• Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Oct 17, 2023 · IPR2023-00205 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–20 are obvious over Hiraishi and Butt, with Ellsberry or Kim added for certain dependent claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been someone with an advanced degree in electrical or computer engineering and at least two years of work experience in the field of memory module design and operation, or a bachelor’s degree in such engineering disciplines and at least three years of work experience in the field,” and would have had knowledge of various standards for memory, such as Joint Electron Devices Engineering Council (JEDEC) standards, and circuitry used in memories. Pet. 2–3 (citing Ex. 1003 ¶ 37). Patent Owner asserts that it is “applying the level of ordinary skill in the art proposed by Petitioner.” PO Resp. 11. We adopt Petitioner’s uncontested level of ordinary skill with the exception of the phrase “at least,” which introduces vagueness as to the amount of experience.” slip op. at 6

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

    “C. Claim Construction We agree with the parties that we need not construe expressly any claim terms to decide the issues before us. See Pet. 9; PO Resp. 11; see also 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, 9 The parties do not present arguments related to objective evidence of nonobviousness (i.e., secondary considerations) as to any of the challenged claims. Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6

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

    “We disagree with Patent Owner’s arguments because, as Petitioner points out, the evidence shows that DDR3 devices do not always have edge-aligned data and strobes. See Pet. Reply 4. In particular, Patent Owner’s declarant Dr. Mangione-Smith testifies that the DDR3 standard allows a 200 picosecond maximum DQS-to-DQ skew, “which is a very tight tolerance considering the speed at which the memory devices are operating.” Ex. 2006 ¶¶ 122–125 (citing Ex. 1020, 164). During cross-examination of Dr. Mangione-Smith, Petitioner established that a 200 picosecond tolerance is actually a misalignment of over 28 degrees considering the 2.5 Pet. Reply 4 (discussing this testimony). Thus, the evidence shows that DDR3 data and strobes are not always edge-aligned. Patent Owner dismisses this, stating that “Petitioner’s argument is tantamount to saying that the JEDEC standard prescribes a tolerance for DQS/DQ skew that causes errors, which runs counter to the entire standard-setting process.” PO Sur-reply 3–4. On the contrary, we find that Petitioner’s showing underscores that Butt’s read training has direct applicability to a memory that may potentially skew by as much as 28 degrees. Butt explains that read training is used “to establish optimum DQS strobe settings” and thereby “enables a reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36; see Pet. 44–47 (discussing this disclosure). As the Supreme Court has stated, “if a technique has been used to improve one device, and a 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.” KSR, 550 U.S. at 417. “This is the so-called ‘known-technique’ rationale. And if there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021)). We find that Butt’s read training is such a known technique that would improve Hiraishi’s memory based on the benefits identified in Butt and discussed above, i.e., “establish[ing] optimum DQS strobe settings” to enable “reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36. timing operation” to account for flight time differences between memory devices, pointing to Hiraishi’s retiming operation that is performed after the data are loaded in FIFO (Read) circuit 302. PO Resp. 45 (citing Ex. 1005 ¶ 130). But Petitioner’s obviousness contentions are based on adjusting the timing of strobes before the data are registered in (loaded into) FIFO (Read) circuit 302. See Pet. 35–37 (asserting that the delayed read strobe is “the DQS signal supplied to FIFO (Read) circuit 302,” which is then used to register the data in FIFO (Read) circuit 302). Thus, Patent Owner is pointing to an entirely different operation. Furthermore, even if Hiraishi discloses some mechanism to cope with misaligned data and strobes, we find that Butt’s technique is a “suitable option” in combination with Hiraishi. See Intel, 61 F.4th at 1381. Indeed, in such a case, Hiraishi and Butt “address the same problem,” and Butt’s read training “was a known way to address that problem[, which] is precisely the reason that there’s a motivation to combine under KSR and [Federal Circuit] precedent.” Intel, 61 F.4th at 1380. Thus, it is not necessary for Petitioner to “identify what details are allegedly missing from Hiraishi which are being provided by Butt,” as asserted by Patent Owner. See PO Resp. 44.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “During the oral hearing, Petitioner argued that the 236 FD has collateral estoppel effect in this proceeding to resolve the disputed issues conclude that the claims are unpatentable as obvious based on the record in this proceeding and, therefore, do not rely on collateral estoppel. We further note that the Court of Appeals for the Federal Circuit has “held that an IPR decision does not have collateral estoppel effect until that decision is affirmed or the parties waive their appeal rights.” United Therapeutics Corp. v. Liquidia Techs., Inc., 74 F.4th 1360, 1372 (Fed. Cir. 2023) (citing XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282, 1294 (Fed. Cir. 2018) (“[A]n affirmance of an invalidity finding, whether from a district court or the Board, has a collateral estoppel effect on all pending or co-pending actions.”)). No notice of appeal has been filed yet in IPR2022-00236, and the time for filing an appeal has not yet expired.” slip op. at 30

  Patent outcomesUS 10,860,506 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,860,506
• Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Oct 17, 2023 · IPR2022-00711 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Hiraishi and Butt, with Ellsberry or Kim added for certain dependent claims; the Tokuhiro grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been someone with an advanced degree in electrical or computer engineering and at least two years of work experience in the field of memory module design and operation, or a bachelor’s degree in such engineering disciplines and at least three years of work experience in the field,” and would have had knowledge of various standards for memory, such as Joint Electron Devices Engineering Council (JEDEC) standards, and circuitry used in memories. Pet. 2–3 (citing Ex. 1003 ¶ 37). Patent Owner asserts that it is “applying the level of ordinary skill in the art proposed by Petitioner.” PO Resp. 11. We adopt Petitioner’s uncontested level of ordinary skill with the exception of the phrase “at least,” which introduces vagueness as to the amount of experience.” slip op. at 6

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

    “C. Claim Construction We agree with the parties that we need not construe expressly any claim terms to decide the issues before us. See Pet. 9; PO Resp. 11; see also 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,” slip op. at 6

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

    “We disagree with Patent Owner’s arguments because, as Petitioner points out, the evidence shows that DDR3 devices do not always have edge-aligned data and strobes. See Pet. Reply 4. In particular, Patent Owner’s declarant Dr. Mangione-Smith testifies that the DDR3 standard allows a 200 picosecond maximum DQS-to-DQ skew, “which is a very tight tolerance considering the speed at which the memory devices are operating.” Ex. 2006 ¶¶ 122–125 (citing Ex. 1020, 164). During cross-examination of Dr. Mangione-Smith, Petitioner established that a 200 picosecond tolerance is actually a misalignment of over 28 degrees considering the 2.5 Pet. Reply 4 (discussing this testimony). Thus, the evidence shows that DDR3 data and strobes are not always edge-aligned. Patent Owner dismisses this, stating that “Petitioner’s argument is tantamount to saying that the JEDEC standard prescribes a tolerance for DQS/DQ skew that causes errors, which runs counter to the entire standard-setting process.” PO Sur-reply 3–4. On the contrary, we find that Petitioner’s showing underscores that Butt’s read training has direct applicability to a memory that may potentially skew by as much as 28 degrees. Butt explains that read training is used “to establish optimum DQS strobe settings” and thereby “enables a reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36; see Pet. 44–47 (discussing this disclosure). As the Supreme Court has stated, “if a technique has been used to improve one device, and a 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.” KSR, 550 U.S. at 417. “This is the so-called ‘known-technique’ rationale. And if there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021)). We find that Butt’s read training is such a known technique that would improve Hiraishi’s memory based on the benefits identified in Butt and discussed above, i.e., “establish[ing] optimum DQS strobe settings” to enable “reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36. timing operation” to account for flight time differences between memory devices, pointing to Hiraishi’s retiming operation that is performed after the data are loaded in FIFO (Read) circuit 302. PO Resp. 45 (citing Ex. 1005 ¶ 130). But Petitioner’s obviousness contentions are based on adjusting the timing of strobes before the data are registered in (loaded into) FIFO (Read) circuit 302. See Pet. 35–37 (asserting that the delayed read strobe is “the DQS signal supplied to FIFO (Read) circuit 302,” which is then used to register the data in FIFO (Read) circuit 302). Thus, Patent Owner is pointing to an entirely different operation. Furthermore, even if Hiraishi discloses some mechanism to cope with misaligned data and strobes, we find that Butt’s technique is a “suitable option” in combination with Hiraishi. See Intel, 61 F.4th at 1381. Indeed, in such a case, Hiraishi and Butt “address the same problem,” and Butt’s read training “was a known way to address that problem[, which] is precisely the reason that there’s a motivation to combine under KSR and [Federal Circuit] precedent.” Intel, 61 F.4th at 1380. Thus, it is not necessary for Petitioner to “identify what details are allegedly missing from Hiraishi which are being provided by Butt,” as asserted by Patent Owner. See PO Resp. 44.” slip op. at 14

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

    “For the reasons discussed above and based on Petitioner’s contentions and evidence, we find that the combination of Hiraishi and Butt teaches “delay[ing] the first read strobe by a first predetermined amount to generate a first delayed read strobe,” “wherein the first predetermined amount is determined based at least on signals received by the first data buffer during one or more previous operations,” as well as the “sample” and “transmit” operations recited in claim 1. We also find, as discussed above, that a person of ordinary skill in the art would have combined the teachings of Hiraishi and Butt and would have had a reasonable expectation of success in arriving at the claimed invention. c) Conclusion for Claim 1 We conclude that the subject matter of claim 1 would have been obvious based on the combined teachings of Hiraishi and Butt.” slip op. at 19

  Patent outcomesUS 10,860,506 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,860,506
• Trend Micro, Inc. v. Webroot Inc.Institution denied
  PTAB · Oct 13, 2023 · IPR2023-00662 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We may institute an inter partes review if “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.” 35 U.S.C. § 314(a) (2018). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review. B.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “4 Petitioner also cites page 10 of Tahan, but we find no mention of either SVP or SVM there, and Petitioner does not explain where it might be disclosed. 5 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the state of the related litigation. See Prelim. Resp. 3–18.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics such as malware/exploit detection and/or machine learning” and that “[m]ore education can supplement practical experience and vice versa” Pet. 9 (citing Ex. 1002 ¶ 94). Patent Owner “does not dispute Petitioner’s articulation of the level of ordinary skill.” Prelim. Resp. 29. 1 Gil Tahan, et al., Mal-ID: Automatic Malware Detection Using Common Segment Analysis and Meta-Features, Journal of Machine Learning Research 13, 949–979 (April 13, 2012) (Exhibit 1003). 2 Eitan Menahem, et al., Improving Malware Detection by Applying Multi- Inducer Ensemble, Computational Statistics & Data Analysis 53, 1483–1494 (2009) (Exhibit 1004). 3 U.S. Patent App. Pub. No. 2009/0254992 A1 (Exhibit 1005). For purposes of this decision, we adopt Petitioner’s proposal, which we find generally consistent with the disclosures of the ’844 patent. B.” slip op. at 11

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

    “Petitioner asserts that “all claim terms should be given their plain and ordinary meanings.” Pet. 9. For its part, Patent Owner “agree[s] that no claim terms need be construed for this petition,” and that “all claim terms should carry their plain and ordinary meaning in light of the intrinsic record.” Prelim. Resp. 27. We find that no express claim construction is necessary to resolve the institution question. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,599,844
• Trend Micro, Inc. v. Webroot Inc.Institution denied
  PTAB · Oct 13, 2023 · IPR2023-00657 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been obvious over Rockwood and Xie.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record, and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly do not institute an inter partes review of claims 1–20 of the ’224 patent. B.” slip op. at 3

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

    “We also find it unclear which reference Petitioner relies on for the correlating. It appears that Petitioner finds the correlating in Rockwood (the reference with the attacker profile), but if Rockwood is intended to provide the correlating, it is unclear what role Xie has in the combination. We further find that Petitioner does not adequately describe how these references might be combined. Rockwood describes a system that identifies attacks at a network edge as they occur,5 while Xie’s system looks for 5 Notably, the ’224 patent presents itself as an improvement over tools that “may reside at a network edge and may receive network events concerning the network from one or more hosts or systems” because “network edge devices have no ability to establish any sort of context from within the host or system that is generating the event.” Ex. 1001, 1:43–48. Rockwood appears to describe a network edge device. See Ex. 1004, 3:16–4:4 (“Each sensor 20 is located at a network port that receives TCP/IP packets or other similar network communications from network 100.”). similar changes across different hosts within a network over multiple days. There is insufficient explanation of how Xie’s correlating technique would be beneficial in a system like that of Rockwood. Finally, to the extent Petitioner intends to rely on Xie for correlating to an originating object, we find that reliance misplaced. Xie discloses a system that looks for corresponding changes over days across multiple hosts in a network to identify patterns that might be indicative of a problem. But Xie does not describe using correlation to identify an originating object. The correlation is between similar patterns across the network, meaning that, even when Xie identifies a correlation, it is not correlating an event to its originating object, but is merely identifying multiple close vectors (reflecting corresponding file changes) within a detection window. See Ex. 1005, 38. The system then identifies the involved hosts and files, which can be used by “system administrators [to] decide whether the updates are known administrative updates that should be suppressed, or some abnormal events that should be further investigated.” Id. at 39. Although Xie’s example used the “Lion” worm, the worm was known and introduced into the network for testing purposes, not identified by Xie’s system.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable

    “object” to the network layer or operating system of the device from which the detected event originated.4 We do not agree that the network layer or OS of the originating system could be “a first object” within the meaning of these claims. The claims require that the first object “act[] on a target,” and we fail to see how the network layer or operating system of the device from 4 Although Rockwood indicates that the system can detect the attacker’s operating system (see, e.g., Ex. 1004, 12:39–41), it does not mention any “network layer.” That term appears to come from the Nielson Declaration. See Ex. 1002 ¶ 65–69. which the detected event originated would be “acting on” the destination IP address, which is what Petitioner identifies as the “target.”” slip op. at 16

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,257,224
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00594 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 and 25–30 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 45–46; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals. Second, we have also considered Mr. Schmandt’s testimony, and he provides no meaningful additional information to support reading Shimizu as Petitioner advocates. See Ex. 1002 ¶¶ 118, 120–127. In testimony not cited by Petitioner, Mr. Schmandt admits that “Shimizu does not appear to disclose further details about how duration information is specified or stored within its system, or whether such intervals between nodes can be changed.” Id. ¶ 119. This testimony undermines Petitioner’s position that Shimizu’s hypertext nodes include duration information. Mr. Schmandt elaborates in testimony that Petitioner cites, but does not explain: In a real-world implementation of the proposed combination, for example, the display time could have been specified within the node information structure 9 of Shimizu. I note that node information structure 9 in Shimizu also contains display procedure slot 62 (Fig. 6), which points to “a procedure program function used when the node in question is to be displayed on the screen.” (Shimizu, 6:52–55.) Shimizu thus contemplates that node information structure 9 may contain information about how the node will be displayed to the user, and as such, it would have been obvious that durational information could also have been included as part of node information structure 9. This durational amount could have been a default display time specified by the user, or a display time specific to the node in question, as explained above. * * * Shimizu itself clearly contemplates the ability to customize the display of nodes, and as explained above, node information structure 9 (Fig. 6) includes display procedure slot 62 which points to a program function or procedure used to display the node content, thus making clear that node information structure 9 can hold information about how the node will be displayed. Id. ¶¶ 123, 127. Mr. Schmandt’s testimony that Shimizu would need to be modified for its hypertext nodes to include duration information is strong evidence that Shimizu does not disclose hypertext nodes that include duration information. This testimony (from ¶ 123) also suggests that Shimizu’s predetermined intervals and times could be included in the procedure program function to which display procedure slot 62 points, rather than in the hypertext node, thereby providing additional evidence Shimizu’s predetermined intervals and times are included in structure other than hypertext nodes. See also Ex. 1003, 6:52–55.” slip op. at 27

  • BurdenInstitution denied

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 45–46; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals. Second, we have also considered Mr. Schmandt’s testimony, and he provides no meaningful additional information to support reading Shimizu as Petitioner advocates. See Ex. 1002 ¶¶ 118, 120–127. In testimony not cited by Petitioner, Mr. Schmandt admits that “Shimizu does not appear to disclose further details about how duration information is specified or stored within its system, or whether such intervals between nodes can be changed.” Id. ¶ 119. This testimony undermines Petitioner’s position that Shimizu’s hypertext nodes include duration information. Mr. Schmandt elaborates in testimony that Petitioner cites, but does not explain: In a real-world implementation of the proposed combination, for example, the display time could have been specified within the node information structure 9 of Shimizu. I note that node information structure 9 in Shimizu also contains display procedure slot 62 (Fig. 6), which points to “a procedure program function used when the node in question is to be displayed on the screen.” (Shimizu, 6:52–55.) Shimizu thus contemplates that node information structure 9 may contain information about how the node will be displayed to the user, and as such, it would have been obvious that durational information could also have been included as part of node information structure 9. This durational amount could have been a default display time specified by the user, or a display time specific to the node in question, as explained above. * * * Shimizu itself clearly contemplates the ability to customize the display of nodes, and as explained above, node information structure 9 (Fig. 6) includes display procedure slot 62 which points to a program function or procedure used to display the node content, thus making clear that node information structure 9 can hold information about how the node will be displayed. Id. ¶¶ 123, 127. Mr. Schmandt’s testimony that Shimizu would need to be modified for its hypertext nodes to include duration information is strong evidence that Shimizu does not disclose hypertext nodes that include duration information. This testimony (from ¶ 123) also suggests that Shimizu’s predetermined intervals and times could be included in the procedure program function to which display procedure slot 62 points, rather than in the hypertext node, thereby providing additional evidence Shimizu’s predetermined intervals and times are included in structure other than hypertext nodes. See also Ex. 1003, 6:52–55.” slip op. at 27

  • Prior constructionPrior construction adoptedDecided for patent owner

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Certain terms recited in the challenged claims were construed during prior litigation of the ’451 patent, i.e., an ancestor of the challenged ’819 patent that Petitioner characterizes as “shar[ing] a near-verbatim written description with the ’819 patent”). Ex. 1023 (claim construction order in cases involving Microsoft and Apple); Ex. 2003, 5 (clarification of certain claim constructions on summary judgment); Pet. 8–9. Patent Owner advocates that we adopt such prior constructions in this proceeding. Prelim. Resp. 6. Although “Petitioner does not believe express claim construction is necessary at this time,” Petitioner takes the position that its asserted prior art “renders the challenged claims obvious under the district court’s constructions.” Pet. 10. And we agree with Patent Owner that the Petition “presents extensive arguments” that apply the district court’s constructions. See Prelim. Resp. 6 (citing Pet. 9–10, 12–20, 33). We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1023, 16–17; Prelim. Resp. 8–10. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 1, 16, 23, and 26, as well as in certain dependent claims, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1023, 2–13; Ex. 2003, 5; Prelim. Resp. 7–8. Third, we construe “interactively variable duration information,” which is recited in each of challenged independent claims 1, 23, and 26, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1023, 22–23; Prelim. Resp. 10–12.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web.” Pet. 7. Petitioner adds that “[s]uch a person could also have qualified with more formal education and less technical experience, or vice versa.” Id. (citing Ex. 1002 ¶¶ 13–18). Patent Owner proposes that a person of ordinary skill in the art “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems. A person of ordinary skill in the art would also have approximately 3-5 years of professional experience with these topics.” Prelim. Resp. 5–6. In addition, Patent Owner say that “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Id. Petitioner supports its proposal with testimony by Dr. Schmandt. See Ex. 1002 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Dr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his “analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 13

  Claim constructionDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,606,819
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00593 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 22–62 were unpatentable under the asserted §103 grounds.

  RulingsInstitution decision

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

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 39; see also id. at 45–46 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt.” slip op. at 26

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “E. Real Parties in Interest Petitioner identifies Google LLC and YouTube, LLC as real parties in interest. Pet. 1. Patent Owner identifies Robocast, Inc., as a real party in interest. Paper 5, 2.” slip op. at 7

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner supports its proposal with testimony by Dr. Schmandt. See Ex. 1102 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Dr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1123, 16–17; Prelim. Resp. 10–12. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 22 and 46, as well as dependent claim 45, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1123, 2–13; Ex. 2107, 5; Prelim. Resp. 9. For purposes of this Decision, we accord all other terms recited in the challenged claims their plain and ordinary meaning. See Ex. 1123, 17–20, 26–29 (court adopting plain and ordinary meaning of “plurality of accessible resources,” “content,” “without requiring user input,” “in accordance with said show structure,” “providing,” and “search results”); see Prelim. Resp. 8 (Patent Owner advocating that “any additional claim language be[] accorded its plain and ordinary meaning”).” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,965,932
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00592 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–21 and 63–67 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals. Second, we have also considered Mr. Schmandt’s testimony, and he provides no meaningful additional information to support reading Shimizu as Petitioner advocates. See Ex. 1002 ¶¶ 119, 121–128. In testimony not cited by Petitioner, Mr. Schmandt admits that “Shimizu does not appear to disclose further details about how duration information is specified or stored within its system, or whether such intervals between nodes can be changed.” Id. ¶ 120. This testimony undermines Petitioner’s position that Shimizu’s hypertext nodes include duration information. Mr. Schmandt elaborates in testimony that Petitioner cites, but does not explain: In a real-world implementation of the proposed combination, for example, the display time could have been specified within the node information structure 9 of Shimizu. I note that node information structure 9 in Shimizu also contains display procedure slot 62 (Fig. 6), which points to “a procedure program function used when the node in question is to be displayed on the screen.” (Shimizu, 6:52-55.) Shimizu thus contemplates that node information structure 9 may contain information about how the node will be displayed to the user, and as such, it would have been obvious that durational information could also have been included as part of node information structure 9. This durational amount could have been a default display time specified by the user, or a display time specific to the node in question, as explained above. * * * Shimizu itself clearly contemplates the ability to customize the display of nodes, and as explained above, node information structure 9 (Fig. 6) includes display procedure slot 62 which points to a program function or procedure used to display the node content, thus making clear that node information structure 9 can hold information about how the node will be displayed. Id. ¶¶ 124, 128. Mr. Schmandt’s testimony that Shimizu would need to be modified for its hypertext nodes to include duration information is strong evidence that Shimizu does not disclose hypertext nodes that include duration information. This testimony (from ¶ 124) also suggests that Shimizu’s predetermined intervals and times could be included in the procedure program function to which display procedure slot 62 points, rather than in the hypertext node, thereby providing additional evidence Shimizu’s predetermined intervals and times are included in structure other than hypertext nodes. See also Ex. 1003, 6:52–55.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web.” Pet. 6–7. Petitioner adds that “[s]uch a person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 7 (citing Ex. 1002 ¶¶ 13–17). Patent Owner proposes that a person of ordinary skill in the art “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems. A person of ordinary skill in the art would also have approximately 3-5 years of professional experience with these topics.” Prelim. Resp. 6. In addition, Patent Owner say that “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Id. Petitioner supports its proposal with testimony by Mr. Schmandt. See Ex. 1002 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Mr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his “analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1023, 16–17; Prelim. Resp. 10–12. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 1 and 63, as well as in certain dependent claims, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1023, 2–13; Ex. 2007, 5; Prelim. Resp. 9. Third, we construe “interactively variable duration information,” which is recited in each of challenged claims 1, 11, 12, and 64, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1023, 22–23; Prelim. Resp. 12–15.” slip op. at 16

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

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals.” slip op. at 27

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,965,932
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00591 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 22–36 and 39–45 because Petitioner did not show a reasonable likelihood that the asserted obviousness grounds would succeed.

  RulingsInstitution decision

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

    “passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42–43; see also id. at 48 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). We agree with Patent Owner. In its Summary of the Invention, Shimizu describes “mak[ing] it possible to build with ease an application program illustratively causing the display of the nodes to be switched in a specific order and at predetermined intervals.” Ex. 1103, with the predetermined intervals being included in the application program, rather than the hypertext nodes. Similarly, in its Description of the Related Art, Shimizu describes “mak[ing] it possible to create an application program that may be displayed on the screen by reading, from primary or secondary storage and within a predetermined time, the node information held by the nodes that are linked sequentially starting from a particular node.” Id. at 3:12–16 (emphasis added). This passage, too, is better read as disclosing that the predetermined times are included in the application program, rather than the hypertext nodes. Neither of Petitioner’s cited passages states that the hypertext nodes include predetermined intervals/times.” slip op. at 24

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “1 Petitioner filed a paper explaining its basis for filing multiple petitions challenging the ’451 patent and arguing that we should not exercise discretion to deny one of the petitions pursuant to the guidance in the Consolidated Trial Practice Guide (Nov. 2019) at 59 (“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.”). Paper 3. Patent Owner filed an objection to Petitioner’s filing of multiple petitions, arguing that we should deny one of them pursuant to the Trial Practice Guide’s guidance. Paper 8. Because we deny the Petition on the merits, we do not reach whether multiple petitions are appropriate to challenge the ’451 patent.” slip op. at 3

  • Parallel petitionsNot reached

    “1 Petitioner filed a paper explaining its basis for filing multiple petitions challenging the ’451 patent and arguing that we should not exercise discretion to deny one of the petitions pursuant to the guidance in the Consolidated Trial Practice Guide (Nov. 2019) at 59 (“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.”). Paper 3. Patent Owner filed an objection to Petitioner’s filing of multiple petitions, arguing that we should deny one of them pursuant to the Trial Practice Guide’s guidance. Paper 8. Because we deny the Petition on the merits, we do not reach whether multiple petitions are appropriate to challenge the ’451 patent.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web,” and “could also have qualified with more formal education and less technical experience, or vice versa.” Pet. 5 (citing Ex. 1102 ¶¶ 13–18). Patent Owner, without citing evidence, contends that a skilled artisan “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems”; “would also have approximately 3–5 years of professional experience with these topics”; and “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Prelim. Resp. 5–6. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art, and which is supported by expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). However, we do not see a substantial difference between the parties’ proposals. Thus, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,155,451
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00590 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 1–21, 37, and 38 because Petitioner did not show a reasonable likelihood of proving obviousness on any asserted ground.

  RulingsInstitution decision

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

    “16, 5:11–14) describes the hypertext nodes as including the predetermined times or predetermined intervals (what Petitioner argues is the duration). As Patent Owner argues, “even if these ‘predetermined times’ or ‘predetermined intervals’ could be considered relevant default duration parameters, the Petition fails to prove that they would be included within Shimizu’s hypertext nodes—i.e., the putative claimed ‘nodes’ —as the governing claim construction expressly requires.” Prelim. Resp. 45; see also id. at 58–59 (“[T]he passages relied on do not provide any specifics as to how duration information would be implemented. Instead, they are merely speculative and aspirational statements, postulating only about what is ‘possible.’ . . . [I]t is not sufficient for Shimizu to simply teach a time interval between nodes. Rather, . . . the node itself must ‘include . . . the duration for which the resource’s content is to be presented by default.’ The Petition fails to provide any argument or evidence demonstrating that the described predetermined intervals are included in Shimizu’s nodes.” (quoting Ex. 1023, 16 (emphasis Patent Owner’s))).” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web,” and “could also have qualified with more formal education and less technical experience, or vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 13–18).” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “The Microsoft court provided reasoned constructions, which Patent Owner contends that we should adopt. Ex. 1023. See also 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term Commission, that is timely made of record in the inter partes review proceeding will be considered.”). Petitioner does not allege any error in the Microsoft court’s decision or provide any alternative constructions. We adopt the Microsoft court’s constructions of “show structure of nodes” and “nodes” for purposes of this Decision. Based on the record before us, we do not find it necessary to provide express claim constructions for any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “16, 5:11–14) describes the hypertext nodes as including the predetermined times or predetermined intervals (what Petitioner argues is the duration). As Patent Owner argues, “even if these ‘predetermined times’ or ‘predetermined intervals’ could be considered relevant default duration parameters, the Petition fails to prove that they would be included within Shimizu’s hypertext nodes—i.e., the putative claimed ‘nodes’ —as the governing claim construction expressly requires.” Prelim. Resp. 45; see also id. at 58–59 (“[T]he passages relied on do not provide any specifics as to how duration information would be implemented. Instead, they are merely speculative and aspirational statements, postulating only about what is ‘possible.’ . . . [I]t is not sufficient for Shimizu to simply teach a time interval between nodes. Rather, . . . the node itself must ‘include . . . the duration for which the resource’s content is to be presented by default.’ The Petition fails to provide any argument or evidence demonstrating that the described predetermined intervals are included in Shimizu’s nodes.” (quoting Ex. 1023, 16 (emphasis Patent Owner’s))).” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,155,451
• Google LLC v. Parus Holdings, Inc.Rehearing granted
  PTAB · Sep 18, 2023 · IPR2022-00279 · APJ Patrick M Boucher · IPR · Rehearing

  The Board granted rehearing and instituted review of claims 1–4 on all petitioned grounds, finding a reasonable likelihood that claims 1 and 2 are unpatentable over Kovatch and Burrows.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined 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. U.S., 393 F.3d 1277, 1281 (Fed. Cir.” slip op. at 3

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

    “For purposes of this Decision, we thus make a preliminary determination that collateral estoppel precludes Patent Owner from relitigating the issue of whether Kovatch teaches a ranking associated with web site addresses indicating the order in which to access a plurality of preselected web sites. In challenging independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows, the Petition presents an element-by-element analysis to support its position. Pet. 14–32. That analysis relies on Kovatch’s disclosure of the HeyAnita system for accessing web sites to retrieve information a user requested, and relies on Burrows for disclosure of a system for ranking database records that are “presented to the users in a rank order where the pages having a higher rank are presented first.” Id. at 12–13 (citing Ex. 1006, 27:28–32, 32:14–47). Petitioner reasons that a person of ordinary skill in the art “would have found it obvious to apply Burrows’s numbered ranking and polling approach to Kovatch’s destination tree to better identify and present the records of the most interest to the user.” Id. at 13 (citing Ex. 1006, 3:56– 58). In particular, because Burrows explains that “there needs to be a way to rank order the list in a meaningful manner,” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply Burrows’s numbered ranking to Kovatch’s destination tree web pages to provide those of interest first.” Id. (citing Ex. 1002 ¶ 115); Ex. 1006, 27:28–29. Petitioner’s element-by-element analysis explains Petitioner’s position as to how each limitation of independent claims 1 and 2 is met within such a combination. Id. at 14–32. Although Patent Owner makes a number of arguments in its Preliminary Response why the combination does not meet certain limitations, those arguments are precluded by our preliminary determination that collateral estoppel applies. See Prelim. Resp. 29–44.7 We have thus re-evaluated the parties’ arguments in light of the findings made in the 846 IPR, and affirmed by the Federal Circuit, and we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows. We accordingly grant Petitioner’s Rehearing Request and institute an inter partes review of all claims on all grounds asserted in the Petition.8 See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 20

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “The party seeking to invoke collateral estoppel must show: “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against who collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.” Google, 54 F.4th at 1381. Each of these requirements appears to be met with respect to the issue of whether Kovatch discloses rankings associated with the order in which web site addresses are accessed. First, the claim limitations at issue in the two proceedings are sufficiently similar to raise the issue of collateral estoppel. See Ohio Willow Wood, 735 F.3d at 1342 (“If the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel applies. . . . Thus, the mere use of different words in these portions of the claims does not create a new issue of invalidity.”). For example, claim 1 of the ’705 patent recites “a rank number assigned to each one of said web sites and stored in said database” and “access[ing] one of said web sites having the highest said rank number,” while claim 10 of the ’431 patent recites “a ranking associated with each said web site address, said ranking indicating the order in which the plurality of pre-selected web sites are accessed.” Ex. 1001, 19:58–59, 19:65–66; 846 IPR, Ex. 1001, 21:9–11.” slip op. at 18

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

    “determination that collateral estoppel precludes Patent Owner from relitigating the issue of whether Kovatch teaches a ranking associated with web site addresses indicating the order in which to access a plurality of preselected web sites. In challenging independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows, the Petition presents an element-by-element analysis to support its position. Pet. 14–32. That analysis relies on Kovatch’s disclosure of the HeyAnita system for accessing web sites to retrieve information a user requested, and relies on Burrows for disclosure of a system for ranking database records that are “presented to the users in a rank order where the pages having a higher rank are presented first.” Id. at 12–13 (citing Ex. 1006, 27:28–32, 32:14–47). Petitioner reasons that a person of ordinary skill in the art “would have found it obvious to apply Burrows’s numbered ranking and polling approach to Kovatch’s destination tree to better identify and present the records of the most interest to the user.” Id. at 13 (citing Ex. 1006, 3:56– 58). In particular, because Burrows explains that “there needs to be a way to rank order the list in a meaningful manner,” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply Burrows’s numbered ranking to Kovatch’s destination tree web pages to provide those of interest first.” Id. (citing Ex. 1002 ¶ 115); Ex. 1006, 27:28–29.” slip op. at 20

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 6,721,705

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.