• Sonos, Inc. v. Google LLCAll claims unpatentable
  PTAB · May 15, 2024 · IPR2023-00118 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–5, 7–13, and 15–20 are unpatentable: claims 1–3, 7–11, and 15–18 are anticipated by Rosenberger; claims 4, 5, 12, 13, 19, and 20 are obvious over Rosenberger and Basye.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the prior art, the sophistication of the disclosed technology in the ’398 patent, and Dr. Johnson’s testimony, we adopt Petitioner’s definition of the level of ordinary skill. Accordingly, based on the evidence before us, we determine a person of ordinary skill in the context of the ’398 patent would have had the equivalent of a four-year degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2–4 years of experience in the field of voice and/or audio processing, or an equivalent level of skill, knowledge, and experience.” slip op. at 16

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

    “Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the term “low power mode” is not necessary to reach a decision in this inter partes review of the challenged claims. Both parties agree that the ordinary and customary meaning of “low power mode” is “an operating mode or state in which power is conserved,” and thus, this is the construction we will use in reaching our patentability determination. As we discuss below, the dispute between the parties concerns when a networked device in Rosenberger exits the low power mode, not whether Rosenberger discloses a low power mode as claimed. As stated by Patent Owner, the dispositive issue in this proceeding is whether Rosenberger “teach[es] a process by which devices in a low power mode remain in that low power mode while exchanging messages with other devices for the purpose of determining whether to exit the low power mode.” PO Resp. 2.” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “some extent both parties are correct. See Reply 5 (asserting that Patent Owner’s arguments “inappropriately limit Rosenberger’s teachings as a whole to one specific example”); id. at 10–11. We agree with Petitioner, however, that at least one of the embodiments in Rosenberger discloses the claimed invention and thus anticipates claims 1, 9, and 16. Moreover, Patent Owner’s argument “relies on the erroneous assumption that the disclosure of multiple examples renders one example less anticipatory.” Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1356 (Fed. Cir. 2008). Regarding the weighted signal, Rosenberger discloses the control device of the invention uses one of several different coordination methods to achieve the design goal of avoiding duplicate responses to the same speech command while selecting a single control device best able to successfully interact with the system user. All of the methods involve the calculation and production by the control device of a numeric weighted signal (WS) that quantifies the “quality of a just-recognized speech command.” slip op. at 39

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

    “Patent Owner asserts: it would not have been obvious to modify Rosenberger in accordance with the teachings of Basye to not perform speech recognition on the audio data that corresponds to an utterance of the particular, predefined hotword (Pet. 69-73), as recited, because the entire premise of Rosenberger’s invention is to perform speech recognition. PO Resp. 47 (citing Ex. 2012 ¶ 111). According to Patent Owner, a person of ordinary skill “would not have been motivated to modify Rosenberger such that its computing device no longer performs speech recognition on the audio data corresponding to the trigger phrase (alleged ‘hotword’) because the proposed modification alters the speech recognition principles forming the entire premise of Rosenberger.” PO Resp. 51 (citing 2012 ¶¶ 109–114). As we have noted above, the summary of the invention disclosed in the ’398 patent states “each time the words ‘OK computer’ [the chosen “hotword”] are spoken, it is picked up by a microphone, conveyed to the system, which performs speech recognition techniques to determine whether the hotword was spoken and, if so, awaits an ensuing command or query. Ex. 1001, 1:62–66. Thus, before the “the output of processing the audio data” is transmitted, the system first uses “speech recognition techniques” to determine whether the words spoken are, in fact, the adopted “hotword.” The ’398 patent does not define how “speech recognition techniques” differ from “speech recognition.” To the extent there is a substantive difference, Petitioner relies on Basye. As Petitioner explains, using Basye instead of Rosenberger’s speech recognition, would “help reduce ‘false positive’ detections of a ‘trigger phrase’ (or ‘wakeword’).” Pet. 68 (citing Ex. 1002 ¶ 210). Petitioner also asserts that “Bayse explains that the use of ‘thresholding’ can help reduce false positives, which is a situation where a computing device incorrectly determines that speech is present or that speech includes a wakeword.” Id. (citing Ex. 1013 ¶¶ 51, 74–75). This provides a good reason why a person of ordinary skill would want to modify, and improve, Rosenberger’s performance.” slip op. at 50

  Patent outcomesUS 10,134,398 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,134,398
• Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.Instituted
  PTAB · Apr 16, 2024 · IPR2023-01416 · APJ Ken B Barrett · IPR · Institution

  The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood of success for method claims 16–20 under Genossar and Barratt ’470.

  RulingsInstitution decision

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

    “Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 12

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

    “information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’477 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’477 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2

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

    “Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, for purposes of this Petition, the terms should receive their respective plain and ordinary meaning as understood by a [person of ordinary skill in the art].” Pet. 6. Patent Owner asserts that “[n]o claim construction is necessary to deny institution because [Patent Owner] General Access’s arguments for denial do not hinge on any disputed issues of claim interpretation.” Prelim. Resp. 10. For the reasons set forth below, we determine that, as to the independent apparatus claim, Petitioner has not met its burden on its challenges as articulated by Petitioner, but we determine that Petitioner has met its burden for the independent method claim. We need not reach any claim construction issues to make those determinations. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction. However, the parties’ respective positions regarding the anticipation grounds suggest that there may be claim construction disputes regarding terms in independent apparatus claim 1.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 5. Patent Owner states that, “[f]or purposes of this preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 4 (citing Pet. 5). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 6,947,477
• Google LLC v. Wildseed Mobile, LLCAll claims unpatentable
  PTAB · Apr 9, 2024 · IPR2023-00248 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–7 and 9–14 are unpatentable as obvious over Frerichs, Kawasaki, and Kauffman.

  RulingsFinal written decision

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

    “Neither the claim language, Specification, nor the file history of the ’414 patent support the narrow reading of “information taken by the cellular device from a message” that Patent Owner argues. We find Patent Owner’s argument that the ordinary and customary meaning of this claim language requires that the information be limited to data actually in a message as 11 The Examiner’s views as to the interpretation and scope of the claims are important to consider, but an examiner cannot disavow or disclaim scope on behalf of an applicant. distinguished from also meaning information derived or generated from a message lacks merit.” slip op. at 22

  • Skill levelSkill level petitioner adoptedOther

    “Pet. 15–16 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill. PO Resp. 3 (“Patent Owner applies Petitioner’s definition of a POSITA and level of ordinary skill for purposes of the Patent Owner Response.”). Determining the level of ordinary skill in the art involves various 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). We adopt the assessment offered by Petitioner as it is not disputed by the Patent Owner and is consistent with the ’414 patent and the asserted prior art.” slip op. at 26

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Reply 18–19. We agree with Petitioner that Patent Owner’s attack on Petitioner’s articulated (and largely uncontested) motivations to combine and showing of reasonable expectation of success lacks merit. Petitioner proposes to combine the relevant teachings of the combination and shows that a skilled artisan would have been motivated to combine these relevant teachings with a reasonable expectation of success, such as, by combining Frerichs’s teachings of a cellular device that presents targeted advertisements to a user with Kawasaki’s teachings of profiling users based on scanning their received content information. Omega Patents, LLC. v. BMW of North America, LLC, No. 2022-2012, 2024 WL 22780, at *3 (Fed. Cir. January 22, 2024) (“Obviousness is determined based on ‘what the combined teachings of the references would have suggested to those having ordinary skill in the art’ and ‘does not require an actual, physical substitution of elements.’”) (quoting In re Mouttet, 686 F.3d 1322, 13332–33 (Fed. Cir. 2012)). During oral argument, Patent Owner pointed particularly to the declaration of Dr. Malek (Ex. 2009) at paragraphs 129 and 131, and 134. Tr. 113–114. Those paragraphs discuss training sets for neural networks, which are distinguishable from Kawasaki’s recognizers, which are the end product of the neural networks and not the data used to train it. See Ex. 2009 ¶ 161. The recognizers that Petitioner proposes to combine with Frerichs’ cell phone are “algorithms and rules.” See id.; Ex. 1005, 4:17–24. Kawasaki’s recognizers are targeted to specific topics; e.g., “golfing Recognizer 23.” Ex. 1005, 4:37–41. Although Dr. Malek argues that such recognizers would need “possibly thousands of words” (Ex. 2009 ¶ 130), Dr. Malek does not attest that a “golfing” recognizer would need a thousand word vocabulary. Dr. Malek’s testimony is instead based on characteristics of a “neural network system” purposed for “analyzing content of a web page.” Id. at ¶ 54. More particularly, Dr. Malek discusses “running Kawasaki’s neural network model,” but not Kawasaki’s recognizers upon which Petitioner relies for its combination. Id. at 56.” slip op. at 49

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Petitioner contends that both Frerichs and Kawasaki are analogous art to the ’414 patent. Pet. 28 (citing Ex. 1003 ¶¶ 70–71). In support, Petitioner argues: Both Frerichs and Kawasaki relate to targeted advertising techniques. The field of endeavor of the ’414 Patent is “inserting advertisements into broadcast content played on a mobile device.” Ex.1001, 1:15-17. Frerichs is analogous art at least because it relates to “inserting a targeted advertisement based upon a user profile through streaming audio.” Ex.1004, 1:10-13. Kawasaki is analogous art because it relates to targeting offers and “advertisements.” Ex.1005, 2:55-57, 1:25- 29. Id.” slip op. at 47

  Patent outcomesUS 7,376,414 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,376,414
• Sonos, Inc. v. Google LLCAll claims unpatentable
  PTAB · Apr 4, 2024 · IPR2022-01592 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–3, 8–12, 14–18, and 20 are unpatentable: Rosenberger anticipates all challenged claims, and Rosenberger combined with Kim renders claim 11 obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Decided for petitioner

    “would be used in a civil action under 35 U.S.C. § 282(b), as articulated by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and subsequent cases. See 37 C.F.R. § 42.100(b). Under the standard set forth in Phillips, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.” Luminara Worldwide, LLC v. Liown Elecs. Co. Ltd., 814 F.3d 1343, 1353 (Fed. Cir. 2016). In order for a patentee to act as its own lexicographer, it must “clearly set forth a definition of the disputed claim term” and “clearly express an intent to redefine the term.” Thorner, 669 F.3d at 1365 (internal quotation marks and citations omitted). Likewise, disavowal occurs only when there is a clear and unmistakable intent to limit the invention or exclude a particular feature from the claimed invention. Luminara, 814 F.3d at 1353. And, there is a “heavy presumption,” that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “would be used in a civil action under 35 U.S.C. § 282(b), as articulated by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and subsequent cases. See 37 C.F.R. § 42.100(b). Under the standard set forth in Phillips, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.” Luminara Worldwide, LLC v. Liown Elecs. Co. Ltd., 814 F.3d 1343, 1353 (Fed. Cir. 2016). In order for a patentee to act as its own lexicographer, it must “clearly set forth a definition of the disputed claim term” and “clearly express an intent to redefine the term.” Thorner, 669 F.3d at 1365 (internal quotation marks and citations omitted). Likewise, disavowal occurs only when there is a clear and unmistakable intent to limit the invention or exclude a particular feature from the claimed invention. Luminara, 814 F.3d at 1353. And, there is a “heavy presumption,” that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).” slip op. at 8

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

    “Ex. 1001, 7:4–7, 21:57–67, 24:13–16, 29:18–20. We do not dispute that, without the microphone or some similarly functioning component, the device could not detect the input. However, Petitioner’s interpretation would be equally applicable if the limitation were “detect an input” and fails to give meaning to the modifier “voice” in the phrase “detecting a voice input” as recited. The abstract of the ’311 Patent explains that the device “detects a voice input” and “determines a first score of a criterion associated with the voice input.” Ex. 1001, code (57). Determining a score for the detected voice input implies some level of identification of the input as a voice, and not mere perceiving or sensing by the microphone. And, the Specification states that “in accordance with some implementations, a voiceactivated device determines whether the surrounding noise is sufficiently interfering with detection of spoken hotwords for waking up the device . . . or other spoken voice inputs.” Id. at 5:65–6:5. Thus, the ’311 Patent discloses that the device distinguishes between background noise and the detection of specific voice inputs like hotwords. We conclude that the ordinary and common meaning of “detecting a voice input” in the context of the claims and Specification of the ’311 Patent requires the device to identify the input as voice.6 In sum, we conclude that the ordinary and common meaning of “detecting a voice input” requires a process for identifying that an audio input includes voice and does not exclude speech recognition.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Id. at 4:6–14, 8:17–24, 9:57–61, 14:10–18. Cited Figure 4 is a flowchart in which the first step is “Speech Trigger or Command Recognized.”7 In these passages, Rosenberger discloses a method and device utilizing embedded software and circuitry that receives and recognizes a spoken trigger phrase (such as “Hello Voice Control”) and takes action based thereon. Thus, Rosenberger discloses a process for identifying that an audio input includes voice or “detecting a voice input” as recited.” slip op. at 24

  Patent outcomesUS 11,024,311 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,024,311
• Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.Institution denied
  PTAB · Mar 22, 2024 · IPR2023-01415 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–17 unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 8

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

    “DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)—FINTIV Patent Owner argues that, in view of the parallel litigation in Texas, the Board should discretionarily deny institution of an inter partes review under 35 U.S.C. § 314(a) pursuant to Fintiv. Prelim. Resp. 38–40; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (setting out six nonexclusive factors that the Board may” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical or computer engineering, or a related field, and at least two years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a master’s degree in electrical engineering, computer engineering, computer science, or a similar field. Pet. 5 (citing Ex. 1003 ¶ 34). Patent Owner states that, “[f]or purposes of this Preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 2. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10

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

    “Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, the terms should receive their respective plain and ordinary meaning as understood by a person of ordinary skill in the art.” Pet. 6. Patent Owner argues that “nowhere else do Petitioners even mention claim construction, much less provide a proposed construction for any term of the ’383 patent.” Prelim. Resp. 12. Rather, according to Patent Owner, “the Petition repeatedly cites to Patent Owner’s infringement contentions from a related district court proceeding to set forth what Petitioner then intuits Patent Owner’s constructions for claim terms would be.” Id.; see id. at 16 (Patent Owner asserting that “[t]he Petition relies on citations to Patent Owner’s infringement contentions no less than 68 times for its challenge to all Challenged Claims, and for all Grounds.”). Patent Owner further argues that Petitioner does not indicate whether it agrees with, proposes, or adopts the constructions attributed to Patent Owner, and therefore has failed to set forth how the challenged claims are to be construed, as required under 37 C.F.R. § 42.104(b)(3). See id. at 12–17. For the reasons set forth below, we determine that Petitioner has not met its burden on its challenges as articulated by Petitioner. We need not reach any claim construction issues to make that determination. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,099,383
• Apple Inc. v. Ald Social LLCInstituted
  PTAB · 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 · Graham
  Patents in suitUS 9,402,158
• Apple Inc. v. Ald Social, LLCInstituted
  PTAB · 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 · KSR
  Patents in suitUS 9,198,054
• Sonos, Inc. v. Google LLCAll claims unpatentable
  PTAB · Mar 15, 2024 · IPR2022-01594 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–3, 5–8, 10–13, and 15 are unpatentable: Rosenberger anticipates all challenged claims, and Rosenberger combined with Kim renders claims 5, 10, and 15 obvious.

  RulingsFinal written decision

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

    “PO Resp. 12–15; PO Sur-reply 1–6. Petitioner also does not argue either lexicography or disavowal. Tr. 8:9–17. We do not find either (1) lexicography or (2) disavowal, because (1) there is no clearly set forth definition of “detecting a voice input’ in the ’128 patent or (2) evidence of a clear and unmistakable intent to disavow the ordinary and customary meaning of “detecting a voice input.” Accordingly, we apply the ordinary and customary meaning of “detecting the voice input” in light of the language of the claims, specification, and file history (the intrinsic evidence). Thorner, 669 F.3d at 1365. In the Response and Reply, the parties assert different views of the ordinary and customary meaning of “detecting the voice input” as recited in the independent claims of the ’128 patent.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a “POSITA [(person of ordinary skill in the art)] in the technology field of the ’128 Patent would have had the equivalent of a four-year degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2–4 years of experience in the field of voice and/or audio processing, or an equivalent level of skill, knowledge, and experience.” Pet. 22 (citing Ex. 1002 ¶¶ 63– 65.). Patent Owner does not present a position on the level of ordinary skill in the art at the time of the invention. See generally PO Resp. Petitioner’s proposal is consistent with the technology described in the Specification of the ’128 patent and the cited prior art. We adopt Petitioner’s proposed level of skill in the art.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Id. at 4:6–14, 8:17–24, 9:57–61, 14:10–18. Cited Figure 4 is a flowchart in which the first step is “Speech Trigger or Command Recognized.”12 In these passages, Rosenberger discloses a method and device utilizing embedded software and circuitry that receives and recognizes a spoken trigger phrase (such as “Hello Voice Control”) and takes action based thereon. Thus, Rosenberger discloses a process for identifying that an audio input includes voice or “detecting a voice input” as recited.” slip op. at 23

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

    “Id. at 63, 65–66. We find Petitioner’s articulated reasons for combining the relevant teachings of Rosenberger and Kim to be well-supported. The Response contains this single sentence criticizing Petitioner’s showing of motivation to combine: “[A]ll of the Petition’s motivations to combine are clearly rooted in hindsight because, in Rosenberger, only devices that recognize a particular command (i.e., the devices that a voice command is intended for in the disclosure of Kim) need to participate in the arbitration process.” PO Resp. 30 (citing Ex. 2012 ¶ 87). This argument is not developed or explained and it contradicts the disclosure of Rosenberger. In Rosenberger, all the devices that detect and recognize a voice input (the trigger phrase) participate in the coordination or arbitration process. See, e.g., Ex. 1003, 9:57–10:33. This argument lacks merit. We find that the combination of Rosenberger and Kim teaches all the limitation of claims 5, 10, and 15 of the ’128 patent and that a motivation to combine the relevant teachings of these references existed. We conclude that a clear preponderance of the evidence establishes that claims 5, 10, and 15 of the ’128 patent are unpatentable as obvious.” slip op. at 30

  Patent outcomesUS 9,812,128 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,812,128
• Intel Corporation v. Ax Wireless, LLCInstitution denied
  PTAB · Mar 5, 2024 · IPR2023-01146 · APJ Michael T Cygan · IPR · Institution

  The Board denied institution on all grounds because Petitioner did not show Huang or Sun was prior art to claims 1–10, which it argued were obvious over those references.

  RulingsInstitution decision

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

    “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). For purposes of institution, Petition bears the burden to establish, by a reasonable likelihood that at least one of the challenged claims would have been obvious over the cited art. See 35 U.S.C. § 314(a). Where unpatentability rests on a document that is prior art to a challenged patent but for that patent’s priority claim to an earlier effective filing date, such a priority claim is not presumed valid. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008) (noting that the USPTO does not routinely determine whether such priority claims meet the requirements of 35 U.S.C. § 120).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had at least a Master’s degree in electrical engineer-ing or a similar discipline, and/or at least two to three years of experience working or conducting research in wireless commu-nication protocols, or an equivalent combination of education and experience. Pet. 6 (citing Ex. 1003 ¶¶ 71, 72). Patent Owner does not contest Petitioner’s assertion as to the level of ordinary skill in the art. Prelim. Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’146 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “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) (2022). The Board is required to construe “only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner and Patent Owner, in extended briefing, contest the construction of the phrase “detecting, from the received wireless packet, the second header field which repeats the first header field,” as it appears in claim 1. Pet. 9; Prelim. Resp. 1; Pet. Reply 3; PO Sur-Reply 3. However, both parties appear to agree that the plain and ordinary meaning of the term should apply. See Pet. 6; Prelim. Resp. 15. Further, Petitioner has clarified that its statements as to the scope of the term are directed to its assertions that the ’146 patent lacks support for the claimed subject matter in its parent applications. Pet. Reply. 5–6. Consequently, we address claim construction arguments in their context of the parties’ priority contentions. See infra at II.D.1.” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Patent Owner has shown sufficient written description support for the claims, including the disputed “detecting” limitation. The “decode-to-learn- ‘D’” description in the specification of the ’146 patent and in the provisional application to which the ’146 patent claims priority describe a specific procedure for the claimed “detecting, from the received wireless packet, the second header field which repeats the first header field.”3 See Ex. 1001, 2 Petitioner specifically asserts that Huang qualifies under 35 U.S.C. §102(b). Pet. 2, 19 (“by more than a year”). However, Huang’s patent issuance date of April 28, 2020 does not qualify under § 102(b) because it is less than one year before the December 29, 2020 filing date of the ’146 patent. Nevertheless, Petitioner has made an effective showing that Sun would qualify as prior art sufficient to shift the burden of production to Patent Owner. 3 Patent Owner does not explicitly show support for each of the applications in the priority chain. Patent Owner also cites to a Pre-Grant Publication rather than the underlying application despite the fact that such a Publication may include amendments to the originally filed application that would not evidence written description. See 37 C.F.R. § 1.215 (a); MANUAL OF PATENT EXAMINING PROCEDURE §1121; Ex. 2003, 7 (showing amendments 3:1–11; Ex. 2001 ¶ 35; Ex. 1008, 5–6; PO Sur-Reply 6. The “D” information is received in the wireless packet, and the receiver determines therefrom whether there is a second header field that repeats the first header field. See Ex. 1008, 5–6; PO Sur-Reply 6. The written description further includes descriptions of other embodiments for receiver detection with variable repetition, including detection “without knowing D a priori.” Ex. 1001, 2:18–3:59.” slip op. at 9

  Claim construction§ 112 disclosure
  Patents in suitUS 11,212,146
• Intel Corporation v. Ax Wireless, LLCInstituted
  PTAB · Mar 5, 2024 · IPR2023-01145 · APJ Michael T Cygan · IPR · Institution

  The Board instituted inter partes review of claims 1–10 on both asserted § 103 grounds: Yu and Hansen with WWiSE.

  RulingsInstitution decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “The touchstone in determining whether a reference constitutes a printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 9–10. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp site; and (3) availability to others through Mentor. We address each in turn, taking into account Patent Owner’s arguments.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 8 (citing Ex. 1003 ¶ 71). Patent Owner does not contest this assessment. Prelim. Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’146 patent and the prior art of record.” slip op. at 18

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

    “claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Here, neither party sets forth any claim construction. Pet. 9; Prelim. Resp. 3. Therefore, we construe the claims pursuant to § 42.100(b).” slip op. at 19

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

    “Patent Owner argues, and we agree at this stage, that a general desire to combine two competing proposals as expressed in Hansen does not specifically motivate incorporating ER header bits into the standard, as asserted by Petitioner. Prelim. Resp. 43–45. Although insufficient by itself to support the asserted combination, such an expressed desire to combine proposals provides some impetus to consider features from each proposal as a compromise to create the new IEEE standard, and we consider that in our consideration of Petitioner’s other reasons.” slip op. at 32

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,212,146

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.