- PTAB · Oct 18, 2023 · IPR2023-00778 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1, 2, 7, 9, 15, and 16 and all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have possessed at least a bachelor’s degree in electrical engineering, physics, optics or a related field, and approximately three years of experience in the fields of visual displays, circuit design, and related technologies.” Pet. 7 (citing Ex. 1002 ¶¶ 23–25). Petitioner states that the Board adopted this formulation in IPR2020-01289, Paper 9, 8–9 (PTAB Mar. 9, 2021). Id. Petitioner also asserts that “[o]ther formulations are also possible but, even if adopted, they would not materially change the analysis or the outcome.” Id. At this stage of the proceeding, Patent Owner “applies Petitioner’s level of ordinary skill without agreeing to it.” Prelim. Resp. 1. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage of the proceeding, only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. 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))). After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“On the current record, we find that, for purposes of institution, Petitioner has sufficiently shown that the combination of Gettemy, Kerman, Rosenzweig, Whitted, and Bell teach this limitation and has provided sufficient rationale to combine the references. First, we credit Dr. Baker’s testimony that “notwithstanding that the system in Gettemy will not permit the user to set the slider below the lower end of the displayed range . . . nothing in Gettemy states that the purpose of summation of the minimum value of the brightness range is to ensure that the final display brightness value used to control the brightness of the display meets a predetermined desired level of brightness.” Ex. 1002 ¶ 324. Thus, Petitioner relies on Whitted and Bell to teach this limitation. As for Patent Owner’s arguments that Whitted and Bell provide “redundant” functionality, we disagree on the current record. Petitioner explains the benefits of adding the functionality from Whitted and Bell as a backstop and to compensate for degradation of conventional displays. Pet. 71–72. Moreover, Dr. Baker provides supporting testimony and citations to additional references in support of Petitioner’s motivation to combine the references, and, accordingly, we disagree with Patent Owner that there is no evidence to support Petitioner’s 15 Patent Owner argues that the Board’s decision in IPR2018-01262 is instructive. Prelim. Resp. 69. We disagree. That decision described several deficiencies in the Petition relating to the “dark level bias” limitation (see IPR2018-01262, Paper 14, 12–16), and Patent Owner oversimplifies the Board’s findings by quoting from one paragraph in the decision. contentions. See Ex. 1002 ¶ 336 (citing Ex. 1019, 1020, 1021). In addition, Patent Owner’s arguments that Whitted and Bell do not disclose the “dark level bias” address Whitted and Bell individually, rather than on the combination as proposed by Petitioner, with Gettemy, Kerman, and Rosenzweig, and are therefore not persuasive on this record. The parties may wish to further develop the record as to the foregoing issues during trial.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has sufficiently shown that Gettemy, Kerman, and Rosenzweig teach this limitation and has provided sufficient rationale to combine the references. Petitioner’s arguments that sliders were “commonly used” is supported by the disclosure in both Kerman and Rosenzweig. Ex. 1014, 39 (Kerman describing that a slider is “a popular user interface”); Ex. 1015, 44 (Rosenzweig describing a slider as “a familiar user interface element used in all major software programs”). Petitioner relies on Kerman and Rosenzweig to explicitly explain how Gettemy’s conventional slider is implemented. Pet. 57. Patent Owner’s arguments largely address the references individually, rather than on the combination as proposed by Petitioner, where Kerman and Rosenzweig are relied upon for the underlying technical functionality of Gettemy’s slider. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We find persuasive Dr. Baker’s testimony that “[a]n ordinarily skilled artisan, seeking to implement the brightness control system of Gettemy, would thus have been motivated to rely on the teachings of Kerman and Rosenzweig to better understand how to implement the slider controls in Gettemy, including the precise formula that produces the exact display brightness values exhibited in Gettemy.” Ex. 1002 ¶ 319. Further, we disagree with Patent Owner that Petitioner and Dr. Baker have made up an equation. The equations relied upon by Petitioner are directly from the Kerman and Rosenzweig references. See Pet. 57, 58, 62–64. Based on our review and consideration of the current record, we determine that, for purposes of institution, Petitioner has sufficiently shown that the combination of Gettemy, Kerman, and Rosenzweig teaches limitation 1(c) and has provided reasons sufficiently supported by factual underpinnings to combine the reference teachings with a reasonable expectation of success.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,223,117 - PTAB · Jun 20, 2023 · IPR2023-00193 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 6, 7, and 14–18, finding a reasonable likelihood that the claims are obvious over the asserted grounds.
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 the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’991 patent. Accordingly, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Electrical Engineering or a similar degree and two years of professional experience working in wireless networking, including WLAN and WPAN protocols and devices; more experience would supplement less education and vice versa.” Pet. 7 (citing Ex. 1003 ¶¶ 42–45). At this time, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any express claim constructions. Pet. 5; Prelim. Resp. 13. However, as explained below, to the extent that the parties’ positions turn on an interpretation of the claimed “second network protocol,” we encourage the parties to directly address the scope of the challenged claims during trial. For the purposes of this Decision, we preliminarily determine that the language of the claims themselves provides some clarity regarding claim scope. Limitation [1g], for example, provides that the second network protocol “is an overlay protocol with respect to the first network protocol in that communications using the second network protocol are partially consistent with the first network protocol.” Also, the limitations of claims 6 and 7, which depend from claim 1, provide that the second network protocol “is a protocol that requires lower average power consumption over time relative to the first network protocol” (claim 6) and “is a modification of the 802.11x wireless protocol that is not entirely compliant with the 802.11x wireless protocol of the first network but can be maintained in a common wireless space as the 802.11x wireless protocol” (claim 7).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“a [person of ordinary skill in the art] would have been motivated to incorporate Ganu’s teachings of FNs using data forwarding techniques to relay [I]nternet traffic between MNs and APs into Cromer’s system such that client device 100 relays data between peer-to-peer WPAN devices 180 and AP 160, allowing peer-to-peer WPAN devices 180 to communication with AP 160 via client device 100 and access the Internet.” slip op. at 10
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,264,991 - Ironsource Ltd. v. Digital Turbine Inc.InstitutedPTAB · Mar 17, 2023 · PGR2022-00053 · APJ Iftikhar Ahmed · PGR · Institution
The Board instituted PGR on claims 1–22 under § 101, § 102(a) over Pasha, and § 103 over Pasha, Pasha and Yamada, and Pasha and Molinet.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted unless it is determined that it is more likely than not that at least one of the challenged claims is unpatentable. Based on the information presented in the Petition and the supporting evidence, we are persuaded that the Petition demonstrates it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither of those exceptions apply here, and for the reasons below, we find the plain and ordinary meaning of “invoke” or “invoking” to be to call or activate, as proposed by Petitioner. slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“to mean “to shift user interaction on the device,” and we disagree with Patent Owner that the claim term requires the shifting to take place without requiring a user interaction. We begin with the language of the independent claims. Claim 1 recites “redirect said device to an app store for downloading said first software application on said device.” Ex. 1001, 21:38–40. The claim language, therefore, does not recite any requirement relating to user interaction during the redirect.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“3. Other Claim Terms We determine that we do not need to expressly construe any other terms in order to determine whether to institute. The parties are reminded claim terms will be based on the complete record developed during trial.” slip op. at 17
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Alice · Enfish · PhillipsPatents in suitUS 11,157,256 - Snap Inc. v. You Map Inc.InstitutedPTAB · Sep 2, 2022 · IPR2022-00568 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 12 would be obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review “is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, the Petition meets this standard. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Preliminary Response, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. In this Decision, we apply Petitioner’s proposed definition, which appears to be consistent with the level of skill reflected in the asserted references. If Patent Owner proposes a different level of ordinary skill in the” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At this stage and on this record, we disagree with Patent Owner’s claim construction to the extent that it excludes the disclosed embodiment that uses areas of a map as screen attribute information: For example, the social mapping module 106 may receive a request from the client device 300. The request may include device. For example, the size of the display 305, the resolution of the display 305, areas of a map displayed on the display 305, etc. Ex. 1001, 15:13–15 (emphasis added). We emphasize “For example” here because it indicates that “areas of a map” are screen attribute information. Id. Area is listed together with the device’s size and resolution. Id. Thus, at this stage and on this record, we disagree with Patent Owner that “‘areas of a map displayed on the display’ is a function of the ‘screen attribute information about a display of the client device’ not the other way around.” Prelim. Resp. 30.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“These teachings lead us to favor Petitioner’s arguments over Patent Owner’s, at this stage, because the cited teachings show that Jackson proposes using a flexible approach, which may include multiple factors or criteria. See id. at 16:40–66. For example, Petitioner asserts that “Jackson explains that its ‘recommendation system 522’ can make its decision based on weighting the ‘global score’ or its signals, and that its ‘personal score 538’ can create weighted scores based on each.” Pet. 52 (citing Ex. 1006, 19:50–61, 22:63–23:3). As for the global score, Petitioner asserts that Jackson’s global score would be weighed based on secondary criteria, such as location, to arrive at a modified score: [I]t would have been obvious to: (1) generate “global scores” for “every post” based on non-user-specific “primary criteria” (Jackson, 9:19-25, 16:45-56), (2) weight those global scores using “secondary criteria” relating to the user and poster sharing a geographic location (Jackson, 16:65-17:7) to generate “modified scores” for the posts, and (3) rank the posts according to the modified scores in the same way Jackson teaches in connection with the social-network-distance secondary criteria (Jackson, 9:54-67).” slip op. at 28
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,616,727 - PTAB · Jul 22, 2022 · IPR2022-00404 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 6, 8, 9, 11, 13–15, and 17, finding a reasonable likelihood of success on both §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (designated precedential May 5, 2020), we should exercise our discretion to deny the Petition because of the advanced state of the parallel ITC proceeding, which will be addressing the validity of the ’592 patent. See generally, Prelim. Resp. Patent Owner notes that there has been no request for a stay in the ITC proceeding, that Petitioner lacks standing to request a stay, and that the ITC case is expected to maintain its current schedule. Prelim. Resp. 7. Petitioner argues that all the district court proceedings are stayed and the ITC lacks authority to cancel or amend claims. Pet. 85; Reply 1. provided instructions on the exercise of discretion in post-grant proceedings with parallel district court litigation. See Memorandum for the Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”).1 The Guidance Memo provides that “[u]nlike district courts, the ITC lacks authority to invalidate a patent and its invalidity rulings are not binding on either the Office or a district court.” Id. at 6 (citation omitted). Accordingly, “[t]he PTAB will not discretionarily deny petitions based on applying Fintiv to a parallel ITC proceeding.” Id. at 7. All of Patent Owner’s arguments for discretionary denial in this case are premised on avoiding duplicative efforts between this case and the parallel ITC proceeding. Weighing the Fintiv factors in light of the Guidance Memo and that the parallel district court proceedings are stayed, these factors weigh strongly toward declining to exercise discretion to deny institution. Therefore, we decline to exercise discretion to deny institution under Fintiv.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(“Petition” or “Pet.”), to institute an inter partes review (“IPR”) of claims 1– 3, 5, 6, 8, 9, 11, 13–15, and 17 (the “challenged claims”) of U.S. Patent No. 10,396,592 B2 (“the ’592 patent”). 35 U.S.C. § 311. Causam Enterprises, Inc. (“Patent Owner”) filed a Preliminary Response, Paper 7 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. As authorized by the Board, Petitioner filed a Reply. Paper 8. Patent Owner filed a Sur-reply. Paper 9. We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. 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)). A. Revenue Grade Metrology Noting that the term “revenue grade metrology” is found only in the Abstract and claims of the ’592 patent, Petitioner asserts that the plain and ordinary meaning of “revenue grade metrology” “would at least include a method of measurement using any apparatus used for the purpose of making measurement of, or obtaining the basis of a charge for, electricity supplied to a purchaser.” Pet. 5 (citing Ex. 1003, Ehsani Decl. ¶ 26). Petitioner notes that in the ITC proceeding, Patent Owner argued no construction was necessary, but that if a construction were adopted, “revenue grade metrology” should be construed to mean “metrology conforming to revenue grade requirements.” Id. at 6 (citing Ex. 1010, 7). Petitioner argues against adopting Patent Owner’s ITC construction proposal as merely repeating the claim language without adding any clarification. Id. On this point, we agree with Petitioner. ordinary meaning applies and no construction of this term is needed. However, to the extent the plain and ordinary meaning of this term requires clarification, for purposes of this Decision, we understand revenue grade metrology to include measurement techniques and meters that measure power consumption with sufficient accuracy to be used in revenue collecting applications.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionOther
“B. Power Supply Value Petitioner proposes we construe “power supply value” using its explicit definition in the Specification, i.e. “an actual value that includes measurement and verification of the reduction in consumed power.” Pet. 6 (citing Ex. 1001, 9:2–4). Petitioner notes that Patent Owner proposed a very similar definition in the ITC proceeding. Id. (citing Ex. 1009, 2). For purposes of this Decision, we construe “power supply value” to have the definition given in the Specification.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,396,592 - Ironsource Ltd. v. Digital Turbine Inc.InstitutedPTAB · Jan 6, 2022 · PGR2021-00096 · APJ Iftikhar Ahmed · PGR · Institution
Instituted PGR on claims 1–18 under § 101, claims 1, 3–12, and 14–18 under § 102(a) over Pasha, and the listed § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted unless it is determined that it is more likely than not that at least one of the challenged claims is unpatentable. Based on the information presented in the Petition and the supporting evidence, we are persuaded that the Petition presents information demonstrating it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“For the purposes of this Decision, we agree with Petitioner. Figure 7 of the ’951 patent shows the Downloader & Installer Module as a module within the “installation client,” not as the installation client itself. Ex. 1001, 14:4–45 (discussing “installation client 700” and its various modules); Fig. 7 (showing Download & Installer 720 as part of Installation Client 700). The ’951 patent states: Installation client 700 is represented as several modules performing separate functions. The division of functionality demonstrated in FIG. 7 is illustrative, and not intended to be limiting. Other embodiments of an installation client may organize the various functions performed by the installation client 700 in a different manner. Id. at 14:6–12. Accordingly, the proper construction of the term “installation client” does not limit the number or arrangement of components” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“Petitioner’s analysis of the independent claims described above only loosely corresponds to the actual limitations recited in the claim. The Federal Circuit has “cautioned that courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). But “failing to account for the specific requirements of the claims” is what Petitioner’s analysis of the claim limitations appears to do. Petitioner’s argument that “the essence of all the claims” is captured by a single claim element not only ignores that that limitation recites installing software, which we are not persuaded is an abstract idea, but also asks us to disregard multiple technical aspects recited in the claims, such as identifying a link, determining whether an installation client is available on the device, invoking the installation client, and redirecting to the device an app store. See, e.g., Ex. 1001, 21:6–35. Nor are we persuaded by Petitioner’s characterization of the claims as directed to multitasking, which Petitioner characterizes as representing a basic task in organizing human activity. Pet. 30. Although the Guidance recognizes certain methods of organizing human activity, including certain activity between a person and a computer, as constituting a patent-ineligible abstract idea, we are not persuaded that the claims here fall within the scope of such activity. See 84 Fed. Reg. at 52 (listing fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships as organizing human activity); October 2019 Update at 5 (“this grouping is limited to activity that falls within the enumerated sub-groupings except in rare circumstances”). Although the claimed invention may result in multitasking on the device, the claims are directed to downloading and installing an application in the background instead of directing the user to an app store, thereby maintaining user experience with the foreground application, and do not recite an abstract idea. And although that process does result in improving user experience, the claims recite more than that mere result; they recite specific steps— invoking, without exiting the foreground software application, the installation client for downloading and installing applications on the device to run in the background—that accomplish the desired result. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018) (finding a method that employs a new kind of file in a computer security system directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (finding claims that address the problem of retaining website visitors after clicking on an advertisement hyperlink not directed to an abstract idea). Accordingly, based on the current record, we question whether Petitioner establishes sufficiently that the claims are directed to a judicial exception under Step 2A of the Guidance. Nevertheless, because Petitioner has shown that it is more likely than not that challenged claims are unpatentable under 35 U.S.C. §§ 102, 103 (see infra §§ III.F–I), we include this ground in the instituted post-grant review. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to embracing all challenges included in the petition”).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As discussed above (supra Section II.C.1), at this preliminary stage, we do not construe “installation client” so narrowly as to limit the number or arrangement of components required to meet that claim element. Also, as discussed above (id.), the specification of the ’951 patent supports that multiple modules performing separate functions may comprise the installation client. Therefore, based on our review and consideration of the current record, we are not persuaded by Patent Owner’s argument that Pasha fails to disclose the claimed installation client. Petitioner’s arguments are inconsistent across the Petition. The Petition clearly alleges that “the App Manager 180 and Installer 182 disclose the claimed ‘installation client for downloading and installing applications on said device.’” Pet. 58. Petitioner’s description of Pasha’s App Manager is consistent with Pasha’s disclosure itself. For example, although Pasha discloses that “the host application 132 may use an App Manager component 180 and an Installer component 182,” it also states that “[t]he App Manager 180 may control portions of the application download and install process.” Ex. 1003, 17:22–26; Pet. 38. Pasha further discloses that “[t]he App Manager 180 [itself] may perform at least a portion of one or more of the steps 310–350 of FIG. 3,” i.e., including the step of “[i]nstalling the downloadable application on the computer system from the application package by executing program code having permission to install applications.” Ex. 1003, 17:35–36, Fig. 3. Patent Owner’s argument that Pasha’s “App Manager does not have the role of installing software applications,” is therefore contrary to Pasha’s disclosure. Also, Petitioner’s reasoning and evidentiary underpinnings here are based not so much on modifying Pasha, as Patent Owner suggests, as explaining how one of ordinary skill in the art would have understood Pasha’s disclosure. Between its App Manager and Installer, Pasha discloses the claimed functionality of the “installation client,” but, similar to the ’951 patent, Pasha teaches flexibility between the use of those components to implement the claimed functionality. For the purposes of institution, we are unpersuaded that Petitioner fails to meet its threshold burden of showing anticipation under Net MoneyIN. See, e.g., Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (explaining that a reference need not always as it teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination). Based on our review of the current record, we therefore determine that the information presented supports sufficiently, for the purpose of institution, Petitioner’s assertion that Pasha discloses this limitation.” slip op. at 26
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Alice · Enfish · PhillipsPatents in suitUS 10,782,951
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.