ex. 1001, 5:54); see also Ex. 1001, 5:56. The possessive term “merchant’s” is not followed by a subject noun. See id. Although not identified by Petitioner, claim 6 also includes the recitation of “merchant’s” without a subject noun. See Ex. 1001, 6:52. Petitioner contends that during prosecution of the parent patent, U.S. Patent No. 7,357,310 B2, “the applicant explained that the ‘secure network and the ‘payment guarantee’ channel are illustrated between the acquirer 8 [sic] and the modem 5 of the merchant’s terminal.’” Id. (citing Ex. 1013, 45). Accordingly, Petitioner asserts that both instances of “merchant’s” should be read as “merchant’s terminal.” Id. We accept Petitioner’s argument at this stage of the proceeding. The parties should address this apparent typographical error in claims 1 and 6 during trial, including (1) whether there is an obvious typographical error and (2) whether we should correct it. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003); Pavo Solutions LLC v. Kingston Tech. Co., 35 F.4th 1367 (Fed. Cir. 2022); Beable Education, Inc. v. Achieve3000, Inc., IPR2021-01169, Paper 34, 10–11 (PTAB Jan. 3, 2023) (Final Written Decision). At this stage of the proceeding and based on the current record, we need not construe explicitly any of the claim language discussed in this section or any other claim terms because doing so would not change the outcome of the analysis below.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time the invention was made “would have a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study, and would have at least one or two years of experience with wired and wireless networks used to securely process requests for authorization of activity such as financial transactions.” Pet. 7–8 (citing Ex. 1003 ¶ 22). Additionally, Petitioner contends that “[l]ess experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” Id. Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. 6 In the present record, neither party presents arguments or evidence relating to secondary considerations. On this record and for the purposes of institution, we determine this level of skill, with the exception of the open-ended phrase “at least,” which we remove from Petitioner’s proposal, comports with the qualifications a person would have needed to understand and implement the teachings of the ’706 patent and the prior art of record.7” slip op. at 9

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,954,706
• Intuit Inc. v. Samesurf, Inc.All claims unpatentable
  PTAB · Jun 25, 2024 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious over Lebrun and Wang; the Board did not reach the separate Prajapat and Wang challenge.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 11–12; see Dec. 9–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 42. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “information related to a shared web browsing interaction” is interchangeable with “web browsing interaction data” and, as a result, this portion of the specification should limit the claim term. PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). The quoted portion of Mr. Friedman’s testimony, however, addresses other terms in the specification and not “information related to a shared web browsing interaction.” PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). As such, the testimony cited by Patent Owner does not support Patent Owner’s position. Accordingly, we determine that the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data” in the written description. c. Plain and Ordinary Meaning Because the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data,” we look to the plain and ordinary meaning of the term. See Edwards Lifesciences LLC v. Cook Inc., from the ordinary meaning will be adopted “when the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history” (internal quotation marks omitted)); Pet. Reply 5 (Petitioner arguing that “web browsing interaction data” should be afforded its plain and ordinary meaning) (citing Ex. 1034 ¶ 13). Notably, both Dr. Lieberman and Mr. Friedman agree that the plain and ordinary meaning of “web browsing interaction data” is sufficient to inform how one of ordinary skill would have understood the term. Ex. 1034 ¶ 13 (Dr. Lieberman testifying: “The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions. No additional definition or limitation is required in my opinion, nor is there any special or specific meaning given to the term in the specification of the ’145 patent.”); Ex. 1033, 171:5–16 (Patent Owner’s expert, Mr. Friedman, testifying that “the plain and ordinary meaning is sufficient.”). According to Petitioner, the plain and ordinary meaning is “data related to web browsing interactions.” Pet. Reply 5 (citing Ex. 1034 ¶ 13); Ex. 1034 ¶ 13 (“The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions.”). Patent Owner’s expert declined to opine on what the plain and ordinary meaning of “web browsing interaction data” other than it excludes webpages and partially filled webpages related to a web browsing interaction. See Ex. 1033, 171:5–16. slip op. at 27

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

    “Accordingly, we conclude that the plain language of the claims does not require “web browsing interaction data” to be limited to data describing interaction performed on a website by a host device. We turn to the specification because the meaning of “web browsing interaction data” is informed “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. The written description does not provide a definition or clear meaning for “web browsing interaction data.” Patent Owner acknowledges the term is not expressly used in the written description. PO Resp. 17. Patent Owner, however, identifies “information related to a shared web browsing interaction” as a term that is interchangeable with “web browsing interaction data.” PO Resp. 18, 29. We recognize the specification term “information related to a shared web browsing interaction” is substantially similar10 to Petitioner’s proposed plain and ordinary meaning of “web browsing interaction data” as “data related to web browsing interactions.” 11 Patent Owner identifies three passages that each describe the present invention as receiving information related to a shared web browsing interaction performed by a host device and performing the shared web browsing interaction based on the received information. PO Resp. 17–18 (block quoting Ex. 1001, Abstract, 3:10–24). The identified passages, however, do not show intention to manifestly limit “web browsing interaction data” to data describing interactions” slip op. at 25

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

    “forth by Petitioner (Pet. 22–34) discloses or suggests all limitations recited by claim 1, we consider Petitioner’s conclusion that it would have been obvious to combine Lebrun and Wang in the manner proposed to arrive at the claimed invention. See Pet. 19–22. (i) Articulated Reasoning To demonstrate obviousness, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Petitioner contends that one of ordinary skill would have been motivated to combine Wang’s activating a session invitation with Lebrun’s invitation to join a group-surfing session. Pet. 28. Specifically, Petitioner contends that “activating an invitation via a designated URL address would further enable” Lebrun’s group-surfing server “to coordinate and manage the group-surfing session, which would further Lebrun’s objective of providing an ‘improved technique for group access to web sites.’” Pet. 28 (citing Ex. 1005, 7:1). We agree with Petitioner that activating an invitation via a designated URL address would be a technique that helps coordinate a group-surfing session and would enable multiple related users being able to access “substantially the same” slip op. at 63

  Patent outcomesUS 9,185,145 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,185,145
• Meta Platforms, Inc. v. Mobile Data Technologies LLCInstituted
  PTAB · Jun 11, 2024 · IPR2024-00251 · APJ Kevin C Trock · IPR · Institution

  The Board instituted IPR on claims 1–9 and all asserted grounds, finding a reasonable likelihood that claims 1–3 and 5–9 are obvious over Neibauer and Cheng.

  RulingsInstitution decision

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

    “Based upon the present record, we determine that Petitioner has made a sufficient showing that one of ordinary skill in the art would have had a reason to combine the asserted art in the manner described by Petitioner. We, therefore, find that Petitioner has shown sufficiently for purposes of institution that a person of ordinary skill in the art at the time of the claimed invention would have had reason to combine the teachings Neibauer and Cheng in the manner described in the Petition, and would have had a reasonable expectation of success in so doing.” slip op. at 31

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Cheng is sparse. Neibauer and Cheng were among dozens of other references identified on information disclosure sheets submitted during prosecution, and there is no clear evidence of record that Neibauer and Cheng were ever discussed substantively. See generally Ex. 1022. Petitioner argues that “the Examiner erred by overlooking [Neibauer and Cheng] and the compelling grounds of unpatentability they provided.” Prelim. Reply 1. “Neibauer and Cheng were stronger prior art because they disclosed the limitations the Examiner thought were missing from Chow, including the “uploading,” “reformatting,” and “automatically generating” limitations that he highlighted in the Notice of Allowance.” Id. In light of this sparse record, Petitioner’s showing on the merits with respect to Neibauer and Cheng is sufficient to demonstrate that the Office erred with respect to its consideration of these references during prosecution of the ’427 patent. To the extent the Office substantively considered Neibauer and Cheng and concluded that their combination does not teach claim 1, this was material error. It is also notable that the Office cited and relied on both Neibauer and Cheng in the reexamination of U.S. Patent No. 8,135,801 B2, a parent in the same family as the ’427 patent, which resulted in cancellation of all claims of that patent. For the reasons discussed below with respect to the merits, the asserted combination of Neibauer and Cheng sufficiently teaches claim 1. Given the Petition’s detailed analysis, including the supporting testimony of Dr. Madisetti, and the sparse record developed by the Office addressing Neibauer and Cheng during prosecution of the ’427 patent, Petitioner has shown sufficiently that the Office materially erred when it found that the prior art does not teach claim 1.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states “[f]or purposes of this Response, [Patent Owner] applies Petitioner’s characterization of a POSITA.” Prelim. Resp. 17. Petitioner’s description of a person of ordinary skill in the art is consistent with the ’427 patent and the prior art before us and is supported by the testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s description. C. Claim Construction” slip op. at 8

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

    “Given this preliminary record, we do not see a basis for adopting Patent Owner’s proposed meaning of “uploading” as “data sent from a client to a server.” We do not discern a rationale in the claims or the intrinsic record to include the term “client” within the meaning of “uploading.” Rather, given the current record, we preliminarily determine that the ordinary and customary meaning of the term “uploading” as it is used in the ’427 patent and would have been understood by someone of ordinary skill in the art at the time of the claimed invention is “transferring data from an external data source to a set of servers.” This preliminary determination does not preclude the parties from proposing, presenting evidence, or arguing a different meaning for the term “uploading” during trial. To the extent the parties disagree with this preliminary determination, the parties should present their evidence and arguments as permitted by our rules.4 A final determination as to the ordinary and customary meaning of the term “uploading” as it is used in the ’427 patent will be made after the close of all the evidence and after any oral hearing in this matter.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,839,427
• Meta Platforms, Inc. v. Mobile Data Technologies LLCInstituted
  PTAB · Jun 11, 2024 · IPR2024-00249 · APJ Christopher M Kaiser · IPR · Institution

  The Board instituted IPR on claims 1–19, 21, and 22 on all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Neibauer, Ausems, Cheng, and Squibbs.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “relying on are the same or substantially the same as references that were before the Office. In particular, there is no dispute that neither Harvey nor Ausems was considered by the Office, nor that Harvey is not substantially the same as any reference that was before the Office. Prelim. Resp. 9–10; Prelim. Reply 3. Further, we do not agree with Patent Owner that Ausems is substantially the same as Rensin. Specifically, Petitioner relies on Ausems to teach the incorporation of a camera into a mobile device, permitting the recording, storage, and transmission of digital images. Pet. 23; Prelim. Reply 3. We have reviewed the section of Rensin to which Patent Owner directs us (Ex. 2003, 2:2–21), and we do not see substantially the same functionality. Although Rensin teaches that “PDA expansion slots may be used to enhance the PDA capabilities with a digital camera,” Patent Owner does not explain, and it is not clear from our review of Rensin, that Rensin discloses the use of the mobile device to transmit the images recorded by the camera. Ex. 2003, 2:2–21. Accordingly, we are not persuaded that Rensin is substantially the same as Ausems. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 14

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

    “Based on the current record, a person of ordinary skill in the art would have combined the teachings of Ausems with those of Neibauer in the manner described above. See Ex. 1002 ¶¶ 114–117. Specifically, a person having ordinary skill in the art would have combined Ausems’s ability to share photos captured by a mobile device with Neibauer’s Yahoo! club in order to “dramatically expand[] the universe of image data that the club based on the current record, a person of ordinary skill in the art would have had a reasonable expectation of success. Id. ¶ 117. Accordingly, on the present record, the combination of Neibauer and Ausems teaches limitation 1a.” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices.” Pet. 5–6 (citing Ex. 1002 ¶¶ 14–18). At this stage, Patent Owner “applies Petitioner’s characterization of a person of ordinary skill in the art.” See Prelim. Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed and implement the teachings of the ’578 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Madisetti. See Ex. 1002 ¶¶ 14–18.8” slip op. at 9

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

    “Petitioner does not believe express claim construction is necessary at this time.” Pet. 8. Petitioner also discusses various claim construction arguments made in the district court proceeding. See id. at 25–27, 65–66. At this stage, Patent Owner agrees with Petitioner that “no express constructions are required.” Prelim. Resp. 16. 8 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. claim terms.9 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,619,578
• Meta Platforms, Inc. v. Mobile Data Technologies LLCInstituted
  PTAB · Jun 11, 2024 · IPR2024-00246 · APJ Scott B Howard · IPR · Institution

  The Board instituted IPR on claims 1, 6–11, 13–18, and 20–27, finding a reasonable likelihood that claim 1 is obvious over Neibauer, Miller, and Cheng.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Madisetti argues that a person having ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices.” Pet. 6 (citing Ex. 1002 ¶¶ 14–18). At this stage of the proceeding, Patent Owner “applies Petitioner’s characterization of a [person having ordinary skill in the art].” Prelim. Resp. 19 (citing Ex. 2001 ¶¶ 42–44). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is consistent with the invention claimed in the ’336 patent.10” slip op. at 10

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

    “Petitioner does not believe express claim construction is necessary at this time.” Pet. 8. Petitioner also discusses various claim construction arguments made in the district court proceeding. See id. at 28–29, 65. At this stage, Patent Owner agrees with Petitioner that “no express constructions are required,” and further agrees “that the ordinary and customary meanings of the claim terms apply.” Prelim. Resp. 19. For the purposes of this Decision, we need not expressly construe any claim terms.11 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “considered by the Office. See Prelim. Resp. 6–13; Ex. 1001, code (56). Further, we do not agree with Patent Owner that Miller is substantially the same as Agboatwalla. Specifically, Petitioner relies on Miller for being able to select different types of communication tools for a group: Miller discloses a number of web-based forms that allow the user to (among other things) specify a name and description for the environment (Fig. 13B) identify the members of the environment (Fig. 13C, 14A-C), and select the various communication features (e.g. bulletin board, etc.) that will be available for members (Fig. 16). (Miller, 0045:12-0046:27.) With respect to the selection of communications features, Miller discloses a user interface for allowing the user to select (from a list) the particular features that will be included in the collaborative environment. (Miller, Fig. 16, 0047:31-0048:9, 0042:29-32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”).) These selections are then used in creating the environment or group. (Miller, 0043:3-6 (“In step 1104, the environment is created… to permit the group members to activate the functions selected for the group.”); EX1002, ¶104.) Pet. 19 (emphasis added).13 We have reviewed the section of Agboatwalla to which Patent Owner directs us (Ex. 2003, 2:32–50) and do not see substantially the same functionality. Although Agboatwalla describes a user being able to select what content may be viewed (see id.), Patent Owner does not direct us to, and we do not see, Miller’s teaching of selecting different types of communication pathways that may be selected for a group. Accordingly, Miller is not substantially the same as Agboatwalla. 13 References to Miller are to Petitioner’s pagination in the exhibit, for consistency with the Petition. Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 15

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

    “Based on the current record, a person having ordinary skill in the art would have combined those teachings in the manner described above. See Ex. 1002 ¶¶ 105–108. Specifically, a person having ordinary skill in the art would have combined Miller’s ability to select communication channels with Neibauer’s Yahoo! Club in order “to enhance the flexibility and customizability of clubs in Neibauer.” Id. ¶ 107. This would allow the founder to eliminate certain features that “may not have been particularly useful or desirable for some clubs.” Id. Additionally, a person having ordinary skill in the art would have had a reasonable expectation of success. See id. ¶ 108.” slip op. at 26

  Claim constructionDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,793,336
• Samsung Electronics Co., Ltd. v. G+ Communications, LLCNo claims unpatentable
  PTAB · May 31, 2024 · IPR2023-00441 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–15 and 17–18 were not shown unpatentable because the prior art did not disclose a “pre-set UE number” under the adopted construction.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We are not persuaded to maintain our preliminary construction. Indeed, as already noted, Petitioner does not argue for the preliminary construction. Neither does Petitioner question the validity of the reasons given for the District Court’s construction. Rather, Petitioner repeats its position that it “takes no position on the District Court’s construction” and Petitioner does not have any reason “as to why that construction is wrong or right.” Tr. 18:24–19:6. We do not see any reason to construe “pre-set UE number” contrary to what the District Court has determined. Indeed, we find the District Court’s analysis of the issue highly persuasive and adopt it as our own. And Petitioner has not provided any argument regarding construction of the term, simply taking no position on its correctness.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Petitioner has forfeited the indefiniteness argument. Regardless, we are given no reason to find construction of the two means-plus function terms impossible given the District Court determination. We agree that the scope of the terms is based on a means-plus function analysis. We are not persuaded that structure is not sufficiently described.” slip op. at 14

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Patent Owner argues that this argument was not presented in the Petition and is too late and/or incorrect. Sur-reply 5. We agree with Patent Owner. Neither Patent Owner nor the Board were given any notice of this argument in the Petition. Regardless, we find no merit in Petitioner’s argument. Fundamentally, our jurisdiction regarding patentability is limited to Sections 102 and 103 of the Patent Act. 35 U.S.C. § 311(b). We do not find that claim 18 is so indefinite that a patentability determination is impossible. See Intel Corp. v. Qualcomm Inc., 21 F.4th 802, 812–813 (Fed. Circ. 2021) (claim construction obligation “does not mean that the Board must reach a determination of the patentability of a claim on the presented prior-art grounds if such a determination is rendered impossible because of the indefiniteness of an essential claim limitation.”). Indeed, the District Court determined that the corresponding structure is a processor programmed to either (1) descramble a Cyclic Redundancy Check (CRC) of Downlink Control Information (DCI) for scheduling the RAR according to a pre-set RA-RNTI or an RA-RNTI corresponding to the preamble, and receive the RAR, the RAR including at least one TCRNTI and/or at least one Uplink (UL) grant. Ex. 2008, 23 (quoting Ex. 1001, 2:66–3:4). (2) determine corresponding RA-RNTIs according to respective IDs and/or preambles, descramble a CRC of DCI for scheduling the RAR according to the corresponding RA-RNTIs, and receive corresponding RARs, the RAR including a TCRNTI and/or a UL grant allocated to the first UE or second UE.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Our construction of “pre-set UE number” is dispositive of this proceeding. See Section III.B.1 above. Petitioner agrees that both Li and Kim “don’t disclose that the message 3 includes a ‘pre-set number of UEs’” under our final construction of “pre-set UE number.” Pet. Reply 4; see also Tr. 7:20–22 (“Under [the District Court] construction, Li and Kim would not disclose Claim 1, at least Claim 1, of the ’430 patent”); 11:3–17 (Petitioner’s counsel arguing claim 18 is indefinite but agreeing neither claim 1 nor 18 have been shown unpatentable under the District Court construction of “preset UE number”). For the reasons set forth above, Petitioner has not shown a by a preponderance of the evidence that claims 1 and 18 are anticipated by Li.” slip op. at 18

  Patent outcomesUS 10,448,430 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,448,430

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.