- PTAB · Mar 6, 2024 · IPR2024-00073 · APJ John F Horvath · IPR · Institution
The Board instituted inter partes review of claims 1–22 on all grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the Petition, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim, and we institute inter partes review of all challenged claims on all grounds raised.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own.3 slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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) (2019). Under this standard, a claim is construed “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. Only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. However, “[t]he Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (internal citations omitted).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“configured to draw the peak current through its LEDs at a duty cycle substantially corresponding to a duty cycle of the PWM brightness control signal applied to it but out of phase with the other current set circuits. Ex. 1001, 6:48–54. At this stage of the proceeding, Petitioner reasonably demonstrates how Thomas’s current set circuits meet this limitation. Pet. 30–32 (citing Ex. 1005, 3:24–63, 4:66–5:20, Figs. 1, 3). Figure 3 of Thomas illustrates that each of the PWM control signals E–H generated by Thomas’s PWM controller (PWM generator 17 and delay means 16) has the same duty signals E–H is coupled to a different current set circuit (resistor 3) through a respective one of switches 5–8, such that each current set circuit draws current through a respective LED group 9–12 at the same duty cycle, but out of phase with the other current set circuits. Ex. 1005, Figs. 1, 3. At this stage of the proceeding, for the reasons discussed above, we find Petitioner has demonstrated a reasonable likelihood of showing all the limitations of claim 1 are taught by Thomas and that claim 1 is anticipated by Thomas. Claim 14 is substantially similar to claim 1, reciting a method for driving a plurality of LEDs in a plurality of parallel paths that is substantially similar to the method the LED driver of claim 1 is configured to perform. Compare Ex. 1001, 7:51–8:8, with id. at 6:35–54. Petitioner’s analysis of claim 14 refers back to its analysis of claim 1. Accordingly, at this stage of the proceeding, Petitioner demonstrates a reasonable likelihood of showing claim 14 is anticipated by Thomas.” slip op. at 14
Claim construction§ 102 anticipationPatents in suitUS 7,843,148 - Opticis Co., Ltd. v. Inneos LLCInstitutedPTAB · Feb 2, 2024 · IPR2023-01256 · APJ Terry J Owens · IPR · Institution
The Board instituted review of claims 1, 2, 6, 7, and 9 on all five §103 grounds in the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 37 C.F.R. § 42.4(a) (2023). Under 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.” A decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a) (implemented as a result of SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. See 35 U.S.C. § 314(a). For the reasons explained below, we institute an inter partes review of all challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Ground 1 is based upon obviousness, not anticipation. Patent Owner’s argument is not well taken because it does not address what fixing Kurita’s single optical fiber (40) in place.” slip op. at 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedInstituted
“The purpose of requiring reasonable diligence by the first to conceive the invention but second to reduce to practice is to assure that the invention was not abandoned or unreasonably delayed by the first inventor during the period after the second inventor entered the field.” Brown v. Barbacid, 436 F.3d 1376, 1379 (Fed. Cir. 2006). “A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence.” Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016). “[T]here need not necessarily be evidence of activity on every single day if a satisfactory explanation is evidenced.” Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1369 (Fed. Cir. 2001). Thus, Patent Owner must provide an explanation that is satisfactory to indicate that the relied-upon computer modeling and prior art search update show reasonably continuous diligence from November 10, 2003 to January 15, 2004. Patent Owner has provided some evidence to show diligence from November 10, 2003 to January 15, 2004, but Patent Owner has not explained why, under the facts of this case, the evidence is sufficient to establish reasonably continuous diligence for the period before Bhandarkar’s effective filing date to the date of constructive reduction to practice. We have reviewed Petitioner’s contentions as to how Bhandarkar teaches the subject matter of the claims, and we find them sufficiently persuasive at this stage. Based upon the above-discussed evidence and that the optical combiner claimed in claims 1, 2, 6, 7, and 9 would have been obvious to one of ordinary skill in the art over Bhandarkar. slip op. at 26
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation (Prelim. Resp. 68–69). A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)2 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition” (Interim Procedure 9). Petitioner has submitted such a stipulation (Paper 11). Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,198,416 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01193 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“c) Conclusion for Claim 1 We find that the combination of Jenne and Cohen teaches the subject matter recited in claim 1 and that a person of ordinary skill in the art would have combined the teachings of Jenne and Cohen in the manner asserted by Petitioner with a reasonable expectation of success in arriving at the subject matter recited in claim 1. Patent Owner’s asserted objective evidence of non-obviousness lacks nexus and does not undermine Petitioner’s showing. Therefore, we conclude that the subject matter of claim 1 would have been obvious based on the combined teachings of Jenne and Cohen.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent and at least two years of experience in the relevant field, e.g., electronic communications systems. Significantly more practical experience could also qualify one not having the aforementioned education as a person of ordinary skill in the art while, conversely, a higher level of education could offset a lesser amount of experience. Pet. 12–13 (citing Ex. 1003 ¶ 96). Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 308. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 289 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner, that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 9,892,287 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,892,287 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01192 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the other asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 12–13 (citing Ex. 1003 ¶ 96). Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 289 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner, that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 15
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 308. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 289 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner, that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 9,892,287 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,892,287 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01190 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds and granted consolidation.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 310 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Id. ¶ 321. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 292 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus, precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 310 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Id. ¶ 321. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 292 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 10,789,393 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,789,393 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01191 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds.
RulingsFinal written decision- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“I. INTRODUCTION In these inter partes reviews, Google LLC and Microsoft Corporation (collectively “Petitioner”) challenge the patentability of claims 1–7 of U.S. Patent 10,789,393 B2 (Ex. 1001 (“’393 patent”)), which is owned by Carolyn W. Hafeman (“Patent Owner”). Petitioner requests that we consolidate these cases. IPR2022-01190, Paper 24 at 1. Patent Owner opposes. IPR2022-01190, Paper 28 at 1. Because these cases address the same claims, we grant Petitioner’s request to consolidate them pursuant to 37 C.F.R. § 42.122(a). See also 35 U.S.C. § 315(d) (giving Director discretion to consolidate proceedings).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus, precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Expert testimonyPatent owner expert discountedDecided for patent owner
“security by keeping ownership indicia constant after the initial set-up or configuration change.” PO Resp. 32 (citing Ex. 2040 ¶ 54(b)). Patent Owner cites the following testimony from Dr. Schaefer to support this assertion: Cohen discloses a method where the owner enters “a textual indicia of personal ownership” “during set-up or during a configuration change.” Cohen is specifically designed to keep ownership indicia constant. Although Cohen states that ownership indicia can be stored in RAM or nonvolatile memory, Cohen makes clear that nonvolatile memory is preferred because it cannot be altered, whereas ownership information stored in the RAM could be “easily defeated” by removing the battery. Thus, Cohen’s objective is to keep its local ownership indicia constant after an initial set-up or configuration change. Ex. 2040 ¶ 54(b) (citing Ex. 1006, 2:31–35, 4:50–5:4); see PO Resp. 29 (quoting this testimony), 32 (citing this testimony). We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner argues that certain language in each independent claim should be interpreted to require the automatic display of certain information “during or after every boot-up.” Pet. 9–11. Second, Petitioner argues that the return and recovery information recited in the claims is merely printed matter that is not entitled to patentable weight. Pet. 12. Patent Owner disagrees with Petitioner’s claim construction arguments. PO Resp. 9–21. For her part, Patent Owner argues that the terms “computer recovery information,” “recovery information,” and “return information” mean “information provided by the owner so that the device can be returned to the owner,” and she argues that “owner” means “the person or entity that owns, rents, or licenses the recovery application or program, and/or the person or entity who controls the recovery service.” PO Resp. 21 (citing Ex. 1001, 3:33–34, 4:4–5, 4:49–51, 11:11–13; Ex. 2035, 6–7, 19–20). As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
Patent outcomesUS 10,789,393 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,789,393 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01189 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds and granted consolidation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 320. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 301 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 320. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 301 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 10,325,122 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,325,122 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01188 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 320. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 301 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 10,325,122 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,325,122 - Unified Patents, LLC v. VL Collective IP LLCSome claims unpatentablePTAB · Dec 18, 2023 · IPR2022-01086 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable over Sonohara; claims 20 and 21 were not shown unpatentable because Sonohara’s assignment rule is based on timestamps.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s expert, Dr. Goodrich, proposes what Patent Owner characterizes as “a somewhat different level,” namely “an individual with at least a bachelor’s degree in Computer Science or related area and two years of experience developing software tools and/or computer systems for use in the area of audio or video creation, encoding, and/or distribution.” PO Resp. 13; Ex. 2007 ¶ 50. Although we agree that the respective articulations are “somewhat different,” they are generally similar, and our Decision does not depend on nuanced distinctions regarding the level of ordinary skill. Indeed, Dr. Goodrich describes his proposed articulation as “approximate,” such that “more work experience could compensate for less education or more education could compensate for less work experience.” Ex. 2007 ¶ 50. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Freedman’s testimony, we adopt it for this Decision. 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). We nevertheless note that we would reach the same ultimate conclusion that claims 1, 3, 5, 9, 12, 13, and 15 (but not claims 20 and 21) have been shown to be unpatentable by a preponderance of the evidence were we to adopt Patent Owner’s proposal. See PO Resp. 13 (“this Response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill”).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“We need not resolve this dispute because we reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable, but not that claims 20 and 21 are unpatentable, even if we apply Patent Owner’s proposed construction that the preambles are limiting and the first and second data files must be different. See Reply 15 (Petitioner asserting that “there is no need to construe the preambles as the prior art meets them even if construed”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). For purposes of this Decision, we accordingly treat the preambles of independent claims 1 and 9 as limiting, and with the recited “first data file” and “second data file” as distinct data files.4” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“We agree with Patent Owner’s contention that the emphasized sentence defines the term “content-related.” See PO Resp. 15–16 (Patent Owner arguing that “[t]here are thus three strong indications of lexicography: (1) ‘content-related’ is set off by quotation marks; (2) the patentee used the word ‘is’ to describe the term ‘content-related’; and (3) the patentee states what ‘content-related’ is ‘understood to mean.’” Nor does Petitioner disagree that the sentence is definitional. See Tr. 8:15–16 (referring to the “term content-related as it’s defined in the specification”). Indeed, in the Starz litigation, the district court also treated the sentence as definitional, a fact that we find significant as a matter of comity. See Ex. 1018, 111:24–112:1 (district court judge stating at Markman hearing, “I’m going to adopt . . . the express definition provided in the specification”). But like the district court, we discern insufficient reason to adopt the additional gloss that Patent Owner seeks to apply to the definition of “content-related.” That is, Patent Owner proposes that we additionally construe the phrase “syntactical meaning” within the definitional statement to arrive at Patent Owner’s proposed construction. PO Resp. 16–20. According to Patent Owner, “[t]he specification makes clear, through its use of consistent and repeated examples, that ‘syntactical meaning’ requires a specific relationship between the data segments within a data file: succeeding data segments within a data file must be ordered so as to present the content in its intended sequence when rendered.” Id. at 17 (citing VirnetX Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1317–19 (Fed. Cir. 2014); Alloc, Inc. v. ITC, 342 F.3d 1361, 1368–71 (Fed. Cir. 2003)). Patent Owner adds that the claims, the context provided by the problems solved by the ’794 patent, and the cross-examination testimony of Petitioner’s expert, Dr. Freedman, all support this additional aspect of Patent Owner’s proposed construction. Id. at 18–20. Relying on additional direct testimony by Dr. Freedman, Petitioner counters this position as “improperly import[ing] limitations from the specification that are not required by the claims” and “render[ing] other portions of claim 1 superfluous.” Reply 3 (citing Ex. 1016 ¶ 22); see Tr. 10:18–20 (Petitioner explaining at oral hearing that “the syntax information is simply just identification information which is used to find out what the order of the files is. But the identification information does not by itself indicate the order. It’s just an identifier.”). We agree with Petitioner that it would be imprudent to adopt Patent Owner’s additional gloss because, “[w]hile claims must be construed in light of the specification, . . . limitations from the specification are not to be read into the claims, . . . for ‘[i]t is the claims that measure the invention.’” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir. 2004) (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (other citations omitted). It is apparent that the Applicant for the ’794 patent understood how to define terminology recited in the claims, but chose to limit its definition of “content-related” in terms of the broader phrase “syntactical meaning” rather than through narrower specific reference to presentation order. In addition, claims 1 and 9 already specify “sequentially outputting the first and second data segments according to their chronological sequence,” which supports Petitioner’s observation that requiring an additional sequential order to “content-related . . . data segments” renders other portions of claim 1 superfluous. See Reply 3. We accordingly adopt the definitional construction provided by the” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed Cir. 2003) (citing Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)) (emphasis added). As such, a statement during prosecution qualifies as a disavowal of claim scope only if it is “so clear as to show reasonable clarity and deliberateness” and “so unmistakable as to be unambiguous evidence of disclaimer.” Id. at 1325 (citations omitted). “Consequently, for prosecution disclaimer to attach, [Federal Circuit] precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). And “[s]tatements by the patent owner are not considered in a vacuum; rather, the skilled artisan would look at the record as a whole in assessing claim scope.” Galderma Lab’s v. Amneal Pharma, 806 F. App’x 1007, 1010 (Fed. Cir. 2022) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 867 (Fed. Cir. 1993) (“The prosecution history must be examined as a whole in determining whether estoppel applies.”)). We have reviewed the prosecution history, which we summarize supra § I.A.3., and we have particularly reviewed those portions highlighted by Patent Owner. See PO Resp. 32–40. We reach the same conclusion as the district court in the Starz litigation that the standard for attachment of prosecution disclaimer is not met. See Ex. 1018, 109:15–22 (district court stating at Markman hearing, “I’ve also carefully reviewed the portions of the prosecution history relied on by VideoLabs, including the patentee’s arguments regarding the Shin and Rosenau references, and I’m up [sic: not6] persuaded there was a clear and unmistakable disclaimer of all assignment rules that perform assignments by using exact timing information”). slip op. at 20
Patent outcomesUS 8,605,794 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,605,794 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00928 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the challenged claims were entitled to the 2010 priority date, making Morris not prior art and defeating the sole obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“written-description requirement. Pet. 74. We disagree for two principal reasons. First, the paragraph explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument is based on a narrow reading that is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 74. The nodes must communicate and cooperate because TCP has various” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 112 disclosurePatents in suitUS 10,986,217
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.