- Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedSome claims unpatentablePTAB · Feb 6, 2023 · IPR2021-01298 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–29 are unpatentable, principally as obvious over Lee alone, Lee and Glance, or Lee and Smith; claim 30 was not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“of independent claim 1 is either taught or suggested by Lee. We are also persuaded that, an ordinarily skilled artisan would have found it obvious, in view of Lee’s teachings, to arrive at the subject matter recited in claim 1. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Lee.” slip op. at 57
- Strike new argumentNew argument disregardedDecided for petitioner
“arguments in Patent Owner’s Sur-reply that are allegedly untimely (Paper 38), and Patent Owner responded (Paper 39). For the reasons explained below, we agree with Petitioner that the Sur-reply includes untimely new arguments, but we determine that those arguments would not have been persuasive even if they had been properly raised. See infra § II.E.1.b.ii (addressing Lee’s usage history).” slip op. at 3
Patent outcomesUS 10,911,938 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,911,938 - PNC Bank N.A. v. United Services Automobile AssociationAll claims unpatentablePTAB · Jan 20, 2023 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–18 are unpatentable as obvious under the listed combinations of Garcia, Randle, Slater, and additional references.
RulingsFinal written decision- Skill levelOther
“B. The Level of Ordinary Skill in the Art” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“1. “Computing Device” and “Accepting . . .” Limitations The term “computing device” appears only in the preamble of the” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“the user,” which includes the check image as well as recognition data entered by the user (e.g., check amount). Ex. 1103, 10:10–18, 11:7–15; see also id. at 5:14–20, 12:9–11 (cited in Inst. Dec. 42 n.17). Randle similarly indicates that its engine includes OCR software, and specifically, Randle states that its QA considers a “human input amount” and an “OCR amount.” Ex. 1104 ¶¶ 19, 21, 42, 74, Fig. 9B (items 117, 121). Although Randle does not explain how the QA uses these two pieces of data, Slater expressly teaches that these amounts should be compared to identify transactions that require manual review by a customer service operator. Ex. 1105 ¶¶ 22–23, 28. Based on these disclosures, Petitioner’s declarant, Dr. Noble, opines that a person of ordinary skill in the art would have been motivated to (and able to) include Slater’s comparison in the Garcia-Randle system with a reasonable expectation of success. See Ex. 1102 ¶¶ 69–75, 111. In support, Dr. Noble explains that this comparison would improve reliability because “[a]ny discrepancy would mean there was error either in the user input or the image from which the check amount is read,” and he notes that “there would be no reason to capture both OCR and customer-entered versions unless there was a possibility of such discrepancy.” Id. ¶ 72. We credit Dr. Noble’s testimony on these points because it is supported by the cited references. Accordingly, we find that a person of ordinary skill in the art would have been motivated to include Slater’s comparison in the Garcia- Randle system, and that the resulting combination teaches elements 1[h] and 1[i]. As for elements 1[j] and 1[k], Petitioner again points to Garcia’s statement that the financial institution’s computer equipment includes an OCR system for recognizing, verifying, and processing the check image. Pet. 50–51. According to Petitioner, Randle teaches that the payee bank collects the MICR data and, from it, determines a routing number identifying the payor bank. Id. at 51 (citing Ex. 1104 ¶¶ 18–19), 54 (citing Ex. 1104 ¶¶ 18–19, 76, Fig. 11A (item 150); Ex. 1102 ¶ 120). According to Petitioner, a person of ordinary skill in the art would have understood that Randle reads the MICR data “optically” from the check image because “that was a standard method of collecting MICR data from a check image” and because Randle expressly teaches performing an OCR on the check number. Id. at 51 (citing Ex. 1102 ¶ 114; Ex. 1104 ¶ 74). In the alternative, Petitioner contends that an ordinarily skilled artisan would have been motivated to optically read the MICR data because, in the proposed combination, the payee bank only receives an image of the check. Id. at 52–54 (citing Ex. 1102 ¶ 115–118); see also id. at 61–62 (addressing contention that payee bank also includes this component). We find that the Garcia-Randle combination teaches elements 1[j] and 1[k]. As noted above, Garcia teaches using OCR to recognize, verify, and process the check image. E.g., Ex. 1103, 11:7–15. Randle discloses reading the MICR line depicted in the check’s image. Ex. 1104 ¶ 19 (“The deposit bank 4 captures the check and related information by a scan 5 to create an image of the front and back of the check and collects information such as . . . the MICR data.”). We are persuaded that an ordinarily skilled artisan would have been motivated to combine Garcia and Randle so that the MICR line is optically read with an OCR performed by the bank’s computer equipment. In particular, we agree with Petitioner that, in the proposed Garcia-Randle combination, the bank receives an image of a check rather than the physical check itself (see Pet. 52), and Garcia suggests that an OCR system at the bank is used for recognizing and verifying the check’s information. See, e.g., Ex. 1103, 7:18–8:14, 11:7–13. In addition, we credit Dr. Noble’s testimony that optically reading the MICR line “was a well-known and typical way of collecting MICR data from an image of a check,” and we credit his testimony that an ordinarily skilled artisan would have had a reasonable expectation of success in combining Garcia and Randle in this way.41 Ex. 1102 ¶¶ 114–117. Further, we find that a person of ordinary skill in the art would have understood Randle to teach determining a routing number from the MICR line. E.g., Ex. 1104 ¶¶ 18–19, 36, 76; Ex. 1102 ¶ 120. As to element 1[l], Petitioner contends that Randle’s check” slip op. at 62
- ExcludeMotion to exclude, grantedOther
“Accordingly, we dismiss Petitioner’s Motion to Exclude (Paper 58) as” slip op. at 80
Patent outcomesUS 10,621,559 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,621,559 - PNC Bank, N.A. v. United Services Automobile AssociationAll claims unpatentablePTAB · Jan 19, 2023 · IPR2021-01070 · APJ David C Mckone · IPR · Final written decision
Claims 1, 2, 7–10, and 15–17 are unpatentable as obvious over Acharya and Luo.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Skill in the Art Relying on Dr. Mowry’s testimony, Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or equivalent field, and at least two years of prior experience with image processing or scanning 8 The record does not include allegations or evidence of objective indicia of nonobviousness. server,” and that “[a] person with additional education or additional industrial experience could still be of ordinary skill in the art if that additional aspect compensates for a deficit in one of the other aspects of the requirements stated above.” Pet. 19–20 (citing Ex. 1002 ¶ 44). We adopted this level of skill in the Institution Decision. Dec. 38–39. Patent Owner applies this level of skill in its Patent Owner Response. PO Resp. 30. As Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art, we continue to apply this level of skill.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Dr. Mowry testifies that, “[g]iven these difficulties in using handheld devices to capture suitable images, a person of ordinary skill in the art would have been motivated to implement Acharya using the reference lines and capture techniques described in Luo in order to achieve a high likelihood of obtaining images that were suitable for image processing.” Ex. 1002 ¶ 63. According to Dr. Mowry, Luo’s solution is “directly applicable to capturing check images to predictably increase the likelihood of obtaining images that are suitable for” optical character recognition. Id. Dr. Mowry’s testimony is consistent with the express disclosures in Acharya and Luo and, therefore, is credible. Acharya expressly identifies technology that it uses to capture information from documents, namely optical character recognition, and Luo expressly describes a technique designed to reduce projective distortion when capturing an image of a document, such that optical character recognition can be performed more accurately. Dr. Creusere admitted on cross-examination that “correcting geometric distortion will make it easier to perform automatic text recognition.” Ex. 1037, 89:1–2. Petitioner contends that its proposed combination would have amounted to applying a known technique to a known device ready for improvement to yield predictable results. Pet. 32–34; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”); Ex. 1002 ¶ 64 (“Implementing Acharya’s RCT using Luo’s camera system would have simply involved applying a technique that was known to a device that was known and ready for improvement, to yield predictable results.”). We agree. This appears to be a textbook example of using a technique that improved one device to improve a similar device in the same way. As we preliminarily observed in the Institution Decision (Dec. 54), a combination of Acharya and Luo would have been no more than “[t]he combination of familiar elements according to known methods” and, thus, likely obvious because it “does no more than yield predictable results.” KSR, 550 U.S. at 416.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. Gurley, 27 F.3d at 553.” slip op. at 43
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Acharya’s system would have imposed “additional processing overhead and complexity on the customer’s device as compared to the existing manual capture system” and that “[t]his type of processing, especially when done in real-time, was considered computationally-intensive in 2009.” PO Resp. 53 (citing Ex. 2115 ¶ 35). The only evidence Patent Owner offers to support this assertion is the testimony of its expert, who largely copies Patent Owner’s argument and does not identify the basis for the testimony. As such, the testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). We note that Luo describes its technique as implemented on conventional computing equipment on portable devices available prior to 2009 without mention of concerns over processing overhead. Ex. 1004, 8. Patent Owner’s evidence is insufficient to establish that concerns over processing overhead would have dissuaded a skilled artisan from pursuing a combination of Acharya and Luo.” slip op. at 44
Patent outcomesUS 8,699,779 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,699,779 - United Services Automobile Association v. PNC Bank, N.A.All claims unpatentablePTAB · Jan 3, 2023 · IPR2021-01248 · APJ Michael R Zecher · IPR · Final written decision
Claims 1–5 and 7–10 are unpatentable as obvious over Corneil; claims 8–10 are also unpatentable as obvious over Corneil and Abjanic.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. “external system” In the Institution Decision, we preliminary determined that the claim term “external system” did not require a construction because, based on the preliminary record, there was no dispute between the parties as to whether Corneil’s second trading partner 217 teaches this claim term. Dec. on Inst. 8–9. PNC does not maintain its preliminary argument that the claim term “external system” requires construction. See PO Resp. 11–17; PO Sur-reply 2–8. Based the fully developed trial record, there is no readily discernible controversy between the parties that requires us to construe this claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Based on the fully developed trial record, we maintain our preliminary determination that the claim term “secure service router” must be construed consistently across the ’788 patent and the ’786 patent. Dec. on Inst. 9–11 (citing SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015)). As a result, the claim term “secure service router” must “authenticate the data source system” that sends messages or requests because this is recited explicitly in independent claims 1 and 7 of the ’786 patent, but we also adopt certain portions of the “forwarding” aspect of PNC’s newly proposed construction for the embedded phrase “service router.” See id. at 10–11. That is, we construe the claim term “secure service router” as “hardware and/or software that authenticates the data source system prior to forwarding messages or requests.” The “authentication” aspect of our construction finds support in the specification of the ’788 patent, which consistently reinforces that the “secure service router” must authenticate the data source system. Ex. 1001, code (57), 1:54– 59, 6:42–44, 8:3–6.” slip op. at 13
- Prior constructionPrior construction adoptedDecided for petitioner
“Based on the fully developed trial record, PNC fails to articulate clearly its understanding of the plain and ordinary meaning of the claim term “verifying access and transmission rights of the data source system and the external system.” On the one hand, PNC argues in the Patent Owner Response that, “[r]egardless of whether one could use a sender’s Trading Partner Profile to determine that a receiving partner is in the same network and can transmit messages back to the sender, this claim limitation is met only if Corneil actually teaches performing such an action.” PO Resp. 24; see also PO Sur-reply 10 (“USAA’s other arguments . . . fail to provide any evidence that Corneil teaches or suggests verifying the right of a receiving trading partner to transmit a message.”). On the other hand, PNC argues in the Sur-reply that the plain and ordinary meaning of this claim term “does not require verifying that the external system has the right to send to any particular entity, such as the sender.” PO Sur-reply 6. Moreover, PNC fails to persuasively show that either understanding of the claim language is consistent with how a person of ordinary skill in the art would have understood this claim term in view of the intrinsic record. PNC’s contradictory and unsupported arguments, together with its failure to state explicitly what it believes is the plain and ordinary meaning of the claim term “verifying access and transmission rights of the data source system and the external system” beyond simply repeating this claim language, render PNC’s arguments ambiguous and unpersuasive, leaving us with the district court’s claim construction order that provides a reasoned analysis. With this in mind, we see no reason to deviate from the district court’s construction of the claim term “verifying access and transmission rights of the data source system and the external system” as “determining whether the data source has permission to send messages to the external system and whether the external system has permission to receive messages from the data source.” Ex. 1037, 84. We adopt and incorporate by reference the district court’s claim construction analysis, and we do not repeat it in full here. Id. at 82–84. We, however, take this opportunity to provide additional reasoning in support of the district court’s claim construction analysis based on the arguments and evidence presented during trial. To the extent PNC argues for an implicit construction of the embedded phrase “verifying access and transmission rights of the data source system and the external system” that requires determining whether the external system has permission to transmit messages back to the data source system, we do not agree. See PO Resp. 24. It is well-settled that “extraneous” limitations should not be read into a claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). Neither the plain language of independent claim 1 nor the specification of the ’788 patent explicitly requires the external system to transmit a message back to the data source system. Ex. 1001, 14:61–15:9 (claim 1), 4:9–13 (“Accordingly, user registry server 120 may be configured to invoke various routines to authenticate data source systems 104, 108, 112 and/or verify access and transmissions rights of various computer systems and internal and external networks.”), 6:53–56 (stating the same, except limiting it to “various embodiments”). Indeed, independent claim 1 only requires “receiving a message from a data source system” and transmitting “the message to . . . an external system.” Id. at 14:62–65. It is not until dependent claim 8, which depends directly from independent claim 1 and further recites, in relevant part, “receiving a response [from] the external system,” that any claim requires the external system to transmit a response message back to the data source system. Id. at 15:40.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill in the art advanced by each party requires at least a Bachelor of Science degree in electrical engineering, computer/software engineering, computer science, or equivalent. We do not discern a material difference between the industry experiences advanced by either party, nor does either party premise arguments on its own industry experience. For purposes of this Final Written decision, we adopt USAA’s assessment of the level of skill in the art because Dr. Malek’s identification of relevant industry experience applicable to software development and programming in the area of web services, including familiarity with enterprise systems and standard web transport and security protocols, is consistent with the ’788 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under either party’s assessment of the level of skill in the art.” slip op. at 27
Patent outcomesUS 7,949,788 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,949,788 - United Services Automobile Association v. PNC Bank, N.A.All claims unpatentablePTAB · Jan 3, 2023 · IPR2021-01163 · APJ Michael R Zecher · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Corneil and, independently, over the combined teachings of Corneil and Abjanic.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art In determining whether an invention would have been obvious at the time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person having ordinary skill in the art” is a hypothetical construct, from whose vantage point obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. Relying on the testimony of Dr. Malek, USAA argues the following: [a] person of ordinary skill in the art . . . at the time of the alleged invention would have had a Bachelor’s degree in computer science, software engineering, or electrical engineering and two years of experience in software development and programming in the area of web services, including familiarity with enterprise systems and standard web transport and security protocols. This level of skill is approximate, and more experience would compensate for less formal education, and vice versa. Pet. 9 (citation omitted) (citing Ex. 1003 ¶ 53). In its Patent Owner Response, PNC offers essentially the same assessment of the level of skill in the art as USAA, arguing the following:” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Claims 1 and 12 USAA relies on essentially the same arguments and evidence to explain how the teachings of Corneil account for all the limitations of independent claims 1 and 12. Compare Pet. 10–34, with id. at 64–66. Our obviousness analysis below only focuses on the limitations of independent claim 1, but our obviousness analysis equally applies to independent claim 12. The preamble of independent claim 1 recites “[a] system, comprising.” Ex. 1001, 15:9. To the extent the preamble should be treated as limiting, USAA contends that Corneil teaches the feature recited in the preamble because Figure 2 of Corneil illustrates a system having all the elements of independent claim 1, including a “web services hub,” a “secure service router,” and multiple “data source systems” and “external systems.” Pet. 10. Each of these elements is illustrated in the annotated version of Figure 2 of Corneil, reproduced below. Id. Based on the annotated version of Figure 2, reproduced above, which illustrates a transaction processing system for electronic messages, USAA argues that “trading partner 217” (in red) represents a collection of “distinct, plural trading partners [who] communicate with each other by routing electronic documents through the managed network.” Id. at 10 (quoting Ex. 1004 ¶ 23) (alteration in original). More specifically, USAA argues that first trading partner 217 is the “data source system” (in red) that sends a message via “web services hub” (in green) to second trading partner 217 that is the “external system” (also in red). Id. at 10–11 (citing Ex. 1004 ¶ 23; Ex. 1003 ¶ 83). Next, independent claim 1 recites “a web services hub comprised of hardware, the hardware comprising at least one non-transitory memory connected to at least one processor.” Ex. 1001, 15:10–12. USAA contends that Corneil teaches this limitation because it discloses that the “web services hub” (in green above) includes, among other things, queue processor 203, message routing engine 204, and translation engine 208. Pet. 11 (citing Ex. 1004, code (57), ¶ 31). USAA then argues that Corneil’s “web services hub” includes at least one processor that executes software processes, and the software executing on the processor stores data, which means Corneil’s system necessarily includes at least one non-transitory memory connected to the processor. Id. at 12–13 (citing Ex. 1004 ¶¶ 25, 26, 32, Fig. 2, claims 15 and 16; Ex. 1003 ¶ 85).” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“2. Claims 1, 7, and 12 Apart from one exception, USAA relies on essentially the same arguments and evidence for independent claims 1 and 7 it identifies above in the obviousness ground based on the teachings of Corneil alone to explain how the combined teachings of Corneil and Abjanic account for all the limitations of independent claims 1, 7, and 12. See Pet. 9–34, 57–62, 64–66. Each of independent claims 1 and 7 recites, in relevant part: the web services hub to receive a response to the transformed request from the external system after the external system has completed processing of the transformed request and transmitted a response to the transformed request, the web services hub to parse the response to the transformed request for the data source system and transform the response to the transformed request into a transformed response to send to the data source system such that the transformed response is understandable and processable by the data source system. Ex. 1001, 15:28–37, 16:28–37. Independent clam 12 recites similar limitations. Id. at 17:19–33. USAA contends that, to the extent that Corneil does not teach the “response” steps required by independent claims 1, 7, and 12, Abjanic teaches these limitations because it discloses transformer 715 that parses and transforms, if necessary, requests and responses into “a format that is compatible with the receiving node.” Pet. 26 (quoting Ex. 1005 ¶ 75) (citing Ex. 1005 ¶ 74). USAA argues that Abjanic provides a specific example of a business transaction between “Bookstore.com” and “market.com,” where “Bookstore.com” understands and processes messages in “format A” and “market.com” understands and processes messages in “format B.” Id. at 28 (quoting Ex. 1005 ¶ 96) (citing Ex. 1003 ¶ 104). USAA argues that Abjanic’s system uses “tags” and other information to identify messages that need to be transformed so that “Bookstore.com” and “market.com” can communicate. See id. (quoting Ex. 1005 ¶ 98). Turning to rationale to combine, USAA contends that, when considering the teachings of Abjanic that it identifies above, a person of ordinary skill in the art would have been motivated “to use Corneil’s [transaction processing] system to receive a response from the external system after it has completed processing a transformed request and to parse and transform that response into a format understandable and processable by the data source system to which the response is to be transmitted.” Pet. 28– 29 (citing Ex. 1003 ¶ 105). According to USAA, “[t]his would have allowed a [person of ordinary skill in the art] to implement a business transaction, such as a purchase order request and response accepting the order, while taking advantage of the translation and efficiency features of Corneil’s web services hub.” Id. at 29. USAA also argues that there would have been a reasonable expectation of success in “[u]sing Corneil’s [transaction processing] system for both requests and responses between trading partners,” as taught by Abjanic, because it would provide certain benefits, such as “cost savings and efficiency resulting from eliminating point-to-point integrations and improved interoperability between otherwise incompatible systems, with no drawback that would have discouraged a [person of ordinary skill in the art] from implementing the claimed functionality.” Id. at 30 (citing Ex. 1003 ¶ 106).” slip op. at 72
Patent outcomesUS 8,868,786 unpatentable§ 103 obviousnesscites KSRPatents in suitUS 8,868,786 - PTAB · Dec 27, 2022 · IPR2022-01147 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted reference combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least a bachelor of science in electrical engineering, computer engineering, computer science, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 6–7. To determine whether to institute, we also apply Petitioner’s proposed definition.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Expert testimonyPetitioner expert discountedOther
“The closest that Petitioner comes to addressing the recited VAD with Weinstein is by stating that “[a] POSITA would have understood that ‘there is no coupling of the desired signal into the reference sensor, i.e., when the actual coupling system H21 is zero,’ occurs when the desired signal, e.g., speech, is absent.” Id. at 25 (citing Ex. 1003 ¶ 92). Notably, the only support for this conclusion is the Kenny Declaration, which simply repeats this statement verbatim without any citation to the evidence of record. Compare id., with Ex. 1003 ¶ 92. We agree with Patent Owner that the “conclusion is wholly unsupported by evidence.” PO Resp. 12. And “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). But, even assuming Petitioner’s conclusion is correct and crediting Dr. Kenny’s testimony, the Petition does not explain sufficiently how a VAD signal in the Hietanen-Burnett combination is related to the period in which speech is alleged to be absent in Weinstein. See Pet. 25.” slip op. at 12
Claim construction§ 103 obviousnessPatents in suitUS 8,019,091 - PTAB · Dec 2, 2022 · IPR2022-00951 · APJ Stacey G White · IPR · Institution
Instituted review of claims 1–11 on all asserted §103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’240 patent on all of the asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 We apply the pre-AIA version of 35 U.S.C. § 103 because the claims at issue have an effective filing date prior to March 16, 2013, the effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). See Ex. 1001, code (22). 2 Petitioner does not list claim 1 in its table on page 3, but Petitioner provides argument as to claim 1 in its discussion of the ground. See Pet. 56– 57. 3 Petitioner does not list claims 1and 4 in its table on page 3, but Petitioner provides argument as to claims 1 and 4 in its discussion of the ground. See Pet. 73. 4 Petitioner argues that the Fintiv factors weigh against discretionary denial. Pet. 77–78; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential). Because Patent Owner does not argue for discretionary denial, we see no need to consider the issue further.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“educational level of active workers in the field.” Best Med. Int'l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quotation omitted). The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The specification of the ’240 patent describes its technical field as relating to “‘secure documents’ …having RFID (radio frequency identification) chips …operating in contactless mode (ISO 14443) including dual interface (‘DI’, or ‘DIF’) cards which can also operate in contact mode (ISO 7816-2), and more particularly to improving coupling between components within the smart card …and consequent improvements in interacting with external RFID readers.” Ex. 1001, 1:24–34. The specification discusses both inductive and capacitive coupling. See e.g., id. at 6:55–58. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 20035, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, on the record currently before us, we are not persuaded that the level of 5 Our citations are to the native page numbers in the document and not Patent Owner’s numbering. devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1– 2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“B. Dr. van der Weide’s Level of Experience Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, because he “lacks relevant experience to provide opinions through the lens of a [person having ordinary skill in the art].” Prelim. Resp. 27–28 (citing Ex. 2001 ¶¶ 71–72. According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 27. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Based on the current record, Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,165,240 - Google LLC v. Jawbone Innovations, LLCInstitution deniedPTAB · Nov 28, 2022 · IPR2022-00888 · APJ Steven M Amundson · IPR · Institution
The Board denied institution: Petitioner failed to show a reasonable likelihood of unpatentability for claims 1–13, and trying claim 42 alone would be inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“institution that Elko discloses a “first virtual microphone” according to claim 1 and Petitioner does not rely on Boll or Buck for teaching a “first virtual microphone” according to claim 1, Petitioner does not establish sufficiently for purposes of institution that the combined disclosures in Elko, Boll, and Buck teach claim 1’s subject matter. See Pet. 23–25; Prelim. Reply 1–2; Ex. 1007 ¶¶ 55–58; supra § IV.D.4(a). Hence, Petitioner does not demonstrate a reasonable likelihood of prevailing in proving claim 1 unpatentable under § 103(a) as obvious over Elko, Boll, and Buck.” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“for purposes of institution that Elko discloses a “first virtual microphone” according to claim 1. See Pet. 23–25, 36–38; Prelim. Reply 1–2; Ex. 1007 ¶¶ 55–58, 81–82. For forming the “first virtual microphone” and the “second virtual microphone” claim 1 recites three different signals: “a first signal,” “a second signal,” and “a first intermediate signal” formed by applying a filter to “the first signal.” Ex. 1001, 37:5–9, 37:16–19. “Different claim terms are presumed to have different meanings.” Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008); see Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,” slip op. at 30
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“for purposes of institution that Elko discloses a “first virtual microphone” according to claim 1. See Pet. 23–25, 36–38; Prelim. Reply 1–2; Ex. 1007 ¶¶ 55–58, 81–82. For forming the “first virtual microphone” and the “second virtual microphone” claim 1 recites three different signals: “a first signal,” “a second signal,” and “a first intermediate signal” formed by applying a filter to “the first signal.” Ex. 1001, 37:5–9, 37:16–19. “Different claim terms are presumed to have different meanings.” Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008); see Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,” slip op. at 30
- Other 314aInstitution denied discretionary otherDenied
“the ’213 patent. Pet. 3, 23–83. As discussed above, Petitioner fails to satisfy the “reasonable likelihood” institution standard for four of the five challenges and thirteen of the fourteen challenged claims. See supra §§ IV.D–IV.E. At best, Petitioner satisfies the “reasonable likelihood” institution standard for only one of the five challenges and only one of the 6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. fourteen challenged claims. See supra § IV.F. These circumstances weigh in favor of exercising our discretion under § 314(a) to deny institution. See, e.g., Netscout Sys., Inc. v. Longhorn HD LLC, IPR2021-01258, Paper 11 at 23–24 (PTAB Feb. 10, 2022) (exercising discretion to deny institution); Sling TV L.L.C. v. Uniloc 2017 LLC, IPR2019-01391, Paper 7 at 25–27 (PTAB Feb. 25, 2020) (exercising discretion to deny institution).” slip op. at 38
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,321,213 - Meta Platforms, Inc. v. Wrinkl, Inc.All claims unpatentablePTAB · Nov 23, 2022 · IPR2021-00883 · APJ Neil T Powell · IPR · Final written decision
Claims 1–9, 11–20, 22–28, and 30 are unpatentable as obvious over Ji, Sarafa, and Oh.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill identified by Petitioner. Additionally, we agree with Patent Owner that the level of skill it identifies differs very little from Petitioner’s proposed level of skill, and our analysis below would be the same under either party’s identified level of skill.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“PO Resp. 67. As with the dispute regarding Petitioner’s proposed combination of Sarafa with Ji, Patent Owner argues that a person of ordinary skill in the art would understand that only Ji’s message operation bar approach makes sense for adding another feature, such as for adding features from Oh. For the reasons discussed above in Section III.C.4.b).(4).(b), Petitioner persuades us otherwise. c) Conclusion Regarding Claims 1–9, 11–20, 22–28, and 30 Petitioner supports its position that claims 1–9, 11–20, 22–28, and 30 would have been obvious over Ji, Sarafa, Oh by explaining in detail its position that it would have been obvious to combine Ji’s, Sarafa’s, and Oh’s teachings, as well as its position that, in combination, the references teach every limitation of independent claims claims 1–9, 11–20, 22–28, and 30. Pet. 14–72. Having reviewed all of the parties’ arguments and evidence, we find Petitioner has demonstrated by a preponderance of the evidence that claims 1–9, 11–20, 22–28, and 30 of the ’192 patent would have been obvious over Ji, Sarafa, and Oh. Pet. 4–72; PO Resp. 6–69; Pet. Reply 1–25; PO Sur-reply 4–25.” slip op. at 80
Patent outcomesUS 10,728,192 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,728,192 - Meta Platforms, Inc. v. Wrinkl, Inc.All claims unpatentablePTAB · Nov 23, 2022 · IPR2021-00882 · APJ Neil T Powell · IPR · Final written decision
Claims 1–23 are unpatentable as obvious over Ji and Sarafa; the Board did not reach the Ji, Sarafa, and Oh ground.
RulingsFinal written decision- Strike new argumentNew argument consideredMixed
“We do not agree with Patent Owner that the arguments in sub-section 2 on pages 8–9 of Petitioner’s Reply are improper new arguments. Rather, we find these arguments properly elaborate on the Petition, in response to the proposed construction of “link” in Patent Owner’s Response. Although we agree with Patent Owner that the Petition does not include the phrase “quoted message identifier,” Sarafa explains that the quoted message cited in the Petition and the “quoted message identifier” are part of the same message package. E.g., Ex. 1007 ¶ 83. Patent Owner contends that Petitioner’s citation of the quoted message in the Petition and then the quoted message identifier in the Reply is like if I have a patent to some kind of car and someone points to a Porsche and says, look, the Porsche has an engine, and then we argue about an engine, and then they come back and say, well, we're referring to the turbo charger in the engine in their reply, even though they never mention turbo charger, and said that's the key, it's like, well, we weren't on notice of that. Tr. 71:2–9. We find this unpersuasive. Patent Owner does not explain why a reply that cites a subcomponent of an item cited in the petition would necessarily go beyond properly elaborating on the arguments in the petition.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill identified by Petitioner. Additionally, we agree with Patent Owner that the level of skill it identifies differs very little from Petitioner’s proposed level of skill, and our analysis below would be the same under either party’s identified level of skill.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In order to resolve the parties’ patentability dispute, we only need to resolve whether the correct construction of “link” requires using an address specifically (rather than data generally) to “point to” a message. We find the record lacks persuasive support for such a construction. Looking to the ’198 patent itself first, neither the claims nor the Specification says anything about “point[ing] to” a message or another resource. See generally Ex. 1001. The ’198 patent mentions “address” only once, and that passage refers to a person’s address, not a message’s address. Id. at 12:29–33. Additionally, Patent Owner does not cite any other intrinsic evidence, such as the prosecution history of the ’198 patent, supporting a construction of “link” requiring a message’s address. See, e.g., PO Resp. 10–12; PO Sur-reply 2–7.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Weighing the parties’ arguments and evidence, we find that Petitioner demonstrates by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine the teachings of Ji and Sarafa. As explained below, Petitioner persuades us that a person of ordinary skill in the art would have understood that Ji teaches automatic scrolling, and that Sarafa’s automatic scrolling would have beneficially complemented Ji’s. Pet. 21–22; Pet. Reply 14–17; Ex. 1003 ¶¶ 75–77; Ex. 1018 ¶ 47. Additionally, regardless of whether Ji teaches automatic scrolling in paragraph 92, Petitioner persuades us that Ji and Sarafa address similar problems related to tracking and understanding convoluted conversations in messaging systems. See Pet. 16–21; Ex. 1003 ¶¶ 64, 65, 70, 73, 74. As Dr. Cockburn testifies, Ji emphasizes the problem that users cannot quickly find and understand messages in complicated message streams. Ex. 1003 ¶ 64 (citing Ex. 1006 ¶ 2); Pet. 16. Petitioner also persuades us that Sarafa addresses such problems, at least in part, by expressly teaching certain advantages of its scroll-back feature, such that a person of ordinary skill in the art would have considered it advantageous to add Sarafa’s scroll-back feature to Ji’s system. See Pet. 18–19; 21–23; Ex. 1003 ¶¶ 70, 74. For example, addressing the same problems discussed in Ji, Sarafa explains that its scroll back feature would facilitate a user’s ability to understand a complicated conversation because “[m]aking available the context of a quoted message may benefit a user in understanding a quoted message by providing messages that were displayed before and/or after the quoted message so as to play the quoted message in context.” Ex. 1007 ¶ 90; Pet. 19; Ex. 1003 ¶ 70. Similarly, Sarafa explains that its scroll back feature “provid[es] additional context to users . . . , improving the user experience of quoted messages for its users.” Ex. 1007 ¶ 23; Pet. 19; Ex. 1003 ¶ 70. We find that these disclosed benefits would have provided compelling motivation for a person of ordinary skill in the art to add Sarafa’s scroll back feature to Ji’s messaging system. Pet. 19–23; Ex. 1003 ¶¶ 71, 73–77. Indeed, as Dr. Cockburn explains, “[s]ince Ji also quotes the original message in the reply, Sarafa would therefore be a natural complement to Ji.” Ex. 1003 ¶ 77.” slip op. at 42
Patent outcomesUS 9,860,198 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,860,198
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.