- PTAB · Jul 18, 2024 · IPR2024-00322 · APJ Georgianna W Braden · IPR · Institution
The Board instituted inter partes review of claims 1–26 on all asserted grounds, finding compelling merits for claim 22 and declining discretionary denial under §§ 325(d) and 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“may bear on the decision to exercise discretion to deny, such as the merits of the patentability challenges. Fintiv, Paper 11 at 14–16. Under this factor, “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” Guidance Memo 5. Board precedent provides that we should only consider the compelling merits standard if the first five Fintiv factors favor discretionary denial. CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB February 27, 2023) (precedential). The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs against denial. As set forth above, we determine that the first five Fintiv factors favor discretionary denial, and thus, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1– 5 favors denial of institution, the Board shall then assess compelling merits.”). We note that the compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4 (emphasis added). Thus, the standard need only be met as to one claim. In this case, we determine, for the reasons explained below in our a compelling challenge at least for independent claim 22. Thus, we decline to deny institution based on the Fintiv factors.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 21 (“[F]or the purpose of this Preliminary Response 9 Patent Owner has not introduced secondary considerations evidence. ordinary skill in the art.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“D. Claim Construction The parties do not propose express construction for any claim terms. Pet. 19; Prelim. Resp. 21. On this record, we determine that no terms need express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,356,251 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution deniedPTAB · Jul 17, 2024 · IPR2024-00321 · APJ Georgianna W Braden · IPR · Institution
The Board denied institution of IPR on claims 1–26, finding the Fintiv factors favored denial and the petition did not meet the compelling merits standard; it also cited the parallel petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs against denial. As set forth above, we determine that the first five Fintiv factors favor discretionary denial, and thus, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1– 5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.”” slip op. at 11
- Parallel petitionsInstitution denied discretionary otherDenied
“The record before us does not support the need for two petitions. In the related district court litigation noted above, Patent Owner has asserted only six claims of the ’251 patent (Paper 10 at 4), so this is not a situation in which “the patent owner has asserted a large number of claims in litigation.” See CTPG 59. Nor has Petitioner shown why this Petition would be preferable to a petition that has a challenge relying only on § 102(b) art, as in IPR2024-00322, should there arise a priority dispute. Thus, in addition to our reasons for denying based on Fintiv, we determine that discretionary denial is appropriate here given the institution of inter partes review in IPR2024-00322.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“As noted above, our inquiry is directed to whether the Petition meets the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). We agree with Patent Owner that there is some inconsistency in Petitioner’s contentions regarding the “programming code” recitations of claim 1. Petitioner’s contention for the storing limitation does not mention “VideoPlay” even though Petitioner identifies that as the converted command in the converting step. See Pet. 34–36. Rather, Petitioner’s contentions for the storing step focus on the URL. Petitioner does not explain how the URL is “programming code.” Petitioner relies on a portion of Figure 11H from Redford (see Pet. 34), but that figure shows in step 1153 that a server transmits a command to the content provider computer, not the television that Petitioner identifies as the “display device.” Ex. 1005, 11:36:45–50, Fig. 11H.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,356,251 - Alertus Technologies, LLC v. Desktop Alert, Inc.Institution deniedPTAB · Jun 28, 2024 · IPR2024-00363 · APJ Andrew L Nalven · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–13 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Although claims 1 and 10 recite slightly different language, both clearly recite a “first triggering step” that precedes two subsequent polling steps. In the case of claim 1, the “first triggering step” precedes the “second step” and “fifth step.” See id. The explicit use of “second” and “fifth” supports limiting the steps to the recited order. See Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (“[A] claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” (cleaned up)).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have (i) a bachelor’s degree or equivalent in electrical engineering, computer engineering, network engineering, computer science, and/or a related field and (ii) 1-3 years of experience relating to computer and networking systems and/or methods including systems and methods for messaging.” Pet. 4–5 (citing Ex. 1003 ¶¶ 25–26). Patent Owner does not offer a position as to the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment, which appears consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“with Patent Owner that Dillon discloses time-stamps as “alternatives.” Prelim. Resp. 21 (citing Ex. 1005, 4:36–41). Dillon explains that “[t]he time-stamp . . . may represent the status of the subscriber’s e-mail account in various ways . . . [m]ost commonly, it is an indication of an actual time.” Ex. 1005, 7:19–21. However, Dillon explicitly states that “[a]lternatively, a time-stamp may be a number, such as a version number . . . or it may be a binary indication of whether or not e-mail . . . has been received.” Id. at 7:23–28 (emphasis added). Petitioner has not identified any portion of Dillon that suggests using more than one type of time-stamp in the same process. See generally Pet. 30–36. Dillon’s lack of disclosure of using multiple time-stamps appears consistent with Dillon’s description of the time-stamp as providing “the status of the subscriber’s e-mail account.” Ex. 1005, 7:19–21. Each disclosed alternative — time, version number, or binary indication — provides status information for the same purpose, namely, to indicate “whether or not e-mail for the given e-mail alert service subscriber has been received by the e-mail server 12 at any given time.” Id. at 7:27–29, 9:7–17. Because each of Dillon’s alternatives for a time-stamp serves the same purpose, we are not persuaded that Petitioner has provided sufficient reasoning to demonstrate that a POSITA would have been motivated to modify Dillon to both add a new polling step requesting a first time-stamp as a Boolean time-stamp and then request a second time-stamp as a version number or time indication. Indeed, Petitioner’s asserted rationale to modify Dillon here is conclusory and fails to explain sufficiently how using a second time-stamp will achieve the asserted benefits of reducing messaging bandwidth or uniquely identifying a particular message. See Pet. 31. Because Dr. Mangione-Smith’s declaration testimony mirrors Petitioner’s argument, his supporting testimony is similarly insufficient. Compare Pet. 31, with Ex. 1003 ¶ 62. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (noting that “the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations”).” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,172,765 - Dropbox, Inc. v. Entangled Media, LLCInstitution deniedPTAB · Jun 6, 2024 · IPR2024-00285 · APJ Donald E Daybell · IPR · Institution
The Board denied institution because Dropbox did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Conclusion as to Claim 1 Based on the present record, Petitioner has not shown sufficiently that Havewala teaches at least the following limitations of claim 1: 1. “intercepting the request by a software client on the first device;” and 2. “determining by the software client if the file is physically located on the first device or if the file is a virtual file of a corresponding file physically stored on a second device by reviewing file metadata.” Petitioner does not identify any teachings from Adams that bear on these limitations. Therefore, Petitioner does not demonstrate a reasonable likelihood of success that it would prevail in showing that claim 1 is unpatentable.” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“At this juncture, the parties only appear to dispute the educational background in the definition of the level of ordinary skill in the art. The only evidence in the present record regarding the educational background consists of Dr. McDaniel’s declarations in this case and in the underlying litigation. See Ex. 1003 ¶ 21; Ex. 2001, 14–15. We agree with Patent Owner that both of these declarations support that a person of ordinary skill in the art would have had either a bachelor’s or a master’s degree in computer science or electrical engineering or a related degree. Prelim. Resp. 2–3. Moreover, Petitioner does not explain why a master’s degree is necessary. Thus, we revise Petitioner’s proposed definition to conform to Dr. McDaniel’s testimony. We additionally remove the qualifier “at least” from Petitioner’s proposed definition, because this qualifier introduces ambiguity. Thus, for purposes of this Decision, we apply the following definition of the level of ordinary skill in the art: a POSITA would have been a person holding a bachelor’s degree or a master’s degree in computer science or electrical engineering or a related degree, with two years of training or experience with networking and file systems. This definition appears to be consistent with what is reflected by the content of the applied prior art references as well. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We note, however, that our analysis below would not change even if we adopted Petitioner’s definition as stated in the Petition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner asserts that it “does not propose that any terms require construction.” Pet. 11. Similarly, Patent Owner asserts that it “does not propose that the Board expressly construe any claims.” Prelim. Resp. 4. For purposes of this Decision, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding.” slip op. at 11
- BurdenNot shown unpatentable
“The instant limitation recites “intercepting the request,” which relies for its antecedent basis on the “accepting a request” limitation recited above. Therefore, this claim requires that the same “request” be both accepted and intercepted. See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008) (noting that definite articles such as “the” and “said” create anaphoric phrases that refer to the initial antecedent phrase, and do not alter the meaning of the antecedent “in the slightest”). Petitioner, however, fails to identify any “request” that is both “accepted” and limitation, Petitioner relies on the “open” message sent to the file system as the recited “request” that is accepted. Id. at 20–22. For the “intercepting the request” limitation, however, Petitioner relies on an error message sent back from the file system to the application as the recited “request” that is intercepted. Id. at 33. Thus, Petitioner points to two different features of Havewala for teaching the same required “request” in claim 1. This is fatally inconsistent. Therefore, Petitioner fails to adequately demonstrate that Havewala teaches that the same “request” is first accepted and then intercepted, as required by the claim. Even were we to overlook the inconsistency in Petitioner’s analysis, Petitioner still fails to establish that Havewala teaches the claimed “request to operate on a file.” Petitioner relies for this limitation on an error message generated by the file system as the claimed “request.” Pet. 33. This error message, however, is not a “request to operate on a file,” as claimed. This error message is instead a response generated by the file system to a request from the application or operating system to open a file. Ex. 1005 ¶ 64. The response indicates that the request cannot be fulfilled because the target file has no data. Id. Havewala discusses its messaging paradigm with reference to Figure 6, which is excerpted below: steps performed in reconstituting a ghosted file from the sink. See Ex. 1005 ¶ 27. This excerpt depicts steps 601, 603, and 605. At step 601, the file system 16 receives an open command from an application 30. Id. ¶ 67. In this step, the “file system . . . notes that the ghosted file 14 does not contain the removed data 20.” Id. ¶ 68. Then, after the open command has already been received and processed by Havewala’s file system, the file system returns an error at step 603. Id. at Fig. 6. This “returned error” is what is intercepted by the ghosting filter 26, at step 605. Id. ¶ 68, Fig. 6. Figure 6 of Havewala and the associated text at paragraphs 67 and 68 demonstrate that the error message that is intercepted by Havewala’s ghosting filter is not a request; instead, it is a response to the “open” request. Petitioner’s argument that an error message is the claimed “request” is therefore unsupported by the evidence of record.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,484,260 - Dropbox, Inc. v. Entangled Media, LLCInstitution deniedPTAB · Jun 6, 2024 · IPR2024-00284 · APJ John A Hudalla · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, Petitioner has not shown that the combination of Aboulhosn and Phillips teaches “the virtual files [being] indistinguishable from the local files by the local file system,” as recited in claim 1. We additionally note that the same deficiencies discussed directly above infect Petitioner’s rationale for combining Phillips with Aboulhosn. Specifically, Petitioner contends that an ordinarily skilled artisan seeking “a smoother and more seamless user experience with Aboulhosn’s system” would have been motivated to incorporate “Phillips’s visual indistinguishability feature (i.e., displaying virtual files to the user in the same way as local files).” Pet. 54–55. Petitioner characterizes this alleged feature as “provid[ing] the perception that all the shared files are synced/stored locally.” Id. at 55. Yet Phillips’s virtual files are stored in a virtual drive that is segregated from local files. See Ex. 1006, 13:64–15:7, Fig. 4. As such, Phillips’s virtual files are visually distinguishable because they are located in that separate virtual drive, i.e., “the network connected storage device ‘F’” known as “Lets Work on ‘@v-drive.’” See id. Thus, we do not agree that Phillips’s presentation of virtual files in a separate virtual drive would have motivated an ordinarily skilled artisan to combine Phillips with Aboulhosn in the manner suggested by Petitioner. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Aboulhosn and Phillips.” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundDecided for patent owner
“The ’338 patent Specification both disparages certain prior art file systems and indicates the criticality of certain transparency features. Specifically, the ’338 patent acknowledges prior art systems where “the data on separate devices is kept separated when synchronized-local data is stored in a set of locations within the operating system’s native file system” and where “remote data on other devices or other online services is kept in a new location such as a new directory/folder or secondary location (e.g., removable hard drive) mounted on the device.” Ex. 1001, 1:58–65. In contrast to this prior art, the ’338 patent states that it is “[c]ritical to the unique nature of this system” that its shared file system is “totally transparent, not requiring the user to interact with software, nor distinguish files in local vs. remote locations.” Id. at 5:24–26. Indeed, the ’338 patent describes the invention in direct contrast to the prior art insofar as “the local operating system’s file system [is] modified to include remote files in the same locations of the local device (such as the ‘My Documents’ folder) as opposed to a separate and segregated location for such remote data (such as a synchronization folder or an additional hard drive ‘mounted’ on the device).” Id. at 6:25–30 (emphasis added). Furthermore, remote or virtual files in the disclosed system are visually represented “as if the files were indeed local, allowing the user to operate on them as if they were local to the device,” thus making their appearance “indistinguishable” from that of local files. Id. at 6:30–36. We find that these disclosures, taken together, indicate a disavowal of claim scope as to file systems where remote or virtual files are kept in a separate location, such as in a separate folder, device, or drive. See SciMed, 242 F.3d at 1341–43. For similar reasons, we find that remote or virtual files that are kept in a separate folder, device, or drive are not “indistinguishable” from local files as that term is used in the claims of the ’338 patent.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“above infect Petitioner’s rationale for combining Phillips with Aboulhosn. Specifically, Petitioner contends that an ordinarily skilled artisan seeking “a smoother and more seamless user experience with Aboulhosn’s system” would have been motivated to incorporate “Phillips’s visual indistinguishability feature (i.e., displaying virtual files to the user in the same way as local files).” Pet. 54–55. Petitioner characterizes this alleged feature as “provid[ing] the perception that all the shared files are synced/stored locally.” Id. at 55. Yet Phillips’s virtual files are stored in a virtual drive that is segregated from local files. See Ex. 1006, 13:64–15:7, Fig. 4. As such, Phillips’s virtual files are visually distinguishable because they are located in that separate virtual drive, i.e., “the network connected storage device ‘F’” known as “Lets Work on ‘@v-drive.’” See id. Thus, we do not agree that Phillips’s presentation of virtual files in a separate virtual drive would have motivated an ordinarily skilled artisan to combine Phillips with Aboulhosn in the manner suggested by Petitioner. For these reasons, Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Aboulhosn and Phillips.” slip op. at 27
- Expert testimonyPetitioner expert discountedDecided for patent owner
“that Aboulhosn does not teach “the virtual files [being] indistinguishable from the local files by the local file system.” Pet. 44–45. To fill this gap, Petitioner relies on, inter alia, Phillips’s teachings of virtual files appearing to be the same as local files and appearing to be locally present. Id. at 45 (quoting Ex. 1006, 6:34–36, 14:62–66). Yet Phillips’s virtual storage device and its contents are segregated from local files in Phillips’s display window 1000. See Ex. 1006, 13:44–50, Fig. 4 (discussing and depicting “entry 1034 for the network connected storage device ‘F’” known as “Lets Work on ‘@v-drive’” and its corresponding files 1042 and folders 1044 displayed in sub-window 1040). Thus, virtual files in Phillips’s system are not stored in the same location as local files.6 Because Phillips’s virtual files are stored in a virtual storage device that is separated from Phillips’s local files, those virtual files are not “indistinguishable from the local files by the local file system,” as is recited in claim 1. Petitioner cites Phillips for teaching that “the virtual storage device and its contents . . . appear[], to the client node user . . . to be locally present” and “behave . . . as if locally present on the client nodes.” Pet. 45– 46 (quoting Ex. 1006, 9:36–39, 14:62–66). Based on this, Petitioner contends that an ordinarily skilled artisan “would have understood Phillips 6 We acknowledge that Petitioner relies on Aboulhosn, not Phillips, for teaching “virtual files stored in the same locations as local files of the local file system.” See Pet. 43–44. However, as we discuss below, the fact that Phillips’s system stores virtual and local files in different locations means that Phillips’s virtual files are not “indistinguishable” from the local files by the local file system. to teach that its virtual files appear indistinguishable from local files, including file extensions.” Id. at 46 (citing Ex. 1003 ¶ 151). Yet the patentees of the ’338 patent disavowed coverage for the term “indistinguishable” as applied to virtual files stored in a separate location, such as a separate folder, device, or drive. See supra § II.C. And that is exactly what Phillips teaches. See, e.g., Ex. 1006, 13:64–15:7, Fig. 4. We agree with Patent Owner (Prelim. Resp. 16–18) that Phillips’s virtual files are distinguishable from local files by the local file system because they are stored separately in the virtual F: drive/storage device. See Ex. 1006, 13:64– 15:7, Fig. 4. Further, we do not credit Dr. McDaniel’s testimony as establishing that virtual files in Phillips are “indistinguishable” (as that term is understood in the ’338 patent (see supra § II.C)) because he includes no reasoning showing why an ordinarily skilled artisan would have interpreted Phillips’s teachings as extending beyond files in a segregated virtual drive appearing to be locally present. See Ex. 1003 ¶¶ 149–151.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,296,338 - Lzlabs GmbH v. International Business Machines CorporationNo claims unpatentablePTAB · May 23, 2024 · IPR2023-00274 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–4, 6, 10–12, 16, and 17 were not shown unpatentable because Loderer did not teach a target machine condition code.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“c. Analysis We agree with Patent Owner. On this record, we find that Loderer does not teach or suggest the recited “target machine condition code.” Loderer says that “[t]he object of [its] invention is . . . to specify a method for simulating a condition code when porting hardware-specific program code from a source hardware to a target hardware that is not providing for condition code.” Ex. 1005, col. 1, para. 5 (emphasis added). Loderer’s claims are directed to “[a] method for simulating a condition code (CC), used for the execution of hardware-specific program code (PCU) for a source hardware (M1), in the program code (PCZ), obtained following transformation, for a differing target hardware (M2) with a machine architecture which operates without a condition code (CC).” Id., claim 1. In other words, Loderer’s target machine does not support condition codes, let alone a “target machine condition code.” Accordingly, Loderer does not teach or suggest a “target machine condition code.”” slip op. at 23
Patent outcomesUS 8,713,289 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,713,289 - Unified Patents, LLC v. Peter Henrik PedersenAll claims unpatentablePTAB · May 10, 2024 · IPR2023-00029 · APJ Stacey G White · IPR · Final written decision
Claims 1 and 14–17 are unpatentable as obvious over Funk and Law and over Funk and Kamakura.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded that Petitioner’s description is consistent with the prior art and patent specification before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, we adopt Petitioner’s description.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the Challenged Claims, identified below, invoke §112 ¶6, Petitioner identifies their function and corresponding structure in compliance with 37 C.F.R. § 42.104(b)(3).” Id. at 11–21. We are not persuaded that any terms from the ’920 patent should be construed as means plus function terms.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“[a] high volume e-mail ‘newspaper’ delivery system.” Ex. 1006, code (57). Funk’s newspaper is created by “manipulat[ing] publicly available information (AP wire service, Reuters, Business Wire, etc.)” and matching that information to a user profile. Id. at 1:49–50. These various inputs (information sources 100) all feed into service processing system 104. Id. at 5:43–44, Fig. 1. In addition, as we discussed above, Funk also discloses third parties that may send information to the customers. See Reply 9. Law’s “information delivery system includes a web server in operative communication with a plurality of recipients and a plurality of senders.” Ex. 1007, code (57). Thus, Law’s web server and Funk’s service processing system both connect multiple information sources to the email system. Law sets out to “improv[e] the collection and dissemination of recipient preferences for messages . . . by collecting recipient preference data and making it available to a plurality of senders for their use in preparing messages intended for a selected recipient.” Id. at 2:26–30. According to Petitioner, “[i]n the Funk-Law combination, Funk’s system would maintain profiles for senders in the Funk combination database, and provide a way for senders to update their profile information, in the same way that Funk already allows customers to have user profiles.” Reply 9–10 (citing Pet. 64, Ex. 1003 ¶ 130, Ex. 1006, 11:29–33). Dr. Houh opines on behalf of Petitioner that one of ordinary skill in the art would have been motivated to “enhance Funk such that the Funk combined processors . . . (1) include[] a software application used to receive sender information including sender identification information from senders via the Internet to establish and update sender profiles, and (2) store[] such sender information in the Funk combination database.” Ex. 1003 ¶ 129. According to Dr. Houh, this would have required the application of a known technique, Funk’s sending messages from parties to customers, by incorporating Law’s sender profiles to help keep track of, organize, and identify senders in Funk. Id. ¶ 130. “Funk contemplates a ‘high volume e-mail ‘newspaper’ delivery system’ that parties can use to send emails to customers, but does not provide explicit disclosure on how various parties sending messages would maintain profiles with Funk’s system.” Ex. 1003 ¶ 130. Dr. Houh further opines that “in the combination of Funk and Law, Funk’s system would maintain profiles for sending parties in the Funk combination database, and provide a way for senders to update their profile information, in the same way that Funk already allows customers to have user profiles that the users may update in Funk’s system.” Id. As such, we are persuaded that this modification would have been obvious in light of Law’s teachings. Patent Owner contends that “[t]here is no need in Funk for multiple sender profiles since it uses a single sender, and there is no motivation in Funk or Law to combine Law’s multiple sender profiles application with Funk’s system that only uses a single sender.” PO Resp. 36. We must, however, be mindful of the Supreme Court’s statement that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Petitioner’s asserted modification would allow the existing information sources in Funk to target the impact of their information in a manner similar to the screening provided to users of Funk’s system. Petitioner provides a sufficient rationale to support its assertions that one of ordinary skill in the art would have been motivated to add this functionality to Funk’s system. We are persuaded that Petitioner is correct in asserting that the asserted modification would only require the application of a known method to achieve a predictable result. Pet. 63–65. slip op. at 37
Patent outcomesUS 6,965,920 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,965,920 - Medit Corporation v. 3shape A/SInstitution deniedPTAB · Mar 29, 2024 · IPR2023-01317 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 5–8, 13–16, 18–20, 22, 26, 28, and 29 were unpatentable under § 103 over Orametrix, Faul, Breton, and Knighton.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Conclusion as to claim 1 After reviewing the record, we find Petitioner has not adequately explained with sufficient evidence that “Orametrix and Faul, further in view of Breton, teach” the limitation at [Claim 1h]. Pet. 29 (citing Ex. 1013 ¶ 100). We find Petitioner has not provided sufficient reasoning with rational underpinnings in support of its contention that a person of ordinary skill in the art would have been motivated to modify Orametrix and Faul in view of Breton and thereby reach an intraoral scanner comprising [Claim 1h] with a reasonable expectation of success. On this record, for the above reasons, we are unpersuaded that the Petition establishes a reasonable likelihood that claim 1 is unpatentable over the combination of Orametrix, Faul, Breton, and Knighton.” slip op. at 31
- BurdenDecided for patent owner
“Petitioner does not address whether switching Orametrix’s color features, as encoding features, illuminates the object with different colors at different times ([Claim 1h]). Petitioner states that “Orametrix describes changing the color of projected encoded features . . . .” Pet. 26. But Petitioner does not explain how that satisfies what [Claim 1h] calls for. Petitioner does not explain, for example, how changing the encoding features of Orametrix’s digital image projection (i.e., probe light (see discussion supra regarding [Claim 1c])) yields an illuminated object with different colors at different times. Even assuming arguendo that Orametrix’s color features, as encoding features, corresponds to the illuminating “color of the probe light” ([Claim 1h]), Petitioner does not adequately explain how Orametrix’s processor (e.g., data processor 952 (see Ex. 1005, 16:20, Figure 11 ( reproduced in § II.D.1)) is configured to “selectively switch” the encoding features so that the object is illuminated with different colors at different times as [Claim 1h] requires. Petitioner relies on Dr. Liang’s testimony as support for its contention that Orametrix teaches a processor configured to “change the color of projected encoding features” but the testimony simply repeats what is said in the Petition without any discussion of objective facts. Compare Pet. 28, with Ex. 1013 ¶ 100 (“the processor of Orametrix is already configured to change the color of projected encoding features, and is configured to introduce color information from photo data into the three-dimensional model”). The cited evidence does not adequately show that Orametrix’s processor “selectively switch[es]” the color of Orametrix’s digital image projection to illuminate an object with different colors at different times and thereby teach [Claim 1h]. We agree with Patent Owner that Orametrix does not teach a hardware processor “configured to: selectively switch a color of the probe light to illuminate the object with different colors at different times” ([Claim 1h]). Prelim. Resp. 19.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“A principal difficulty with Petitioner’s position is that Petitioner does not sufficiently explain why one of ordinary skill in the art would have configured the Orametrix and Faul processors as claimed given that, unlike Orametrix and Faul, Breton is not drawn to transmitting a “probe light towards [an] object along an optical path thereby illuminating at least a part of the object with the time-varying illumination pattern” ([Claim 1c]) based on which, in part, a 3D geometry of at least a part of the surface of an object in an oral cavity is determined ([Claim 1 pre]). As Patent Owner points out, “[b]oth Orametrix and Faul disclose methodologies to process the obtained data and construct three-dimensional representations of the scanned object.” Prelim. Resp. 26 (citing Ex. 1005, 30:7–34:11, Ex. 1004, 13:28–16:6. We agree with Patent Owner that “Breton is silent on this aspect.” Id. Patent Owner quotes various passages from Breton to show that “[a]t best, Breton discusses two-dimensional mapping and measurement of tooth color for the purposes of ensuring the accurate color shade of replacement teeth.” Id. at 25–26 (quoting Ex. 1003, Abstract, 2:43-47, 2:60-64; also citing Title, 1:7– 18, 2:50–52, Figure 3). We agree that the cited passages do not provide adequate support for determining a 3D geometry as Petitioner has shown for Orametrix and Faul. For example, the passage at 2:43-47 discloses: “[a] general drawback of the prior art lies in that the notion of comparison between the measured tooth and a duplicate is limited to a single point to point comparison. Thus, area defects cannot be detected where no measurement has been taken.” Id. at 2:43-47. There is no mention or suggestion of determining a 3D geometry for a tooth. Another difficulty with Petitioner’s position is that Petitioner does not sufficiently explain why one of ordinary skill in the art would have configured the Orametrix and Faul processors as claimed given that, unlike Orametrix and Faul, Breton is not drawn to drawn to “[a] handheld intraoral scanner for determining the 3D geometry and color of at least a part of the surface of an object in an oral cavity” ([Claim 1 pre]). We agree with Patent Owner that Breton “is silent on this aspect.” Prelim. Resp. 27 (citing Ex. 1005, Figure 16; Ex. 1004, Abstract). “At most, Breton employs the use [of] square glass integrator rods, integrating spheres, optic fibers, and custom-made lenses.” Id. at 27 (citing Ex. 1003, 3:52–57, 11:35–38, 11:40-41, 11:47-49; referring to Figure 2 (“square glass integrator rods 20, 20”), Figure 4 (“integrating sphere 152”). “None of these light sources result in an ‘illumination pattern,’ much less a ‘time-varying illumination pattern.’” Id. Petitioner does not address these differences between the Breton apparatus and those of Orametrix and Faul. Petitioner does not explain why a person of ordinary skill in the art would have been led to modify Orametrix or Faul in light of Breton given these differences. Instead, to support its contention that a person of ordinary skill in the art “would understand that the processors described by Orametrix and Faul would be configured to implement the color changing scheme as taught by Breton,” Petitioner relies on Dr. Liang’s testimony. Pet. 28 (citing Ex. 1013 ¶ 100). But the testimony simply repeats what the Petition says without any discussion addressing the differences between the Breton apparatus and those of Orametrix and Faul. See Ex. 1013 ¶ 100. For the foregoing reasons, Petitioner provides insufficient reasoning with rational underpinnings in support of its contention that a person of ordinary skill in the art would have been motivated to modify Orametrix and Faul in view of Breton and thereby reach an intraoral scanner comprising [Claim 1h].” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “[a]s of June of 2009, the priority date of the ’667 patent,” “would have had a bachelor’s degree in computer engineering, computer science, electrical engineering, physics, or an equivalent field, as well as at least one or two years of design experience, or alternatively, at least five years of comparable industry experience.” Pet. 4–5 (citing Ex. 1013 ¶¶ 57–59). Petitioner also asserts that a person of ordinary skill in the art “would have had experience with and knowledge of, 3D imaging systems and 3D modeling techniques.” Id. Patent Owner does not address Petitioner’s characterization of a person of ordinary skill in the art. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s undisputed proposal as reasonable and consistent with the prior art and apply that definition for our analysis in this Decision. C. Claim Construction” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,368,667 - Medit Corporation v. 3shape A/SInstitution deniedPTAB · Mar 29, 2024 · IPR2023-01316 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of success on either §103 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion does not shift to Patent Owner, except in limited circumstances not present here. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). B. Level of Ordinary Skill in the Art slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“Reason to combine In order to demonstrate obviousness, a petitioner must demonstrate that a skilled artisan would have had a reason to combine the teachings of the prior art in the manner claimed in the patent. KSR, 550 U.S. at 406 (2007). “To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’).” Id. at 418.” slip op. at 26
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art “[a]s of June of 2009, the priority date of the ’146 patent,” “would have had a bachelor’s degree in computer engineering, computer science, electrical engineering, physics, or an equivalent field, as well as at least one or two years of design experience, or alternatively, at least five years of comparable industry experience.” Pet. 5 (citing Ex. 1002 ¶¶ 51–53). Petitioner also asserts that a person of ordinary skill in the art “would have had experience with and knowledge of, 3D imaging systems and 3D modeling techniques.” Id. Patent Owner does not address Petitioner’s characterization of a person of ordinary skill in the art at this stage of the proceeding. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s undisputed proposal as reasonable and consistent with the prior art and apply that definition for our analysis in this Decision.” slip op. at 9
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,076,146 - Medit Corporation v. 3shape A/SInstitutedPTAB · Mar 28, 2024 · IPR2023-01315 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, 9, 10, and 12–17 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, we interpret a claim “using the same 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, we construe 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.” Id.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“We understand Petitioner to rely on an inherent disclosure of the certainty score in contending that Korten anticipates claim 1. See, e.g., ABS Glob., Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042–43 (Fed. Cir. 2023) (“A claim is anticipated if ‘each and every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.’” (emphasis added). And inherency is a high standard. See, e.g., Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”). We determine, on the limited record before us, that Petitioner has made a sufficient showing for institution that a certainty score would naturally flow from Korten’s validity and error determinations. Accordingly, upon review of the information in the Petition and corresponding evidence, including Patent Owner’s counter arguments, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that Korten discloses the subject matter of limitation 1[c].” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“teachings of Korten with either Lehmann I or Lehmann II. Prelim. Resp. 22–26, 29 (referencing arguments for Ground 2), 35–36 (referencing arguments for Ground 2 directed to motivation to combine references). Patent Owner argues that, contrary to Petitioner’s assertion, the technology of Korten does not overlap with Lehmann II. Id. at 23. Specifically, Patent Owner argues that Petitioner and Dr. Foroosh fail to address how a person having ordinary skill in the art could have successfully combined the two-dimensional imaging of Lehmann II with the three-dimensional imaging of Korten. See id.; see, e.g., Pet. 31 (“Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models.”). Patent Owner argues that Petitioner should have been aware of this issue given the Board’s prior decision denying institution in IPR2023-00400. Prelim. Resp. 23. Patent Owner then itemizes a list of technical challenges with respect to combining a two-dimensional system with a three-dimensional system. Id. at 24. These challenges include that Petitioner does not explain “how one might associate a Z-coordinate of Korten with the color data obtained by the Lehmann II camera,” how a person having ordinary skill in the art “would have Korten’s processor align the [two-dimensional] color image areas obtained by the Lehmann II camera with the [three-dimensional] entity previously created by Korten, and then provide color values to the entity at aligned X-Y-Z points,” and “how to implement Lehmann II’s [two-dimensional] image into Korten’s [three-dimensional] model.” Id.; see also id. at 24–26 (discussing difficulties in using spectrophotometers to collect color data and associating two-dimensional color data with three-dimensional representations). Petitioner, concentrating on Lehmann II’s best fit technology, contends that “[a]lthough Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models, this difference is immaterial as it relates to determining the certainty score of the selected tooth shade value.” Pet. 31 (referencing Ex. 1015 ¶ 141); cf. Ex. 1015 ¶ 141 (providing the same testimony as is in the Petition). We have reviewed Patent Owner’s argument and determine, on the limited record before us, that Patent Owner identifies a weakness in Petitioner’s position. Petitioner’s contentions concerning motivation to combine Korten and Lehmann II seem to focus on a motivation for using Lehmann’s teachings of the subject matter of limitation 1[c], and does not address Petitioner’s reliance on Lehmann II for the subject matter of limitation 1[b], which recites the step of “determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point of the digital 3D representation and on known texture values of one or more reference tooth shade values.” See Pet. 30 (mapping the requirements of limitation 1[b] to disclosures in Lehmann II); Ex. 1001, 21:33–37 (providing limitation 1[b]). Limitation 1[b] seems to require implementing teachings concerning two-dimensional color data from Lehmann II with three-dimensional color data collected at the step of limitation 1[a] by Korten’s system. As such, Petitioner’s reasoning may not be adequately supported by a rational underpinning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The parties may develop the record concerning this dispute at trial.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,695,151
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.