- Intuit Inc. v. Samesurf, Inc.All claims unpatentablePTAB · Jun 25, 2024 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–18 are unpatentable as obvious over Lebrun and Wang; the Board did not reach the separate Prajapat and Wang challenge.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 11–12; see Dec. 9–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 42. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“information related to a shared web browsing interaction” is interchangeable with “web browsing interaction data” and, as a result, this portion of the specification should limit the claim term. PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). The quoted portion of Mr. Friedman’s testimony, however, addresses other terms in the specification and not “information related to a shared web browsing interaction.” PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). As such, the testimony cited by Patent Owner does not support Patent Owner’s position. Accordingly, we determine that the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data” in the written description. c. Plain and Ordinary Meaning Because the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data,” we look to the plain and ordinary meaning of the term. See Edwards Lifesciences LLC v. Cook Inc., from the ordinary meaning will be adopted “when the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history” (internal quotation marks omitted)); Pet. Reply 5 (Petitioner arguing that “web browsing interaction data” should be afforded its plain and ordinary meaning) (citing Ex. 1034 ¶ 13). Notably, both Dr. Lieberman and Mr. Friedman agree that the plain and ordinary meaning of “web browsing interaction data” is sufficient to inform how one of ordinary skill would have understood the term. Ex. 1034 ¶ 13 (Dr. Lieberman testifying: “The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions. No additional definition or limitation is required in my opinion, nor is there any special or specific meaning given to the term in the specification of the ’145 patent.”); Ex. 1033, 171:5–16 (Patent Owner’s expert, Mr. Friedman, testifying that “the plain and ordinary meaning is sufficient.”). According to Petitioner, the plain and ordinary meaning is “data related to web browsing interactions.” Pet. Reply 5 (citing Ex. 1034 ¶ 13); Ex. 1034 ¶ 13 (“The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions.”). Patent Owner’s expert declined to opine on what the plain and ordinary meaning of “web browsing interaction data” other than it excludes webpages and partially filled webpages related to a web browsing interaction. See Ex. 1033, 171:5–16. slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Accordingly, we conclude that the plain language of the claims does not require “web browsing interaction data” to be limited to data describing interaction performed on a website by a host device. We turn to the specification because the meaning of “web browsing interaction data” is informed “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. The written description does not provide a definition or clear meaning for “web browsing interaction data.” Patent Owner acknowledges the term is not expressly used in the written description. PO Resp. 17. Patent Owner, however, identifies “information related to a shared web browsing interaction” as a term that is interchangeable with “web browsing interaction data.” PO Resp. 18, 29. We recognize the specification term “information related to a shared web browsing interaction” is substantially similar10 to Petitioner’s proposed plain and ordinary meaning of “web browsing interaction data” as “data related to web browsing interactions.” 11 Patent Owner identifies three passages that each describe the present invention as receiving information related to a shared web browsing interaction performed by a host device and performing the shared web browsing interaction based on the received information. PO Resp. 17–18 (block quoting Ex. 1001, Abstract, 3:10–24). The identified passages, however, do not show intention to manifestly limit “web browsing interaction data” to data describing interactions” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“forth by Petitioner (Pet. 22–34) discloses or suggests all limitations recited by claim 1, we consider Petitioner’s conclusion that it would have been obvious to combine Lebrun and Wang in the manner proposed to arrive at the claimed invention. See Pet. 19–22. (i) Articulated Reasoning To demonstrate obviousness, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Petitioner contends that one of ordinary skill would have been motivated to combine Wang’s activating a session invitation with Lebrun’s invitation to join a group-surfing session. Pet. 28. Specifically, Petitioner contends that “activating an invitation via a designated URL address would further enable” Lebrun’s group-surfing server “to coordinate and manage the group-surfing session, which would further Lebrun’s objective of providing an ‘improved technique for group access to web sites.’” Pet. 28 (citing Ex. 1005, 7:1). We agree with Petitioner that activating an invitation via a designated URL address would be a technique that helps coordinate a group-surfing session and would enable multiple related users being able to access “substantially the same” slip op. at 63
Patent outcomesUS 9,185,145 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,185,145 - Apple Inc. v. Ald Social LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01399 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Wolfe renders claim 1 obvious 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
“factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The asserted prior art, like the challenged patent, presents high-level schematics and functional descriptions of various system components used in monitoring events and crowd behavior using location-based services. These system components largely include servers, websites, and mobile telephones utilizing wireless technologies, such as Wi-Fi, cellular, and global positioning system (GPS) to communicate and generate location data regarding mobile devices, as well as the use of databases to store historical information related to location-based services. The prior art and the patent provide description of monitoring crowd behavior by tracking the location of groups of mobile devices. Neither the challenged patent nor the asserted” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“we agree with Petitioner that “[t]he specification does not provide any explicit definition.” Pet. 14. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:45–48. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:14–16; Pet. 14 (citing Ex. 1001, 5:16–20). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:15–20, 5:31–35, 5:41–42 (“to assess the number . . . of wireless devices”), 5:55–57; see Pet. 15 (citing Ex. 1001, 5:31–36, 5:51–57). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“institution. On this preliminary record, Petitioner has sufficiently shown that responsive to the network monitor observing a significant aggregation of devices in a particular area, application 322 functions as a crowd risk determinant because the application 322 assesses the needs arising from the aggregation of devices in that area. Ex. 1004, ¶¶ 46. Additionally, although the example provided in Wolfe relates to determining the number of pizza slices needed based on how many devices are in particular location, on this preliminary record, we agree with Petitioner that a person of ordinary skill in the art would have found it obvious to implement a similar risk analysis to determine that police patrols would be needed in a particular area, as taught by Wolfe, based on the determination of crowd’s location, activity, and movement. Id. at 14.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Wolfe and Pfeffer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Legal Standards Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information in the Petition shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on declaration testimony from Dr. Guy (Ex. 1003), Petitioner asserts that a person of ordinary skill in the art “would have been someone knowledgeable and familiar with the field of crowd analysis and location-based computing” and would have had “at least a bachelor’s degree in computer science/computer engineering, or equivalent training, and approximately two years of experience working in the field of crowd analysis and location-based computing.” Pet. 12 (citing Ex. 1003 ¶¶ 19–21). Petitioner further notes that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. For purposes of this Institution Decision, we adopt the assessment offered by Petitioner as it is consistent with the challenged patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agree with Petitioner that “[t]he specification does not provide any explicit definition” for “indication of a viral event.” Pet. 13. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:40–43. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:9–12; Pet. 13–14 (citing Ex. 1001, 5:9–15). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:12–14, 5:27–31, 5:35 (“to assess the number . . . of wireless devices”), 5:48–51; see Pet. 14 (citing Ex. 1001, 5:26–31, 5:45–51). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“4. The Combination of Wolfe and Pfeffer To demonstrate obviousness, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. More specifically, to prevail, Petitioner must demonstrate by a preponderance of evidence that “a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Regarding the required articulate reasoning, Petitioner contends that “[a]lthough Wolfe teaches providing relevant crowd information to police, Wolfe does not provide the details for how to alert and notify the police.” Pet. 24 (citing Ex. 1004 ¶ 14). “Pfeffer, however, fills in Wolfe’s details by specifically teaching techniques for receiving information about crowds, evaluating the information, and alerting first responders when needed,” according to Petitioner. Pet. 24 (citing Ex. 1005, Abstract, ¶¶ 6, 40–41). Petitioner also contends that the combination would provide additional benefits to Wolfe’s system from Pfeffer’s additional features, such as providing “continuous updates to the incident scenario model saved for future use, recommendations for the most effective methods to respond to the incident based on past responses and current trends, and determining if an incident should be elevated based on the number of people involved in the incident.” Pet. 26 (citing Ex. 1003 ¶ 77; Ex. 1005 ¶¶ 28, 77, 85). Regarding the required expectation of success, Petitioner contends that “[a] POSITA would have found the combination of Wolfe and Pfeffer predictable” because they are similar in that “both systems analyze crowd information to identify safety risks.” Pet. 25 (citing Ex. 1003 ¶ 75; Ex. 1004, Abstract, ¶¶ 11, 14; Ex. 1005 ¶ 28). Petitioner further asserts that “[a] POSITA would have had a reasonable expectation of success when combining Wolfe and Pfeffer because [they] are implemented in the same manner,” with both being implemented on servers and with Pfeffer indicating that its techniques could be “any combination of software and/or hardware that is configured to perform one or more tasks.” Pet. 25–26 (citing Ex. 1003 ¶ 78; Ex. 1004 ¶ 70, 74; Ex. 1005 ¶¶ 37, 32). Petitioner also contends “the combination would use known techniques (Pfeffer’s implementation details of an incident response method) to improve a similar system (Wolfe’s crowd detection and incident response system) in the same way (providing crowd details and incident information to first responders so that they may better respond to comprised crowd safety).” Pet. 26–27 (citing Ex. 1003 ¶¶ 77–79). Petitioner’s showing (Pet. 23–27) of articulated reasoning to support” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,198,054 - Intuit Inc. v. Samesurf, Inc.InstitutedPTAB · Jun 28, 2023 · IPR2023-00341 · APJ Barbara A Benoit · IPR · Institution
Instituted IPR of claims 1–16 on all asserted grounds after finding a reasonable likelihood that Lebrun and Wang render at least claim 1 obvious.
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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard employed in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). Under the principles set forth by our reviewing court, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would have been understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither Petitioner nor Patent Owner propose express constructions for any claim terms. Pet. 12; Prelim. Resp. 34. For purposes of this decision, we agree that no claim terms need be expressly construed. Patent Owner arguments regarding the asserted grounds of unpatentability, however, raise particular claim scope contentions, particularly regarding “information related to the shared web browsing interaction” recited in each of the independent claims. We preliminarily address issues of claim scope in our later discussion of the asserted grounds of unpatentability.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Accordingly, based on this preliminary record, we find Patent Owner’s assessment of “internet web browsing software development, web connectivity software development, or networking software development” to be too narrow in view of the asserted prior art that describes in large measure requesting and receiving web pages from web servers. Thus, we find that Petitioner’s assessment of “software development and/or web- based software” more appropriate for purposes of institution on this limited record. We also agree with Petitioner that additional education could have substituted for professional experience, and significant work experience could have substituted for formal education. For the purpose of this decision, for these reasons, we find that a person of ordinary skill in the art would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software. We apply that level of ordinary skill in this decision. Our decision, however, would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Accordingly, there is evidence to consider in making a determination whether Dr. Lieberman possesses the requisite ordinary level of skill. We, however, need not make such a determination for purposes of this decision because it has not been necessary for us to rely on Dr. Lieberman’s declaration in this decision. “No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art.” Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015). “[E]xpert testimony is not required when the references and the invention are easily understandable.” Id. (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010)). “Board members, because of expertise, may more often find it easier to understand and soundly explain the teachings and suggestions of prior art without expert assistance.” Id. Here, the invention and prior art are presented in high-level functional terms and are easily understandable, as we indicated previously in Section II.A and as shown by our discussion of the invention and prior art throughout this decision. To determine that the Petition met the institution threshold of showing “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” we have not relied on Dr. Lieberman’s declaration testimony. Patent Owner, of course, may raise the issue of Dr. Lieberman’s qualifications during trial.” slip op. at 58
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,483,448 - Intuit Inc. v. Samesurf, Inc.InstitutedPTAB · Jun 28, 2023 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Institution
Instituted review of claims 1–18 on all asserted grounds because the petition showed a reasonable likelihood that at least one challenged claim was obvious.
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
“Accordingly, based on this preliminary record, we find Patent Owner’s assessment of “internet web browsing software development, web connectivity software development, or networking software development” to be overly narrow in view of the asserted prior art that describes in large measure requesting and receiving web pages from web servers. Thus, we find that Petitioner’s assessment of “software development and/or web-based software” more appropriate for purposes of institution on this limited record. We also agree with Petitioner that additional education could have substituted for professional experience, and significant work experience could have substituted for formal education. For the purpose of this decision, for these reasons, we find that a person of ordinary skill in the art would have had (1) at least a bachelor’s a similar field, and (2) at least two years of work experience in software development and/or web-based software. We apply that level of ordinary skill in this decision. Our decision, however, would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Expert testimonyDecided for petitioner
“Accordingly, there is evidence to consider in making a determination whether Dr. Lieberman possesses the requisite ordinary level of skill. We, however, need not make such a determination for purposes of this decision because it has not been necessary for us to rely on Dr. Lieberman’s declaration in this decision. “No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art.” Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015). “[E]xpert testimony is not required when the references and the invention are easily understandable.” Id. (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010)). “Board members, because of expertise, may suggestions of prior art without expert assistance.” Id. Here, the invention and prior art are presented in high-level functional terms and are easily understandable, as we indicated previously in Section II.A and as shown by our discussion of the invention and prior art throughout this decision. To determine that the Petition met the institution threshold of showing “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” we have not relied on Dr. Lieberman’s declaration testimony. Patent Owner, of course, may raise the issue of Dr. Lieberman’s qualifications during trial.” slip op. at 46
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner propose express constructions for any claim terms. Pet. 12; Prelim. Resp. 32. For purposes of this decision, we agree that no claim terms need be expressly construed. Patent Owner particular claim scope contentions regarding “web browsing interaction data” recited in each of the independent claims. We preliminarily address those issues of claim scope in our later discussion of the asserted grounds of unpatentability.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,185,145 - Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedNo claims unpatentablePTAB · Sep 6, 2022 · IPR2021-00542 · APJ Kristen L Droesch · IPR · Final written decision
Claims 11, 12, 14, 22, and 24 were not shown unpatentable under § 103 over Khandekar, Le, and Matthews because the petition did not establish a required image-instance limitation.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“in this case (see Dec. 10–11) or in the Institution Decision or Final Written Decision in related IPR2020-01582 (see IPR2020-01582, Paper 9 at 9–10 (PTAB Mar. 15, 2021); ’1582 Final Written Decision at 10–12). Consistent with the ’1582 Final Written Decision, we agree with Patent Owner that Petitioner’s proposed interpretation, namely, that the limitation is satisfied by “a plurality of virtual disk image files,” reads “that are executable on the plurality of virtual machines” out of the claim language. See Pet. 15; PO Resp. 31–32. Dependent claim 2, on which Petitioner’s argument relies, makes clear that “virtual disk image files” can be “image instances of the plurality of software applications”—but claim 2 does not refer to the additional language “that are executable on the plurality of virtual machines” recited in claim 1 as well as claim 19. Ex. 1001, 36:35–37, 36:50–52, 38:9–11, 39:4–6. Accordingly, we do not adopt Petitioner’s proposed interpretation of the limitation. We again need not expressly construe “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” but we note that “[a] claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim.”). In this Decision, the words of the entire limitation, including “that are executable on the plurality of virtual machines,” are given their ordinary and customary meaning.” slip op. at 13
- Skill levelSkill level board ownOther
“We determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field with two years of experience in distributed computing systems, or a master’s degree in electrical engineering, computer science, or a similar field with a specialization in distributed computing systems. Our adopted level of ordinary skill is consistent with the level of skill advocated by the parties and the level of skill reflected by the ’138 Patent Specification and the asserted prior art.” slip op. at 18
- Strike new argumentNew argument disregardedDecided for patent owner
“new theory distinct from the first and second theories offered in the Petition. Although the Petition included a citation to Khandekar’s disclosure of applications installed and loaded for running on the VM (see Pet. 41 (citing Ex. 1004, 6:42–56; Ex. 1003 ¶ 137)), the arguments presented in the Petition do not explain Petitioner’s third theory, elucidated for the first time in the Reply. It is improper for Petitioner on Reply to point to vague, isolated arguments and citations to the prior art from the Petition and advance a new theory that was not explicitly offered or explained in the Petition. Permitting a petitioner to advance a new theory on reply in this manner would put the burden on a patent owner to deduce and respond to all possible theories that could have been, but were not, explicitly raised in a petition. But this would be an unfair burden to place on a patent owner—and one that governing law and Board regulations and guidelines make clear the patent owner does not bear. See, e.g., 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)‒(5); Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)10 73–75. Rather, it is a petitioner’s burden to explain with particularity, at the outset in the petition, why the patent it challenges is unpatentable. Harmonic, 815 F.3d at 1363; 35 U.S.C. § 312(a)(3). As the Federal Circuit has explained,” slip op. at 36
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner makes an inadequate showing for this limitation. Petitioner does not present argument or evidence sufficient to demonstrate that Khandekar’s disclosures of virtual disk image files for pre-built, custom-built, and instantly deployable VMs teach or suggest “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines.” In particular, giving the words of the entire limitation their ordinary and customary meaning, Petitioner does not present argument or evidence sufficient to demonstrate that Khandekar’s VM images or virtual disk image files for pre-built, custom-built, and instantly deployable VMs are “executable on the plurality of virtual machines” (i.e., capable of execution on the plurality of virtual machines). At best, Petitioner cites Khandekar’s teachings that it is the operating system and applications of Khandekar’s virtual disk image files—not Khandekar’s virtual disk image files themselves—that are executable on the virtual machines. See Pet. 41 (citing Ex. 1004, 6:42–56 (disclosing applications installed and loaded for running on the VM); Ex. 1003 ¶ 137). But this is inconsistent with Petitioner’s position that it is Khandekar’s virtual disk image files themselves that teach “a plurality of image instances of a plurality of software applications.” See id. at 36–37; see also Pet. Reply 12 (confirming Petitioner’s position (citing Pet. 36–41)). For the foregoing reasons, Petitioner does not demonstrate that Khandekar teaches, suggests, or renders obvious “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” as recited in claim 1, under Petitioner’s first theory.” slip op. at 30
Patent outcomesUS 8,572,138 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,572,138 - Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedNo claims unpatentablePTAB · Mar 11, 2022 · IPR2020-01582 · APJ Kristen L Droesch · IPR · Final written decision
The Board held claims 1–5, 9, 10, 17, 19–21, and 26 not unpatentable because the prior-art combinations did not teach the claimed application image instances executable on the virtual machines.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Decision. See Dec. 9. We agree with Patent Owner that Petitioner’s proposed interpretation, namely, that the claim phrase is satisfied by “a plurality of virtual disk image files,” reads “that are executable on the plurality of virtual machines” out of the claim language. See Pet. 13; PO Resp. 43–44. Dependent claim 2, on which Petitioner’s argument relies, makes clear that “virtual disk image files” can be “image instances of the plurality of software applications”—but claim 2 does not refer to the additional language “that are executable on the plurality of virtual machines” recited in claim 1 as well as claims 19 and 26. Ex. 1001, 36:35–37, 36:50– 52, 38:9–11, 39:4–6. Accordingly, we do not adopt Petitioner’s proposed interpretation of the claim phrase. As in the Institution Decision, we need not expressly construe “a plurality of image instances of a plurality of software applications that are executable on the plurality of virtual machines,” but we note that “[a] claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim.”). In this Decision, the words of the entire claim phrase, including “that are executable on the plurality of virtual machines,” are given their ordinary and customary meaning.” slip op. at 11
- Prior constructionNot reached
“Pet. 13; PO Resp. 8–42; Pet. Reply 5–17; PO Sur-Reply 5–17. Nonetheless, we note that both parties apply the construction of “image instance” to which they agreed in the related district court proceeding—specifically, “a snapshot, or copy, of installed and configured software.” Ex. 2003 (Joint Claim Construction and Prehearing Statement in the related district court proceeding), 1–2 (identifying this construction of “image instance” as a stipulated claim construction); PO Resp. 52–53 (citing Ex. 2001 ¶ 134; Ex. 2003, 2) (arguing that Petitioner “admits” to this construction and applying it to dispute Petitioner’s unpatentability showing); Pet. Reply 29– 30 (citations omitted) (characterizing this as “the agreed-upon construction of image instances” and applying it within the unpatentability analysis). Because there is no dispute about the proper construction of “image instance” on the record before us, we need not construe this claim term. 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.’” (emphasis added) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a similar field with two years of experience in distributed computing systems, or a master’s degree in electrical engineering, computer science, or a similar field with a specialization in distributed computing systems. Our adopted level of ordinary skill is consistent with the level of skill advocated by the parties in Khandekar and Le. See, e.g., Pet. 6; Ex. 1003 ¶ 12; PO Resp. 48–49, 51, 57–64; Ex. 1004, 4:67–5:1; Ex. 1005, 12:38. Patent Owner also uses the acronym VMM to refer to the claimed virtual machine manager. See, e.g., PO Resp. 34. To avoid confusion, throughout the Decision, we use VMM to refer only to a virtual machine monitor and use the full term for the claimed virtual machine manager. and the level of skill reflected by the ’138 Patent Specification and the asserted prior art.” slip op. at 15
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner’s arguments that Khandekar’s disclosure of application installation files does not teach or suggest “a plurality of image instances of a plurality of software applications,” in accordance with Petitioner’s construction of “image instance.” See PO Resp. 52–53; Pet. Reply 29 (“Khandekar’s three types of VM images satisfy the agreed-upon construction of image instances: ‘a snapshot, or copy, of installed and configured software.’”). We agree with and credit Dr. Rosenblum’s persuasive testimony distinguishing Khandekar’s “executable installation file” from the recited “image instances of software applications.” See Ex. 2001 ¶ 137. Accordingly, Petitioner does not present sufficient argument or evidence to demonstrate that Khandekar’s application installation files teach or suggest “a plurality of image instances of a plurality of software applications,” in accordance with Petitioner’s construction of an “image instance” as “a snapshot, or copy, of installed and configured software.”” slip op. at 25
Patent outcomesUS 8,572,138 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,572,138 - Apple Inc. v. Uniloc 2017 LLCNo claims unpatentablePTAB · Mar 6, 2019 · IPR2017-01993 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1–5 were not shown unpatentable because the asserted combinations failed to teach the claimed now-starting predetermined time period.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In sum, the claimed predicting requires that there be an amount of time during which locations of the user device can be determined. The claim undeniably specifies the end of that time period: at the end of the “predetermined maximum amount of time.” But such ending is relative to a beginning, which has been the source of dispute in this trial. As discussed above, the plain reading of the claim urges a beginning coincident with the start of the predicting step. We have found that the specification consistently supports this reading of the claim. And we have also found that time windows disclosed in the specification that start at a specified time in the future do not pertain to the “predetermined maximum amount of time.” Rather, they further modify other unclaimed features, such as whether an action (e.g., sending a promotional code) is performed during operation hours of an establishment, or whether certain predetermined locations are relevant to the predicting step only on week days during a lunch period. Consequently, we are persuaded that the claimed “within the predetermined maximum amount of time” is not as broad as Petitioner argues—to include a future-starting window. The plain and ordinary meaning of the claim language “within” relative to the predicting step dictates otherwise, and the specification provides the context and confirms that this reading aligns with what the inventor described as the invention. For the reasons stated above, we determine that “within the predetermined maximum amount of time,” as recited in the predicting step of claim 1, means that the duration of time or time period starts when the predicting takes place.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Per our analysis of the “within” phrase, discussed above in Section III.A, the “predetermined maximum amount of time” is a period of time with a start time coincident with the predicting step. In contrast, Blegen’s specified time period is some period of time that starts in the future. We do not credit Dr. Robins’s testimony that an “afternoon” on a future date is a “predetermined maximum amount of time,” as that testimony is not based on the proper construction of the claim. Blegen’s future-starting window is not coincident with the prediction action, and no other alleged time window in Blegen has been shown to have the requisite start time. Rather, Blegen looks to future locations during a future-starting window. See Ex. 1004 ¶ 68. Consequently, we determine that Blegen does not teach the “within the predetermined maximum amount of time” limitation.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“opportunity in its Reply to brief the instant ground vis-à-vis the determination that the Petition provides insufficient explanation of the asserted combination. Reply 23−25. Petitioner again refers to Froloff’s “time radius” as a “maximum time period . . . between the present time and the estimated time of arrival,” and states that the Petition offered the operation of the modified system: “By sending the advertisement a period of time before the user is expected to arrive at a predetermined location, the advertisement’s relevance and value are enhanced.” Id. at 24 (citing Pet. 69; Robins Decl. ¶ 212). This explanation, however, is presented in the Petition under the heading “Reasons to Combine” and is substantially the same reason to combine provided for the combination of Charlebois and Gillies: “By targeting the advertisement to users who are likely to be at the predetermined location within the ‘time period’ associated with the “event,” the advertisement’s relevance and value are enhanced.” Pet. 45. Relying on this vague and conclusory rationale to combine as an explanation of how the proposed teachings are combined is insufficient. We are not persuaded that this explanation adequately provides the “operation” of the modified system. At best, the explanation informs us that sending an advertisement beforehand provides an advantage: relevance and value of the advertisement are enhanced. The explanation provides no detail of how Petitioner contends the Froloff “time radius” fits with the teachings of either Charlebois or Gillies. Further, asserting that the combination of Charlebois/Gillies/Froloff sends advertisements before the user arrives at a predetermined location does not factually distinguish this combination from the Charlebois/Gillies combination, which Petitioner asserts also performs the operation of sending beforehand advertisements to users likely to be at the sales event. In sum, Petitioner’s attempt in the Reply to explain the Petition as providing detail sufficient to show its obviousness contentions based on Froloff does not remedy the insufficiencies we noted in our Decision on Institution.” slip op. at 49
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner further urges us to consider the impact of Dr. Robins’s “unrebutted” opinion regarding the predicting step. Reply 12−13. We recognize that Petitioner filed a declaration in support of its Petition, while Patent Owner did not. However, we do not discount Patent Owner’s arguments on claim construction merely because no expert testimony supports those arguments, particularly when the arguments are based on the intrinsic record. We also do not credit expert testimony that is at odds with the claim language or the specification—as is Dr. Robins’s relevant testimony. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (“A court may look to extrinsic evidence so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” (citation omitted)). For instance, Dr. Robins opines that the “predetermined maximum amount of time is ‘lunch time on weekdays’ from 11:30 am to 2:00 pm,” as disclosed in the “restaurant” example. Robins Decl. ¶ 45. Dr. Robins explains that this time window “specifies the maximum amount of time during which a lunch offer will be sent to the user device.” Id. (citing Ex. 1001, 2:17−27). But as we explained above, this time period serves to limit the applicability of the predetermined locations in the prediction, but does not refer to the “predetermined maximum amount of time.” Dr. Robins does not explain how the specification’s description of limiting applicability of the predetermined locations in any way also implicates the “predetermined maximum amount of time.” And just because Dr. Robins’s testimony in this regard is unrebutted does not mean that we should give it weight, especially when we find that it is not consistent with the ’199 patent disclosure. Accordingly, we are not persuaded by Petitioner’s arguments that we should construe the phrase as Petitioner proposes merely because its proffered expert’s testimony is unrebutted and Patent Owner has no expert.” slip op. at 18
Patent outcomesUS 9,414,199 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 9,414,199 - Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.Rehearing deniedPTAB · Dec 21, 2017 · IPR2016-00995 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 26 and 27 unpatentable as anticipated by MC33362.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“arguments. Our claim construction made clear in interpreting “multi-function circuit” that we agree with Patent Owner that the circuit is separate and distinct from the recited “control circuit” in the sense that the claim recites two distinct elements. Dec. 18. However, our interpretation further determined that although we agree “that the multi-function circuit and the control circuit are separate and distinct components in the claims, the claim language does not require that the functions performed by the two distinct circuits must be similarly separate and distinct.” Id. at 22. We further observed that, contrary to Patent Owner’s assertions, the Specification of the ’908 patent mentions certain functions of the multi-function circuit that are clearly tightly coupled to the “core regulation” function of the recited “control circuit.” Id. at 24–25 (e.g., shutting down the power supply in response to detecting over-voltage or under-voltage conditions). Thus, our Decision is consistent with our interpretation of “multi-function circuit” and expressly disagrees with Patent Owner’s arguments that the functions of the two circuits must also be separate and distinct.” slip op. at 3
Claim constructionPatents in suitUS 6,538,908 - PTAB · Oct 16, 2017 · IPR2017-01064 · APJ Kerry Begley · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17, 19–24, 53, and 54 were obvious over Feigen, Flanagan, and Falk.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “the 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.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’698 patent. Thus, for the reasons given below, we deny institution of an inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, to establish obviousness, it is petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotations omitted); see KSR, 550 U.S. at 418. Moreover, a petitioner cannot satisfy this burden by “employ[ing] mere conclusory statements” and “must instead articulate specific reasoning, based on evidence of record,” to support an obviousness determination. Magnum Oil, 829 F.3d at 1380. Stated differently, there must be “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The “factual inquiry” into the reasons for “combin[ing] references must be thorough and searching, and the need for specificity pervades . . . .” In re Nuvasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (quotations omitted). A determination of obviousness cannot be reached where the record lacks “explanation as to how or why the references would be combined to produce the claimed invention.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016); see Nuvasive, 842 F.3d at 1382–86 (holding that an obviousness determination cannot be reached where there is no “articulat[ion of] a reason why a [person having ordinary skill in the art] would combine” and “modify” the prior art teachings). This required explanation as to how and why the references would be combined avoids an impermissible “hindsight reconstruction,” using “the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.” TriVascular, 812 F.3d at 1066; In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011).” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“as Petitioner, can overcome this presumption by showing that the claim term: (1) “fails to recite sufficiently definite structure,” or (2) “recites function without reciting sufficient structure for performing that function.” Id. at 1348–49 (quotations and citations omitted). The governing standard is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id. Moreover, if § 112(6) applies and the term is a means-plus-function limitation, construction of the term requires: (1) “identif[ication of] the claimed function,” and (2) a determination of “what structure, if any, disclosed in the specification corresponds to,” i.e., is “clearly link[ed]” to or “associate[d]” with, the claimed function. Id. at 1351–52. Our rules make clear that it is Petitioner’s burden to explain, in detail, how the challenged claim is to be construed with supporting factual and legal analysis. Specifically, 37 C.F.R. § 42.104(b)(3) requires the Petition to “set forth . . . [h]ow the challenged claim is to be construed” and for a means-plus-function limitation, to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” In addition, 37 C.F.R. § 42.22(a)(2) requires the Petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Here, the Petition falls far short of these requirements of our rules by merely stating a bare conclusion that “biometric analyzer” is a mean-plus-function limitation pursuant to 35 U.S.C. § 112(6) and listing the alleged structure and function with one unexplained citation to the ’698 patent specification. Pet. 19. Claims 10 and 11 do not include the word “means,” yet Petitioner provides no analysis directed to rebutting the resulting presumption, under governing Federal Circuit precedent, that § 112(6) is inapplicable. See Williamson, 792 F.3d at 1348–49. Nor does Petitioner provide any evidence, such as expert testimony, regarding whether an ordinarily skilled artisan would have understood “biometric analyzer” to have “sufficiently definite meaning as the name for structure.” See id. Moreover, even if we were to conclude that “biometric analyzer” should be construed as a means-plus-function limitation, Petitioner’s analysis is insufficient. Petitioner offers no explanation regarding why the claimed function would be “analyzing a monitored parameter of the accessor,” as Petitioner proposes. Pet. 19 (emphasis omitted). Given that claim 10 recites only “receiving in a biometric analyzer the biometric signal,” it is unclear, on this record, how or why Petitioner’s proposed function comports with any claimed function. Ex. 1001, 15:6–7. In addition, as to the alleged corresponding structure, Petitioner’s general reference to the Petition’s entire synopsis of the specification and bald citation, without any analysis or explanation, to five lines of the specification, which do not refer to a “biometric analyzer,” are insufficient to address why or how this passage discloses structure that corresponds to any function recited in claims 10 and 11. See id. at 6:55–59; Pet. 16, 19 (citing Ex. 1001, 6:55–59); see also Pet. 10–15.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Other Claim Terms Petitioner proffers numerous other claim terms for construction. Pet. 16–20. Patent Owner argues that no construction of these terms is necessary and contests Petitioner’s proposed construction for some terms. See Prelim. Resp. 13–24. Based on our review of the record and the dispositive issues in our determination of whether to institute inter partes review, we determine that none of these terms requires an express construction to resolve the issues presented by the patentability challenges. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that “are in controversy” need to be construed and “only to the extent necessary to resolve the controversy”).” slip op. at 10
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,484,698
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.