- Meta Platforms, Inc. v. Eight KHZ, LLCInstitutedPTAB · Jan 9, 2024 · IPR2023-01005 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR of claims 9–14 and 16–20 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner filed a stipulation which stipulates that [i]f the PTAB institutes the pending IPR in IPR2023-01005 challenging the patentability of claims 9–14 and 16–20 of the ’628 patent, then [Petitioner, Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13, 21 (PTAB Dec. 20, 2019) (precedential) (“Hulu”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Id. at 13. slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We disagree based on the current record. Schröder “must be considered for everything that it teaches, not simply the . . . preferred embodiment” that involves only adjusting the HRTFs to maintain the sound’s direction when there are small, relatively frequent movements and performing cross-talk filtering in a particular way. In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012); In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (“A reference may be read for all that it teaches, including uses beyond its primary purpose.”). Petitioner’s position is that (1) Billinghurst teaches spatializing sound for the avatar of a remote collaborator shown on the display, as well as changing the spatialized sound in response to the wearer’s head movements, but does not explicitly describe how it does so, and, therefore, (2) a person of ordinary skill in the art would have looked to a reference like Schröder for details. See Pet. 21–22, 24, 34–36, 45–48. Petitioner relies on Schröder solely for its teachings regarding HRTF processing, not, for example, its description of a particular Schröder processes voice using HRTFs and adjusts HRTFs in response to head movements to maintain direction some of the time (i.e., when there are small, relatively frequent movements); Schröder simply takes a different action in certain other circumstances (i.e., it resets the direction when there is a larger, relatively less frequent movement). See Ex. 1012, pg. 4, l. 12–pg. 6, l. 3; Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016) (“combinations of prior art that sometimes meet the claim elements are sufficient to show obviousness”).” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’628 patent (June 2014), a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science or engineering with a focus on audio signal processing and sound localization, with at least two years of relevant experience,” where “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶¶ 32–34). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 5. Based on the record presented, including our review of the ’628 patent and the types of problems and solutions described in the ’628 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision, except that we remove the term experience.” slip op. at 14
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,674,628 - Meta Platforms, Inc. v. Eight KHZ, LLCInstitution deniedPTAB · Jan 9, 2024 · IPR2023-01004 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Meta did not show a reasonable likelihood that claims 1, 4–6, 8–11, 14, 15, and 17–19 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards A claim is unpatentable for obviousness if “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103; see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including “the scope and content of the prior art”; “differences between the prior art and the claims at issue”; and “the level of ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, secondary considerations, such as “commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019). A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Also, “[t]hough less common, in appropriate circumstances, a patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016). “Although the KSR test is flexible, the Board ‘must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). Further, an assertion of obviousness “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.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (stating that “conclusory statements” amount to an “insufficient articulation[] of motivation to combine”; “instead, the finding must be supported by a ‘reasoned explanation’”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.”).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science or engineering with a focus on audio signal processing and sound localization, with at least two years of relevant experience,” where “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 14; see Ex. 1003 ¶¶ 30–35. Patent Owner argues that a person of ordinary skill in the art instead would have had “several years of academic and/or professional experience in a technical field relevant to digital audio signal processing, such as electrical engineering, computer engineering, or computer science; and a familiarity with relevant literature and concepts concerning virtual 3D audio processing, which were widely available at the time of disclosure.” Prelim. Resp. 6. Neither party explains why its proposed definition is appropriate. Based on the record presented, including our review of the ’196 patent and the types of problems and solutions described in the ’196 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of we remove the term “at least” to eliminate vagueness as to the amount of education and practical experience. We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.” slip op. at 11
- BurdenInstitution denied
“Moreover, though, Petitioner’s showing is insufficient because the preamble and limitation 1[c] recite “moving” the SLP of the voice of the computer program “during the voice exchange between the computer program and the user” (emphasis added). As Patent Owner correctly points out, or pre-recorded sound tracks.” None of the examples in Li includes moving a voice during a voice exchange. Instead, all examples and embodiments in Li are directed to recording, and then moving a 3D sound. Thus, in Li no moving of a sound can happen before first recording it . . . . See Prelim. Resp. 26–28 (also citing the description of Figure 19 shown above as a “reconstruction” of a concert involving sound from multiple instruments); Ex. 1006, code (57), col. 4, ll. 7–16 (stating that the configurable 3D binaural sound is generated “using pre-recorded sound tracks and pre-recorded stereo sound tracks”), col. 5, ll. 7–26, col. 14, l. 58–col. 15, l. 3, col. 21, ll. 38–42, Figs. 7, 8, 20, 25, 27; Ex. 2007 ¶ 27 (“Li gives examples using pre-recorded sounds in fixed positions; this method could not be used for a user to interact dynamically in three dimensions with the spatial configuration of one or more sound sources such as computer voices.”). Also, Li’s users must first input their desired configuration before any binaural sound being rendered—but Li does not disclose a feature that allows users to change their desired configuration during rendering. . . . Li’s music listening example clearly illustrates that users may only place sound sources at their desired spots prior to rendering. . . . Similarly, Li’s conference call example at best suggests that a user can “plac[e] different speaking users at different spots” only prior to rendering the pre-recorded voices of speaking users at the selected spots—once rendered, Li does not disclose that its users may reconfigure during their voice exchange with other speaking users. See Prelim. Resp. 29–30 (citing Ex. 1006, col. 22, ll. 64–67 (“The configurable 3D sound system 900 renders the 3D binaural sound from the input configuration to provide the user with the reconstructed virtual audio 3D space he/she designed.” (emphasis added)), col. 15, l. 61–col. 16, l. 4). that he “read[s] Li as disclosing that moving the sound source . . . takes place during a voice exchange between the computer program and a user/person” is conclusory and unsupported. Id. at 10–13 (quoting Ex. 1003 ¶ 104) (emphasis omitted). Again, the only support for Dr. Kyriakakis’s opinion is the very brief “conference call” excerpt in Li, which we find insufficient for the reasons explained above. See Ex. 1003 ¶ 104 (citing Ex. 1006, col. 21, l. 60–col. 22, l. 5).” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Assuming (without deciding) that Li renders obvious a “voice of a computer program” as Petitioner contends,1 we are not persuaded that Petitioner has made a sufficient showing that Li teaches or suggests a “voice exchange between [a] computer program and [a] user,” or moving a SLP of the voice of a computer program during such a “voice exchange,” as recited in limitations 1[pre],2 1[a], 1[c], and 1[d]. 1 Patent Owner disputes whether Li teaches or suggests a “voice of a computer program,” and also argues that the Petition should be denied under 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). Prelim. Resp. 13–22, 50–59. In light of our decision to deny institution for the reasons discussed herein, however, we need not address these arguments. 2 On the record before us, we determine that the preamble is limiting at least because the body of the claim refers to the preamble for antecedent basis for numerous terms, including the “sound localization point (SLP),” “computer program,” “voice of a computer program,” “voice exchange,” and “user.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a how . . . Li’s listener can have voice exchange with a computer program” and fails to “identify what features of Li would need to be modified to include [the recited ‘voice exchange’] and explain how such modifications would work.” Prelim. Resp. 22–26. The plain meaning of “voice exchange between [a] computer program and a user,” as recited in claim 1, is an exchange of voice audio between the computer program and user. See id. at 22; Ex. 1001, col. 35, l. 64–col. 36, l. 1 (the ’196 patent describing an exemplary embodiment where “second user 2362 is speaking to and listening to . . . four others” and “the others are not people but computer programs with interactive audio input/output interfaces” (emphasis added)). Under Petitioner’s first apparent theory that the “voice of a computer program” can be the processed voice of a speaking user as in “other embodiments” of Li, the “other embodiments” all involve recording sound tracks and providing a GUI that allows the user to configure the sound that will later be played back. See, e.g., Pet. 17, 23; Prelim. Resp. 21, 24–25; Ex. 1006, code (57) (“The 3DSPA generates a configurable sound field on a graphical user interface using recorded or pre-recorded sound tracks.”), col. 5, ll. 7–26 (“The 3D sound processing application generates a configurable sound field on a graphical user interface (GUI) provided by the 3D sound processing application using the recorded sound tracks,” “acquires user selections of one or more of multiple configurable parameters,” and “dynamically processes the recorded sound tracks using the acquired user selections to generate a configurable 3D binaural sound.”), col. 14, necessary component of the claimed invention.”). Even if it was not, though, limitations 1[a], 1[c], and 1[d] recite the “voice exchange” discussed herein. from the acoustic beam patterns. . . . The 3D sound processing application generates 703 a configurable sound field . . . using the recorded sound tracks.”), Figs. 7 (steps 702 and 703), 8 (steps 801 and 703), 20 (steps 2001, 2002, and 703), 25 (steps 2501, 2502, and 703), 27 (steps 702 and 703). Petitioner and Dr. Kyriakakis rely on a single sentence in Li that “the configurable 3D sound system 900 provides a method of communication among multiple people, for example, in a conference call, by placing different speaking users at different spots to mimic a real conference room environment.” Ex. 1006, col. 22, ll. 1–5; see Pet. 24; Ex. 1003 ¶ 104. Petitioner does not provide any further explanation as to how a voice exchange would occur during such a “conference call” when modified to use the processed voice of a speaker—which the remainder of Li describes as recorded in advance in sound tracks. Absent additional explanation, we are not persuaded that Li’s brief reference to a “conference call” is sufficient.” slip op. at 20
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,282,196 - Meta Platforms, Inc. v. Eight KHZ, LLCInstitutedPTAB · Jan 9, 2024 · IPR2023-01003 · APJ Justin T Arbes · IPR · Institution
The Board instituted review of claims 1–3, 6, 8–10, 12, and 14–19 on all asserted § 103 grounds after finding a reasonable likelihood of success on challenged independent claims.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (‘Sotera’)], the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner filed a stipulation which stipulates that [i]f the PTAB institutes the pending IPR in IPR2023-01003 challenging the patentability of claims 1–3, 6, 8–10, 12, [and] 14–19 of the ’090 patent, then [Petitioner, Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“address above, Patent Owner does not dispute Petitioner’s arguments regarding limitations 1[b]–1[d]. Prelim. Resp. 15–21. Petitioner’s contentions regarding the combination of Bedingfield and Andrea are supported by the testimony of Dr. Kyriakakis and are persuasive based on the current record. See Pet. 16–27; Ex. 1003 ¶¶ 96–140. Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Bedingfield and Andrea. Accordingly, we institute review “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a).” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’090 patent (June 2014), a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science or engineering with a focus on audio signal processing and sound localization, with at least two years of relevant experience,” where “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 15 (citing Ex. 1003 ¶¶ 32–34). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 12. Based on the record presented, including our review of the ’090 patent and the types of problems and solutions described in the ’090 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision, except that we remove the term “at least” to eliminate vagueness as to the amount of education and practical experience.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Interpretation We interpret each challenged 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), 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. any claim terms and states that “[t]he prior art relied on in this Petition discloses the subject matter of the challenged claims under any reasonable construction, including their plain meaning.” Pet. 15. Petitioner also notes that Patent Owner argued in the district court case that the “processor” limitation in claim 15 is not a means-plus-function limitation under 35 U.S.C. § 112(f). Id. at 16 (citing Ex. 1027, 24–38). Petitioner states that it adopts Patent Owner’s district court construction “[s]olely for this IPR.” Id. Patent Owner likewise does not propose express interpretations of any claim terms, but disputes Petitioner’s statement regarding “any reasonable construction,” arguing that it “harkens back to the broadest reasonable interpretation standard” previously used by the Board. Prelim. Resp. 12–13. We do not understand Petitioner to have applied that standard, however, given that Petitioner never used the term “broadest.” See Pet. 15. We apply the claim interpretation standard set forth in 37 C.F.R. § 42.100(b) and conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,226,090 - PTAB · Jan 9, 2024 · IPR2023-01117 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 14–42 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’213 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“Concurrently with the Petition, Petitioner filed a Motion for Joinder seeking joinder as a party in Amazon.com, Inc. v. Jawbone Innovations, LLC, IPR2023-00276 (“the Amazon IPR”) and consolidation with the Amazon IPR. Paper 3. Patent Owner filed an Opposition to Petitioner’s Motion for Joinder. Paper 7. Subsequently, the Amazon IPR terminated based on settlement. IPR2023-00276, Paper 17. We therefore dismiss Petitioner’s Motion for Joinder as moot.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition. Prelim. Resp. 14 (citing Ex. 2002 ¶ 26). Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art. Our decision would not have changed had we adopted Patent Owner’s proposal.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“At this stage, we determine that Patent Owner’s proposed construction improperly imports an embodiment from the specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs. Inc. v. Stryker Corp., 755 F. 3d 1367, 1371 (Fed. Cir. 2014). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. “The standards for finding lexicography and disavowal are exacting. To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning and must clearly express an intent to redefine the term.” Id. (internal quotation omitted). On this record, there is no such clear definition in the specification, express or implied. The disclosed filter β(z) “describes the relationship between O1 and calibrated O2 for speech.” Ex. 1001, 5:31–32. But the filter β(z) is merely a disclosed embodiment and does not define the claimed “filter that describes a relationship for speech.” See id. Patent Owner also points to no disclosure that disavows interpretations other than the example filter β(z). Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). We decline Patent Owner’s invitation to limit the claims to unclaimed features. Patent Owner separately asserts that claim 17’s recitation of “applying a delay to the first intermediate signal” clarifies that a POSITA would not interpret claim 14’s filter to include a delay. Prelim. Resp. 16. Patent Owner argues that “[a] POSITA would know that applying two delays in succession is equivalent to applying a single delay for the sum of those two delays. Thus, a POSITA would realize that the filter cannot be a delay filter[.]” Prelim. Resp. 16 (Ex. 2002 ¶ 62). At this stage, we disagree. Claim 17 merely requires a delay to be applied to a first intermediate signal. To the extent Patent Owner argues that a POSITA would not have applied two delays within a single filter, this assertion is unsupported.10 See Prelim. Resp. 16. No other terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 9
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213 - Sony Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Jan 9, 2024 · IPR2023-01118 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Sony did not show a reasonable likelihood that claim 1 was obvious over Avendano ’880 and Hou; the dependent-claim challenges also failed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’213 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 34 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity.” slip op. at 14
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Concurrently with the Petition, Petitioner filed a Motion for Joinder seeking joinder as a party in Amazon.com, Inc. v. Jawbone Innovations, LLC, IPR2023-00279 (“the Amazon IPR”) and consolidation with the Amazon IPR. Paper 3, 1. Patent Owner filed an Opposition to Petitioner’s Motion for Joinder. Paper 7. Subsequently, the Amazon IPR terminated based on settlement. IPR2023-00279, Paper 17. We therefore dismiss Petitioner’s Motion for Joinder as moot.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Petition construes no terms. Pet. 7. The Preliminary Response proposes construing “filter, wherein the filter is formed,” as “adaptive filter comprising a signal ratio, wherein the filter is formed.” Prelim. Resp. 12– 14. We determine that we need not construe this term because, for the reasons we explain below, Petitioner has not met its institution burden regardless of the construction of this term. We further determine that no other terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 7
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213 - PTAB · Jan 9, 2024 · IPR2023-01112 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim; it dismissed the joinder motion as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’213 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Concurrently with the Petition, Petitioner filed a Motion for Joinder seeking joinder as a party in Amazon.com, Inc. v. Jawbone Innovations, LLC, IPR2023-00276 (“the Amazon IPR”) and consolidation with the Amazon IPR. Paper 3. Patent Owner filed an Opposition to Petitioner’s Motion for Joinder. Paper 7. Petitioner filed a Reply to Patent Owner’s Opposition. Paper 8. Subsequently, the Amazon IPR terminated based on settlement. IPR2023-00276, Paper 17. We therefore dismiss Petitioner’s Motion for Joinder as moot.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition. Prelim. Resp. 14 (citing Ex. 2002 ¶ 26). Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art. Our decision would not have changed had we adopted Patent Owner’s proposal.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At this stage, we determine that Patent Owner’s proposed construction improperly imports an embodiment from the specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs. Inc. v. Stryker Corp., 755 F. 3d 1367, 1371 (Fed. Cir. 2014). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. “The standards for finding lexicography and disavowal are exacting. To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning and must clearly express an intent to redefine the term.” Id. (internal quotation omitted). On this record, there is no such clear definition in the specification, express or implied. The disclosed filter β(z) “describes the relationship between O1 and calibrated O2 for speech.” Ex. 1001, 5:31–32. But the filter β(z) is merely a disclosed embodiment and does not define the claimed “filter that describes a relationship for speech.” See id. Patent Owner also points to no disclosure that disavows interpretations other than the example filter β(z). Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). We decline Patent Owner’s invitation to limit the claims to unclaimed features.” slip op. at 9
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213 - LG Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Jan 9, 2024 · IPR2023-01111 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because LG did not show a reasonable likelihood that claim 1 was obvious over Avendano ’880 and Hou; the dependent-claim challenges also failed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 33 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 33 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6–7 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition and asserts that “Petitioner generally agrees with this level of skill in the art.” Prelim. Resp. 14 (citing Ex. 1003 ¶¶ 22–23). Based on the current record, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“Concurrently with the Petition, Petitioner filed a Motion for Joinder seeking joinder as a party in Amazon.com, Inc. v. Jawbone Innovations, LLC, IPR2023-00279 (“the Amazon IPR”) and consolidation with the Amazon IPR. Paper 3, 1. Patent Owner filed an Opposition to Petitioner’s Motion for Joinder. Paper 7. Petitioner filed a Reply to Patent Owner’s Opposition. Paper 8. Subsequently, the Amazon IPR terminated based on settlement. IPR2023-00279, Paper 17. We therefore dismiss Petitioner’s Motion for Joinder as moot.” slip op. at 2
§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213 - PTAB · Jan 9, 2024 · IPR2023-01023 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on claims 1–14 and 17–20 on all asserted grounds, finding a reasonable likelihood of success for at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We disagree with Patent Owner, as Petitioner’s stipulation sufficiently comports with the language of the Director’s Memo, consistent with Sotera Wireless, Inc. See Director’s Memo 3. Patent Owner’s argument invites us to disagree with the reasoning of Sotera itself and the Director’s Memo, which we are bound to follow. Accordingly, Patent Owner’s argument is unavailing. Patent Owner also urges us not to accept a “late” Sotera stipulation. Prelim. Sur-reply 5. We disagree that Petitioner’s Sotera stipulation is late. It is within our discretion to permit Petitioner to file a stipulation prior to institution. See NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (PTAB Sept. 7, 2022) (precedential). We therefore decline to discretionarily deny institution in view of the related District Court litigation.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“CONCLUSION Based on the current record, we determine Petitioner has shown a reasonable likelihood of prevailing with respect to at least one claim of the ’509 patent. Accordingly, we institute inter partes review of all claims challenged on all of the grounds in the Petition. See Consolidated Trial Practice Guide (Nov. 2019), 64.10 ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is hereby instituted as to claims 1–14 and 17–20 of the ’509 patent based on the unpatentability challenges presented in the Petition; and” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a Bachelor’s degree in computer science/engineering, or a related field, and at least two years of industry experience or academic research experience in virtual/augmented reality, including visual and audio modeling and rendering” and that “[a]dditional education can compensate for less experience, and vice-versa.” Pet. 4–5 (citing Ex. 1003 ¶¶ 32–37). Patent Owner “applies Petitioner’s characterization of a person of ordinary skill in the art.” Prelim. Resp. 2. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner disagrees with Petitioner’ contention that we should apply “any reasonable construction,” and instead argues that “[t]he claim terms should be given their ‘ordinary and customary meaning’ as understood by a POSITA in view of the patent claims, specification[,] and prosecution history.” Prelim. Resp. 3 (citations omitted). Patent Owner further argues that “[h]ere, no express constructions of the claims are necessary.” Id. We agree with Patent Owner that at this point in this proceeding, “no express constructions of the claims are necessary.” Prelim. Resp. 3.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,798,509 - PTAB · Jan 9, 2024 · IPR2023-01084 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that Meta would prevail on at least one claim, including claim 14 over Avendano and Visser.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’213 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Concurrently with the Petition, Petitioner filed a Motion for Joinder seeking joinder as a party in Amazon.com, Inc. v. Jawbone Innovations, LLC, IPR2023-00276 (“the Amazon IPR”) and consolidation with the Amazon IPR. Paper 2. Patent Owner filed an Opposition to Petitioner’s Motion for Joinder. Paper 8. Subsequently, Petitioner filed an Unopposed Motion to Withdraw Motion for Joinder in light of the Board terminating the Amazon IPR based on settlement. Paper 9, 1–2. We grant Petitioner’s Unopposed Motion to Withdraw Motion for Joinder.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6–7 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition. Prelim. Resp. 14 (citing Ex. 2002 ¶ 26). Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art. Our decision would not have changed had we adopted Patent Owner’s proposal.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner
“At this stage, we agree with Petitioner that Patent Owner’s proposed construction improperly imports an embodiment from the specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill- Rom Servs. Inc. v. Stryker Corp., 755 F. 3d 1367, 1371 (Fed. Cir. 2014). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. “The standards for finding lexicography and disavowal are exacting. To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning and must clearly express an intent to redefine the term.” Id. (internal quotation omitted). On this record, there is no such clear definition in the specification, express or implied. The disclosed filter β(z) “describes the relationship between O1 and calibrated O2 for speech.” Ex. 1001, 5:31–32. But the filter β(z) is merely a disclosed embodiment and does not define the claimed “filter that describes a relationship for speech.” See id. Patent Owner also points to no disclosure that disavows interpretations other than the example filter β(z). Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). We decline Patent Owner’s invitation to limit the claims to unclaimed features. Further, because Patent Owner attempts to import an embodiment from the specification into claim 14, we need not determine at this stage whether claim 14’s “filter that describes a relationship for speech” is broad enough to encompass the disclosed calibration and delay filters, as Petitioner contends. See Prelim. Reply 2.” slip op. at 10
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213 - Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Jan 9, 2024 · IPR2023-01083 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 5–9, 12, and 13 were obvious over Avendano ’880 and Hou.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 35 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity. Petitioner’s alternative argument, that “[a]s another example, a calibration also would be applied to the second signal x2 by Hou’s ‘first minimum estimate unit 508’ to generate a first quantity,” also fails. Id. at 36–37. This argument is untenable because Hou’s first minimum estimate unit 508 merely “estimates the minimum for the first electronic sound signal.” Ex. 1008, 5:36–38. Hou does not describe unit 508 as performing a calibration. Nor does Petitioner explain how Hou’s minimum estimate constitutes a calibration. Pet. 36–37. And Petitioner’s expert merely parrots the Petition. Ex. 1003 ¶ 135. Thus, Petitioner’s conclusory assertion is unpersuasive.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We determine below that Petitioner has not met its burden to show a reasonable likelihood that Avendano ’880 and Hou would have rendered independent claim 1 obvious. As the remaining claims all depend from claim 1 and Petitioner’s second challenge only addresses dependent claims, Petitioner’s failure to meet its burden on this challenge is dispositive, and we need not address Ground 2. See Pet. 1.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not construe this term because, for the reasons we explain below, Petitioner has not met its institution burden regardless of the construction of this term. We further determine that no other terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6–7 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition and asserts that “Petitioner generally agrees with this level of skill in the art.” Prelim. Resp. 14 (citing Ex. 1003 ¶¶ 22–23). Based on the current record, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art.” slip op. at 7
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213
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.