- PTAB · Jan 21, 2020 · IPR2019-01091 · APJ Michael R Zecher · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution for claims 1, 13, 25-27, 29, 30, 32, 34-36, and 166, finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). With this in mind, we address the arguments presented by Petitioner entities in turn.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“argument because it is a new argument presented for the first time in the Request for Rehearing. Although Petitioner entities affirmatively discuss the Rackspace IPR in the Petition, they only do so in the context of explaining that the Petition is not a follow-on petition to the petition filed in the Rackspace IPR because it involves a different petitioner, different claims, different asserted grounds of unpatentability, and different arguments and evidence. See Pet. 12–13. Indeed, Petitioner entities do not address squarely Francisco’s disclosure of periodically varying the algorithm in the Petition, much less take the position that periodically varying the algorithm is an “optional” feature. See generally Pet. Petitioner entities’ failure to address Francisco’s periodically varying algorithm was the reason for our concern with the Petition, especially given that Petitioner entities bear the burden to demonstrate unpatentability. See Dec. 24–25 (explaining that Petitioner entities “do[] not address Francisco’s disclosure of ‘periodically vary[ing]’ the algorithm . . . [which] is problematic as [Petitioner entities] bear[] the burden of demonstrating . . . unpatentability” (first alteration in original) (quoting Ex. 1003, 2:43)). We did, however, further explain that, even assuming that there may be an embodiment in Francisco in which the algorithm would not be varied (a fact that Petitioner entities did not establish), we would have still exercised our discretion to deny institution given the other shortcomings of the Petition. Id. at 25. Accordingly, our Decision Denying Institution did consider the possibility of embodiments where Francisco’s algorithm would not be varied, even though Petitioner entities did not address this issue squarely in the Petition itself.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“of the claim construction arguments presented by Petitioner entities with respect to the claim term “message digest function” included arguing that the specification of the ’420 patent does not define this claim term explicitly, but that the specification “generally describes it as ‘reduc[ing] a data block B of arbitrary length to a relatively small, fixed size identifier.” Dec. 11 (citing Paper 1 (“Pet.”) 40). Petitioner entities also argued that the specification cites well-known cryptographic hash functions as examples of a “message digest function”—namely, MD4, MD5, and Secure Hash Algorithm. Id. For purposes of claim construction, Petitioner entities did not rely on the two related, but different, patents previously challenged by Rackspace and Apple that include claims reciting the claim terms “message digest function or hash function”; nor do Petitioner entities predicate their claim construction arguments presented and developed in the Petition on the positions taken by PersonalWeb in those three cases. See generally Pet. Notably, Petitioner entities do not even allege in the Request for Rehearing that our construction of the claim terms “message digest function or hash function” is incorrect. In any event, Petitioner entities do not direct us to, nor are we aware of, controlling precedent that prevents PersonalWeb from raising a claim construction argument with respect to the claim terms “message digest function or hash function” that appear in independent claim 25 of the ’420 patent merely because PersonalWeb chose not to raise the same claim construction argument when responding to previous challenges of two related, but different, patents. The cases relied on by Petitioner entities to support their new argument are distinguishable from the circumstances presented here. See Req. Reh’g 3. The Google case involved an inter partes review in which a Board panel ultimately adopted previous district court” slip op. at 5
- BurdenDecided for patent owner
“argument presented by Petitioner entities because they only presented and developed this argument in the context of addressing claim 29, which depends from independent claim 25 and further recites “wherein the first content-dependent name for the particular sequence of bits comprises a digital fingerprint of the particular sequence of bits.” See Pet. 45–47. In essence, Petitioner entities request that we search through the entire Petition to find support for their theory that Francisco discloses the “message digest function or a hash function” recited in independent claim 25 because it would have been obvious to a person of ordinary skill in the art to implement Francisco’s system using a more complex hashing algorithm. If Petitioner entities desired for us to consider one portion of the Petition as supporting arguments presented and developed in another portion of the Petition, they should have provided citations to those portions with particularity. Moreover, the obviousness argument that Petitioner entities present with respect to dependent claim 29 appears to be setting forth an alternative ground based on proposed modifications to Francisco in view of the admitted prior art of the ’420 patent and secondary references. See Pet. 45– 47 (arguing that “Francisco meets th[e] limitation” of dependent claim 29, but further arguing that it would have been obvious to implement a more complex algorithm in Francisco because the ’420 patent “acknowledges that the MD5 hash algorithm . . . is prior art” and relying on Exhibit 1009 (Langer) and Exhibit 1010 (Browne) for teachings regarding MD5). The only statutory ground the Petition identifies under 37 C.F.R. § 42.104(b)(2) is obviousness under 35 U.S.C. § 103(a) in view of the combined teachings of Wyman and Francisco. See id. at 5. The Request for Rehearing does not explain why one of ordinary skill in the art would have understood the MD5 algorithm to be taught or suggested by the teachings of Wyman or Francisco, as opposed to substituting the MD5 algorithm taught in alleged admitted prior art or secondary references for Francisco’s algorithm. Stated differently, the Request for Rehearing does not suggest that we should have granted institution on any grounds other than under § 103(a) in view of the combined teachings of Wyman and Francisco. Accordingly, Petitioner entities have not persuaded us to modify the Decision Denying Institution with respect to claims 25 or 29.” slip op. at 8
Claim constructionPatents in suitUS 8,099,420 - PTAB · Jan 21, 2020 · IPR2019-01089 · APJ Michael R Zecher · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution for claims 1, 13, 25–27, 29, 30, 32, 34–36, and 166, finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). With this in mind, we address the arguments presented by Petitioner entities in turn.” slip op. at 3
- BurdenDecided for patent owner
“argument presented by Petitioner entities because they only presented and developed this argument in the context of addressing claim 29, which depends from independent claim 25 and further recites “wherein the first content-dependent name for the particular sequence of bits comprises a digital fingerprint of the particular sequence of bits.” See Pet. 42. In essence, Petitioner entities request that we search through the entire Petition to find support for their theory that Francisco discloses the “message digest function or a hash function” recited in independent claim 25 because it would have been obvious to a person of ordinary skill in the art to implement Francisco’s system using a more complex hashing algorithm. If Petitioner entities desired for us to consider one portion of the Petition as supporting arguments presented and developed in another portion of the Petition, they should have provided citations to those portions with particularity.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“because it is a new argument presented for the first time in the Request for Rehearing. As we explained in the Decision Denying Institution, the extent of the claim construction arguments presented by Petitioner entities with respect to the claim term “message digest function” included arguing that the specification of the ’420 patent does not define this claim term explicitly, but that the specification “generally describes it as ‘reduc[ing] a data block B of arbitrary length to a relatively small, fixed size identifier.” Dec. 11 (citing Paper 1 (“Pet.”) 35). Petitioner entities also argued that the specification cites well-known cryptographic hash functions as examples of a “message digest function”—namely, MD4, MD5, and Secure Hash Algorithm. Id. For purposes of claim construction, Petitioner entities did not rely on the two related, but different, patents previously challenged by Rackspace and Apple that include claims reciting the claim terms “message digest function or hash function”; nor do Petitioner entities predicate their claim construction arguments presented and developed in the Petition on the positions taken by PersonalWeb in those three cases. See generally Pet. Notably, Petitioner entities do not even allege in the Request for Rehearing that our construction of the claim terms “message digest function or hash function” is incorrect.” slip op. at 5
Claim constructionPatents in suitUS 8,099,420 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01893 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining its claim construction and its finding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As explained above, the Final Written Decision concluded that the ordinary meaning of the claim language is broad enough to encompass the sending of communications, based upon the results of processing consumer usage information, containing management instructions. FWD 25. Patent Owner does not explain persuasively why that conclusion was incorrect. We maintain that conclusion here. In claim 1, for example, it is reasonable to read the phrase “based upon the results of having processed at least some of the received consumer usage information” as modifying either “configured to send communications” or “management instructions that cause the stored data content files of one or more assets to be automatically modified.” Id. at 24. Patent Owner does not explain persuasively why such language could only modify management instructions.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 51–55. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 52–54 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 33–34; Reply 8–9). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 8,577,359 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01892 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no error in its claim construction and concluding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language (claim 1, for example) is that “managing” is “based upon the results of having processed at least some of the received consumer usage information” and that the managing is, in turn, accomplished “by sending communications containing management instructions that cause the stored data content files of one or more assets to be automatically modified.” It is the managing, and thus the sending of communications containing management instructions, that is based on the results of having processed consumer usage information, not the management instructions themselves. To the extent Patent Owner still argues that the management instructions themselves must be based on the results of having processed consumer usage information in order to accomplish the recited management, that is not recited in the claims. Rather, the only limitation placed on the “management instructions” by the plain language of the claims is that they “cause the stored data content files of one or more assets to be automatically modified.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Ex. 1015, 20:11–21. We found that this teaches communicating management instructions “based upon the results of processing at least some of the received consumer usage information,” as recited in claim 1. FWD 53 (“The server communicates its single set of instructions to the client as a result of processing all of the information it receives in the single-up transmission from the client. This includes deltas, requests for new channels, and changes to preferences.”); see also Ex. 1015, 8:7–19. This finding applies equally under Patent Owner’s new proposed construction, namely, “the server’s determination to communicate the claimed management instruction(s) in particular as part of a transmission sent to at least one consumer device asset is what needs to be ‘based upon the results of processing at least some of the received consumer usage information.’” PO CC Br. 4 (emphasis omitted). Specifically, the decision to communicate synchronization information (including deltas and new channels) from the server to the client is based, in part, on the server’s synchronization of the client’s channel information (including deltas and new channels) with the providers of the channels, which involves processing the requests for new channels and changes to preferences. Ex. 1015, 8:7–19, 20:1–21. Thus, Kloba and Multer (US 6,671,757 B1, Ex. 1016) render claims 1 and 20 obvious even under Patent Owner’s new proposed construction.” slip op. at 16
Claim construction§ 103 obviousnessPatents in suitUS 8,577,358 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01891 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining that claims 1–30 are unpatentable as obvious over Kloba and Multer under the adopted claim construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language is that “based upon the results of processing at least some of the received consumer usage information” modifies “communicate.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 43–48. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 44–46 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 32–33; Reply 6–7). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,504,007 - Nikon Corporation v. ASML Netherlands B.V. Carl Zeiss AGRehearing deniedPTAB · Oct 4, 2018 · IPR2018-00688 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving institution in place for claims 1–4, 6, 7, 15, 16, and 19 because it found no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for petitioner
“function limitations because, according to Patent Owner, we did not address Patent Owner’s contention that Petitioner’s analysis did not show that the prior art structures are the same or equivalent to structures disclosed in the Specification for performing the functions recited in claims 15, 16, and 19. Req. 3–6. We did address Patent Owner’s contention in our Decision. Dec. 18. In our analysis of the means plus function limitations recited in claim 15, we stated that The Petition identifies the structure in the Specification corresponding to the claimed “first filtering means” as a linear matched filter, and identifies the equivalent structure in Yow as a matched bandpass filter. Pet. 13–14, 27. The Petition identifies the structure in the Specification corresponding to the claimed “second filtering means” as a non-linear filter, and identifies the equivalent structure in Yow as a non-linear edge detector. Pet. 14, 27. Id. Our Decision includes similar analyses for claims 16 and 19. See Dec. 19. Patent Owner does not persuade us that we misapprehended the law for means plus function limitations. Rather, Patent Owner simply disagrees with our Institution Decision on this issue. Mere disagreement with our conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner did not establish sufficiently that Yow Thesis was available as a printed publication, we should not have instituted trial on the grounds based on Yow Thesis. Req. 6–7 (citing Dec. 26). However, at this time, if the Board institutes a trial, the Board will institute on all challenges raised in the Petition. See Guidance on the Impact of SAS on AIA Trial Proceedings, April 26, 2018, available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial. Accordingly, we deny Patent Owner’s Request for Rehearing.” slip op. at 4
Claim constructionPatents in suitUS 6,463,163 - Nikon Corporation v. ASML Netherlands B.V., Carl Zeiss AGRehearing deniedPTAB · Sep 10, 2018 · IPR2018-00227 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing of the denial of institution, finding the Kerns-Niikawa combination did not sufficiently teach or suggest initiating audio capture based on focus adjustment for claims 15, 20, and 23.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“not persuaded that the Request for Rehearing demonstrates any error or misapprehension in our analysis of the Petition, the ’167 patent, or the references. Kerns uses a two-position shutter button (ready and picture taking positions) that in the first position begins to take a series of photographs and record a series of sound images in ring buffers that are filled and then overwritten as recording progresses. See e.g., Ex. 1005, 3:17–23. When the user presses the button into the second position, additional pictures are snapped and recording stops, with the ring buffers remaining intact. Id. at 3:24–33. Kerns does not explicitly discuss auto focusing. Niikawa uses a separate button for sound recording. See, e.g., Ex. 1006 ¶ 155. The Petition describes Kerns at pages 27–30 without mentioning focusing. The relevant claim chart in the Petition cites Kerns’ disclosure of a two-position shutter, but does not cite a portion of Kerns that discloses responding to a detection in focus adjustment. Id. at 43. Petitioner’s chart of claim 15 cites Niikawa as disclosing “generating a trigger signal in response to detection of focus adjustment when the camera is manipulated prior to image capture.” Petitioner acknowledges “Niikawa discloses recording sound in association with an image by using sound recording button 53 during ‘after view’ display following image capture.” Pet. 32 (citing Ex. 1006 ¶ 106). Although Niikawa discloses audio capture, Niikawa does not disclose audio capture based on focusing adjustment. Accordingly, neither Kerns nor Niikawa individually discloses initiating audio capture based on focusing adjustment. The Petition argues that “it would have been obvious to one of skill in the art to employ the two-step shutter control of Kerns in the camera of Niikawa to provide simplified sound recording control in connection with image capture” (id. at 32). As noted above, Kerns does not discuss explicitly responding to focus adjustment to trigger audio recording. The Petition also acknowledges that “Niikawa discloses numerous sensors relating to image taking operations that will cause the camera to be switched to capture mode.” Id. at 34. Petitioner’s assertion that one of ordinary skill would have modified Niikawa to replace sound recording button 53 with Kerns’ two-step shutter and further modified the combination to select autofocusing as the sensor parameter that initiates sound recording, as recited in claim 15, is not supported by the references and represents an impermissible level of hindsight. Thus, we further determine the Petition did not demonstrate sufficiently that the combination of Kerns and Niikawa would have taught or suggested initiating audio capture based on focusing adjustment to the ordinarily skilled artisan during the relevant timeframe.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Claim 15 explicitly recites that “the detection circuit [is] configured to generate a trigger signal when the camera is manipulated prior to image-capture” and that “the detection circuit is configured to sense focus adjustments by the camera while the camera is powered-up and in a wait state, sense activation of a viewfinder display of the digital camera, and generate the trigger signal in response to detection of a focus adjustment.” Claim 15 recites that the detection circuit configured to generate the trigger signal performs all of these functions, as opposed to one or more of them. Petitioner identifies no disclosure in the Specification supporting its proposed construction that claim 15 should be construed to mean a system in which generating a trigger signal when the camera is manipulated does not require both sensing activation of the viewfinder and detecting focus adjustment. As Petitioner points out, the ’167 patent acknowledges that it was known to use the shutter release button to initiate both audio capture and focusing. Id. at 10 (citing Pet. 33, Ex. 1001, 1:14–16 (disclosing that “[s]ome still cameras utilize a first position on a shutter-release button to initiate audio capture and/or focusing”)). The ’167 patent recognizes that in such systems “the user is limited to capturing an image during the audio recording period in order to obtain the best coordination between picture and sound.” Ex. 1001, 1:44–47. The ’167 patent addresses this limitation of the prior art with a system in which “[m]anipulation of the camera is detected prior to image capture, and sensory data are generated in response to detecting the manipulation.” Ex. 1001, 1:54–56. Construing apparatus claim 15 as a whole, the functional limitation, “the detection circuit configured to generate a trigger signal when the camera is manipulated prior to image-capture,” must be view the claimed manipulation in the context of the additional functional limitation that the detection circuit is configured to sense activation of the viewfinder. Recognizing that the Specification articulates one purpose of the invention is to avoid the technical constraints of using the shutter button alone to initiate both audio capture and focusing, we do not construe the claim to mean only focusing adjustment is required to begin audio recording merely because the claim also recites that the sensory data used to generate the trigger signal is a focus adjustment.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“The Petition argues that “it would have been obvious to one of skill in the art to employ the two-step shutter control of Kerns in the camera of Niikawa to provide simplified sound recording control in connection with image capture” (id. at 32). As noted above, Kerns does not discuss explicitly responding to focus adjustment to trigger audio recording. The Petition also acknowledges that “Niikawa discloses numerous sensors relating to image taking operations that will cause the camera to be switched to capture mode.” Id. at 34. Petitioner’s assertion that one of ordinary skill would have modified Niikawa to replace sound recording button 53 with Kerns’ two-step shutter and further modified the combination to select autofocusing as the sensor parameter that initiates sound recording, as recited in claim 15, is not supported by the references and represents an impermissible level of hindsight. Thus, we further determine the Petition did not demonstrate sufficiently that the combination of Kerns and Niikawa would have taught or suggested initiating audio capture based on focusing adjustment to the ordinarily skilled artisan during the relevant timeframe.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,209,167 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Apr 13, 2018 · IPR2017-01895 · APJ Stacy B Margolies · IPR · Rehearing
The Board denied M2M Solutions LLC’s rehearing request, leaving institution of review of claims 1–30 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“either the parties’ claim construction disputes or a purported need to explicitly construe “consumer usage information” and “operational status information.” As Patent Owner acknowledges (id. at 13), in the Institution Decision, we stated that “Patent Owner also does not show persuasively on the current record why the phrase ‘consumer usage information’ is limited to information about the use of the particular consumer device asset that sends the information to the remote computer server platform.” Inst. Dec. 18. We also stated that “Petitioner shows sufficiently for institution purposes that Saylor discloses that use of a motion sensor is communicated from a control panel to the central security server.” Id. (citing Paper 2 (“Petition” or “Pet.”), 31–32; Ex. 1010, 5:22–38, 15:43–53). We thus addressed the scope of the claim term necessary for determining whether to institute. We determined that on the preliminary record Petitioner made a sufficient showing of unpatentability and that Patent Owner’s distinction over the prior art—based on a narrow reading of the phrase “consumer usage information”—was not persuasive on the preliminary record. Patent Owner proposed that the phrase means “information identifying the manner in which a consumer has used a consumer device asset.” Prelim. Resp. 14–15. Claims 1 and 20 of the ’358 patent, however, do not recite that the consumer usage information is information identifying the use of the claimed consumer device asset(s). Patent Owner did not show on the preliminary record how the ’358 patent limits the scope of the phrase such that a consumer’s (such as a homeowner’s) use of a motion sensor as disclosed in Saylor does not fall within the claim.” slip op. at 5
Claim constructionPatents in suitUS 8,577,358 - Apple Inc. v. Core Wireless Licensing S.A.R.L.Rehearing deniedPTAB · Sep 13, 2017 · IPR2015-01898 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claim 6 unpatentable as obvious over the stated combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing. 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“vicinity.” Req. Reh’g 3. We disagree that the specification, even in this passage, equates the two. Instead, we understand the full passage as listing several elements of environment—whether the telephone is Bluetooth enabled, whether there is Bluetooth application which was an associated summary window, and the location of the device. Ex. 1001, 4:47–52. In any case, the specification is clear that this is only an example. The specification teaches broadly that the application snapshot may vary with “the environment in which the mobile telephone finds itself,” and then provides an “example.” Thus, the specification is clear that the sentence beginning with “for example” is not intended to limit the term “environment.” See Ancora Tech., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014) (holding non-limiting examples insufficient to narrow a term’s plain and ordinary meaning); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373 (Fed. Cir. 2014) (noting “e.g.” in the specification does not limit a term). Thus, we disagree that this passage is inconsistent with our construction or limits the term “environment” in the way Patent Owner now proposes. slip op. at 4
- BurdenDecided for petitioner
“Yurkovic and Nason each taught the limitations of claim 6 because we “overlooked that claim 6 requires the ‘stored data types’ of a summary window vary, and not simply the data for a given type to vary.” Req. Reh’g 10–11. Patent Owner never identifies, however, where it argued that Yurkovic and Nason only disclose information varying, not type of information varying, which is fatal to its Request. See 37 C.F.R. § 42.71(d). This failure is especially egregious with respect to the grounds based on Nason and Nason and Yurkovic. Patent Owner never separately argued that Nason failed to teach the limitations of claim 6. See PO Resp. 43–44. Moreover, Patent Owner also never separately argued that the combination of Nason and Yurkovic failed to account for the limitations of claim 6. With respect to Nason and Nason and Yurkovic, there is nothing that we could have misapprehended or overlooked with respect to our findings regarding the obviousness of claim 6 for these grounds. Thus, these new arguments regarding Nason and Nason and Yurkovic with respect to claim 6 were waived. See Paper 8, 3 (Scheduling Order) (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”).” slip op. at 9
Claim constructioncites PhillipsPatents in suitUS 8,434,020 - Google, Inc. v. Personal Audio LLCRehearing deniedPTAB · Mar 28, 2017 · IPR2015-00846 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Google's rehearing request and left in place its ruling that claims 1–4, 9, and 13 are unpatentable and claims 5–8, 14–17, 28, and 29 are not unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. STANDARD FOR RECONSIDERATION The party filing a request for rehearing of a final written decision has the burden of showing that the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place at which each matter was previously addressed in its papers during the trial. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner’s argument is unpersuasive. The agreed upon interpretation of the skip back algorithm to which Petitioner refers states: Specifically, this algorithm includes the following steps: (1) if the currently playing audio program file has played for a predetermined amount of time, resetting the playback position to the beginning of the audio program file; and (2) playing the audio program file from its beginning.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“properly before us now, Petitioner’s argument is unpersuasive on its merits. Petitioner’s argument presupposes that it is irrelevant that Inazawa only sets a reference point in time for tracking durations t2 and t3 when the user first presses the back button after playback has started. Inazawa’s system does not react to a first back button press as required by claim 5 because before Inazawa’s first button press, Inazawa does not measure any duration at all. Stated another way, Inazawa’s system always reacts to the initial press of its back button by restarting playback at the beginning of the currently playing track regardless of when that initial button press occurs. Ex. 1009, 6:17–60. Petitioner’s expert, Dr. Walker agrees as he explains in the following testimony: When the program selecting key 11 is initially manipulated (producing the signal Ts illustrated in Fig. 2A), a reverse program selection mode is entered where: 1) a timer is started (duration of t1 in Fig. 2B); and 2) a skip to the beginning of the current audio program (identified at address N) is performed that includes moving the optical head to the area according to address N (the beginning of the current audio program) and playing the audio program therefrom. * * * Using the program selecting key 11 once again while the program is playing and within the duration t3, would cause a skip backward to the beginning of the preceding program identified at address N-1, the previous track. But manipulating the program selecting key 11 when the duration t3 has expired would cause a skip to the beginning of the current audio program identified at address N, the current track. Ex. 1002 ¶¶ 112–13 (citing Ex. 1009, 6:17–7:56) (internal citations omitted) (emphasis added). Essentially, Dr. Walker explains that Inazawa does not measure any durations of time until after a skip back button is pressed and that the first press of a back button always restarts playback from the beginning of the currently selected audio program. 1. Claim 5 Claim 5 requires monitoring the duration of playback from the beginning of playback and comparing that duration to a predetermined amount of time to evaluate how to respond to every issuance of a “skip backward program selection command.” Inazawa fails to meet this requirement for its first press of a back button, and meeting the requirement in connection with the second of two consecutive presses of a back button is insufficient to meet the claimed skip back algorithm.” slip op. at 12
Claim construction§ 103 obviousnessPatents in suitUS 7,509,178
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.