• Disney Media & Entertainment Distribution LLC v. Digital Media Technology Holdings, LLCAll claims unpatentable
  PTAB · Aug 25, 2025 · IPR2024-00736 · APJ Lisa A Murray · IPR · Final written decision

  Claims 1, 4–7, and 9 are unpatentable as obvious over Garfinkle and Kosten; claim 11 is unpatentable as obvious over Garfinkle, Kosten, and Allen.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedPetitioner expert discountedGranted

    “Our reviewing court has held that if a declarant fails to qualify as a person of ordinary skill in the art, then that person’s testimony regarding the knowledge or motivations of one of ordinary skill in the art is irrelevant as a matter of law. Kyocera Senco Indus. Tools Inc. v. International Trade Comm’n, 22 F.4th 1369, 1377–78 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.”). Mr. Daniels’ declaration consists of an analysis of the cited prior art in comparison to the challenged claims and a discussion of whether there would have been a 2 The motion does not seek to exclude the declaration of the named inventor of the ’725 patent, Nick Stiliadis. See Ex. 2109 (Stiliadis Declaration). motivation to combine the prior art. Ex. 2121 ¶¶ 4–20. Mr. Tulchin’s declaration addresses claim construction issues. Ex. 2131 ¶¶ 5–35. Each declarant, therefore, addresses issues that must be considered from the vantage point of a POSITA at the time of the invention, meaning a person with the level of ordinary skill defined in Section II.E.1 above. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claim construction); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (obviousness). If Mr. Daniels and Mr. Tulchin do not qualify as POSITAs, as Petitioner alleges, then their opinion testimony is inadmissible under Federal Rules of Evidence 702 (Testimony by Expert Witnesses). We find that there is insufficient evidence in the record to establish that Mr. Daniels qualifies as a POSITA in relation to the ’725 patent. Mr. Daniels has an undergraduate degree in engineering physics in addition to a law degree. Ex. 2121 ¶ 2. His declaration, however, does not establish that he also has “one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent.” See Section II.E.1 above. Mr. Daniels characterizes his non-legal work experience as follows: The rest of my professional career has been spent working in my own companies in the research, development and prototyping/commercialization of a number of different technologies, principally including fishing rod technology, digital video file transport, storage and processing, LED-based light-emitting tapes, drone control systems, wearable medical related electronic devices and breath-based diagnostic devices. Ex. 2121 ¶ 3; see also Ex. 1023, 99 (Daniels Deposition) (describing work on “a suite of interactive television innovations,” including “the first working pause button”). None of the projects identified appears to relate to “marketing and distribution of multimedia material over a computer network.” Patent Owner argues that Mr. Daniels “was involved (at the time of the filing of the application which matured into the ’725 patent) in making inventions, that dealt with interactive television, video pause buttons and video file provision over the Internet.” Sur-Reply Br. 6. However, neither Mr. Daniels’ declaration nor his deposition testimony assert that he ever worked on “video file provision over the Internet,” let alone that he did so for one year or more. See Ex. 2121 ¶ 3; Ex. 1023, 98–100. We find that the evidence in the record is not sufficient for us to conclude that Mr. Daniels qualifies as one of ordinary skill in the art. We further find a lack of evidence establishing that Mr. Tulchin qualifies” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In our Decision on Institution, we adopted the following definition of the level of skill for one of ordinary skill in the art: “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related field plus one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent.” Dec. 9. Patent Owner’s proposed definition differs from the Board’s only in that it adds a Bachelor of Science in engineering physics to the list of degrees that one of ordinary skill in the art might possess. See id. We view engineering physics as being related to the fields of electrical engineering, computer engineering, and computer science. Accordingly, following a review of the full record, we view Patent Owner’s proposed definition in its Response as consistent with the ’725 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaning

    “When interpreting the meaning of a claim, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner has, briefly, proposed six claim terms for construction: exhibition; exhibitor; broadcast exhibitor; distribution; marketing; and storing. PO Resp. 10. The Petition states that “[t]o resolve the grounds presented herein, Petitioner does not believe that any term requires explicit construction.” Pet. 12. We see no reason why “exhibition” and “exhibitor” should be understood as having a meaning as narrow as Patent Owner proposes. “Exhibition” and “exhibitor” encompass more than just a showing by “one in the exhibition business” because the specification of the ’725 patent identifies certain “exhibitors” that are not “in the exhibition business”: e.g., a high school, libraries, and other non-profit organizations. Ex. 1001, 12:38–41 (“schools, libraries, and other non-profit organizations”), Fig. 1 (“high school”). The plain and ordinary meaning of “exhibitors” is at least broad enough to encompass the types of exhibitors identified in the specification: movie theaters, television stations, satellite television operators, cable television operators, and non-profit organizations such as high schools. Ex. 1001, 4:20–22, Fig. 1. We further determine that some of these exhibitor types, including at least satellite and cable television operators, are “broadcast exhibitors.” Moreover, we find that the plain and ordinary meaning of the term “distribution” is not so narrow as to be limited to “the business of marketing films and providing copies to venues,” as Patent Owner proposes. See PO Resp. 10 (emphasis added). The claimed invention is a “method of marketing and distributing multimedia,” which is not limited to films. We agree with Petitioner that the term is at least broad enough to encompass distribution of any type of multimedia to any type of exhibitor contemplated in the specification. See Ex. 1001, 1:20–25 (multimedia types); Reply Br. 6. Similarly, the plain and ordinary meanings of “marketing” and “storing” are not limited to Patent Owner’s specific examples: interesting individuals in seeing a film and saving to non-volatile storage, respectively. See PO Resp. 10; Tr. at 57:3–7. The invention is directed to marketing and distributing multimedia, not just films, Ex. 1001, 16:21, and while the Specification refers to storing multimedia on “hard drives,” id. at 4:35–37, 4:44–52, there is nothing in the Specification, claims, or prosecution history that would limit storage only to hard drives or other non-volatile storage. The intrinsic evidence suggests that the proper construction of each” slip op. at 14

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

    “Petitioner contends that a person of ordinary skill in the art would have been motivated to use Garfinkle’s video distribution system to implement Kosten’s distribution method to achieve the improvements described therein, such as: access to a large number of video products and advertising materials available at a centralized location (Ex-1007, 54; Ex-1005, 1:42–49, 1:54–2:12), improved advertising capabilities (Ex-1007, 54; Ex-1005, 1:42–49, 1:54–2:12), and improved distribution processes resulting in lower shipping and handling costs and labor intensity, improved security against piracy, wider and more flexible distribution capabilities, cost reductions for movie theaters, increased control over time and locations of exhibitions by studios and distributors, an ability to scale up or down distribution based on success in theaters, and an ability to track and monitor sales and marketing data (Ex-1007, 52, 54). Pet. 14 (citing Dystar Textilfarben v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006) (A motivation to combine exists when the “improvement” results in a product or process that is “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”)). Petitioner further asserts that such a person would have had a reasonable expectation of success in achieving the objective of efficient content distribution through the proposed combination of Garfinkle and Kosten with no change in their respective functions because: (1) both are “from the same field and address the same well-known issues”; and (2) both references purport to achieve this objective in similar and predictable ways, “such as using the well-known teachings of digitizing content, correlating multimedia and associated advertising materials, and connecting multiple user sites to the central station through a public communications system.” Id. at 13, 16–17 (internal citations omitted) (citing Ex. 1005, 2:58–3:5, 3:32–49, 4:37–39; Ex. 1007, 54); Ex. 1002 ¶ 68. Patent Owner contends that there would have been no motivation to combine Kosten and Garfinkle because each represents a “complete solution[] to different file transport modes, Kosten involving simple file transmission to a theater and billboards, and Garfinkle involving file transmission to a [video-on-demand] user. Neither has a problem which is addressed by the other.” PO Resp. 33. Petitioner argues, however, and we agree, that “(1) a known technique can provide motivation to combine and (2) a known technique does not need to improve upon the primary reference—it just must be a ‘suitable option.’” Reply Br. 21 (citing Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023)). Thus, it does not matter that Kosten and Garfinkle each represent a complete and functional solution to digitally transporting media files. If the references in the combination address a known problem, such as issues with multimedia distribution, see Pet. 13–14, and the proposed combination is a suitable solution, then there would have been a motivation to combine the two references. Moreover, Petitioner persuasively argues that by combining Kosten and Garfinkle, one of ordinary skill in the art would have been able to achieve benefits such as lower shipping and handling costs, improved security against piracy, wider and more flexible distribution capabilities, an ability to more easily scale distribution up or down as needed, among other benefits. Pet. 14. We find that these benefits would have provided a sufficient motivation to combine Garfinkle’s technical implementation of a distribution process for large multimedia files with Kosten’s proposed business application, “beaming” films directly to theaters via satellite. Patent Owner’s arguments to the contrary are without merit.” slip op. at 21

  Patent outcomesUS 7,574,725 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,574,725
• Apple Inc. / Google LLC v. Spacetime3d, Inc.All claims unpatentable
  PTAB · Jul 2, 2024 · IPR2023-00344 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over the listed combinations of Anthony, Hanggie, Matthews, and Robertson.

  RulingsFinal written decision

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

    “The Board instituted an inter partes review of the challenged claims pursuant to 35 U.S.C. § 314. Paper 11 (“Dec.”). We joined Google LLC as a party to the proceeding (collectively, with Apple Inc., “Petitioner”) based on a petition and motion for joinder filed in IPR2023-00578. Paper 14.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “1 Google LLC, which filed a petition in IPR2023-00578, has been joined as a petitioner in this proceeding. See Paper 14, 8.” slip op. at 1

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

    “1. “3D space” and “two-dimensional (2D) space” The parties agree that the claim terms “3D space” and “two-” slip op. at 12

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

    “use of items in 2D space and difficulties in finding files, this argument is based on Anthony’s prior art discussion offered to identify the need for improvements that are solved by its 3D invention. See Ex. 1007 ¶¶ 6, 8. But the issue identified as the problem with 2D items, that is, difficulties in finding 2D files, is not at issue in the combination of the prior art that Petitioner proposes. As discussed, in the combination that Petitioner asserts, with the selection of a maximize button on a 3D window, the window would be displayed in 2D and would occupy all or most parts of the screen—so in that combination, difficulties in finding the 2D files would not be an issue. Pet. 57 (citing Ex. 1003 ¶ 111). Further, Petitioner offers the advantages that this presentation in 2D space would conserve power and allow certain users to interact with an application in a 2D environment. Ex. 1003 ¶¶ 66, 69. Accordingly, we credit Dr. Fuchs’s testimony that Petitioner’s proposed “specific experience [of the combination] would not deter a user from replacing images in 3D space with an object in 2D space.” Ex. 1033 ¶ 48. We also do not find persuasive Patent Owner’s argument that Anthony’s approach is different from the claimed invention because its method for” slip op. at 65

  Patent outcomesUS 9,696,868 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,696,868
• Metacluster LT, Uab v. Bright Data Ltd.Other
  PTAB · Mar 14, 2024 · PGR2022-00061 · APJ Thomas L Giannetti · PGR · Final written decision

  The Board granted Patent Owner’s non-contingent motion to amend, cancelling claims 1–34 and replacing them with substitute claims 35–66 supported by the written description.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “complies with the legal requirements set forth in 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221. Lectrosonics, Paper 15 at 4, 7–8. Specifically, Patent Owner must show that the amendments do not enlarge the scope of the claims or introduce “new matter.” See 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii)). Lectrosonics describes “new matter” as follows:” slip op. at 4

  • 112 supportGranted

    “description support for the proposed substitute claims. See 35 U.S.C. § 326(a)(9); 37 C.F.R. § 42.221; Lectrosonics, Paper 15 at 7–8. The written description test is met when the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 5

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

    “We disagree with this argument because it is not consistent with the ’953 patent specification or the plain meaning of “replace.” Neither party requested a special construction of the term “replace.” We see no merit in Petitioner’s contention that the plain meaning of “replace” in Figure 32 does not require removal of the device being replaced. The contention that the plain meaning of “replace” does not require “removing” was explored with Petitioner’s counsel at the oral argument: THE BOARD: If you replace a player in a football game or baseball game, a new player goes in and replaces that player. You don't add a 12th, a 12th player or a 10th player to a baseball team. You replace the player that’s there with a different player. Isn’t that what replacement is all about? COUNSEL FOR PETITIONER: Your Honor, in that context, it absolutely is. Because there’s no other way to understand that. You know, but we’re not talking about baseball or people here obviously. Hearing Tr. 18:23–19:3 (emphasis added).” slip op. at 15

  Claim construction
  Patents in suitUS 11,349,953
• Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution denied
  PTAB · Jan 9, 2024 · IPR2023-01129 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Meta did not show a reasonable likelihood that claims 29, 31–44 were obvious over the asserted combinations.

  RulingsInstitution decision

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

    “information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, and for the reasons explained below, we determine Petitioner has not shown that there is a 1 Petitioner identifies itself, Meta Platforms, Inc., as the real party-in-interest. Pet. 93. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 7, 2. reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny institution of an inter partes review of claims 29 and 31–44 in the ’611 patent on all challenges included in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 14; Pet. 7. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 13

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

    “Petitioner contends that “[n]o formal claim constructions are necessary.” Pet. 7. Patent Owner proposes a claim construction for the claim 1 term of “forming a filter” and “filter” which are used in claims 29 and 44. Prelim. Resp. 12. As discussed below, we determine that Petitioner has not met its burden on the merits and, because the construction of these terms is not relevant to that determination, we need not address the construction of the terms that Patent Owner proposes for construction.” slip op. at 14

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

    “a. Claim 29 We determine that Petitioner has failed to meet its burden to show a reasonable likelihood that Avendano ’880 and Hou would have rendered claim 29 obvious. This determination is based on the evidence and argument presented for limitation [29b], so we solely address this issue below.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,326,611
• Meta Platforms, Inc. v. Jawbone Innovations, LLCInstituted
  PTAB · Jan 9, 2024 · IPR2023-01128 · APJ Sheila F Mcshane · IPR · Institution

  The Board instituted IPR of claims 1, 2, and 5–28 on all petitioned 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

    “information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, and for the reasons 1 Petitioner identifies itself, Meta Platforms, Inc., as the real party-in-interest. Pet. 97. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 7, 2. explained below, we determine Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 2, and 5–28 in the ’611 patent on all challenges included in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “seeking joinder as a party in the Amazon IPR and consolidation with the Amazon IPR. Paper 2, 1. In August 2023, the Board terminated the Amazon IPR in view of representations by Amazon and Patent Owner that they had settled their dispute in the Amazon IPR and related district court litigation. IPR2023-00286, Paper 16, 2. Subsequently, in September 2023, Petitioner filed an Unopposed Motion to Withdraw the Motion for Joinder, stating that “in view of the Board’s Termination Order in the Amazon IPR, Petitioner should be permitted to withdraw its Joinder Motion.” Paper 9, 2. Based on the foregoing, we grant Petitioner’s Unopposed Motion to Withdraw the Motion for Joinder, as the underlying Motion for Joinder is moot in view of the Amazon IPR termination.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “approximately three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 13; Pet. 6–7. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 13

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

    “that filter,” based on the ’611 patent Specification’s disclosure that β(z) “describes the relationship between O and calibrated O for speech.” Prelim. Resp. 11; Prelim. Sur-Reply 1; Ex. 1001, 5:31–32. We agree with Patent Owner that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d at 1316. However, “[t]o act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “the specification may reveal an intentional disclaimer, or disavowal, of claim scope,” and it is the inventor’s disavowal that is dispositive of the claim construction. Phillips, 415 F.3d at 1316; see also Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (“To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’”)). Furthermore, it is impermissible to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Our view, at this juncture, is that the Specification does not indicate that there is an intended “special definition” for the term “filter that describes a relationship for speech between the first physical microphone and the second physical microphone.” Moreover, the Specification does not contain an express any disavowal of the scope of the claim term to limit the scope of the term to Patent Owner’s relied-upon citation to the disclosure relating to β(z). See Ex. 1001, 5:31–32. Accordingly, on this record, in the absence of a special definition of the term, we decline to import limitations into the claim term and read in the β(z) embodiment only into the term.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,326,611
• Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution denied
  PTAB · Aug 10, 2023 · IPR2023-00431 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution on both §103 grounds because the petition did not show a reasonable likelihood that the challenged claims required priority assignment and comparison.

  RulingsInstitution decision

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

    “inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. For the reasons set forth below, and pursuant to 35 U.S.C. § 314, we do not institute inter partes review of claims 1–4, 8–11, and 13–16 of the ’787 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree in computer science (or a similar degree) with two years of work experience in developing software, including at least some experience with storage, synchronization, and human-computer interaction technologies.” Pet. 6 (citing Ex. 1028 ¶¶ 17, 21). Patent Owner does not 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to § 103 that became effective on March 16, 2013. Because the ’787 patent claims priority, through a continuation application, to a provisional application filed before March 16, 2013, and neither party has argued that the provisions of the AIA apply at this time, we apply the pre-AIA versions of the statutory bases for unpatentability. See Ex. 1007, codes (60), (63). 3 U.S. Publication No. 2007/0174246 A1, published July 26, 2007 (Ex. 1016). 4 U.S. Publication No. 2005/0091289 A1, published April 28, 2005 (Ex. 1020). 5 U.S. Publication No. 2006/0190506 A1, published April 24, 2006 (Ex. 1019). 6 U.S. Patent No. 7,035,847 B2, filed March 15, 2002 (Ex. 1025). 7 U.S. Publication No. 2005/0120082 A1, published June 2, 2005 (Ex. 1026). proposed definition. See generally Prelim. Resp. At this juncture, we determine that the qualifications proposed by Petitioner for an ordinarily skilled artisan are consistent with the level of skill reflected in the Specification and in the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

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

    “B. Claim Construction Neither party requests that we expressly construe any claim term. Pet. 6; see generally, Prelim. Resp. At this juncture, we determine that we do not need to expressly construe any claim term for this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We do not find that the Petition presents sufficient reasoning to support why a person of skill in the art would modify Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings. Shappell and Rao simply teach that metadata is sent first and content or raw data is sent second. Petitioner contends that because the metadata is known to usually contain less data than a file and the updated version is newer, Sigurdsson’s priority algorithm should be reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 23–24; Ex. 1028 ¶ 177. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Pet. 23; Ex. 1028 ¶ 177. There is no explanation provided in the Petition, however, as to why a person of ordinary skill in the art would opt to modify Sigurdsson to assign and compare priorities by reconfiguring the priority algorithm of Sigurdsson when there is the simpler way of using software to simply send metadata first and content second as taught in Shappell/Rao. Absent explanation in the Sigurdsson’s priority algorithm to assign and compare priorities rather than employing the simpler method taught in Shappell/Rao of just sending metadata first, the Petition lacks rational underpinning.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,642,787
• Snap Inc. / Facebook, Inc. et al. v. Palo Alto Research Center LLCAll claims unpatentable
  PTAB · Mar 24, 2023 · IPR2021-01294 · APJ Sheila F Mcshane · IPR · Final written decision

  The Board held all challenged claims 1–25 unpatentable under the asserted obviousness grounds and denied Patent Owner’s contingent motions to amend.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Ordinary Skill in the Art Snap proposes that a person of ordinary skill in the art at the time of the ’599 patent would have possessed “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of content presentation and context-based systems/processes.” Snap Pet. 3 (citing Snap IPR, Ex. 1002 ¶¶ 30–32); Snap IPR, Ex. 1022 ¶ 32. Snap further asserts that additional “education can supplement practical experience and vice versa.” Id. In the Decision on Institution, we determined that Snap’s proposed description of the qualifications of a person of ordinary skill in the art aligned with the technology and claims of the ’599 patent. Snap Inst. Dec. 6–7. For this proceeding, Patent Owner and Dr. Martin apply this level of skill in the art. Snap PO Resp. 11–12; Snap IPR, Ex. 2003 ¶¶ 48–50. Accordingly, for the reasons given in the Decision on Institution, we adopt Snap’s proposed level of ordinary skill in the art. Snap Inst. Dec. 6–7.” slip op. at 11

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

    “Dr. Martin also provides consistent testimony on this issue. Snap IPR, Ex. 2003 ¶¶ 81–82. Put simply, the Specification’s disclosure is that the set of rules for multiple content packages includes an expected response, and actions are then performed based on whether an expected response is or is not provided. Moreover, as Dr. Almeroth testifies, neither the claims nor the Specification use the term “unexpected response”—rather the Specification only identifies an “expected response.” Snap IPR, Ex. 1022 ¶ 42. Accordingly, the disclosures in Table 1 and the Specification support Dr. Almeroth’s testimony that a person of ordinary skill would have understood that “the claimed ‘determin[e/ing]’ limitation requires what it plainly recites: ‘determin[e/ing] whether the received response matches the expected response[]’. . . . [i]t does not require an unexpected response not known to the system.” Snap IPR, Ex. 1022 ¶ 51.” slip op. at 18

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

    “time,’ ‘type of location,’ and other contextual information to automatically determine whether users would like to undertake learning activities.” Twitter Pet. Reply 18 (citing Twitter IPR, Ex. 1005, 2 3, 5 (“A check . . . to see if the information from the database corresponds with the location sensor (i.e. a check on whether the learner is really keeping his/her schedule).”), Fig.1; Twitter IPR, Ex. 1025 ¶ 49; Twitter IPR, Ex. 1003 ¶¶ 85, 157–162, 238, 435, 451, 517; Twitter Pet. 20–21). Accordingly, the evidence of record support that Yau teaches that context triggers the display of a content piece, such as an exercise/test/quiz. Patent Owner also argues that Twitter asserts that PALLES’ content piece is “‘exercise[s],’ ‘test[s],’ and/or ‘MP Quiz[zes],’” but also contends that Yau’s “formal assessment” is the claimed content piece. Twitter PO Resp. 32. Patent Owner argues that “Twitter points back to its limitation 12.1 PALLAS evidence for the purported ‘content piece’” and also does not mention Yau for limitation 12.5 and 12.6 and “only conclusorily states that ‘PALLAS in view of Yau renders obvious triggering an exercise/test/quiz.’” Id. Patent Owner’s arguments overlook Twitter’s assertion, with Dr. Turnbull’s supporting testimony, that a person of ordinary skill in the art would have understood that Yau’s formal assessments are “tests with answers for comparing against learner’s responses to assess knowledge/performance/skill (contrasting with ‘un-assessed’ exercises whose responses are unchecked).” Twitter Pet. 43; Twitter IPR, Ex. 1003 ¶ 154. Further, Patent Owner overlooks Petitioner’s assertion that it is implementing PALLAS’s context-triggerbased content display using Yau’s teachings of displaying assessments/questions based on context. Twitter Pet. 43. Patent Owner also asserts that in the PALLAS-Yau combination, Twitter does not explain how a person of ordinary skill in the art would have combined the prior art in the manner Petitioner alleges. Twitter PO Resp. 42. Patent Owner argues that “PALLAS says nothing about forcing quizzes, tests, or exercises on its users without the users asking for such exercises,” and a person of skill would understand that the combined system still requires that a student select a learning activity and that PALLAS’s system should be unobtrusive because learners “may have small time slots to engage in learning.” Id. (citing Twitter IPR, Ex. 2013 ¶ 168; Twitter IPR, Ex. 1004, 54). Patent Owner further contends that “Twitter’s conclusory, hindsight-driven statements” do not suffice and PALLAS teaches away from the modifications suggested by Twitter. Id. at 42–43 (citing Twitter IPR, Ex. 2013 ¶ 144). Patent Owner argues that because a learner may not have time to complete a test, a person of ordinary skill in the art would not be motivated to change PALLAS to trigger exercises/tests/quizzes based on location or time. Id. at 43 (citing Twitter IPR, Ex. 2013 ¶¶ 142–144). The evidence of record does not support Patent Owner’s arguments.” slip op. at 115

  • ScopeMotion to amend, grantedGranted

    “2. Enlarging Scope of Claims Patent Owner asserts that it proposes narrowing limitations in direct response to the grounds of unpatentability involved in this proceeding. See, e.g., Snap Mot. 3–4. Facebook argues Patent Owner is “improperly attempting to enlarge the scope of the original claims.” Facebook Pet. Opp. 1. Facebook asserts, “[i]f ‘an expected response’ means one or more expected responses, therefore, determining whether the received response ‘matches the expected response’ means that the received response must match [all of] the one or more previously-recited expected responses in the content package.” Id. at 3 (emphasis omitted). Facebook then argues “the term ‘predefined response’ is broader than ‘expected response,’” because “an ‘expected response’ does not include any conceivable or possible response; it is a response that is expected.” Id. at 4–5 (emphasis omitted). Twitter argues that “‘predefined response’ is broader than ‘expected response’ because a ‘predefined response’ can include any possible response as long as that response has been somehow defined in advance.” Twitter Pet. Opp. 2. We consider the amendments in view of the claim as a whole. Although the term “one predefined response” may be broader than “an expected response,” we also consider the amended portion “wherein the received response is expected if the received response matches one or more of the at least one predefined response,” and “the received response is unexpected if the received response does not match any of the at least one predefined response.” Unless the response had been predefined within the content package, any “received response” could not be considered “expected” under the claims, and the additional clause requires a match of the response with the predefined response to be deemed “expected.” This equates to an equivalent scope to the original claim. This is consistent with Dr. Martin’s testimony, which we credit, that he is not aware of a situation where the substitute but not original claims are infringed because “[t]he substitute claims would only be satisfied when a ‘predefined response’ in the substitute claims is an ‘expected response’ in the original claims.” Facebook IPR, Ex. 2023 ¶ 59.” slip op. at 136

  Patent outcomesUS 8,489,599 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 8,489,599
• Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Rehearing granted
  PTAB · Oct 19, 2022 · IPR2022-00862 · APJ Sheila F Mcshane · IPR · Rehearing

  On Director remand, the Board instituted inter partes review of claims 1, 2, 6–11, 13, and 15–24 on all petitioned grounds and granted joinder with IPR2021-01493.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Commerce for Intellectual Property and Director of the United States Patent and Trademark Office vacating our previous decision denying institution, remanding for further proceedings, and ordering us to reconsider joinder after reconsidering the decision denying institution. Paper 18 (“Remand Dec.”).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “We consider the Director’s Memorandum, which directs that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13

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

    “PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “As discussed above, we determine that the merits of this action present a compelling unpatentability challenge. Absent joinder, a one-year bar would apply to Petitioner, and, again, the merits presented in this challenge would not be reached by the Board in a final written decision. Under these specific circumstances, we determine joinder is appropriate in the interests of justice. Because NetNut has been dismissed from the 1493 IPR, there are no longer issues of cooperation and duplication that would have to be addressed between petitioners. Additionally, pursuant to 35 U.S.C. § 316(11), maintaining the previously-set trial schedule in the 1493 IPR is not necessary when joinder is granted. See also 37 C.F.R. § 42.100(c). Thus, the schedule will be adjusted in accordance with a Revised Scheduling Order, entered concurrently with this Decision.” slip op. at 37

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,484,510
• Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Rehearing granted
  PTAB · Oct 19, 2022 · IPR2022-00861 · APJ Sheila F Mcshane · IPR · Rehearing

  On remand, the Board instituted review of claims 1, 2, 12, 14, 15, 17–19, and 21–29 on all petitioned grounds and granted joinder with IPR2021-01492.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “General Plastic, and clarified General Plastic by stating that, “[w]here the first-filed petition . . . was discretionarily denied or otherwise was not evaluated on the merits,” a finding favoring discretionary denial under General Plastic’s factors 1–3 is limited to “when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Remand Dec. 5. The Director noted that in this case, the Board had found “no evidence of road-mapping.” Id. at 5 (citing Dec. 13). The Director added that “‘road-mapping’ concerns are minimized when, as in this case, a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those in the previously-filed petition and the later petition is not refined based on lessons learned from later developments.” Id. at 5. The Director agreed with the panel’s finding that General Plastic’s factors 2, 4, and 5 “have limited relevance.” Id. at 6. The Director similarly found factor 7 to “have limited relevance” because the one-year statutory time period may be adjusted for a joined case under 35 U.S.C. § 316(a)(11). Id. (citing Dec. 16). Further, the Director disagreed with the panel’s determination on factor 6 in view of potential inefficiencies, with the Director determining that “the Board’s mission ‘to improve patent quality and restore confidence in the presumption of validity that comes with issued patents’ outweighs the impact on Board resources needed to evaluate the merits of a petition.” Id. In accordance with the evaluation of the factors, the Director found that “the Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Id. The Director remanded the case to the panel for further proceedings, with direction to reconsider the institution decision and joinder. Remand Dec. 7. The Director directed that the panel “consider the Patent Owner’s remaining arguments, including those for discretionary denial under Fintiv and against the merits of the Petitioner’s patentability challenges.” Id.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “We consider the Director’s Memorandum, which directs that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Memorandum, 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Memorandum 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–H. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’319 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13

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

    “On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–H. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’319 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 14

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Petitioner is correct that its previously-filed 1266 IPR was not considered on the merits, and we note that this previous IPR challenged claims of the ’319 patent based on the same primary prior art—Crowds, Border, and MorphMix—as that asserted in the instant action. See Code200, UAB v. Luminati Networks Ltd., IPR2020-01266, Paper 5, 5–6. We agree with Petitioner that Uniloc is distinguishable from this case here because Uniloc addressed a situation after a denial of an earlier petition on the merits. Reply 2; Uniloc, 6. As discussed above, we determine that the merits of this action present a compelling unpatentability challenge. Absent joinder, a one-year bar would apply to Petitioner, and, again, the merits presented in this challenge would not be reached by the Board in a final written decision. Under these specific circumstances, we determine joinder is appropriate in the interests of justice. Because NetNut has been dismissed from the 1492 IPR, there are no longer issues of cooperation and duplication that would have to be addressed between petitioners. Additionally, pursuant to 35 U.S.C. § 316(11), maintaining the previously-set trial schedule in the 1492 IPR is not necessary when joinder is granted. See also 37 C.F.R. § 42.100(c). Thus, the schedule will be adjusted in accordance with a Revised Scheduling Order, entered concurrently with this Decision.” slip op. at 39

  Claim constructionDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,257,319
• Twitter, Inc. v. Palo Alto Research Center Inc.Instituted
  PTAB · Mar 15, 2022 · IPR2021-01398 · APJ Karl D Easthom · IPR · Institution

  The Board instituted IPR on claims 1–18 because the petition showed a reasonable likelihood of prevailing on at least one claim under § 103.

  RulingsInstitution decision

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

    “review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the ’475 patent (December 2002) “would at minimum have a bachelor’s in software, computer, or electrical engineering or computer science with at least two years’ experience in software development, including with respect to web data analysis, or the equivalent.” Pet. 11 (citing Ex. 1003 ¶ 24). Patent Owner presents no proposed qualifications. See generally Prelim. Resp.” slip op. at 6

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

    “Neither party proposes any explicit claim constructions. Pet. 10; see generally Prelim. Resp. At this stage, no need exists to construe a claim term expressly to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “none of the combinations in the Petition were previously presented. Further, there is no overlap between the arguments made during examination and the representations of the prior art in this proceeding. Therefore, with respect to Chen and Cook, the same or substantially the same art or arguments were not previously presented. Further, even if Chen is cumulative to Heer as alleged by Patent Owner, Petitioner demonstrates that the Examiner materially erred for the reasons explained below. As the parties indicate, the Examiner stated as reasons for allowance for the “independent claims,” that “the prior art of record does not teach: combining the multi-modal information for content portions associated and the proximal information for content portions associated with the user path to form a user profile having a unified representation.” See Pet. 85; Prelim. Resp. 26; Ex. 1002, 123. Patent Owner now argues that the primary difference between Heer (or Chen, if, as Patent Owner alleges, it is “cumulative” to Heer) and independent claims 1 and 10 is that the claims require using proximal information in the user profile. See Prelim. Resp. 26. But as discussed above (§ I.E.5), Patent Owner also admits that the asserted prior art at least separately teaches using proximal information and multi-modal information. See Prelim. Resp. 36–37 (arguing that “each” of the prior art references relied upon by Petitioner “relates to using either multi-modal information or proximal information, but not both”). Nevertheless, nothing in the prosecution history, including the Examiner’s reasons for allowance or citation and limited discussion of Heer with respect to dependent claims (Ex. 1002, 78–79, 123), shows that the Examiner was aware that Heer (even if it is cumulative to Chen) taught everything in the independent claims except for combining proximal information as part of the user profile. Also, the prosecution history does not show that Patent Owner informed the Examiner, or that the Examiner was aware, of Patent Owner’s current admission that the prior art “relates to using either multi-modal information or proximal information, but not both.” See Prelim. Resp. 36–37. Petitioner shows that the Examiner did not apply Heer as the primary basis for rejecting independent claims 1 and 10, which Petitioner essentially does here with respect to Chen. See Pet. 84 (arguing that “Heer was relied on, but only for dependent claims 9 and 18”) citing Ex. 1002, 78–79); see Advanced Bionics, Paper 6 at 10–11 & n.10 (reasoning that Becton Dickinson factor c, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” is a material error factor). And Petitioner sufficiently shows that “Chen and Cooke were not previously presented” during prosecution. Pet. 84. As summarized above, Petitioner sufficiently shows that Chen, with Chi and other secondary references, suggests combining multi-modal information with proximal information such as surrounding text associated with links and images wherein Chen specifically teaches flexibly employing all manner of such multi-modal information to aid in assigning users to clusters. See supra § II.E.; Ex. 1004 ¶¶ 16, 18, 22; Advanced Bionics, Paper 6 at 9–11 & n.10 (reasoning that Becton Dickinson factor f, “additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments,” and Becton Dickinson factor e, the extent the Petition shows error, are a material error factors).” slip op. at 36

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,043,475

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.